DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed by Applicant on March 11, 2026 has been fully considered. The amendment to instant claims 1-2, 5, 13 is acknowledged. In light of the amendment, the previous rejections not cited below are withdrawn. The previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. Claims 1-5, 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sunada et al (US 2014/0005354) in view of Kabayashi et al (US 9,328,175).
4. The rejection is adequately set forth on pages 3-9 of an Office action mailed on December 18, 2025 and is incorporated here by reference.
5. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sunada et al (US 2014/0005354) in view of Kabayashi et al (US 9,328,175), in further view of Noda et al (JP2014070214, based on machine translation).
6. The rejection is adequately set forth on pages 9-11 of an Office action mailed on December 18, 2025 and is incorporated here by reference.
Response to Arguments
7. Applicant's arguments filed on March 11, 2026 have been fully considered.
8. With respect to Applicant’s arguments regarding unexpected results of instant invention, specifically a unique rubber material having the claimed relationship between X and Y in the inequality (A), providing excellent shock resistance and ozone resistance, it is noted that:
1) Instant claims are silent with respect to any properties of the rubber material, specifically shock resistance and ozone resistance, as argued by Applicant; it is not clear what levels of the shock resistance and ozone resistance are the goal of instant invention.
2) Instant claim 1 is silent with respect to the specific value of X, i.e. the content of sulfur in the sulfur-modified chloroprene polymer, wherein the claimed value of Y is 1%mass or more, i.e. having no upper limit.
3) On the other hand, the inventive examples of instant invention show specifically the content of bound sulfur of 0.27-0.60% (value of X) and the amount of conjugate resin of 1.21-3.66% (Table 1 of instant specification). Thus, the scope of instant claims is significantly broader than the evidence of unexpected results provided by Examples 1-13 of instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
4) Further, comparing the ozone resistance of the inventive and comparative examples of Tables 1 and 2 of instant specification, it is evident that ozone resistance of only inventive examples 2 and 3 is rated as “1”; all other inventive and comparative examples have ozone resistance rated as “3” (large number of cracks). Further, shrinkage rate of comparative examples is about the same (or even lower as in Comparative example 6) as that of the inventive examples 5-13. Therefore, the Comparative examples, where the claimed inequality (A) is not fulfilled, appear to have the same ozone resistance ranked as “3”, i.e. same as in inventive examples, and about the same shrinkage rate as the inventive examples (see Tables 1-2 of instant specification). Therefore, no substantial evidence of unexpected results of instant invention with respect to “suppressing shrinkage and excellent ozone resistance” as cited in paragraph [0105] of instant specification, has been provided.
Conclusion
THIS ACTION IS MADE FINAL. 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, 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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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