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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 5, 7, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JPH 05271474) in view of Parker (US 5,221,714), Hui et al. (US 2022/0369037), and Basu et al. (US 2013/0150501).
Regarding claims 1, 2 and 5, Saito et al. teaches a rubber composition comprising hydrogenated nitrile rubber, e.g. a hydrogenated rubber of an acrylonitrile-butadiene copolymer rubber (See Abstract, page 2, paragraph 7) and a peroxide crosslinking agent, i.e. vulcanizing agent, in an amount of 0.2 to 6 parts by wt (bottom of page 2). The rubber composition can be used for diaphragms (paragraph [0024]). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); see MPEP 2144.05.
Saito et al. fails to teach the rubber compound comprising nitrile rubber and hydrogenated nitrile rubber.
However, Parker teaches a viscoelastic rubber material comprising about 80 to about 50 phr of a nonhydrogenated latex including an acrylonitrile-butadiene copolymer latex and from about 20 to about 50 phr of a hydrogenated nitrile latex (See Abstract, col. 1, line 61-col. 2, line 31).
It would have been obvious to one of ordinary skill in the art to use a blend of nitrile rubber and hydrogenated nitrile rubber in the rubber composition of Saito et al. in order to impart superior ozone resistance and processing properties (Parker, col. 1, lines 45-50).
Saito et al. fails to teach content of acrylonitrile blocks.
However, Hui et al. teaches a diaphragm comprising at least one elastomer layer, wherein the elastomer layer is made of a hydrogenated nitrile butadiene rubber polymer; and the hydrogenated nitrile butadiene rubber polymer comprises acrylonitrile blocks, content of the acrylonitrile blocks in the hydrogenated nitrile butadiene rubber polymer ranging from 10 wt % to 70 wt % (See Abstract) which falls within the claimed range of 20 to 80%.
It would have been obvious to one of ordinary skill in the art to use an amount of acrylonitrile blocks including that presently claimed in the rubber composition of Saito et al. in order to resist permanent deformation and breakage and impart excellent rubber elasticity (Hui et al., paragraph [0040]).
Saito et al. fails to teach wherein the filler is carbon black.
However, Basu et al. teaches an elastomeric composition (See Abstract) comprising at least one primary elastomer including rubber (paragraph [0073]), one or more fillers including carbon black (paragraph [0077]) in an amount of at least about 5 phr and/or not more than 60 phr (paragraph [0078]) and having an average particle size that is approximately 5 µm or less (based on paragraphs [0091] and [0093] which disclose the fillers can have an average particle size that is not more than about 50, 40, 30, 20, or 10 percent of the average particle size of the cellulose ester particles in the elastomeric composition, i.e. a diameter of not more than about 10, 8, 5, 4, 3, 2, or 1 µm).
It would have been obvious to one of ordinary skill in the art to use carbon black in the rubber of Saito et al. in order to improve the thermophysical properties of the elastomeric composition (Basu et al., paragraph [0077]).
Given that Saito et al. in view of Parker, Hui et al., and Basu et al. teaches diaphragm comprising materials and structure including hydrogenated nitrile butadiene rubber polymer and carbon black identical to that presently claimed, the diaphragm would necessarily have a tear strength and damping factor as presently claimed, absent evidence to the contrary.
It is noted the limitation “diaphragm” is merely a statement of intended use. Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. diaphragm, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention and further that the prior art structure which is a diaphragm identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 7 and 9, given that Saito et al. teaches hydrogenated nitrile butadiene rubber polymer identical to that presently claimed, the hydrogenated nitrile butadiene rubber polymer would necessarily have a tensile strength and operating temperature, as presently claimed, absent evidence to the contrary.
Regarding claim 11, given that Saito et al. teaches diaphragm comprising materials and structure including nitrile rubber and hydrogenated nitrile rubber in ratio as claimed, the diaphragm would necessarily have a density as presently claimed, absent evidence to the contrary.
Alternatively, it would have been obvious to one of ordinary skill in the art to control the density of the diaphragm to values including that presently claimed in order to product a diaphragm with the desired weight depending on application.
Regarding claim 12, Saito et al. necessarily meets wherein the diaphragm is selected from the group consisting of a single-layer diaphragm composed of a hydrogenated nitrile butadiene rubber polymer diaphragm layer; and a composite diaphragm comprising two, three, four or five diaphragm layers including at least a hydrogenated nitrile butadiene rubber polymer diaphragm layer.
Claim(s) 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JPH 05271474) in view of Parker (US 5,221,714), Hui et al. (US 2022/0369037), and Basu et al. (US 20130150501) and further, in view of Liao et al. (CN 106957466).
Saito et al. in view of Parker, Hui et al., and Basu et al. is relied upon as disclosed above.
Regarding claim 6, Saito et al. teaches peroxide crosslinking agent, i.e. vulcanizing agent (bottom of page 2) but fails to teach a co-crosslinking agent as claimed.
However, Liao et al. teaches a diaphragm for electroacoustic system, wherein the diaphragm is composed of nitrile rubber and/or hydrogenated rubber and is vulcanized (See Abstract, page 2). Liao et al. teaches further comprising one or more of vulcanizing auxiliary agent, anti-aging agent, processing auxiliary agent, releasing agent and surfactant. vulcanizing agent, vulcanizing agent, anti-aging agent, processing auxiliary agent, parting agent and active agent are common agent sold in the market, e.g., DCP and TAIC (page 5) which is triallyl isocyanurate.
It would have been obvious to one of ordinary skill in the art to include triallyl isocyanurate in the rubber composition of Saito et al. in view of Parker, Hui et al., and Basu et al. in order to enhance processability.
Regarding claim 13, Saito et al. in view of Parker, Hui et al., and Basu et al. fails to teach a sound generating device as claimed.
However, Liao et al. discloses it is well known that generally an electroacoustic device comprises a vibrating system, a magnetic circuit system and a protective shell, wherein the diaphragm is in the vibrating system (Background technology, page 2). Therefore it would have been obvious to one of ordinary skill in the art to use the diaphragm of Saito et al. in view of Parker, Hui et al., and Basu et al. in a sound generating device as taught by Liao et al. and thereby arrive at the presently claimed invention.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Applicant amended claim 1 to recite the lower range of content of acrylonitrile blocks to be 50% instead of 20% and included limitations from cancelled claims 8 and 10.
Applicant argues that when the acrylonitrile content exceeds 80%, the resilience drops significantly (from 78% to 62%), indicating that 80% is an upper limit for maintaining the elasticity required for a diaphragm and, conversely, contents below 50% yield inferior tensile strength and points to Table 1.
However, it is not clear the data in Table 1 is commensurate in scope with the scope of the present claims. For example, the examples do not disclose hydrogenated nitrile rubber while the claims require hydrogenated nitrile rubber. Further, the examples do not disclose filler including type of particle, amount of particle, or size of particle, while the claims require carbon black in an amount of 5% to 60% and size of 10 nm to 10 µm.
Applicant argues that no reference discloses all the specific performance metrics while utilizing a 50-80% ACN matrix.
However, given that Saito et al. in view of Parker, Hui et al., and Basu et al. teaches diaphragm comprising materials and structure including acrylonitrile content and carbon black identical to that presently claimed, the diaphragm would necessarily have the properties as presently claimed, absent evidence to the contrary.
Applicant argues that contrary to the Examiner's assertion the data in Table 3 does not support a simple linear trend. The cited references also fail to teach that the 10 nm lower limit is a processing feasibility boundary below which severe agglomeration and poor dispersibility render the material impractical.
However, while there is no explicit disclosure of damping and tear strength, given that Saito et al. in view of Parker, Hui et al., and Basu et al. teaches diaphragm including carbon black identical to that presently claimed, the diaphragm would necessarily have the properties as presently claimed, absent evidence to the contrary. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Lastly, the fact remains the particle size taught as by the cited references overlaps that presently claimed.
Applicant argues that the data in Table 3 reveals a distinct non-linear degradation of properties and indicates a significant change in the rate of property degradation at larger particle sizes.ee
Regarding Applicant’s argument with respect to Table 3, Applicant’s arguments are noted. However, the data is still not persuasive given that the data is not commensurate in scope with the scope of the present claims. For example, the examples do not disclose hydrogenated nitrile rubber while the claims require hydrogenated nitrile rubber. Further, the examples do not disclose amount of filler used, while the claims require 5% to 60%.
Applicant argues that Basu fails to teach the specific absolute range and defines filler size relative to cellulose ester particles (e.g., <10% of cellulose ester size).
However, while Basu defines particle size relative to size of cellulose ester, the fact remains that one can calculate the size of the carbon black particles. Further, the motivation provided by Basu applies to the carbon black only and therefore, the combination is proper.
Applicant argues that the Examiner has ignored the processing lower limit. The claimed range represents a specific range balancing processability (>10 nm) and mechanical reliability, a balance neither taught nor suggested by Basu.
However, the fact remains the particle size disclosed by Basu overlaps that presently claimed. Further, “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
Applicant argues that the cited references do not teach or suggest the use of 10 nm to 10 pm carbon black in a 50%-80% ACN matrix to achieve the specific balance of damping and tear strength.
However, given that Saito et al. in view of Parker, Hui et al., and Basu et al. teaches diaphragm comprising materials and structure including acrylonitrile content and carbon black identical to that presently claimed, the diaphragm would necessarily have the properties as presently claimed, absent evidence to the contrary.
Applicant argues that in a single-layer rubber diaphragm, simultaneously maintaining a tear strength of 15-100 N/mm, and a damping factor > 0.15, while using a 50%-80% acrylonitrile matrix, this specific combination constitutes a synergistic effect not taught by the cited references.
However, given that Saito et al. in view of Parker, Hui et al., and Basu et al. teaches diaphragm comprising materials and structure including acrylonitrile content and carbon black identical to that presently claimed, the diaphragm would necessarily have the same synergistic effect, absent evidence to the contrary.
Applicant argues that one of ordinary skill in the art would have no reason to combine their teachings so as to produce the specific formulation defined in Claim 1.
However, there is motivation to combine in the references themselves as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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