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 the claim set filed on 06/18/2026 and the Affidavit filed on 07/01/2026. Claims 1-2, 4-10 and 12-13 are currently pending.
Claims 1-2, 4-10 and 12-13 are rejected for the reasons set forth below.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a
previous Office Action.
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/18/2026 has been entered.
Specification
Amendments to the Specification filed on 06/18/2026 are acknowledged and accepted.
Claim Rejections - 35 USC § 103
Claims 1-2, 4-10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tawney et. al. (US3243411).
The rejections dated 02/19/2026 at para. 9 is MAINTAINED.
Claims 1-2, 4-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Emori et al.(US2017/0197389 Al).
The rejections dated 02/19/2026 at para. 10 is MAINTAINED.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tawney, as applied to Claim
1, and in further view of Higashira et al. (US2009/0082526 Al).
The rejections dated 02/19/2026 at para. 11 is MAINTAINED.
Response to Arguments
Applicant's arguments filed on 06/18/2026 and 07/01/2026 have been fully considered but they are not persuasive.
Applicant’s argument: Tawney's preferred proportion of "2 to 20 phr" for the cross-linking agent is entirely outside of the claimed range.
Examiner’s answer: 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’s argument: Comparative Example 8 should be considered highly probative of nonobviousness because the content of the cross-linking agent used was less than the amount used in Tawney's closest actual embodiment. The totality of evidence (including the second Declaration) supports the nonobviousness of the current claimed range of the crosslinking agent.
Examiner’s answer: Both Tawney and Emori disclose a range of the crosslinking agent relative to the fluoroelastomer encompasses the instant claimed range. In this situation, Applicants can rebut a prima facie case of obviousness by showing the criticality of the range (MPEP § 2144.05 III A). 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. The showing of unexpected results must be commensurate in scope with the claims See MPEP § 716.02(d).
The data of the originally submitted specification, the declaration filed on 11/25/2025, Table 2 filed on 06/18/2026 and the second declaration filed on 07/01/2026 are considered. The Examiner did not see significant difference of Example 4 to Example 6 vs. Comparative Example 3 and Comparative Example 4 in term of the physical properties (Table 2). Even if ignoring data of Table 2, taking the data of Table 1, the declaration filed on 11/25/2025 and the second declaration filed on 07/01/2026 together, Applicant tested the amount of the crosslinking agent A at 0.8, 1, 1.2 and 4.5 parts per 100 parts of the fluoroelastomer and amount of crosslinking B and C at 1 part per 100 parts of the fluoroelastomer only. The crosslinking agent A, crosslinking agent B and crosslinking agent C correspond the instant claimed compounds (b1), (b2) and (b3), respectively. The data do not sufficiently support the claimed range because:
The crosslinking compounds (b2) and (b3) were tested at only 1 part per 100 parts of the fluoroelastomer, while claimed the range of 0.5 to 1.2 parts per 100 parts of the fluoroelastomer;
Applicant may argue the instant Claim 1 claims the crosslinking agent (b) is at least one selected from the group consisting of the compound (b1), (b2) and (b3); therefore, the nonobviousness can be proved by showing the nonobviousness of the crosslinking compound (b1). Nonetheless, data do not sufficiently support the criticality of the range for the crosslinking compound (b1), either. The relevant MPEP states “Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” Applicant tested only 4.5 parts/100 parts of fluororubber that is outside of the claimed range, even if taking the data showing the criticality of the upper limit – 1.2 parts/100 parts fluororubber. There is not data supporting the criticality of the lower limit – 0.5 parts/100 parts fluororubber.
Regarding Applicant’s repeated arguments that Emori discloses compound (b1) and (b3) in the list of crosslinking agents and Emori does not disclose or suggest that the use of specific amounts of compound (b1) and compound (b3) can improve high-temperature compression set properties.
In response: the Examiner reaffirms the answers dated 02/19/2026.
Applicant’s argument: the Comparative Example 7 of the present application shows bisphenol AF used in Emori, the resulting product becomes poor in high-temperature compression set properties.
Examiner’s answer: bisphenol AF is not claimed. Applicant may suggest as a fluororubber composition containing the preferred crosslinking agent did not result in superior high-temperature compression set
properties, any crosslinking agents disclosed by Emori would not result in in superior high-temperature compression set properties. The argument is not persuasive because the instant Claim 1 claims a fluoroelastomer crosslinkable composition. The high-temperature compression set properties are not claimed. The examination is based on claims. Emori teaches a fluoroelastomer crosslinkable composition, thus, Emori is an analogous art of the instant application. It can be used as a 35 USC 103 reference. Additionally, AIA 35 U.S.C. 103 determines obviousness before the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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