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 .
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4 and 12 recite the limitation "the rubber component" in the last line. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether “the rubber component” is the same as the “rubber base”, some specific rubber, total rubbers, etc.
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.
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, 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 Rejections - Sugimoto
Claim(s) 1-3, 6-11 and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2004/0225061 (herein Sugimoto).
As to claims 1-2, 8-10 and 16, 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) and a paraffin petroleum oil/softener (paragraph 52 and 34, reading on petroleum resin and aliphatic petroleum resin of claim 2). Also see examples.
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.
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).
Claim(s) 4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0225061 (herein Sugimoto).
The discussion with respect to Sugimoto set-forth above is incorporated herein by reference.
As to claims 4 and 12, Sugimoto discloses that the petroleum resin is present in 10 to 200 parts by weight per 100 parts of the rubber component (A). See paragraph 35. 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.
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).
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) 1-3, 5-11 and 13-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0009730 (herein Ichino).
As to claims 1-2, 8-10 and 16, 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) and a petroleum oil/softener such as hydrogenated alicyclic hydrocarbon resins and hydrogenated hydrocarbon resins (paragraph 385, reading on petroleum resin and hydrogenated aliphatic petroleum resin of claim 2). Also see examples.
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 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).
Claim(s) 4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0009730 (herein Ichino).
The discussion with respect to Ichino set-forth above is incorporated herein by reference.
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.
Conclusion
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
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