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 .
Response to Arguments
In response to the non-final Office Action (dated 24 March 2026), the Applicant submits the following:
-- Claims 1-5, 7, 8, 10-12, 14 & 16 have been amended.
-- No claims have been canceled.
-- New claim 20 has been added, further limiting the first & second liquid rubbers to be liquid polybutadienes.
The arguments provided by the Applicant have been thoroughly review & fully considered but are ultimately found unpersuasive in view of the amended claims.
The Applicant argues against Motoda, stating Motoda teaches against the new limitation of comprising "…a second liquid rubber, having a 1,2-vinyl proportion of more than 50%...", and points to [0095] & [0099] where Motoda states: If the vinyl content exceeds 50wt.%, the rubber composition tends to be deteriorated in flexibility at low temperatures (Remarks, p. 8, top paragraph).
The cited portion of Motoda referenced by the Applicant relates to a different component of the composition disclosed in the prior art. The non-final rejection recites the 1,2-vinyl content of the liquid rubber component (A), in contrast to paragraphs [0095] & [0099], which relate to a solid rubber component (B). Motoda does not teach away from a vinyl content within the claimed range for a liquid rubber component (A).
Applicant states claim 8 has been canceled in light of the amendment to claim 1 (Remarks, p. 8, bottom third), however claim 8 remains as amended. It is not clear if the Applicant intended to cancel or amend claim 8, as statements of both are present.
The Applicant states that the dependent claims are deemed allowable by virtue of their dependence on the amended claim 1 (Remarks, p. 8 & 9).
The remaining arguments are considered moot in view of the rejection of the claims detailed herein.
This rejection is FINAL.
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.
Claims 9 & 10 are rejected under 35 U.S.C. § 112(d) for failing to further limit the claim from which it depends.
Regarding claims 9 & 10, the amended independent base claim 1 now further requires a first liquid rubber, having a 1,4-cis proportion of greater than 80%, and a second liquid rubber having a 1,2-vinyl proportion of greater than 50% (Claim 1, lines 2-4). The instant claim 9, however, requires the rubber to be solid (Claim 9, lines 2 & 3). Thus, claim 9 fails to limit the claim from which it depends. As claim 10 is dependent upon claim 9, claim 10 inherits this failure to further limit the claim from which it depends & is therefore similarly rejected.
Claims 1, 2, 4-6, 8, 9, 11-15, 17, & 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Motoda et al. (US 2020/0308313 A1) in view of Creighton (US 4,600,745 A) and Kondos et al. (US 2017/0152369 A1).
Regarding claims 1, 8, 17 & 20, Motoda teaches modified liquid diene rubbers and rubber compositions suitable for use as an adhesive or sealing material (p. 1, [0008]), especially in automotive bodies (p. 11, [0162]). Preferable liquid diene rubbers include maleic anhydride-modified liquid polybutadiene and/or maleic anhydride-modified liquid polyisoprene (p. 3, [0059]). Motoda elaborates on the liquid diene rubbers, expressly stating said liquid rubbers may be used singly or two or more in combination. Motoda also discloses the 1,2-vinyl content is preferably not more than 90% (p. 5, [0081]). The invention also comprises a vulcanization accelerator & vulcanization aid, which may be used alone or in combination (p. 9, [0135], [0138], [0139]). Motoda does not teach a liquid rubber having a 1,4-cis content greater than 80% as required by the claim.
In the same field of endeavor, Creighton teaches adhesive compositions comprising a liquid polybutadiene (Abstract). Creighton states higher molecular weight polymers give properties with a better combination of strength and flexibility, whilst low viscosity polymers accept higher filler loadings and give compositions which may more easily be pumped. Creighton discloses liquid polybutadienes having 1,4-cis proportions of 70% - 90% (col. 3, lines 42-49).
It would have been obvious to one of ordinary skill in the art at the time of filing to follow Motoda by having one liquid rubber with a 1,2-vinyl content of no more than 90% and incorporate a second liquid diene rubber with a 1,4-cis content of 70% - 90%, as liquid polybutadiene rubbers abiding by these characteristics are shown by the prior art to be suitable for use in this capacity. As Motoda discloses various examples wherein the liquid diene rubbers are present in amounts in the range of 5.3% – 11.1%, modifying Motoda in view of Creighton as detailed above will thus comprise the first and second liquid diene rubbers in amounts of 5.3% – 11.1%, as required by the claim.
Motoda discloses the invention may further comprise pigments (p. 11, [0173]), however, both Motoda & Creighton are silent on pigments that abide by the corrosion protection pigment, as defined (Specification, p. 8, [0037]), as required by the claims.
In the same field of endeavor, Kondos teaches reactive compositions suitable for use in coatings, sealants, adhesives (p. 1, [0001]) especially for automotive parts (p. 17, [0168]). Kondos teaches an embodiment comprising anti-corrosive pigments such as metal phosphates, including aluminum triphosphates and aluminum zinc phosphates (p. 14, [0141]).
As Motoda teaches the inventive curable composition may be used as an anticorrosive paint for metals (p. 12, [0176]), it would have been obvious to one of ordinary skill in the art at the time of filing to select either aluminum triphosphate or aluminum zinc phosphate as the pigment for use in Motoda’s invention, as Kondos recognizes both pigments as suitable for use in anti-corrosive capacities in similar compositions with similar end uses.
Modification of Motoda in view of Creighton and Kondos as detailed above reads on limitations established by claims 1, 8, 17 & 20.
Regarding claims 2 & 4, maintaining the modification of Motoda in view of Creighton & Kondos previously detailed, Kondos teaches various metal phosphates such as zinc phosphates, chromium phosphates, aluminum triphosphates, aluminum zinc phosphates, barium phosphates (p. 15, [0152]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 5 & 6, maintaining the modification of Motoda in view of Creighton & Kondos previously detailed, aluminum zinc phosphates, taught by Kondos as suitable compounds for the aforementioned metal phosphates (p. 15, [0152]), reads on limitations established by claims 5 & 6. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 11 & 12, maintaining the modification of Motoda in view of Creighton & Kondos previously detailed, Motoda teaches vulcanization may occur via disulfides or organic peroxides, such as dicumyl peroxide. Said vulcanizing agent is present in amounts of 0.1-10 wt.% (p. 9, [0130], [0131]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 13 & 14, maintaining the modification of Motoda in view of Creighton & Kondos previously detailed, Kondos teaches the inclusion of a reactive resin (b) which includes multi-(meth)acrylate compounds with multiple functional groups (p. 7, [0065]). Non-limiting representative examples of said polyfunctional (meth)acrylates include triethylene glycol diacrylate, trimethylolpropane trimethacrylate, dipentaerythritol pentaacrylate and the commercial product therefore, provided as SR399 (p. 8, [0067], [0068]). SR399 is the same commercial product for the crosslinking agent as provided in the Specification (p. 10, [0044]). Kondos teaches said component (b) is present in amounts of 5-99.9 wt.% (p. 8, [0073]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 15, maintaining the modification of Motoda in view of Creighton & Kondos previously detailed, Motoda teaches the curable composition may further comprise fillers, dyes/other colorants, processing aids (p. 11, [0173]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 3, 7 & 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Motoda et al. (US 2020/0308313 A1) in view of Creighton (US 4,600,745 A) & Kondos et al. (US 2017/0152369 A1), in further view of Gothlich et al. (US 2009/0029155 A1).
Regarding claims 3 & 7, maintaining the modification of Motoda in view of Creighton & Kondos previously detailed, however Motoda, Creighton & Kondos are silent on relative amounts of the corrosive protection pigment as required by the claims.
In the same field of endeavor, Gothlich teaches preparation for and methods for applying corrosive protecting coats (Abstract), particularly in automobile bodies (p. 1, [0003]). Suitable anti-corrosion pigments include zinc aluminum phosphates, strontium aluminum polyphosphate, zinc molybdenum orthophosphate & the like. Said anti-corrosion pigments are present in amounts of 5-60 wt.% (p. 10, [0143], [0150]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the range of 5-60 wt.% for the corrosion protection pigment, taught by Gothlich, as a guide for the amount of corrosion protection pigment to be used when modifying Motoda in view of Kondos as detailed above, as Gothlich teaches the suitability of corrosion protection pigments of this nature present in these amounts are appropriate for similar compositions with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Modification of Motoda in view of Creighton & Kondos in further view of Gothlich as described above reads on limitations established by claims 3 & 7.
Regarding claim 10, maintaining the modification of Motoda in view of Creighton & Kondos in further view of Gothlich previously detailed, Gothlich teaches corrosion protection pigments are present in amounts of 5-60 wt.% (p. 10, [0150]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights