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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 7, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on July 7, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
Examiner-initiated interview
4. An Examiner-initiated interview with Xavier Pillai was conducted on July 21, 2026 to discuss the current amendment and further possible amendments to instant claims to prepare the application for allowance. However, per Applicant’s request, a new Office action is set forth below.
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.
5. Claims 1, 3-11, 13-17 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.
6. Claim 1 recites a limitation of “..a total amount Y of a conjugated resin acid and a salt of a conjugated resin acid…”. However, there is a lack of antecedent basis for said limitation, since the rubber material is cited as comprising only a sulfur-modified chloroprene polymer, and does not cite the presence of a conjugated resin acid and salt thereof.
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.
7. 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).
8. 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 (Abstract, as to instant claim 3) 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 sulfur-modified chloroprene rubber is used for molded articles including sponges (Abstract).
9. 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).
10. The specific example 5 shows the content of bound sulfur being 0.41%mass (Table 2, as to instant claims 3, 12) and the total sulfur content being 0.91% mass (as to instant claims 5, 17), and thereby the content of sulfur not bound to the chloroprene of (0.91-0.41) =0.5%mass (as to instant claims 14-16).
11. As to instant claim 13, Sunada et al is silent with respect to the presence of groups of General Formula (I) or General Formula (II), as cited in instant claim 13, in the sulfur-modified chloroprene polymer, and therefore, it would have been reasonably expected by a one of ordinary skill in the art that the sulfur-modified rubber of Sunada et al is free from either or both groups of General Formula (I) and General Formula (II) as well. 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.
12. The sulfur-modified rubber composition was further vulcanized to give a sponge ([0089]), and further is used for making antivibration rubbers, air springs and belts (Abstract).
13. The sulfur-modified chloroprene is produced by emulsion polymerization in the presence of rosin acids used as an emulsifier ([0043]), the polymerization is carried out to a polymerization degree of 60-95% ([0048]).
14. It is noted that rosin acids are disclosed in instant specification as the conjugate resin acids and a salt thereof, as cited in instant claim 1 (see [0026]-[0027] of instant specification).
15. 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).
16. 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).
17. The sulfur-modified chloroprene rubber is used for making belts, air spring and antivibration rubber (col. 9, lines 11-13 of Kabayashi et al).
18. 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
19. 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 (A) of claim 1 is:
13.90 x 0.27 – 5.10 = 3.75 – 5.10 = -1.35 < 2
i.e. Expression (A) of claim 1 is fulfilled.
20. Given in the sulfur-modified chloroprene rubber composition of Sunada et al in view of Kabayashi et al, the content of bound sulfur is 0.41%mass (Example 5 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 (A) of claim 1 is:
13.90 x 0.41 – 5.10 = 5.7 – 5.10 = 0.6 < 2
i.e. Expression (A) of claim 1 is fulfilled.
21. 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 (A) 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.
22. 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 (A) of instant claim 1 is as follows:
13.90X-5.10 < Y;
therefore, any amount of the X in the range of (0.27-0.37) %mass will give result of the expression (13.90X-5.10) as a negative number, and therefore, no matter how much conjugated resin acid/salt is used (i.e. value Y), the expression (A) of claim 1 will be fulfilled.
2) Further, any amount of X in the range of (0.27-0.44) %mass, which is a significant portion of the claimed range of (0.27-0.60) %mass, will give result of the expression (13.90X-5.10) as less or equal to 1.00%mass, and less than any amount of Y in the range of (1.00-3.66)%mass, and therefore, the presence of any amount of the bound sulfur in the range of (0.27-0.44) % and the content of any amount of the conjugated resin acid/salt in the range of 1.00-3.66% will fulfill the expression (A) of instant claim 1.
3) 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.
4) 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).
5) 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).
6) 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.
7) 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).
23. 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).
24. The discussion with respect to Sunada et al (US 2014/0005354) in view of Kabayashi et al (US 9,328,175), set forth in paragraphs 7-22 above, is incorporated here by reference.
25. Though Sunada et al in view of Kabayashi et al teach the sulfur-modified rubber composition being vulcanized to give a sponge ([0089] of Sunada et al), and further is used for making antivibration rubbers, air springs and belts (Abstracts of Sunada et al and Kabayashi et al), Sunada et al in view of Kabayashi et al do not explicitly teach the sulfur-modified rubber composition further comprising a vulcanizing agent, a foaming agent, and foamed products and wet suit being produced from such compositions.
26. However, Noda et al discloses sulfur-modified chloroprene rubber compositions and further sponge and wet suit ([0005]) produced from said compositions (Title), wherein the sulfur-modified chloroprene rubber composition comprises both chemically bound sulfur in amount of 0.2-0.6%mass and sulfur not bound to the chloroprene rubber (Abstract, [0007], [0013), produced by emulsion polymerization in the presence of rosin acids as emulsifiers ([0029]), wherein said compositions further comprise a foaming agent, a metal compound such as metal oxide as vulcanizing agent ([0039], [0038]), and are further vulcanized ([0038]), i.e. producing a vulcanizate (as to instant claims 7-10).
It is further noted that metal oxides are cited in instant specification as the vulcanizing agents (see [0050] of instant specification).
27. Since Noda et al and Sunada et al in view of Kabayashi et al are related to substantially the same sulfur-modified chloroprene rubber compositions, i.e. comprising both chemically bound sulfur in amount of 0.2-0.6%mass and sulfur not bound to the chloroprene rubber, produced by emulsion polymerization in the presence of rosin acids as emulsifiers, used for making sponges and vulcanizates, and thereby belong to the same field of endeavor, wherein Noda et al further teaches said compositions comprising a foaming agent, a metal compound such as metal oxide as vulcanizing agent, and used for making vulcanizates, sponges and wet suits, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Noda et al and Sunada et al in view of Kabayashi et al, and to include, or obvious to try to include foaming agents and metal oxides as vulcanizing agents in the composition of Sunada et al in view of Kabayashi et al, and use said compositions for making foamed articles/sponges and wetsuits as well, since it would have been obvious to 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).
Response to Arguments
28. Applicant's arguments filed on July 7, 2026 have been fully considered, but they are moot in light of new grounds of rejections and discussion set forth above.
Conclusion
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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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