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 .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on May 9, 2026. In particular, claim 3 has been amended to limit the catalyst to two forms and positively recite the polydispersity index of the liquid hydrogenated NBR. This combination of limitations was not present at the time of the previous office action. Thus, the following action is properly made final.
Claim Objections
Claim 7 is objected to because of the following informalities: the claim identifier should read “(Currently amended-withdrawn)”. 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.
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. The examiner suggests after the limitation “wherein the amount of Zhan catalyst is 0.005%-0.1%” adding the phrase “relative to the NBR”.
Regarding claim 4, are all the structures of Formula I crossed out? The examiner assumes that they are, please confirm as the lines to cross out the structures do not clearly relay their intention.
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 Zhan (US 2012/0252982) in view of Ong et al (EP 1 862 477).
Regarding claim 3, Zhan teaches a method for preparing a hydrogenated (Abstract) nitrile butadiene rubber ([0080]) comprising the streps of adding NBR to a degradation reaction and a hydrogenation reaction ([0081]) in the presence of a Zhan catalyst with under the protection of an inert gas in an organic solvent, to obtain a hydrogenated nitrile butadiene rubber ([0081]). The recited Zhan catalysts are taught on page 5 of the prior art reference.
However, Zhan fails to teach that the nitrile butadiene rubber is a liquid and has a polydispersity index of 2.5 to 8.0.
Ong teaches a liquid NBR rubber which has a polydispersity index of greater than 3 ([0022]). This NBR is hydrogenated (Abstract) using a ruthenium catalyst ([0025]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to take the liquid NBR starting material as taught by Ong and have it undergo the hydrogenation method as taught by Zhan. One would have been motivated to do so in order to receive the expected benefit of using a more active and selective catalyst (Zhan, [0004]).
Regarding claim 5, Zhan teaches the recited reactions on page 14.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhan (US 2012/0252982) in view of Ong et al (EP 1 862 477), Nishimura (US 5,093,166) and Dentel et al (GB 2 108 490).
The discussion regarding Zhan and Ong in paragraph 6 above is incorporated here by reference.
Regarding claim 4, Zhan teaches that the method incorporates:
a catalyst in the amount from 0.01-0.5% by weight ([0081])
a degradation reaction of 0-100 C for 0.5 hours ([0081])
a 3-13 MPa pressure of hydrogen in the hydrogenation reaction ([0081])
the hydrogenation reaction is at 60-150 C for 2-10 hours ([0081])
the organic solvent is chlorobenzene ([0081]) and the amount of nitrile rubber added to the solvent is 60 g / 500 mL ([0108])
where the inert gas is argon ([0108])
However, modified Zhan fails to teach a) the recited structure of the liquid NBR and b) the post-treatment step.
Regarding a), Nishimura teaches that liquid NBR rubber has a molecular weight of 1,000 to 10,000 (col. 5, lines 45-50). Given that Zhan teaches that amount of the 10 to 60 % by weight nitrile and 40 to 90 % by weight of conjugated diene ([0018]), the following calculation can be made based on the molecular weight of the monomers (butadiene=54 and acrylonitrile=53) and approximately one-third of the polymer is acrylonitrile, at molecular weight 10,000, m=124 and n=62 which reads on the claimed structure.
Regarding b), Dentel teaches a chemical reaction which use chlorobenzene as a solvent. At the end of the reaction, the chlorobenzene was removed by vacuum distillation at a temperature of 100 C (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 Zhan. One would have been motivated to do so in order to receive the expected benefit of having a purified final product (Dentel, page 3, lines 55-65).
Response to Arguments
Applicant's arguments filed May 9, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: The amendment has obviated the 35 USC 112 rejection against claim 4.
Examiner’s response: The amendment has not obviated the 35 USC 112 rejection; the examiner has restated it above and suggested a corrective amendment.
Applicant’s argument: Iwata fails to teach many of the recited features of the claimed invention.
Examiner’s response: Iwata is no longer used as a reference. Therefore, these arguments are considered moot.
Applicant’s argument: Nowhere in Zhan discloses the use of the 4aa or 4v catalyst.
Examiner’s response: Please refer to page 5 of Zhan where the structures are elucidated:
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132
224
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134
200
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Applicant’s argument: All of Zhan’s examples have PDIs lower than that of the claimed invention.
Examiner’s response: This is remedied by the secondary reference, Ong.
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 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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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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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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