DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/23/26 has been entered.
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 4/23/26, claims 11, 17-19 are currently pending in the application.
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, 17-19 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) and Ejiri et al. (EP 1972658 A1), and as evidenced by https://www.finornic.com/45-methyl-2-mercaptobenzimidazole/ (references of record),
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 ([0026], Table 4).
Li additionally teaches a peroxide curing agent [0027], that typical EPDM formulations include plasticizers [0004], and use of the disclosed compositions for a variety of molded articles, including gaskets [0062].
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). Per evidence link, Vanox MTI is 2-mercaptoluimidazole.
Li is silent on a composition comprising a (1) plasticizer and (2) secondary surfactant 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.
Regarding (1), 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 (reads on (B)), 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.
Regarding (2), noting that primary reference to Li teaches 2-mercaptoluimidazole or zinc-mercaptoluimidazole as suitable secondary antioxidants, the secondary reference to Ejiri is drawn to stabilized vulcanizable rubber compositions comprising a combination of a diaryl secondary monoamine antioxidant (B) and a mercaptobenzimidazole antioxidant (C) to stabilize the rubber component (A). Disclosed genus of mercaptobenzimidazole antioxidants (C) include 2-mercaptobenzimidazole, 2-mercaptomethylbenzimidazole (2-mercaptoluimidazole) and 2-mercaptomethyl benzimidazole zinc salt (zinc-mercaptoluimidazole), with 2-mercaptobenzimidazole being the preferred species for improving heat resistance of a vulcanizable rubber, i.e., equivalence of the mercaptobenzimidazoles (Ab, [0029]-[0033]).
Given the teaching in Kono on the amount and advantages of disclosed plasticizer in EPDM rubber compositions the teaching in Ejira on 2-mercaptobenzimidazole 2-mercaptomethylbenzimidazole as being equally suitable as a mercaptobenzimidazole antioxidant, and the teaching in Li on a first antioxidant and a second antioxidant in a wt. ratio of 0.20 to 0.80 for stabilizing EPDM rubber, 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 by substituting 2-mercaptoluimidazole or a zinc salt thereof with 2-mercaptobenzimidazole, and including Kono’s plasticizer within the prescribed amount, including those of the claimed invention. For instance, a skilled artisan would have found it obvious to prepare EPDM rubber compositions comprising, per 100 part of rubber, 3 parts of an antioxidant comprising 2.4 parts by wt. a first amine-based antioxidant and 0.6 parts by wt. of 2-mercaptobenzimidazole as a second antioxidant/synergist (claimed (A)), and further modify it with 3 parts by wt. Kono’s plasticizer (claimed (B)), .i.e., (B)/(A)=5, so as to provide for the disclosed advantages.
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 and new grounds of rejections are presented herein above. Applicant’s arguments and the Affidavit dated 4/23 have been duly considered.
Applicant’s arguments focus on the unexpected results. Referring to the Declaration and the data therein on new Examples 5 and 6 (Table 1), and to the new recitation of an antioxidant (A) as mercaptobenzimidazole and a molecular weight range for the ether-ester based plasticizer (to 500 to 900) in claim 11, Applicant states that the content of antioxidant (A), the ether-ester plasticizer (B) and the weight ratio of (B)/(A) in claim 11 are more commensurate with the unexpected results shown. Applicant submits that the present specification, along with the additional results in the Declaration, contain unexpected results sufficient to overcome a prima facie case of obviousness.
In considering the Declaration, the description of the new Examples therein is presented below:
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i.e., while both are referred to as New Example 5, one Example has 1.5 parts by weight of ADK-CIZER RS 1000 and the other has 3.0 parts by weight of the same component. Additionally, Table A includes data on Examples 5 and 6, with Example 5 having 3.0 parts by weight of (B) (plasticizer) and Example 6 also having 3.0 parts by weight of (B) (plasticizer). Thus, given that there is conflicting information in the Declaration, Examiner has relied only on the data in the disclosure in considering nonobviousness.
Based on the data in the disclosure, Examiner agrees that one or more superior properties are demonstrated by the compositions of inventive examples 1-4 over comparative Examples 1-5. However, the data is limited to compositions comprising ADK CIZER RS 735 having a specific molecular weight as the ether ester-based plasticizer (B), and to a (B)/(A) ratio ranging from 4.3 to 10. Therefore, Examiner maintains that the data is not reasonably commensurate in scope with claim 11 which is of a much broader scope.
Conclusion
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