DETAILED ACTION
The amendment filed on 05/11/2026 has been entered and fully considered. Claim 3 is canceled. Claims 1-2 are pending, of which claim 1 is amended.
Response to Amendment
In response to amendment, the examiner modifies rejection over the prior art established in the previous Office 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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over ISO20163 (International Standard, 2019) in view of ISO1407:2011 (international Standard, 2011), Suarez-Gomez et al. (J. Mater. Res. Technol., 2020) (Gomez) and Bushway et al. (J. Assoc. Off. Anal. Chem. 1988) (Bushway).
Regarding claim 1, ISO20163 teaches a method for quantification of free sulfur in a rubber composition (Title), the method comprising
Extract the free sulfur in the rubber composition with a solvent (page 1).
ISO20163 teaches that “A sample of vulcanized rubber is first extracted using an appropriate solvent according to ISO 1407:2011 (Method B)” (page 1).
But, ISO1407:2011 does not specifically disclose the name of the solvent.
However, Gomez teaches that toluene is a good solvent for exacting sulfur out of sulfur concentrate (Fig. 2, page 8118, par 9-11). Thus, it would have been obvious to one of ordinary skill in the art to use toluene as the solvent in the method of ISO20163, the result is predictable.
ISO20163 does not specifialy teach that wherein the free sulfur is detected using an ultraviolet-visible detector at a measurement wavelength of 280 to 330 nm.
However, Bushway identifies sulfur absorption peaks occurring around 280 nm (page 618, par 0). The claimed range encompasses 280 nm and therefore overlaps the wavelength taught by Bushway. Where the claimed range and the prior-art range overlap or where the claimed range encompasses a value expressly taught by the prior art, a prima facie case of obviousness exists. Optimization of detector wavelength to improve sulfur detection sensitivity and reduce interference would have been a routine matter within the ordinary skill of an analytical chemist.
ISO20163 is directed to determination of free sulfur in vulcanized rubber and expressly recognizes that the method is applicable to rubber compositions containing sulfur compounds. The presence of insoluble sulfur in a rubber composition constitutes a known material choice commonly employed in rubber compounding and vulcanization. Applicant's own specification acknowledges that insoluble sulfur is a conventional sulfur material used in the rubber industry. Therefore, the recitation that "the rubber composition contains insoluble sulfur" merely specifies a known sulfur-containing rubber composition and does not patentably distinguish over the applied art.
Regarding claim 2, ISO20163 teaches that wherein the quantification of free sulfur is performed by chromatography (HPLC) (page 5).
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the applied references fail to disclose a rubber composition containing insoluble sulfur and fail to teach the claimed ultraviolet-visible detector measurement wavelength of 280 to 330 nm. Applicant further argues that the claimed method achieves improved accuracy and unexpected results when quantifying free sulfur in rubber compositions containing insoluble sulfur.
The arguments are not persuasive. ISO20163 is directed to determination of free sulfur in vulcanized rubber and expressly recognizes that the method is applicable to rubber compositions containing sulfur compounds. The presence of insoluble sulfur in a rubber composition constitutes a known material choice commonly employed in rubber compounding and vulcanization. Applicant's own specification acknowledges that insoluble sulfur is a conventional sulfur material used in the rubber industry. Therefore, the recitation that "the rubber composition contains insoluble sulfur" merely specifies a known sulfur-containing rubber composition and does not patentably distinguish over the applied art. See MPEP §2144.04 regarding discovery of an optimum value or workable range of a result-effective variable.
Applicant further argues that Bushway merely scans from 200 nm to 300 nm and therefore does not teach the claimed wavelength range of 280 to 330 nm. However, Bushway identifies sulfur absorption peaks occurring around 280 nm. The claimed range encompasses 280 nm and therefore overlaps the wavelength taught by Bushway. Where the claimed range and the prior-art range overlap or where the claimed range encompasses a value expressly taught by the prior art, a prima facie case of obviousness exists. Optimization of detector wavelength to improve sulfur detection sensitivity and reduce interference would have been a routine matter within the ordinary skill of an analytical chemist.
Applicant's allegation of unexpected results is also not persuasive. The evidence relied upon in the specification compares a specific toluene extraction procedure against a comparative THF extraction procedure. The claims, however, are not limited to the specific experimental conditions, chromatographic parameters, rubber formulations, sulfur concentrations, or detector settings used in the examples. Consequently, the asserted results are not commensurate in scope with the breadth of claim 1. Moreover, reducing interference from a solvent peak by selecting a wavelength at which the analyte exhibits stronger absorbance relative to the solvent represents an expected result of routine analytical optimization.
Accordingly, the evidence of record is insufficient to outweigh the prima facie case of obviousness established by ISO20163, ISO1407:2011, Gomez, and Bushway. The rejection under 35 U.S.C. 103 is therefore maintained.
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 XIAOYUN R XU, Ph. D. whose telephone number is (571)270-5560. The examiner can normally be reached M-F 8am-5pm.
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/XIAOYUN R XU, Ph.D./ Primary Examiner, Art Unit 1797
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