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 .
This communication is responsive to claim set filed 11/25/2025. Claims 1-13 are currently pending.
The 35 USC 112b rejection dated 08/25/2025 is WITHDRAWN due to Applicant’s amendments.
Claims 1-13 are rejected for the reasons set forth below.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 11/25/2025. In particular, claim 1 has been amended to insert the new limitation that a content of the cross-linking agent (b) is 0.1 to 1.2 parts by mass per 100 parts. Thus, the following action is properly made final.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Priority
The English translation of JP2020-157766 filed 11/25/2025 supports the priority for Claims 1-13.
DUPLICATE CLAIMS, NOT ALLOWABLE
Applicant is advised that should claim 1 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof (See MPEP § 706.03(k)). In this case, Claim 1 and Claim 11 are duplicates.
Claim Rejections - 35 USC § 103
Claims 1-7, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tawney et
al. (US3243411).
Regarding Claims 1-3, Tawney teaches crosslinking fluoroelastomer with a curing agent (1 :5-15), wherein the preferred fluoroelastomer, Viton A-HV, is a copolymer of vinylidene fluoride and perfluoropropene (6: 47-53). Vinylidene fluoride contains a cross-linkable site. And wherein the preferred curing agent includes 2,7-naphthalenediol and 1,6-naphthalenediol (Example 6H and 6I). 2,7-naphthalenediol has the structure of instant crosslinking agent (b1). 1,6-naphthalenediol has the
structure of instant crosslinking agent (b3). Tawney further teaches the content of the cross-linking agent (b) is 0.1 to 50 parts by mass per 100 parts by mass of the fluoroelastomer (6:5-10). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Tawney.
Regarding Claim 4, the crosslinking agents of Example 6H and Example 6I are 2,7-
naphthalenediol and 1,6- dihydroxynaphthalene, respectively.
Regarding Claim 5, the crosslinking agent of Example 6I is 1,6- dihydroxynaphthalene.
Regarding Claims 6-7, the crosslinking agents of Example 6H and Example 6I are 2, 7 -
naphthalenediol and 1,6- dihydroxynaphthalene, respectively.
Regarding Claims 8-9, Tawney teaches the fluoroelastomer may contain magnesium oxide as acid acceptor (6: 20-30) and exemplifies magnesium oxide being used in a content of 5 parts per 100 parts fluoroelastomer (example 2). It is noted that magnesium oxide also functions as a curing accelerator (1 :45-50).
Regarding Claim 10, the composition of Example 6H and Example 61 contains lithium
hydroxide.
Regarding Claim 11, Tawney teaches the content of crosslinking agent can be 0.1 to 50 phr. (6: 5-10).
Regarding Claim 13, Tawney teaches an article being made from the cured fluoroelastomer (5:
65-70).
Claims 1- 13 are rejected under 35 U.S.C. 103 as being unpatentable over Emori et al.
(US2017/0197389 Al).
Regarding Claims 1-2, Emori teaches a fluororubber composition containing a fluororubber and a
polyol crosslinker (claim I); wherein the fluororubber contains a polyol-crosslinkable vinylidene fluoride
unit (Id.). Emori further teaches the examples of the polyol crosslinker include 2, 7-
dihydroxynaphthalene and 1,6-dihydroxynaphthalene([0039]) which have the structure of instant (b1) and (b3), respectively. Emori further teaches the crosslinker is 0.2 to 10 parts by mass per 100 parts by mass of the fluororubber ([0041]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Emori.
Regarding Claims 4-7, Emori teaches the crosslinker is 1,6-dihydroxynaphthalene([0039]).
Regarding Claim 8, Emori teaches the fluororubber composition containing a crosslinking
accelerator (ab.).
Regarding Claim 9, Emori teaches the fluororubber composition may contain acid acceptor in the
amount of 0.1 to 20 parts by mass per 100 parts by mass of the fluororubber ([0055]).
Regarding Claim 10, Emori teaches the acid acceptor selected from the group consisting of metal
oxides, metal hydroxides ([0052]).
Regarding Claim 11, Emori teaches the crosslinker is 0.2 to 10 parts by mass per 100 parts by
mass of the fluororubber ([0041]), overlapping the claimed 0.1 to 1.2 phr.
Regarding Claim 12, Emori teaches 2, 7-dihydroxynaphthalene, 1,6-dihydroxynaphthalene, as well as 4,4'-dihydroxydiphenyl sulfone are suitable polyol crosslinkers for the fluororubber composition ([0039]). Therefore, it would have been obvious to one ordinary skilled artisan in the field, before the effective filing date of instant application, to incorporate 4,4'-dihydroxydiphenyl sulfone into the fluororubber composition. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose ( see MPEP 2144.06(I)).
Regarding Claim 13, Emori teaches molded article comprising the fluororubber composition
([0069]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tawney, as applied to Claim 1 at paragraph 9, and in further view of Higashira et al. (US2009/0082526 Al).
As discussed at para. 9, Tawney teaches a fluoroelastomer composition comprising a crosslinkable fluoroelastomer and a polyol crosslinking agent wherein the polyol crosslinking agent includes dihydroxynaphthalene compounds.
The difference between Tawney and instant Claim 12 is that Tawney is silent on the composition
further comprising at least one of the claimed sulfone compounds.
However, Higashira teaches a polyol-cross-linkable fluororubber composition comprising a
polyol-cross-linkable fluororubber and a polyol crosslinking agent ([0012]), wherein the polyol
crosslinking agent includes bis( 4-hydroxyphenyl) sulfone ([0015]). Therefore, Tawney and Higashira,
individually, teach dihydroxynaphthalene compounds and bis( 4-hydroxyphenyl) sulfone are crosslinking
agents for a polyol-cross-linkable fluororubber. As such it would have been obvious for one ordinary
skilled artisan in the field, before the effective filing date of instant application, to incorporated bis( 4-
hydroxyphenyl) sulfone into the composition of Tawney. It is well settled that it is prima facie obvious to
combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose ( see
MPEP 2144.06(1)).
Response to Arguments
Applicant’s argument: Tawney’s broad range of crosslinking agent being 0.1 to 50 phr does not anticipate the current Claim 1.
Examiner’s answer: the argument is moot because the rejection above is based on obviousness.
Applicant’s argument: Declaration shows that the claimed range operates differently than Tawney and support patentability of instant claims.
Examiner’s answer: Tawney discloses the crosslinking agent relative to fluoroelastomer in the range encompassing the instant claimed range. In view of MPEP 2144.05 I, a prima facie case of obviousness exists. Although Tawney teaches the preferred crosslinking range being 2 to 20 phr which is out of the instant claimed range, this does not negate a finding of obviousness under 35 USC 103 since preferred embodiments are not controlling. Rather, all disclosures "including unpreferred embodiments" must be considered (see MPEP 2123 I).
Applicant can rebut a prima facie case of obviousness by showing the criticality of the range (MPEP § 2144.05 III A). Examiner thanks the Applicant for submitting the Declaration to distinguish instant claims from Tawney. However, data from the Declaration and the original filed specification only tested crosslinking agent at 1 phr and 4.5 phr while the claimed range is 0.1 phr to 1.2 phr. 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 (See MPEP § 716.02(d)(II)). Applicant did not provide data showing results approximate and at 0.1 phr of the crosslinking agents. 4.5 phr is too far away from 1.2 phr. Therefore, The Applicant has not provided evidence to support the criticality of the specified phr levels (0.1 and 1.2). Thus, doubts are raised as to the criticality of the claimed range.
In addition, unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range (MPEP 716.02(d)). The current data only show the crosslinking agents at 1 phr obtained superior results than the crosslinking agents at 4.5 phr, while the claimed range is 0.1 phr to 1.2 phr. Therefore, unexpected results are not sufficiently established.
Applicant’s argument: Emori discloses the claimed crosslinking agents among a list of crosslinking agent compounds and the claimed crosslinking agents are not preferred in Emori’s examples.
Examiner’s answer: para. [0034] of Emori lists about 20 crosslinking agent compounds. Court has held that picking one option among 53 disclosed options was obvious (Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir. 2007). See MPEP 2143E). Here, Emori identifies a finite number of compounds of polyol crosslinking agents; Emori shows some compounds of the polyol crosslinking agents solved the targeted technical problems; as such one ordinary skilled artisan would have reasonably expected that other compounds of the polyol crosslinking agents would solve the targeted technical problems as well.
Applicant’s argument: Emori does not disclose or suggest that the use of specific amounts of
2,7-dihydroxynaphthalene (corresponding to formula (bl)) or 1,6-dihydroxynaphthalene
(corresponding to formula (b3)) can improve high-temperature compression set properties.
Examiner’s answer: Emori discloses that the polyol crosslinking agents at 0.2 phr to 10 phr result in good compression set ([0039-0042]).
Applicant’s argument: instant Table 2 shows that the instant claimed crosslinking agents achieved better high-temperature compression set properties than bisphenol AF.
Examiner’s answer: instant Table 2 is illegible. Applicant is advised to replace Table 2 at the next response to Office Action. If Applicant meant to argue that the instant claimed crosslinking agents achieved unexpected results, Applicant is noted that unexpected results must be commensurate in scope with the claims.
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.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763