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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group 1 and Species A, claims 1-6, 11 and 17-18 in the reply filed on 01/05/2026 is acknowledged. Accordingly, claims 7-10, 12-16 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-6, 11 and 17-18 are currently under examination on the merits.
Claim Objections
Claim 11 is objected to because of the following informalities:”sulfenamide” should read “sulfonamide”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1, 4-6 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asada et al (JP 2000355415, of record, ‘415 hereafter).
Regarding claims 1, 4-6, 11 and 17-18, ‘415 discloses a rubber composition comprising ethylene-propylene-diene rubber as a rubber component (100parts/ 100parts, [0008], [0017], Examples); a rubber-metal adhesion promoter being a metal salt of aliphatic carboxylic acid with Zinc or Zirconium, wherein the carboxylic acid can be a neodecanoic acid or the like (0010], [0022], [0023]); and a vulcanization accelerator which can be a sulfonamide-based vulcanization accelerator or a thiazole-based vulcanization ([0033]).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Asada et al (JP 2000355415, of record, ‘415 hereafter) in view of Musha et al (US 2016/0122944, ‘944 hereafter).
Regarding claim 2, ‘415 teaches all the limitations of claim 1, ‘415 also discloses that the rubber composition may comprise EPDM and other rubber component ([0017]), but does not specifically set forth other rubber component being natural rubber, acrylonitrile-butadiene rubber or butadiene rubber. However, in the same field of endeavor, ‘944 discloses a rubber composition for making a metal cord-rubber composite which has excellent adhesion properties and water and oxygen resistance ([0011]-[0017]), wherein the composition may comprise EPDM, natural rubber, acrylonitrile-butadiene rubber, butadiene rubber or combination thereof ([0035]-[0037]). In light of these teachings, one of ordinary skill in the art would have been motivated to use a combination of these rubber components, including the combination as presently claimed, to render a rubber composition of ‘415 having desired properties. Case low holds that it is prima facie obvious to combine two ingredients each of which is taught by the prior art to be useful for the same purpose. [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06).
Regarding claim 18, modified ‘415 teaches all the limitations of claim 2, ‘415 also discloses that rubber-metal adhesion promoter being a metal salt of aliphatic carboxylic acid, wherein the carboxylic acid can be C2-C20 aliphatic carboxylic acid such as neodecanoic acid or the like (0010], [0022], [0023]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Asada et al (JP 2000355415, of record, ‘415 hereafter) in view of Otsuki et al (US 2017/0253722, ‘722 hereafter).
Regarding claim 3, ‘415 teaches all the limitations of claim 1, ‘415 also discloses the rubber-metal adhesion promoter being a metal salt of aliphatic carboxylic acid (0010], [0022], [0023]), but does not specifically set forth that the metal is bismuth. However, in the same field of endeavor, ‘722 discloses that the bismuth salt of carboxylic acid can be used in a rubber composition to enhance adhesion between rubber and metal ([0006]-[0013]). In light of these teachings, one of ordinary skill in the art would have been motivated to use bismuth salt of aliphatic carboxylic acid as taught by ‘722, to modify the rubber composition of ‘415, in order to render a rubber composition having better adhesion to a metal.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Asada et al (JP 2000355415, of record, ‘415 hereafter) in view of Musha et al (US 2016/0122944, ‘944 hereafter) as applied to claim 2 above, further in view of Otsuki et al (US 2017/0253722, ‘722 hereafter).
Regarding claim 17, modified ‘415 teaches all the limitations of claim 2, ‘415 also discloses that rubber-metal adhesion promoter being a metal salt of aliphatic carboxylic acid (0010], [0022], [0023]), but does not specifically set forth that the metal is bismuth. However, in the same field of endeavor, ‘722 discloses that bismuth salt of carboxylic acid can be used in a rubber composition to enhance adhesion between rubber and metal ([0006]-[0013]). In light of these teachings, one of ordinary skill in the art would have been motivated to use bismuth salt of aliphatic carboxylic acid as taught by ‘722, to modify the rubber composition of ‘415, in order to render a rubber composition having better adhesion to a metal.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782