DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/8/26. In particular, all independent claims have been amended to recite that the petroleum resin has a softening point between 50 and 150 ° C.
The newly introduced limitations and/or the new claims were not present at the time of the preceding action. For this reason, the present action is properly made final.
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 .
Claim Rejections - 35 USC § 102
Claim(s) 1-4, 6-8 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,830,927 (herein Fukahori).
As to claims 1-2, 6-7 and 8, Fukahori discloses a composition comprising EPDM (an ethylene alpha olefin copolymer), natural rubber (NR, a diene rubber) and dicyclopentadiene resin with a softening point of 116 ° C. See examples in table 2. The cyclopentadiene resin is a petroleum resin. See col. 4, lines 30-65.
As to the limitation “sheet conveyance roller rubber” with respect to composition, this is a recitation of intended use. 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. In the instant case, the composition is identical and could be utilized for rollers.
As to claims 3 and 20, the ethylene alpha olefin copolymer (EPDM) is used in about 70 mass% of the rubber (note that the EPDM is 70 parts to 30 parts NR). See table 2.
As to claim 4, the dicyclopentadiene (petroleum resin) is present in 14 parts per 100 parts rubber. See example 7 in table 2.
As to claim 19, dicyclopentadiene is an aromatic compound having more than 8 carbons. See table 2.
Claim(s) 1-6, 8-14, 17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0359805 (herein Xu) as evidenced by US 2013/0230697 (herein Sugimoto)
As to claims 1-2, 9-10 and 19, Xu discloses a rubber composition for e.g. a rubber roller (reading on sheet conveyance roller rubber), thus a rubber roller molded from the composition. See abstract and paragraph 77. The composition an ethylene alpha olefin copolymer (ethylene propylene rubber such as EPDM, see paragraph 102-103)). The composition also comprises a tackifier such as C5 petroleum resin in order to improve adhesion of the rubber composition. See paragraph 41. The tackifier is exemplified as Escorez-1102 (paragraph 252), which is a C5 aliphatic petroleum resin having a softening point of 110 ° C. See paragraph 87 of Sugimoto for evidence.
As to claims 3 and 11, the ethylene propylene rubber can be up to about 100%. See paragraph 10 and examples.
As to claims 4 and 12, the tackifier is present in not more than 15 parts based on 100 parts of the rubber. See paragraph 41 and examples that are within the claimed range.
As to claims 5 and 13, organic peroxide as a vulcanizing agent is taught. See paragraph 21, 26-27, 95-96 and examples.
As to claims 6 and 14, the composition may comprise polybutadiene (a diene based rubber). See paragraph 32 and examples.
As to claim 8, Xu is silent on whether the sheet is paper, however this is a recitation of intended use for the composition. 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. In the instant case, the composition is identical.
As to claim 17, the composition is formed by vulcanization and kneading at 160 ° C (see paragraph 114 and examples). Thus, this is above the softening point.
As to claim 20, the polybutadiene is added in about 8 parts per 100 parts rubber, thus reading on the claimed range. See examples, such as in paragraph 184.
Claim Rejections -Sugimoto
Claim(s) 1-3, 6-11 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0225061 (herein Sugimoto) in view of US 2019/0359805 (herein Xu) as evidenced by US 2013/0230697 (herein Sugimoto).
As to claims 1-2, 8-10, 16 and 19, Sugimoto discloses a rubber roller for (cut, such as those for printers, see paragraph 3) paper sheets (see abstract, paragraph 5, 9, 82 and examples) molded from a composition and compositions thereof comprising a base rubber of ethylene propylene diene rubber (EPDM, reading on claimed ethylene alpha olefin copolymer, see abstract and examples). Also see examples.
Sugimoto is silent on the claimed petroleum resin having the claimed softening point.
Xu discloses a similar rubber composition for e.g. a rubber roller (reading on sheet conveyance roller rubber), thus a rubber roller molded from the composition. See abstract and paragraph 77. The composition an ethylene alpha olefin copolymer (ethylene propylene rubber such as EPDM, see paragraph 102-103). The composition also comprises a tackifier such as C5 petroleum resin in order to improve adhesion of the rubber composition. See paragraph 41. The tackifier is exemplified as Escorez-1102 (paragraph 252), which is a C5 aliphatic petroleum resin having a softening point of 110 ° C. See paragraph 87 of Sugimoto for evidence. The tackifier is added to improve adhesion of the rubber compound. See paragraph 41.
It would have been obvious at the time of the invention to have modified the composition of Sugimoto with the petroleum resin with the claimed softening point of Xu because one would want to improve the adhesion of the rubber compound and in turn control the adhesion of the rubber to substrate. See paragraph 41 of Xu.
As to claims 3 and 11, the EPDM is utilized in amounts of e.g. 66 mass% of the base rubber. See example 4, etc. in table 1.
As to claims 4 and 12, the petroleum resin can be hydrogenated block copolymers such as hydrogenated styrene isoprene styrene (hydrogenated to styrene ethylene propylene styrene, SEPS, see paragraph 25-30 and examples). The SEPS is exemplified as present in about 3.3 parts (normalized from 10 parts). See example 4. Moreover, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claims 6-7 and 14-15, the composition/roller comprises a diene based rubber such as isoprene rubber. See paragraph 24.
As to claims 17-18, a method for producing the composition discussed above is taught kneaded (paragraphs 13, 30-31, 38 and examples) at room or elevated temperatures (paragraph 38 and examples), which would be above the softening point of the petroleum oil, since it is an oil (which is liquid at room temperature). Afterwards, a vulcanizing agent (also referred to as crosslinking agent, see paragraph 25, 31-32, 37-38, 52 and examples).
As to claim 20, see example 4 in table 1, wherein the ratio of EPDM (ethylene alpha olefin copolymer) to isoprene diene rubber (SEPS) is 67/33.
Claim(s) 5 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0225061 (herein Sugimoto) in view of US 2021/0009730 (herein Ichino) and US 2019/0359805 (herein Xu) as evidenced by US 2013/0230697 (herein Sugimoto).
The discussion with respect to Sugimoto set-forth above is incorporated herein by reference.
As to claims 5 and 13, Sugimoto teaches that the composition comprises a peroxide as a vulcanizing agent. See paragraph 31.
However, Sugimoto is silent on the peroxide being organic.
Ichino teaches similar compositions and rollers. See paragraph 484, 9, 13, 385 and examples. Ichino teaches that the composition comprises an peroxide is organic (paragraph 409-415) as a crosslinking/vulcanizing agent. Further, again the petroleum oil/softener is hydrogenated alicyclic hydrocarbon resins and hydrogenated hydrocarbon resins (paragraph 385, reading on hydrogenated aliphatic petroleum resin).
It would have been obvious at the time of the invention to have modified the compositions/rollers of Sugimoto with the specific organic peroxide and hydrogenated aliphatic petroleum resin of Ichino because Ichino teaches that they are suitable for similar compositions.
Moreover, Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (B). In the present case, it is evident that Sugimoto differs from the presently claimed composition by the substitution of organic peroxide for peroxide and hydrogenated aliphatic petroleum resin for the petroleum oil. Additionally, it is evident that the substituted component is known in the art, as both are taught in Ichino. Additionally, it is evident that a person of ordinary skill in the art could have of substituted in organic peroxide for peroxide and hydrogenated aliphatic petroleum resin for the petroleum oil and that the results of the substitution (a composition for rollers) would have been predictable. In light of this discussion, it is apparent that the presently claimed invention is arrived at by simple substitution of one known element for another to obtain predictable results. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have the substituted organic peroxide for peroxide and hydrogenated aliphatic petroleum resin for the petroleum oil as suggested by Ichino, and thereby arriving at the presently claimed invention.
Claim Rejections - Ichino
Claim(s) 1-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0009730 (herein Ichino) in view of US 2019/0359805 (herein Xu) as evidenced by US 2013/0230697 (herein Sugimoto).
As to claims 1-2, 8-10, 16 and 19, Ichino discloses a composition (see abstract and examples) for rubber roller for paper sheets (see abstract, paragraph 484 and examples) molded from a composition and compositions thereof comprising a base rubber of ethylene propylene diene rubber (EPDM, reading on claimed ethylene alpha olefin copolymer, see abstract, paragraph 9, 14 and examples). Also see examples.
Ichino is silent on the claimed petroleum resin having the claimed softening point.
Xu discloses a similar rubber composition for e.g. a rubber roller (reading on sheet conveyance roller rubber), thus a rubber roller molded from the composition. See abstract and paragraph 77. The composition an ethylene alpha olefin copolymer (ethylene propylene rubber such as EPDM, see paragraph 102-103). The composition also comprises a tackifier such as C5 petroleum resin in order to improve adhesion of the rubber composition. See paragraph 41. The tackifier is exemplified as Escorez-1102 (paragraph 252), which is a C5 aliphatic petroleum resin having a softening point of 110 ° C. See paragraph 87 of Sugimoto for evidence. The tackifier is added to improve adhesion of the rubber compound. See paragraph 41.
It would have been obvious at the time of the invention to have modified the composition of Ichino with the petroleum resin with the claimed softening point of Xu because one would want to improve the adhesion of the rubber compound and in turn control the adhesion of the rubber to substrate. See paragraph 41 of Xu.
As to claims 3 and 11, the ethylene propylene copolymer is the majority rubber component required (thus 100 mass%). See examples and paragraph 382.
As to claims 4 and 12, Ichino discloses that the petroleum resin is present in 1 to 300 parts by weight per 100 parts of the rubber component (EPDM). See paragraph 395. Teaching that the amount controls kneadability, processability, mechanical properties, compression set, etc. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claims 5 and 13, the composition comprises an organic peroxide (paragraph 409-415) as a crosslinking/vulcanizing agent. Further, again the petroleum oil/softener is hydrogenated alicyclic hydrocarbon resins and hydrogenated hydrocarbon resins (paragraph 385, reading on hydrogenated aliphatic petroleum resin).
As to claims 6-7 and 14-15, the composition/roller may comprise a diene based rubber such as natural rubber. See paragraph 13, 29, 32, and 373-377.
As to claims 17-18, a method for producing the composition discussed above is taught kneaded (459-462 and examples) at room or elevated temperatures (paragraph 38 and examples), which would be above the softening point of the petroleum oil, since it is an oil (which is liquid at room temperature). Afterwards, a vulcanizing agent (also referred to as crosslinking agent, see paragraph 395 and 405-414).
Response to Arguments
Applicant’s arguments with respect to have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specifically, note that new reference Xu and Fukahori address the new limitations.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
