DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-7, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20050071388 A; herein English machine translation used for all citations) (previously cited) in view of Tokomitsu et al. (JP 2001254701 A; herein English machine translation used for all citations (previously cited).
Regarding claim 1, Lee teaches a flexible bag for an oil expansion tank (see conservator) of a transformer, comprising a reinforcement layer and a rubber sheet onto the front and back surface of the reinforcement layer, and thus comprises a first elastomer layer (rubber sheet), a second elastomer layer (rubber sheet), and a reinforcement layer (fiber reinforcing material) arranged between the first elastomer layer and the second elastomer layer (Lee, Pages 1-2). Lee teaches the reinforcement layer comprises a fabric (Lee, Pages 1-2). Lee teaches the first and second elastomer layers each comprise a vulcanized nitrile butadiene rubber (Lee, Pages 2-5).
Lee is silent regarding the at least one elastomer in the first elastomer layer and the second elastomer layer being vulcanized hydrogenated nitrile butadiene rubber.
Tokomitsu teaches a flexible bag (see bladder) for containing oil wherein the flexible bag comprises a polyamide (nylon) fabric surrounded by two rubber layers wherein the rubber layers comprise vulcanized hydrogenated nitrile butadiene rubber (Tokomitsu, Par. 0001, 0005-0008).
Lee and Tokomitsu are analogous art as they both teach flexible bags for containing oil wherein the flexible bag comprises a polyamide fabric surrounded by two vulcanized nitrile butadiene rubber layers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used vulcanized hydrogenated nitrile butadiene rubber as the elastomer of the first and second elastomer layers of Lee. This would allow for an oil-resistant rubber (Tokomitsu, Par. 0008).
Regarding claim 2, modified Lee teaches a flexible bag that is identical or substantially identical to the claimed invention. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. Modified Lee teaches the flexible bag is used for an oil expansion tank (see conservator) of a transformer (Lee, Pages 1-2), which is the same use as the instant flexible bag per the instant claim 1. Modified Lee further teaches the bag comprises a layer arrangement of first elastomer layer/reinforcement layer/rubber layer as stated above for claim 1 (Lee, Pages 1-2), which is the same arrangement as the instant invention per the instant claims 1 and 21. Modified Lee further teaches the elastomer of the first and second elastomer layers is a vulcanized hydrogenated nitrile butadiene rubber (Lee, Pages 2-5; Tokomitsu, Par. 0005-0008), which is the same as the instant invention per the instant claim 1. Modified Lee teaches the reinforcement layer comprises polyamide 6.6 threads (see nylon 6.6) (Lee, Pages 3-5 and 9), which is the same as the instant invention per the instant claims 5-6. Lee further teaches that the flexible bag is capable of being used at high temperatures (Lee, Pages 2, 4, and 12). Modified Lee thus teaches a flexible bag that is identical or substantially identical to the claimed invention. Therefore, absent objective evidence to the contrary, the flexible bag of Lee would have inherently be capable, and thus configured, to be operated at a temperature of 110°C or more, see MPEP 2112.01.
Regarding claim 3, modified Lee teaches the flexible bag is configured to be filled with oil (Lee, Pages 1-2).
Regarding claims 5-6, modified Lee teaches the fabric comprises at polyamide 606 threads (see nylon 6.6) (Lee, Pages 3-5 and 9).
Regarding claim 7, modified Lee teaches the at least one elastomer of the first elastomer layer and the second elastomer layer are the same (Lee, Page 3-5).
Regarding claim 21, modified Lee teaches the reinforcement layer comprises the first and second elastomer layers on a front and back surface respectively and therefore teaches a sandwich structure with the reinforcement layer positioned between the first and second elastomer layers (Lee, Pages 1-2).
Claims 8-9 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Tokomitsu et al. as applied to claim 1 above, further in view of Bennett (US 20170144820 A1) (previously cited).
Regarding claims 8-9, Lee teaches all of the elements of the claimed invention as stated above for claim 1.
Lee is silent regarding an externally arranged barrier layer as required by claim 8, wherein the barrier layer comprises at least one selected from a heterocyclic polymer, an organic polymer, an organosilicon compound or an organic fluorine compound as required by claim 9.
Bennett teaches a flexible bag for containing oil in a transformer comprising an interior fabric layer (middle tear-resistant bag) comprising a polyamide and exterior barrier layers (inner and outer puncture-resistant liquid-barrier fabric bags), wherein the barrier layers comprise an organic polymer (polypropylene) (Bennett, Abstract, Par. 0002, 0008, 0013, 0034, and 0048).
Lee and Bennett are analogous art as they both teach flexible bags for containing oil of a transformer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the exterior barrier layers of Bennett as outermost layers of Lee. This would allow for puncture resistance and liquid barrier properties (Bennett, Abstract, Par. 0034, and 0048).
Regarding claim 22, modified Lee teaches the reinforcement layer comprises the first and second elastomer layers on a front and back surface respectively and therefore teaches that the reinforcement layer is arranged between the first elastomer layer and the second elastomer layer (Lee, Pages 1-2). Modified Lee further teaches the flexible bag further comprises two external barrier layers as stated above for claims 8-9 (Bennett, Abstract, Par. 0002, 0008, 0013, 0034, and 0048). Modified Lee therefore teaches that the first and second elastomer layers and the reinforcement layer are arranged between the two barrier layers.
Additional references cited.
The following constitutes a list of references not utilized in the grounds of rejection above. However, the references are deemed pertinent to the claimed invention or to the invention as a whole. Consideration thereof is respectfully suggested.
Yokoto et al. (US 20100086769 A1) teaches a material comprising a core layer sandwiched between two rubber layers, wherein the rubber layers are vulcanized hydrogenated nitrile rubber (Yokoto, Abstract and Par. 0016-0017). Yokoto teaches that hydrogenated nitrile rubber is hydrogenated nitrile butadiene rubber (HNBR) (Yokoto, Par. 0016-0017).
Response to Arguments
Applicant’s remarks and amendments filed 12 March 2026 have been fully considered.
Applicant requests withdrawal of the rejection under 35 USC § 112 set forth in the previous office action.
The rejection under 35 USC § 112 set forth in the previous office action have been withdrawn due to Applicant’s arguments.
On pages 6-8 of the remarks, Applicant argues that Tokomitsu does not teach the rubber is a butadiene rubber. This is not found persuasive for the following reasons:
To note, the rejections under 35 USC § 102 in view of Lee have been withdrawn due to the present claim amendments. However, new grounds of rejection under 35 USC § 103 have been made above in view of Lee and Tokomitsu.
Tokomitsu teaches a rubber layer that is vulcanized (Tokomitsu, Par. 0007-0008). Tokomitsu teaches the vulcanized rubber can be multiple rubbers, including a nitrile rubber (NBR) (Tokomitsu, Par. 0007). NBR stands for nitrile butadiene rubber, and therefore Tokomitsu teaches the rubber used as a nitrile rubber is nitrile butadiene rubber. Tokomitsu further teaches the rubber layer may be a hydrogenated nitrile rubber (Tokomitsu, Par. 0007). Tokomitsu thus teaches a hydrogenated nitrile rubber wherein the nitrile rubber is nitrile butadiene rubber.
Furthermore, the rejection as stated above relies upon modifying Lee with Tokomitsu. Lee teaches the use of a vulcanized nitrile rubber that is a vulcanized nitrile butadiene rubber (Lee, Pages 2-5). Therefore, even if Tokomitsu is said to not specify the nitrile rubber is a nitrile butadiene rubber, Lee in view of Tokomitsu would teach a vulcanized hydrogenated nitrile rubber, wherein the nitrile rubber is nitrile butadiene rubber.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As stated above Lee in view of Tokomitsu teach a vulcanized hydrogenated nitrile butadiene rubber. Therefore, no knowledge gleaned only from Applicant’s disclosure is utilized in the rejection above.
For the reasons stated above, Lee in view of Tokomitsu render obvious rubber layers comprising a vulcanized hydrogenated nitrile butadiene rubber and Applicant’s argument is unpersuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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