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 August 17, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to recite the limitations of the composition comprising a conjugate resin and a salt of conjugate resin acid, and the requirements of Expression B, taken from instant specification. In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. Thus, the following action is properly 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, 3-5, 11, 13-17 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 3-13 of an Office action mailed on July 24, 2026 and is incorporated here by reference.
5. With respect to the amended claim 1,
Sunada et al discloses a rubber composition comprising a sulfur-modified chloroprene polymer comprising sulfur atoms in the molecule,
obtained by emulsion polymerization of chloroprene alone (as to instant claim 11) in the presence of sulfur,
wherein the content of sulfur that is bound to the sulfur-modified chloroprene polymer (“bound sulfur”) (i.e. sulfur constituting the sulfur-modified chloroprene as cited in instant claim 1) is 0.2-0.6%mass, with all specific examples showing the presence of 0.27-0.53%wt of the bound sulfur, well within the claimed range of that (Abstract, Tables 1-2) and the ratio of the amount of the bound sulfur to the total amount of sulfur contained in the entire rubber is 0.28-0.5 (Abstract); wherein the total sulfur content means the total content of all sulfur atoms contained in the entire sulfur-modified chloroprene rubber composition, including bound sulfur and sulfur not bound to the sulfur-modified chloroprene polymer ([0034]).
The specific examples 3 shows the content of bound sulfur being 0.27%mass (Table 1, as to instant claims 3, 12) and the total sulfur content being 0.9% mass (as to instant claims 5, 17), and thereby the content of sulfur not bound to the chloroprene of
(0.9-0.27) =0.63%mass (as to instant claims 14-15, 17).
6. Given in the sulfur-modified chloroprene rubber composition of Sunada et al, the content of bound sulfur is 0.27%mass (Example 3 of Sunada et al)
the claimed Expression (B) of claim 1 is:
13.90 x 0.27 – 4.00 = 3.75 – 4.00 = -0.25 < 0
i.e. Expression (B) of claim 1 is fulfilled.
7. It is further noted that at the content of the bound sulfur of 0.27-0.287%mass, the Expression (B) of claim 1 will be a negative number or zero, and therefore, no matter how much of the conjugate resin present, from the trace amounts to infinitely large amount, the Expression (B) will always be fulfilled.
Further, based on the data presented in Tables 1 and 2 of instant specification, any inventive examples where the Expression B is fulfilled, have a product of (a)x(b) of 6 or less, and in any case less than 9 as required by instant claim 1; all inventive and comparative examples comprising bound sulfur in amount of more than 0.22%mass, and 0.27% or more have a shrinkage rate of 6% or less, as required by instant claims.
8. Since Sunada et al explicitly showed the example having a bound sulfur content of 0.27%mass, therefore, it would have been obvious to a one of ordinary skill in the art to choose/prepare and use the sulfur-modified chloroprene compositions comprising 0.27%mass or 0.28%mass of the bound sulfur, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
9. Though Sunada et al does not explicitly recite the amount of used rosin acids, and thus the amount of said rosin acids in the final sulfur-modified chloroprene rubber composition,
Kabayashi et al discloses a sulfur-modified chloroprene rubber produced by emulsion polymerization of a mixture of sulfur and chloroprene (col. 6, lines 24-26) in the presence of rosin acids as the emulsifiers (col. 6, lines 39-57), wherein the content of the rosin acid in the sulfur-modified chloroprene rubber is preferably 2-7%mass from the point of having improved thermal stability, storage stability and reduced exothermicity (col. 5, lines 42-50, Abstract, col. 9, lines 18-24) and wherein the content of the rosin acid in said rubber can be adjusted by modification of the addition amount of the rosin acids added as the emulsifier (col. 5, lines 51-60).
10. Based on the teachings of Kabayashi et al, it would have been obvious to a one of ordinary skill in the art to prepare the sulfur-modified chloroprene rubber comprising the rosin acid in amount of 2%wt, since such amount of the rosin acid is taught in the art as being preferable for providing improved thermal stability, storage stability and reduced exothermicity and it would have been obvious to choose and use such amount as well. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
11. Since both Kabayashi et al and Sunada et al are related to sulfur-modified chloroprene rubber compositions, produced by emulsion polymerization of chloroprene and sulfur in the presence of rosin acids as emulsifiers, used for making belts, air spring and antivibration rubber, and thereby belong to the same field of endeavor, wherein Kabayashi et al explicitly teaches the presence of preferably 2-7%mass of said rosin acids in the sulfur-modified chloroprene rubber to improve thermal and storage stability, and wherein the content of the rosin acid in said rubber can be adjusted by modification of the addition amount of the rosin acids added as the emulsifier, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sunada et al and Kabayashi et al, and to use, or obvious to try to use the rosin acid as the emulsifier in the process of emulsion polymerization of chloroprene and sulfur of Sunada et al in amount so to ensure the presence of 2-7%mass, or 2%wt of said rosin resin in the final sulfur-modified chloroprene rubber composition (as to instant claims 1 and 4), thereby improving thermal stability and storage stability of said rubber composition, and since it would have been obvious to a choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
12. Given in the sulfur-modified chloroprene rubber composition of Sunada et al in view of Kabayashi et al, the content of bound sulfur is 0.27%mass (Example 3 of Sunada et al) and the content of rosin acid is 2%mass (cited as preferable in col. 5, lines 43-44 of Kabayashi et al), therefore,
the claimed Expression (B) of claim 1 is:
13.90 x 0.27 – 4.00 = 3.75 – 4.00 = -0.25 < 2
i.e. Expression (B) of claim 1 is fulfilled.
13. Since the sulfur-modified chloroprene rubber composition of Sunada et al in view of Kabayashi et al is substantially the same as that claimed in instant invention, i.e. comprises both the content of bound sulfur and the amount of the conjugated resin acid in the ranges as claimed in instant invention, also fulfilling the Expression (B) of instant claim 1, therefore, sulfur-modified chloroprene rubber composition of Sunada et al in view of Kabayashi et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise a foamed article, produced from said composition, having a shrinkage rate and the ozone resistance having values and ratings as claimed in instant invention as well, especially since the properties of the foamed article will in turn intrinsically and necessarily depend on the specific conditions used to form said foamed article from the claimed rubber material, as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
14. With respect to unexpected results of instant invention, it is further noted that:
1) a) the claimed amount (X%mass) of sulfur constituting the sulfur-modified chloroprene is 0.27-0.60%mass; the claimed amount (Y%mass) of conjugated resin acid and its salt is 1.00-3.66%mass;
b) the Expression (B) of instant claim 1 is as follows:
13.90X-4.00 < Y;
therefore, any amount of the X in the range of (0.27-0.287) %mass will give result of the expression (13.90X-4.00) as a negative number, and therefore, no matter how much conjugated resin acid/salt is used (i.e. value Y), the expression B) of claim 1 will be fulfilled.
2) On the other hand, the inventive examples 1-5 of Table 1 of instant specification show the presence of the bound sulfur in the range of (0.27-0.35)%mass, which as discussed above provides a negative number of the expression (A), and (1.45-2.29)% of the conjugated resin acid/salt. No examples showing the presence of the conjugated resin acid/salt in amount of (1.00% to less than 1.45%), and (more than 2.29% to 3.66%), for the bound sulfur in the range of (0.27-0.35)%mass, which are within the claimed ranges, and further the values of shrinkage rate and an ozone resistance of foamed articles produced from said samples, were presented.
Further, instant specification does not provide any evidence of criticality in using specifically 1.00-3.66%mass of the conjugate resin acid and salt, especially for the bound sulfur content of 0.27-0.29%mass, since the Expression (B) is fulfilled for said bound sulfur content no matter how much conjugated resin acid/salt is present.
Therefore, the results presented in Tables 1 and 2 of instant specification are not commensurate in scope with the instant claims. 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).
3) It is further noted that all inventive and comparative examples of instant invention, presented in Tables 1 and 2 of instant specification, and showing the presence of any amount of the conjugated resin acid/salt, are having shrinkage of 6.00% or less (see Tables 1 and 2 of instant specification).
4) Further, the property of “zone resistance” is based on a product of (a)x(b) as claimed in instant invention, wherein (a) is a number of cracks and (b) is a dimension of cracks. Both inventive and comparative examples in Tables 1 and 2 of instant specification have the value of (a), i.e. the number of cracks, as number 3. The value of (b) in inventive examples includes 3, i.e. cracks are deep and relatively large (less than 1 mm). The value of (b) in comparative examples is 4, i.e. cracks are deep and large (1 mm) (see [0101]-[0102] of instant specification). However, the values of “1 mm” and “less than 1 mm”, e.g. 0.9 mm are very close. And thereby there is no substantial evidence of criticality in the rubber material comprising the content of the bound sulfur, the content of the conjugated resin acid/salt and the necessity of fulfilling the Expression (A) of instant claim 1 for providing the foamed products having the claimed properties.
5) In addition, the Comparative example 1 having the amount of the bound sulfur of 0.22%mass and no presence of the conjugated resin acid/salt at all, shows the foamed product having cracks that are not even confirmable with the naked eye, and having ranking (b) as 1, ozone resistance ranked as 3 (i.e. within the claimed range) and a shrinkage of 6.20%, which value of shrinkage is very close to the value of 6.00% as claimed in instant invention (see Table 2 of instant specification).
15. Claims 1, 3-11, 13-17 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).
16. The rejection adequately set forth on pages 13-15 of an Office action mailed on July 24, 2026 and the discussion set forth in paragraphs 5-14 above, are incorporated here by reference.
Response to Arguments
17. Applicant's arguments filed on August 17, 2026 have been fully considered, but they are moot in light of new grounds of rejections and discussion set forth above.
18. In addition, with respect to Applicant’s argument that:
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it is noted that, when the content of the bound sulfur is 0.27%, the value of the Expression (B) will be a negative number (-0.25), and will be less than the value of Y, no matter what the value of Y is; and there is no requirement for the value of Y being 3.15.
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 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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