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
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 and 7-12 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), Onuma et al. (JP 2011084720), and Basu et al. (US 20130150501).
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, Onuma et al. teaches a rubber composition for diaphragm comprising a hydrogenated nitrile rubber (HNBR) having a middle-high to high acrylonitrile content of 31-42 wt% (See Abstract, page 3) 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 obtain the desired rubber properties and hardness (Onuma et al., page 3).
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]).
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, 8, 9, and 10, 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, tear strength, operating temperature, damping factor and density 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), Onuma et al. (JP 2011084720), and Basu et al. (US 20130150501) and further, in view of Liao et al. (CN 106957466).
Saito et al. in view of Parker, Onuma 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, Onuma et al., and Basu et al. in order to enhance processability.
Regarding claim 13, Saito et al. in view of Parker, Onuma 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, Onuma 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 10/07/2025 have been fully considered but they are not persuasive.
Applicant amended claim 1 to include limitations from cancelled claims 3 and 4, including wherein the filler is carbon black.
Applicant argues that nowhere do Saito, Parker, Onuma, and Liao teach or even suggest the amendments of claim 1.
It is agreed which is why Basu et al. is used to teach the claimed limitation.
Applicant argues that Table 3 shows the effect of difference sizes of filler on various properties and thus unexpected technical results.
However, these results do not appear unexpected given that there appears to be an expected inverse linear relationship between the sizes of carbon black and the various properties of specific surface area, tear strength, 100% tensile modulus, and resonant frequency. Clarification is requested.
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 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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