DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: The foreign priority is not in English, the claims are thusly given an effective date of the filing of the instant application: 5/2/23
Response to Argument
Applicant argues the silicon in claim 1 is structurally and functionally distinct from silicone oil of Lee. Applicant argues the silicone in claim 1 is a crosslinked solid silicone, not a mere optional additive. Applicant argues Lee suggests uncrosslinked silicone oil may be used and these two silicones are fundamentally different materials.
The Examiner disagrees. The claim merely claims “silicon”. There is no definition or structural features of such in the claims or in the specification. There is no disclosure in the specification that supports Applicant’s claim that their silicon is a crosslinked solid. Lee discloses silicone oil may be used and such currently meets the requirements of the instant claims. Arguments herein are thusly not persuasive.
Applicant argues the technical effects confirm this distinction wherein Comp Ex 2 (which includes silicone) has different properties compared to Comp Ex 1 (which does not include silicone).
The Examiner disagrees. The Comparative Examples are moot. First, there is no suggestion or disclosure that there is solid silicone therein. Second Lee discloses such may be included. Any showings of unexpected results must be commensurate in scope with the claims, thus if unexpected results were persuasive they would need to be shown for the breadth of the claims and the type and amount of key components would need to be claimed. As such arguments herein are not found persuasive.
Applicant argues Lee’s actual embodiment does not support the claimed ranges.
The Examiner disagrees. A reference is not limited to the exemplified embodiments. Lee embraces the claimed ranges as set forth in the rejection. As such Applicant’s arguments herein are not found persuasive and the rejection stands as previously set forth.
Applicant argues there is no motivation to select silicone oil from the list of additives.
The Examiner disagrees. Lee embraces the use of such, thus there is no motivation needed. Applicant’s arguments herein are thusly not found persuasive.
Applicant argues experimental evidence demonstrates the technical effects of the present invention.
The Examiner disagrees. The claimed invention is obvious in light of the teachings of Lee. Applicant can show (and claim) unexpected results, however the claims are currently embraced and arguments herein are thusly not found persuasive.
Applicant argues Kakarala and Yamaguchi are not relevant to the subject matter of claim 1 from which the rejected claims depend.
The Examiner disagrees. The elastomeric composition of Yamaguchi of EPDM, a thermoplastic resin that further may include styrene resins is close to the composition of Shah, and crosslinking accelerators are shown therein to assist in increasing the crosslinking of the composition. Kakarala discloses a composition comprising polypropylene, styrene elastomer and EPDM and while SEBS is not disclosed this is very similar to the base composition of Shah and discloses that up to 5 wt% surface modifier improves the scratch resistance. Thus, Kakarala and Yamaguchi each are found to be relevant to the claims and properly meet the dependent claims thereof. Arguments herein are not found persuasive.
Claim Rejections - 35 USC § 112
Rejection over Claim 4, and its dependents, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is overcome by amendment.
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, 7, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah (US 2003/0052431) in view of Lee (US 2009/0048282).
Elements of this rejection are as previously set forth reiterated below in its entirety in italics.
Shah discloses thermoplastic elastomeric compositions (title) comprising a blend of polypropylene (PP), styrene-ethylene-butylene-styrene (SEBS), ethylene-propylene-diene-monomer elastomers (EPDM), linear low density polyethylene, peroxide crosslinking agents and a crosslinking coagent (abstract).
The instant claim 1 calculates to the following wt%: 39-61% EPDM, 23-34 wt% PP, 1.5-7 wt% silicon, 15-20 wt% SEBS. The bolded/underlined wt% calculations are exemplified as follows: 80p EPDM+30p PP+2p silicon+20pSEBS = 132. 80pEPDM/132 = 61%, 20pPP/132 = 23 wt%. Similar calculations were done with 80p EPDM, 70pPP, 10p silicon and 40 parts SEBS, to obtain the above ranges.
Shah discloses the use of 5-50 wt% PP, 5-40 wt% SEBS, about 5 to about 40 wt% EPDM [0012], embracing the EPDM, PP and SEBS of claim 1.
Shah includes elements as set forth above. Shah discloses the composition to be used for automotive parts such as instrument panels, door panels, air bag covers [0003]. Shah does not disclose the use of silicon.
Lee discloses flame retardant thermoplastic elastomer compositions (title) comprising a polyolefin and styrene block copolymer (abstract), the polyolefin may be EPDM [0032], polypropylene [0032] and the styrene block copolymer may be SEBS [0048], thus akin to Shah. The composition may be used for automotive parts such as instrument panels, center panels, and other articles [0083], thus also akin to Shah. Lee discloses additives such as silicone oils (the same thing as silicon) to be added in amounts less than 50 parts per the resin [0076]. One of ordinary skill would recognize this to be a known additive for thermoplastic elastomer compositions that gives better surface quality and/or improves the melt flow or other mechanical properties of the blend.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Shah the use of less than 50 parts silicone oil per 100 parts resin, as taught by Lee, since it is a recognized in the art as a suitably known additive for thermoplastic elastomer materials comprising polyolefins and styrene copolymers and/or to improve the surface quality and/or the mechanical properties of the blend. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its
It is the Examiner’s position the above parts by weight of resin of Lee embraces the instant claims. Further, less than 50 parts per resin of Lee coverts to less than 33 wt% based on the resin, embracing the silicon requirements of claim 1
Elements above embrace and render prima facie obvious all the elements of claim 1. Shah discloses wherein the EPDM is 65-75% ethylene, 1-7wt% conjugated diene such as norbornene (which stems from ethylidene norbornene) the remaining being propylene [0027], as required by claim 2. The above mentioned automotive articles meet claims 7 and 10 wherein “for vehicle mounts” is the future intended use, any of the panels discussed above are mounted, thus meeting this requirement.
Claim(s) 3-6, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah in view of Lee in further view of Yamaguchi (US 2018/0100061) and Kakarala (US 2004/0044111).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Shah and Lee include elements as set forth above. Instant claims 3 and 4 require all of the additives therein. Discussed components above include: EPDM, PP, silicon, SEBS.
Shah discloses the use of peroxide crosslinking agent in amounts of about 1-12 wt% [0021] (embracing the crosslinking agent of claim 4), crosslinking coagent is about 1-8wt% [0021] (embracing the crosslinking accelerator of claim 4), antioxidant in amounts up to 3 wt% [0032] (embracing the antioxidant of claim 4) and up to 3 wt% UV stabilizer [0022] (embracing the UV stabilizer of claim 4), these all embrace/overlap the parts by weight of instant claim 4.
Shah does not disclose the use of a lubricant, filler or plasticizer. Lee (as set forth above) also discloses the use of less than 50 parts per 100 parts polymer composition of lubricant [0076], less than 50 parts filler [0076] and 10-250p per 100 polymer composition of plasticizer [0050], these all embrace/overlap the parts by weight requirements of claim 4.
One of ordinary skill recognized that lubricants reduce friction and improve fluidity and/or mold release, fillers impart different mechanical properties to the composition and/or reduce the cost of the composition, plasticizers make compositions more flexible.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Shah the use of lubricants, fillers and plasticizers, as taught by Lee, in order to reduce friction, improve fluidity and/or mold release, improve mechanical properties and/or decrease costs and make the composition more flexible.
Shah and Lee include elements as set forth above. Shah discloses the use of peroxides as crosslinking agents [0029]. Shah does not disclose the use of cure assistants. Yamaguchi discloses thermoplastic elastomer compositions (title) comprising a rubber component such as EPDM [0038], a thermoplastic resin component such as polypropylene [0048] that may further include styrene resins such as SE/BS [0107], thus close to the thermoplastic composition of Shah and Lee. The composition is crosslinked using peroxides [0059], the same as Shah. The composition may include cure accelerators in amounts of less than 1 wt% [0062], embracing/overlapping the crosslinking assistant and parts by weight of claim 4. One of ordinary skill would recognize that an accelerator assists in increasing crosslinking.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Shah and Lee the use of less than 1 wt% crosslinking accelerator (meeting the claimed crosslinking assistant), as taught by Yamaguchi, in order to assist in increasing crosslinking in the composition.
Shah and Lee include elements as set forth above. Shah does not disclose the use of surface modifiers. Kakarala discloses thermoplastic polyolefin compositions (title) comprising polypropylene, a styrene elastomer and an ethylene copolymer (abstract). The ethylene copolymer may be EPDM [0019]. Whilst SEBS is not disclosed one can see that this is a very similar base composition to that of Shah. Kakarala discloses the use of up to 5 wt% surface modifier in the composition to improve scratch resistance [0020].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Shah and Lee the use of up to 5 wt% surface modifier, as taught by Kakarala, in order to improve scratch resistance of the composition.
Elements above meet all the composition requirements of claims 3-4. The properties of claims 5-6, 8-9 are deemed to be embraced by the composition since the above references embrace parts by weight of the components of the claims. if there is any difference between the above composition and the composition of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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