DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/25/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Rejections - 35 USC § 112
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 2 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 2 depends from claim 1, and states that the first curable copolymer comprises 0.5 to 5.0 wt% dicyclopentadiene units. As amended, however, claim 1 states that the amount of dicyclopentadiene in the first curable copolymer is more than 1.0 up to 4.5 wt%. Claim 2 therefore does not include the limitation that the amount of dicyclopentadiene is in the range of greater than 1.0 to 4.5 wt%, but rather impermissibly broadens the scope of the parent claim with regards to the amount of dicyclopentadiene in the first curable copolymer.
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
Claims 1, 2, 4, 7-10, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al, WO2019/157687.
Wu discloses a composition made by combining (for claim 15) 30 to 40 wt% of a first ethylene/propylene/diene terpolymer (EPDM) and 60 to 70 wt% of a second EPDM (page 4: lines 9-11; page 8: line 29 to page 9: line 5; page 14: line 21). The prior art composition can comprise 26 to 42 wt% of the blend of the first and second EPDM (for claim 9) (page 10: lines 1-3) as well as a curing agent (for claim 9) (page 10: lines 10-11). The prior art composition can be crosslinked (i.e., cured) (page 13: line 25) (for claims 13, 14) and used in the production of articles (for claim 16) such as a coolant hose (for claims 13, 14, 18) (page 16: lines 24-26).
Regarding the claimed first curable ethylene copolymer: The prior art first EPDM is characterized by a weight average molecular weight (Mw) in the range of 250000 to 400000 g/mol, overlapping the claimed range (for claim 4) (page 3: lines 5-7), and has an ethylene content of 55 to 80 wt% (page 3: lines 1-3), overlapping the claimed range (for claims 1, 3); a (deduced) propylene content of 19.2 to 89 wt%, (for claims 1, 3); and a diene content of 0.2 to 0.8 wt% (for claims 1, 2) (page 2: lines 27-28). Said diene may be dicyclopentadiene (for claims 1, 2) (page 14: line 18). The prior art first EPDM therefore corresponds to the claimed first curable ethylene copolymer (for claim 1).
Regarding the claimed second curable ethylene copolymer: As noted above, the prior art composition comprises a second EPDM.
“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Wu teaches that the overall composition has an overall ethylene content of 40 to 70 wt% and diene content of 0.1 to 1.0 wt% (page 2: lines 6-11).
The prior art reads on a composition wherein the first and second EPDM are the only polymers present; the total amount of ethylene, propylene, and diene therefore is based on the amounts of those monomers in the first and second EPDM. Based on
the amounts of first and second EPDM in the prior art composition,
the amounts of each monomer in the first EPDM, and
the amounts of ethylene and diene in the overall composition,
an ordinary artisan can calculate that the prior art second EPDM has an ethylene content in the range of about 13 to 76.4 wt%, overlapping the claimed range (for claim 1); a propylene content in the range of 22.26 to 86.97 wt% (for claim 1); and a diene content of 0.03 to 1.34 wt%, overlapping the claimed range (for claim 1). Said diene may be ethylidene norbornene (for claim 1) (page 14: line 15).
Similarly, Wu teaches that 1) the overall composition may have a Mw up to 400,000 g/mol (page 4: lines 16-17) and 2) the first EPDM may have a Mw lower than 400000; an ordinary artisan will therefore recognize that the second EPDM can have a Mw greater than 4000000, overlapping the claimed range (for claim 7), in order to bring the Mw of the overall blend up to the prior art upper limit. The prior art second EPDM therefore corresponds to the claimed second curable ethylene copolymer (for claim 1).
Regarding the weight ratio of first ethylene copolymer to second ethylene copolymer: As noted above, the prior art composition comprises 30 to 40 wt% of the first EPDM and 60 to 70 wt% of the second EPDM. The weight ratio of first EPDM to second EPDM in the prior art composition therefore ranges from 30:70 to 40:60- i.e. about 1: 1.5 to 1: 2.33 (for claims 1, 8).
Wu does not specifically disclose the production of a composition wherein the first and second EPDM have diene contents in the claimed ranges.
Regarding the diene content of the first copolymer: It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). As noted above, the prior art first EPDM has an EPDM content up to 0.8 wt%. Given that 1) the difference between the prior art upper limit and the claimed lower limit is so small and 2) the overall prior art composition appears to be the same as claimed and is used for the same application as the claimed invention (e.g., a coolant hose), an ordinary artisan would reasonably expect that the properties of the prior art composition would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range.
Regarding the diene content of the second copolymer: It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
The prior art range overlaps the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition wherein the second EPDM comprises diene in the required amounts (for claim 1).
Regarding the claimed Mooney viscosity [ML 1+4, 100 °C] (for claim 10), elongation at tear (for claim 16), and change in tensile strength (for claim 17): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed above, the prior art renders obvious the production of a composition comprising the same polymers combined in the same amounts as the claimed invention. As the prior art composition appears to be the same as claimed , it is reasonably expected that its properties would not be materially different from those used to define the claimed invention. The burden is therefore shifted to the applicant to provide evidence of that the claimed properties would not be present in the composition taught by the prior art.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art composition has a lower diene content than the claimed invention.
As discussed earlier in this Action, the prior art first EPDM has an EPDM content up to 0.8 wt%. The difference between the prior art value and the claimed value is therefore small-i.e., less than 0.5 wt%. Given that 1) the difference between the prior art upper limit and the claimed lower limit is so small and 2) the overall prior art composition appears to be the same as claimed and is used for the same application as the claimed invention (e.g., a coolant hose), an ordinary artisan would reasonably expect that the properties of the prior art composition would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range; see Titanium Metals Corp. of America v. Banner cited earlier in this Action.
Applicant argues that the prior art does not explicitly disclose using a mixture of diene monomers, and that the sole disclosed embodiments only use ethylidene norbornene.
It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). As noted above, the composition of Wu comprises first and second EPDM; the prior art discloses that each EPDM independently comprises a polymerized diene (page 14: lines 1-2) which is chosen from a list of recited compounds. Further note that Wu teaches that
the diene can be chosen from a group consisting of four specific compounds, two of which are ENB and dicyclopentadiene both being named compounds (page 14: lines 24-26), and
the prior art composition may comprise a combination of two or more embodiments (page 14: lines 27-28).
Based on this disclosure, an ordinary artisan would recognize that it is within the scope of Wu to use first and second EPDM comprising different diene monomers, particularly given the fact that Wu does not contain any teaching(s) that specifically require that diene monomer in the first and second EPDM be the same compound. The mere fact that the prior art examples do not disclose the use of first and second EPDM having different dienes does not teach away from the broader disclosure which allows the first and second EPDM to have different diene comonomers.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). As noted above, Wu teaches dicyclopentadiene and ENB as two of four specific compounds singled out as embodiments of the diene used in the first and second EPDMs (page 14: lines 24-26). It therefore would have been obvious to prepare a composition comprising first and second EPDMs comprising these two compounds in view of the teachings of Wu.
Applicant argues that the claimed invention yields unexpected results, citing the results from the specification (Table 4: Example 3).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP 716.02(d)).
As reported in applicant’s specification (see Tables 1 and 2), the cited Example 3 is a 1:1 blend of a first EPDM comprising 1.2 wt% dicyclopentadiene and a second EPDM comprising 2.3 wt% ENB. In contrast, the claimed invention comprises a first EPDM wherein the dicyclopentadiene content is in the range of more than 1.0 up to 4.5 wt% and a second EPDM having an ENB content in the range of 1.1 to 2.3 wt% or 1.1 to 4.1 wt%, wherein the weight ratio of first to second EPDM is in the range of 10: to 1:10.The single example cited by applicant is not commensurate in scope with either the ranges for the amount of diene in each EPDM or the weight ratio of first to second EPDM. The cited data therefore does not demonstrate that the allegedly unexpected results may be obtained from all compositions within the scope of the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765