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 with traverse of Group II (claims 3-5) in the reply filed on October 23, 2025 is acknowledged. The traversal is on the ground(s) that, claims 3-5 and claim 7 belong to the same general concept of “conducting reaction by using the catalyst of general formula I”. This is not found persuasive because this recited special technical feature does not make a contribution over the prior art. Please refer to the below rejection using the Zhan (US 2012/0252982) reference teaches conducting reactions by the recited catalyst. Claims 1-2 and 7-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 4 is 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.
Regarding claim 4, there is no basis for the amount of the Zhan catalyst.
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(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al (US 4,786,675) in view of Zhan (US 2012/0252982).
Regarding claim 3, Iwata teaches a method in which liquid NBR is hydrogenated (Example 6). Iwata uses a customary method, however, fails to teach the recited method.
Zhan teaches a method of adding NBR in a hydrogenation reaction ([0020]) in the presence of a Zhan catalyst with the following structure:
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The reaction is under the protection of an inert gas and in an organic solvent ([0109]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the liquid NBR of Iwata be hydrogenated by the method taught by Zhan. One would have been motivated to do so in order to receive the expected benefit of having a liquid NBR with better physical properties (Zhan, [0005]).
Regarding claim 5, modified Iwata teaches that the method comprises the following hydrogenation (route 1)
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([0085]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al (US 4,786,675) in view of Zhan (US 2012/0252982), Nishimura (US 5,093,166) and Dentel et al (GB 2 108 490).
The discussion of Iwata and Zhan in paragraph 5 above is incorporated here by reference.
Regarding claim 4, modified Iwata teaches that the catalyst can be:
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([0068], among others)
That the amount of this catalyst is 0.5 to 0.01 %, a pressure within the hydrogenation reaction is contributed by a hydrogen gas at a pressure of 3-13 MPa at 60-150C for 2-10 hours (Zhan, [0081]). The solvent can be chlorobenzene or acetone ([0081]). The inert gas is argon ([0109]). It is noted that the degradation reaction is not mandatorily present.
However, modified Iwata fails to teach a) the recited structure of the liquid NBR and b) the post-treatment step.
Regarding a), Nishimura teaches that a liquid NBR rubber has a molecular weight of 1,000 to 10,000 (col. 5, lines 45-60). Given that both Iwata (col. 6, lines 1-10) and Nishimura (col. 5, lines 55-65) teach that about one third of the total weight of the polymer is the nitrile portion, the following calculation can be made based on the molecular weight of the monomers (butadiene =54 and acrylonitrile=53). At a molecular weight of 10,000, m=124 and n=62 which reads on the recited structure.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the molecular weight of the liquid NBR of Iwata have the molecular weight as taught by Nishimura. One would have been motivated to do so because that is the typical range of molecular weight of liquid NBR without becoming volatile (Nishimura, col. 5, lines 50-65).
Regarding b), Dentel teaches a chemical reaction which uses chlorobenzene as the solvent. At the end of the reaction, the chlorobenzene was removed by vacuum distillation at a temperature of 100C (page 3, lines 55-65).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the post reaction solvent removal as taught by Dentel to remove the chlorobenzene solvent in the reaction of modified Iwata. One would have been motivated to do so in order to have a purified final product (Dentel, page 3, lines 55-65).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764