DETAILED ACTION
This office action follows a reply filed on December 23, 2025. Claims 1-2 have been amended. Claims 1-4, 6-13 and 15-20 are currently pending and under examination.
All previous rejections are withdrawn; however, upon further consideration, a new ground(s) of rejection is proposed below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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 § 103
Claims 1-2, 4, 7-8, 13 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Satoji (US 4,978,463).
Satoji exemplifies a composition comprising the following (Table 13, Example 23):
100 parts chloroprene rubber;
29 phr liquid diene rubber (5) containing epoxy groups with a MW=3000;
20 phr fluoropolymer; and
0.3 phr sulfur.
Satoji teaches that the liquid diene polymer having epoxy groups has a molecular weight of preferably 250-5000 (col. 4, ll. 10-23).
Satoji teaches that the liquid diene polymer and the fluoropolymer should be 5-100 phr (col. 7, ll. 47-54).
Satoji teaches that the vulcanizing agent can be sulfur or an organic peroxide (col. 6, ll. 15-25), where the vulcanizing agent is present in an amount of 0.1-20 parts by weight.
Modifying Example 23 of Satoji to include a lesser amount of liquid diene rubber, modifying the liquid diene rubber to have a lower molecular weight and substituting the sulfur vulcanizing agent for organic is prima facie obvious, as these modifications are clearly suggested by the teachings of Satoji.
The ranges suggested by Satoji overlap with the claimed amounts of the diene-based polymer and the vulcanizing agent and the molecular weight of the diene-based polymer, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
While Satoji does not specifically disclose whether the chloroprene rubber is a homo- or copolymer, Satoji teaches that the diene rubber is made by polymerizing or copolymerizing diene monomers (col. 2, ll. 61-66). Therefore, using a homo- or copolymer or chloroprene as the rubber is prima facie obvious.
Satoji is prima facie obvious over instant claims 1-2,
As to claims 4 and 13, the liquid diene polymer exemplified by Satoji has an equivalent weight of epoxy groups of 1450, suggesting the presence of 2 mol of epoxy groups based on a total molecular weight of 3000 for the resin. Modifying the molecular weight of the resin to 900, as is suggested by the above modifications is prima facie obvious, and suggests the claimed structure when n=2, m=9 and m/n=4.5. Therefore, it can be seen that the structures of the liquid diene rubber having epoxy groups overlaps with the claimed structure.
As to claims 7-8 and 16-17, Satoji teaches that the compounds are mixed, kneaded and molded (col. 9, ll. 29-31).
Claims 1-2, 4, 6-8, 10-13, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-168856, as evidenced by JP 2004-152936; however, for convenience, the machine translations will be cited below.
JP ‘856 teaches a composition comprising the following (p. 3, [0010]):
a rubber blend comprising a diene rubber and an epoxidized diene rubber, where the diene rubber is specifically listed to include chloroprene rubber (p. 3, [0017]) and the epoxidized diene rubber is present in an amount of 10-60 wt%, having a molecular weight of preferably 800-8,000 (p. 4, [0020]), exemplified as liquid polybutadiene rubber “BF-1000” having a molecular weight of 1000 with the following structure (see table, Examples 1 and 3), as evidenced by JP ‘936 ([0011] and [0015] of the foreign document):
PNG
media_image1.png
208
311
media_image1.png
Greyscale
;
1-100 phr of a crosslinking agent, specifically listed to include organic peroxides such as dicumyl peroxide, 2,5-dimethyl-2,5-di(tertbutylperoxyhexyne-3, 1,3-bis(tert-butyl peroxyisopropyl)benzene (p. 4, [0023]);
a curing agent and a foaming agent.
This suggests a composition comprising 11-150 parts epoxidized diene rubber based on 100 parts of the chloroprene diene rubber, and a minimum of 1.1 phr crosslinking agent, the ranges of which overlap with the claimed ranges of more than 0-25 phr diene-based polymer with epoxy groups and 0.3-1.8 phr peroxide, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
JP ‘856 does not necessarily teach whether the chloroprene rubber is a homopolymer or copolymer; however, these are both known in the art and using either a homopolymer or copolymer is prima facie obvious.
JP ‘856 is prima facie obvious over instant claims 1-2, 4, 6, 10-13, 15, 18-20.
As to claims 7-8 and 16-17, JP ‘856 teaches that the kneaded composition can be molded into a predetermined shape (p. 8, [0047]-[0048]).
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-168856, as evidenced by JP 2004-152936, as applied above to claims 1-2, 4, 6-8, 10-13, 15-20, and further in view of WO 2021/053926. For convenience, the machine translation of WO ‘926 will be cited below.
JP ‘936 is prima facie obvious over instant claims 1-2, 4, 6-8, 10-13, 15-20, as described above and applied herein as such, as JP ‘936 teaches a foamed rubber composition for providing vibration-proof and sound-proof properties (p. 1, [0002]).
JP ‘936 teaches the rubber as comprising a blend of a diene rubber and an epoxidized diene rubber, where the diene rubber is specifically listed to include chloroprene rubber.
JP ‘936 does not teach or suggest the chloroprene rubber as a copolymer of acrylonitrile, as claimed; however, WO ‘926 teaches that a copolymer of chloroprene and acrylonitrile is suitable or use in foam rubber for use as a sound absorbing material, teaching that the inclusion of the nitrile monomer in the rubber is preferred from the viewpoint that excellent sound absorbing characteristics in the low frequency range can be easily obtained (p. 5).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a copolymer of chloroprene and acrylonitrile as the chloroprene rubber in JP ‘856, as WO ‘926 teaches that this is copolymer is desirable in view of providing sound absorption at low frequency ranges, where JP ‘936 similarly desires preparing a sound absorbing foam.
JP ‘936 in view of WO ‘926 is prima facie obvious over instant claims 3 and 9.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Brieann R Johnston/Primary Examiner, Art Unit 1766