DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 10/16/25, claims 11, 13, 16-19 are currently pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11, 13, 16-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 is indefinite due to the recitation “0.3 to 0.75 parts by weight or more”. It is not clear if the amount of the one or more antioxidant (A) is limited to 0.3 to 0.75 parts by weight, or if it extends beyond 0.75 parts. Claims 13, 16-19 are subsumed by referenced base claim 11 and are therefore, included in the rejection.
In view of the remarks dated 10/16/25 where Applicant appears to suggest that claim is amended to add an upper bound, Examiner interprets the amount of antioxidant in amended claim 11 as ranging from 0.3 to 0.75 parts by weight, per 100 parts by weight of ethylene/propylene-based rubber.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites the limitation “1 to 8 parts by weight of the ether ester-based plasticizer”. The recited range does not further limit the scope of amended claim 1 that recites a range of 1.2 to 3.0 parts by weight of an ether ester-based plasticizer (B).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 11, 13, 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 20200407532 A1), in view of Kono et al. (JP 10-270751 A, machine translation, of record), and as evidenced by https://www.finornic.com/45-methyl-2-mercaptobenzimidazole/.
Regarding claims 1, 13, 16, 17, Li teaches a composition comprising A) one or more ethylene/alpha-olefin interpolymers, such as EPDM interpolymer, B) an acid acceptor selected from MgO, ZnO or a combination thereof, in an amount of from 1 to 50 phr based on 100 of A) (Ab., [0005]-[0022], [0024]-[0025]).
Li further teaches said composition as comprising > 3.0 wt.% to < 6.0 of a combination of two or more antioxidants, such as first antioxidant and a second antioxidant in a wt. ratio of 0.20 to 0.80, wherein said first antioxidant may be an amine (p,p-dicumyl-diphenylamine), and the second antioxidant may be 2-mercaptoluimidazole or zinc-mercaptoluimidazole (read on benzimidazole-based antioxidant (A) ([0026], Table 4).
Li additionally teaches a peroxide curing agent [0027] and teaches that typical EPDM formulations include plasticizers [0004].
Disclosed Example 3 is drawn to a composition comprising EPDM (100 parts), VANOX CDPA (amine-based primary antioxidant, 1 part), VANOX MTI (second/synergist antioxidant, 2 parts), MAGLITE D (MgO, 10 parts), and a peroxide (TABLEs 3-5).
Li is silent on a composition comprising a plasticizer as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
In a related field of endeavor, the secondary reference to Kono is drawn to a peroxide crosslinkable EPDM rubber compositions useable as a seal composition, and comprising an ether-ester-based plasticizing compound. Disclosed ether-ester-based plasticizing compound is of the formula:
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wherein, R is an alkyl group, m is an integer of 4 to 8, n is an integer of 2 or more, such as Asahi RS products having a molecular weight of 500 to 900, and useable in an amount of 0.5 to 15 parts by weight, per 100 parts by weight of EPDM, for mold release effect, and providing optional heat resistance and settling resistance of the crosslinked EPDM containing the compound, without bleed out of the surface. Working Example 1 relies on RS 735 as the plasticizer, having a molecular weight of 850 (Overview, [0007]-[0009], Examples). It is noted that the instant disclosure teaches RS series plasticizer having 500 may be used [0029], with Example 1 relying on RS 735 plasticizer.
Given the teaching in Kono on the amount and advantages of EPDM rubber compositions comprising the disclosed plasticizer, and the teaching in Li on a first antioxidant and a second antioxidant in a wt. ratio of 0.20 to 0.80, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare compositions within the scope of Li, and including a plasticizer of type and in an amount within the scope of Kono, including those of the claimed invention. For instance, given the teaching in Li on the wt. ratio, a skilled artisan would have found it obvious to include 3 parts of an antioxidant, comprising 2.4 parts by wt. a first amine-based antioxidant, and 0.6 parts by wt. of a second antioxidant/synergist in Li’s formulations, and modify it with 1.2 to 3 parts by wt. Kono’s plasticizer, so as to provide for the disclosed advantages, including those capable of providing for the claimed weight ratio of (B)/(A) of 4.0 times or more as claimed.
Regarding claims 18 and 19, Li teaches crosslinked compositions for providing molded parts, such as hoses, belts and gaskets [0040]-[0041].
Response to Arguments
In view of the amendment dated 10/16/25, the rejections of record are withdrawn. Additionally, Applicant’s arguments with respect to claim rejections and applied art have been considered.
Although the rejections based on Nagaoka-Kono combination are withdrawn, the new grounds of rejection presented above rely on Li-Kono combination. Li teaches claimed (A) in an overlapping amount, in addition to other components recited in claim 11, and Kono provides a motivation for incorporating an ether-ester-based plasticizer that reads on claimed (B) in an overlapping range. A skilled artisan would have found it obvious to include (B) in any range, including in amounts that obviates the claimed ratio of (B)/(A), absent evidence of criticality for the claimed ratio.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights