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 Objections
Claim 8 is objected to because of the following informalities: lines 6 – 7 of Claim 8 should be amended to recite 4,5-dihydrothiazole in both instances. 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.
Claims 1 – 19 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 because:
Claim 1 sets forth “a mass ratio B/A of a functional group B” but does not previously set forth the sulfur-modified chloroprene rubber comprises a functional group (B). Moreover, the claim does not expressly to what the functional group B is relative in the recited ratio. For the purposes of further examination, Claim 1 will be interpreted as setting forth the sulfur-modified chloroprene rubber comprises a functional group A represented by General Formula (A) and optionally a functional group B represented by General Formula (B) and wherein a mass ratio B/A of functional group B to functional group A in the sulfur-modified chloroprene rubber is 12.00 or less.
Claim 1 further sets forth a total amount of functional group A and the functional group B is 0.10 to 1.00% by mass. It is unclear from the claim how this numerical range is determined. For the purposes of examination, Claim 1 will be interpreted as setting forth the sum total amount of the functional group A and the functional group B if present (A+B) in the sulfur-modified chloroprene rubber is 0.10 to 1.00% by mass based on the total amount of the sulfur-modified chloroprene rubber.
Claim 1 also sets forth a content of the chemical foaming agent is 3 to 16 parts by mass with respect to a total of 100 parts by mass of the sulfur-modified chloroprene rubber, a thiazole compound, and a dithiocarbamic acid-based compound. However, Claim 1 does not set forth the rubber composition comprises either a thiazole compound and a dithiocarbamic acid-based compound prior to this recitation. It is also unclear if the recited thiazole and dithiocarbamic acid-based compounds correspond to the compounds from which are used to provide functional groups (A) and (B) and, if so, if the amounts thereof refer to the total added amount of the compounds during preparation of the sulfur-modified chloroprene or the residual amounts thereof. Additionally, in such instances, the presence of a dithiocarbamic acid compound would not appear to be required by the claim, as functional group (B) is also not required to be present. For the purposes of examination, Claim 1 will be interpreted as setting forth the amount of foaming agent relative to only the sulfur-modified chloroprene rubber, though it is unclear if the instant specification contains support for this interpretation.
As Claims 2 – 19 all ultimately depend on Claim 1, they inherit all issues of indefiniteness raised with respect to Claim 1 and are therefore also rejected under this statute.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0277274 to Tanio et al. (hereinafter Tanio).
Regarding Claims 1, 3, 6, 8, 13, and 16 – 19. Tanio teaches foaming a rubber composition [0026], i.e. a rubber foam composition.
The foam composition includes a chloroprene rubber (CR) ([0010] and [0026]), which may be modified with an accelerating agent such as N-cyclohexyl-2-benzothiazylsulfenamide [0117]. Modification of chloroprene rubber with N-cyclohexyl-2-benzothiazylsulfenamide would be reasonably expected to be a result in a sulfur-modified chloroprene rubber comprising a functional group A corresponding to instantly claimed general Formula (A) in which Ra1 and Ra2 are bonded together to form a benzothiazole group.
In embodiments of Tanio in which the accelerating agent is only N-cyclohexyl-2-benzothiazylsulfenamide and no dithiocarbamic acid-based compound is provided, the instantly claimed mass ratio B/A will correspond to 0, i.e. 12.00 or less, and the content of functional group B will be 0 mass% in the sulfur-modified chloroprene rubber.
A foaming agent is provided in the composition in an amount of 1 to 5 parts by mass based on 100 parts by mass of the rubber component [0107], which comprises 30 to 70 parts by mass of the chloroprene rubber [0061]. Using these values, the foaming agent can be calculated to be provided in an amount of roughly 1.4 to 16 parts by mass relative to 100 parts by mass of the chloroprene rubber component. The foaming agent may specifically be an azo or sulfonyl hydrazide foaming agent [0109], which are set forth as chemical foaming agents in dependent Claims 18 and 19.
The accelerating agent, providing the total amount of the functional groups A and B, is particularly preferably provided in an amount of 0.5 to 2.5 parts by mass of the rubber component, which comprises 30 to 70 parts by mass of the chloroprene rubber [0061]). Using these values, the accelerating agent can be calculated to be provided in an amount of roughly 0.7 to 8.3 parts by mass relative to 100 parts by mass of the chloroprene rubber component. The Office recognizes that the total amount of the functional groups A and B, is not identical to the instantly claimed range of 0.10 to 1.00% by mass. However, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claims 2, 5, and 7. Tanio teaches the rubber foam composition of Claim 1. As indicated in the rejection of Claim 1 above, the accelerating agent - providing the total amount of the functional groups A and B - may comprise N-cyclohexyl-2-benzothiazylsulfenamide. Tanio further teaches a thiuram agents as tetramethylthiuram disulfide may also be provided as accelerating agents [0117]. Tetramethylthiuram disulfide will provide a group corresponding to instantly claimed functional group B of General Formula (B) in which Rb1 and Rb2 correspond to CH3/alkyl groups.
Tanio teaches it is preferred to use a combination of accelerating agents [0119] and further expresses a preference for both thiuram and thiazole accelerating agents [0118]. Tanio is silent with respect to the ratio of such accelerating agents, which will correspond to the instantly claimed mass ratio of B/A. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the ratio of thiuram to thiazole accelerating agents in embodiments of Tanio in which both are used. The motivation would have been that Tanio expressly teaches the concept of using different types of accelerating agents in combination due to their different crosslinking accelerating mechanisms and adjusting their proportions according to the types of accelerating agents used ([0119] and [0121]). A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05)
With respect to the amount of functional group A and the content of the thiazole compound which provides functional group A, the total amount of accelerating agent can be calculated to be provided in an amount of roughly 0.7 to 8.3 parts by mass relative to 100 parts by mass of the chloroprene rubber component as detailed in the rejection of Claim 1. When a combination of thiuram and thiazole accelerating agents is used, the thiazole accelerating agent will be provided in an amount of greater than 0 and up to 8.3 parts by mass. The Office recognizes that this range is not identical to the claimed range of a content of functional group A of 0.04 to 0.40% by mass of the sulfur-modified chloroprene rubber or a content of thiazole compound have 0.0005 to 0.0100 parts by mass per 100 parts by mass of the sulfur-modified chloroprene rubber. However, the ranges do overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claims 4 and 9 – 11. Tanio teaches the rubber foam composition according to Claim 1. In the embodiment of Tanio relied upon in the rejection of Claim 1, functional group B is not present. Therefore, the content of the dithiocarbamic acid-based compound is 0 parts by mass per 100 parts by mass of the sulfur-modified chloroprene and the mass ratio D/C of a content of dithiocarbamic acid-based compound with respect to a content of thiazole compound is also 0. Limitations which are directed to number of carbon atoms of Rb1 and Rb2 in functional group B and the identity of dithiocarbamic acid-based compound do not then further limit such embodiments.
Regarding Claim 12. Tanio teaches the rubber foam composition according to Claim 1 but is silent regarding the Mooney viscosity of a mixture of sulfur-modified chloroprene rubber, thiazole compound, and dithiocarbamic acid-based compound. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teach a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a mixture having a Mooney viscosity in the claimed range, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 14. Tanio teaches a foamed product obtained by foaming the rubber foam composition of Claim 1 [0026].
Regarding Claim 15. Tanio teaches an extrusion molded article made of the foamed product of Claim 14 [0156].
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764