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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-15) in the reply filed on 3/10/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/2026.
Claim Objections
Claims 1 and 2 are objected to because the basis for the solids content should be specified as weight percent for immediate clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 9 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 9, regarding “nitrile type,” the addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte
Copenhaver, 109 USPQ 118 (Bd. App. 1955).
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.
Claim 8 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Having the polymeric component include “only” “liquid styrene-butadiene rubber and liquid butadiene” rubber is outside the scope of claim 1 which requires that the polymeric component is in latex form. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 9, 13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Altes (US 7,153,902).
With respect to claim 1 and 13, Altes discloses an emulsion of elastomeric polymers having a solids content of greater than 75 % and also comprising surfactant additive (abstract). Regarding the preamble “for a direct inking writing process,” it is the examiner’s position that the emulsion of elastomeric polymers taught by Altes is capable of functioning in a direct ink writing process. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
With respect to claim 2, Altes teaches that one run includes solids content of 95.2 wt % (col. 20, lines 39-41).
With respect to claims 3-5 and 9, Altes teaches that the elastomeric polymers include natural rubber, styrene-butadiene rubbers (i.e., synthetic rubber), and fluorocarbon elastomers (col. 4, lines 48-54).
With respect to claim 15, Altes discloses that its emulsions are used to prepare flexible films (col. 17, lines 13-18) but does not disclose a sensor per se. Nevertheless, MPEP 2111.02 states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, it is the examiner’s position that Altes’s film is capable of being used in a sensor.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Altes (US 7,153,902).
The discussion with respect to Altes in paragraph 6 above is incorporated here by reference.
Altes discloses utilizing mixtures of elastomeric polymers (col. 4, lines 10-13) and teaches that suitable elastomeric polymers include styrene-butadiene rubber and butadiene rubbers (col. 4, lines 46-51).
Altes does not disclose with sufficient specificity the combination of styrene-butadiene and butadiene rubbers.
Even so, given that Altes discloses mixtures of elastomeric polymers, it would have been obvious to one of ordinary skill in the art to include a mixture of styrene-butadiene and butadiene rubbers. 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. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Altes (US 7,153,902) in view of Tomihashi (US 7,550,530).
The discussion with respect to Altes in paragraph 6 above is incorporated here by reference.
With respect to claim 10 and 11, Altes discloses an emulsion of elastomeric polymers that is “essentially free” of organic solvents (abstract) and teaches that the elastomeric polymers include fluorocarbon elastomers (col. 4, lines 48-54), however, it fails to disclose the fluorine content in those fluorocarbon elastomers.
Tomihashi discloses a composition comprising an aqueous dispersion of fluoroelastomer and coated article thereof (abstract) and teaches that the fluoroelastomer is derived from both hydrogen atom-containing monomer and a hydrogen-atom free monomer (col. 2, lines 61-67). The exemplified fluoroelastomer includes vinylidene fluoride (2 fluorine atoms), tetrafluoroethylene (4 fluorine), and hexafluoropropylene (6 fluorine atoms) in a molar ratio of 65:18:17 (col. 14, lines 30-33), which provides for amount of fluorine atom of 67.5 mol % (calculated based on total amount of fluorine and hydrogen atoms).
Given that both Altes and Tomihashi are drawn to coating compositions comprising a fluoroelastomer emulsion and further given that Tomihashi’s preferred fluoroelastomer includes 67.5 mol % of fluorine, it would have been obvious to one of ordinary skill in the art to utilize a similar and suitable fluoroelastomer in the emulsion of Altes.
With respect to claim 12, Altes discloses adding pigments (col. 17, line 11) but fails to disclose a chromium oxide pigment.
Tomihashi teaches that a pigment such as chromium oxide is added (col. 11, lines 24-25) and exemplifies a formulation comprising 2.6 phr red iron oxide as pigment (col. 16, lines6-34), calculated from fluoroelastomer emulsion having 52 wt % solids and pigment pasted include 5 wt % pigment.
Given that both Altes and Tomihashi are drawn to coating compositions comprising a fluoroelastomer emulsion and further given that Tomihashi teaches a suitable pigment includes chromium oxide, it would have been obvious to one of ordinary skill in the art to add chromium oxide as pigment to Altes in a suitable amount such as 2.6 phr as exemplified by Tomihashi. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Claims 1-4, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Leroux (US 11,554,531).
With respect to claims 1-4 and 13, Leroux discloses a method for additive manufacturing of an elastomer part including depositing an elastomer material being a latex material in form of a liquid composition, wherein the latex-based liquid composition comprises at least 40 wt % water and 30-70 wt % of polymer including natural or synthetic rubbers (col. 7, lines 42 to col. 8, line 3). Leroux discloses that the liquid composition includes a vulcanization additive and colorants (col. 3, lines 59-64). Leroux teaches that the liquid composition comprises 30-70 wt % rubber but that water is preferably at least 40 wt % in order to have desired viscosity (col. 3, lines 47-58).
Leroux is silent with respect to the amount of rubber in the latex before being added to the liquid composition. Even so, not only can the final composition contain additional water that is not from the elastomer latex material which decreases the amount of rubber in the final composition, it follows that an arbitrary amount of water from the latex can be redistributed and portioned out to other parts of the composition. In this way, the claim is viewed as a product-by-process limitation, where the solids content of the initial latex is not present in the final composition. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize an elastomer latex material including relatively higher amounts of solids content, including at least 75 wt % (and > 90 wt %), from either adjusting the viscosity or by redistributing and portioning out some of the water from the latex to the composition and thereby arrive at the claimed composition.
With respect to claim 9, Leroux teaches that the polymer includes styrene-butadiene copolymers (col. 3, lines 43-46).
Claims 1-4, 6, 7, 9, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Stehle (DE 197 53 630, machine translation).
With respect to claims 1, 13, and 14, Stehle discloses a composition for sealing objects such as tires comprising a rubber latex (abstract), wherein the rubber latex is a concentrated rubber latex with a solids content of significantly more than 60 wt % (paragraph 0010). The example in Table 2 includes a latex having solids content (“Feststoffgehalt”) of 73 wt % (page 6 of original document). Exemplified formulations include sulfur (paragraph 0044), i.e., vulcanizing agent additive.
Stehle fails to exemplify or disclose with sufficient specificity so as to anticipate a solids content of latex of greater than 75 wt %.
Even so, it would have been obvious to one of ordinary skill in the art to utilize a solids content of greater than 75 wt % because Stehle teaches utilizing a concentrated rubber latex having significantly more than 60 wt % which overlaps with greater than 75 wt %.
Regarding the preamble “for a direct inking writing process,” it is the examiner’s position that the composition comprising rubber latex is capable of functioning in a direct ink writing process. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
With respect to claim 2, it would have been obvious to one of ordinary skill in the art to utilize a solids content of greater than 90 wt % because Stehle utilizes a concentrated rubber latex having significantly more than 60 wt % which overlaps with greater than 90 wt %.
With respect to claim 3, Stehle teaches using natural rubber latex (paragraph 0010).
With respect to claims 4, 6, and 9, Stehle discloses that the rubber latex includes mixture of natural rubber with synthetic rubber such as styrene-butadiene rubber and butyl rubber (paragraph 0012).
With respect to claim 7, Stehle teaches that the mixtures of natural and synthetic rubbers include a higher proportion of natural rubber (paragraph 0012). Because higher proportion of natural rubber includes greater than 1:1, it would have been obvious to one of ordinary skill in the art to utilize 5 times more natural rubber to synthetic rubber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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