DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 04/20/2023. With entry of the concurrently filed preliminary amendment, claims 1-18 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 04/20/2023 and 05/09/2024 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Common Ownership Notice
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections – 35 U.S.C. 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.
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.
Claims 1-8, 10-13, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP2017057240A (‘JP ‘240’) (citing infra to corresponding machine-generated translation, of record) in view of Song et al (US 2012/0328683 A1) (‘Song’).
Regarding Claims 1-6, 8, and 17; JP ‘240 has already disclosed a crosslinked molded article obtained by curing a rubber composition comprising: (i) butyl rubber, which is a copolymer of isobutylene (for present claim 8) and isoprene (see claim 1 and ¶ [0015]); (ii) an antibacterial agent; and (iii) a crosslinking agent (see claims 1, 18 and ¶ [0078]). JP ‘240 differs from the aforementioned claims in failing to further disclose a polymerizable antibacterial monomer represented by Chemical Formula 1. Nevertheless, in analogous art directed to antimicrobial compounds and compositions comprising the same, Song teaches that antimicrobial properties can be imparted to materials or substrates by incorporating within or on the same an antimicrobial oligomer obtained from aminoalkyl (meth)acrylates (see ¶¶ [0012], [0016]), most preferably tert-butylaminoethyl (meth)acrylate (tBAEMA) (i.e.,
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) (see ¶¶ [0049]-[0050]), wherein tBAEMA corresponds to Chemical Formula 1 in present claims 1 and 6 where: R1 = R2 = hydrogen and R3 = methyl (for present claims 1/2); R4 = tert-butyl (for present claims 1/3); R5 = hydrogen (for present claims 1/4) and L1 = ethylene (for present claims 1/5). In particular, Song teaches that the antimicrobial oligomer may be incorporated in or on a diverse range of materials including rubbers (see ¶ [0092]) and may be used as antimicrobial coatings (see ¶¶ [0153]-[0154], [0160]).
In light of JP ‘240’s similar aim of imparting an antimicrobial property to its rubber composition (see ¶ [0049]), it would have been obvious to one of ordinary skill in the art to modify JP ‘240 by including in the disclosed curable rubber composition an antimicrobial monomer as per Song. Such application of the known antimicrobial monomer of Song to the curable rubber composition of JP ‘240 would have been expected to yield predictable results to one of ordinary skill in the art prior to the effective filing date of the present application, at least in terms of further enhancing or improving the antimicrobial activity of the ultimate crosslinked article.
Regarding Claim 7, JP ‘240 in view of Song renders obvious the antibacterial polymer of claim 1 as discussed above. As to claimed amount of the polymerizable antibacterial monomer, Song further teaches that the amount of the antimicrobial oligomers present in or on materials such as polymers may range from 0.01% to 100%, preferably from 1% to 20% by weight (see ¶ [0205]). The disclosed ranges substantially overlap the claimed range for amount of the corresponding monomer, and it has consistently been held that even a slight overlap in ranges establishes a prima facie case of obviousness (see MPEP 2144.05).
Regarding Claim 10, JP ‘240 in view of Song renders obvious the antibacterial polymer of claim 1 as discussed above, and JP ‘240 further discloses that the butyl rubber molecules typically have a weight average molecular weight of 50,00 to 1,000,000 g/mol (see ¶ [0015]), which range is fully encompassed by the claimed range of 50,000 g/mol or more and 2,000,000 g/mol or less.
Regarding Claim 11, JP ‘240 in view of Song renders obvious the antibacterial polymer of claim 1 as discussed above. JP ‘240 further discloses specific multifunctional (meth)acrylates among a relatively small number of alternative selections for co-crosslinking agent (see ¶ [0037]). The disclosed alternatives are seen to constitute an acceptable number to form a reasonable expectation of success (see MPEP 2143(E)) such that those of ordinary skill may select multifunctional (meth)acrylate monomers, as claimed, through routine testing on the basis of the defined agents and the desired crosslinking characteristics of the rubber composition.
Regarding Claims 12 and 18, JP ‘240 in view of Song renders obvious the antibacterial polymer of claim 1 as discussed above. JP ‘240 further discloses that release film is arranged on both surfaces of the crosslinked molded article in sheet form (see ¶ [0081]). And in the case of a sheet, JP ‘240 discloses the thickness is preferably 0.1 mm (= 100 µm) to 100 mm (see ¶ [0080]). Inasmuch as the disclosed thickness range substantially overlaps the thickness range disclosed herein for a film coating layer (e.g., 100 µm or more; cf., Spec., page 22, second para.), present claims 12 and 18 are deemed readable on film thicknesses within the disclosure of JP ‘240.
Regarding Claim 13, JP ‘240 in view of Song renders obvious the antibacterial film of claim 12 as discussed above, and JP ‘240 further discloses that tackifiers, such as petroleum-based resin, can be used as an additional additive (see ¶ [0076]). In light of such disclosure, it would have been obvious to one of ordinary skill in the art to further modify JP ‘240 by including in the disclosed curable rubber composition in sheet form a tackifier, as claimed.
Regarding Claims 15 and 16, JP ‘240 in view of Song renders obvious the antibacterial film of claim 12 as discussed above. Song further teaches (see Example 5) that the described antimicrobial composition exhibits antimicrobial activity against Gram-negative bacteria, specifically against Escherichia coli. In light of this teaching, an artisan of ordinary skill would have reasonably expected that the proposed modification of JP ‘240 to include in the disclosed curable rubber composition an antimicrobial monomer as per Song will yield a crosslinked molded product in sheet form that exhibits the requisite antibacterial activity as claimed.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘240 in view of Song as applied to claim 1 above, and further in view of Chen et al (US 2009/0286948 A1) (‘Chen’).
Regarding Claim 9, JP ‘240 in view of Song renders obvious the antibacterial polymer of claim 1 as discussed above. Neither JP ‘240 nor Song directly disclose wherein the butyl-based rubber includes the butene-derived repeating unit and the isoprene-derived repeating unit at a weight ratio of 90:10 or more and 99:1 or less. Song instead teaches an isoprene content in the butyl rubber constituting rubber (A) of from 0.001 to 20 mole percent, preferably from 1.8 to 2.3 mole percent (see ¶ [0015]); this reflects the use of a minor amount of isoprene consistent with the customary common syntheses of butyl rubber in the prior art, i.e., 1-3% isoprene or monomer mixtures comprising 95-99.5 percent isobutylene and 0.5-5 wt. percent isoprene as taught by Chen (see ¶¶ [0002], [0008]). Guided by the common general knowledge concerning relative proportions of butene-derived and isoprene-derived repeating units in a butyl rubber, it would have been obvious to one of ordinary skill in the art to further modify JP ‘240 by adjusting the ratio of butene-derived and isoprene-derived repeating units in the rubber (A) to a weight ratio within the claimed range, with a reasonable expectation of obtaining an equivalent crosslinked molded product.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘240 in view of Song as applied to claim 1 above, and further in view of Rodgers et al (US 9062189 B2) (‘Rodgers’).
Regarding Claim 14, JP ‘240 in view of Song renders obvious the antibacterial film of claim 13 as discussed above. Neither JP ‘240 nor Song directly disclose wherein the tackifier is a hydrogenated DCPD-based resin, as claimed. However, JP ‘240 does teach petroleum-based resins as a tackifier that can also be blended with the rubber composition (see ¶ [0076]). Hydrogenated DCPD-based resin tackifiers fall within the disclosed class of petroleum-based resins, and their utility in improving tack of elastomeric compositions such as butyl rubber is well known in the art as taught by Rodgers (see, e.g., col. 4, lines 16-26; col. 6, lines 2-10; and col. 8, lines 4-7). In light of Rodgers’ teaching, one would have reasonably expected a hydrogenated DCPD-based resin to be suitable as the tackifier of JP ‘240. Thus, to further modify JP ‘240 by selecting as a tackifier of the disclosed rubber composition, a hydrogenated DCPD-based resin as per Rodgers would have been prima facie obvious to one of ordinary skill in the art, as such modification merely involves the straightforward use/selection of a known material to perform its previously established function (butyl rubber tackifier) in an analogous context. Indeed, the selection of a known element/material based on its suitability for its intended use has been held to be prima facie obvious (see MPEP 2144.07).
Conclusion
Claims 1-18 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/09-26-25