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 .
Response to Amendment
This office action is responsive to the amendment filed on 08 July 2026. As directed by the amendment: claims 1, 2 & 8-13 have been amended, claim 7 has been cancelled, and claim 14 has been added. Thus, claims 1-6 & 8-14 are presently pending in this application.
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 & 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Otani (US 2020/0332080 A1; cited in applicant’s IDS received 27 June 2023) in view of Nadkarni et al. (US 6,376,036; hereafter Nadkarni).
Regarding claim 1, Otani discloses a rubber composition (“ethylene acrylate rubber compositions”) for hoses (see para. 48), the rubber composition comprising:
a ternary copolymer (para. 18) comprising each constituent unit of ethylene (para. 18, lines 5-6: “main monomer components…are ethylene and an acryl acid alkyl ester…”), a (meth)acrylic acid ester (para. 19: “…such acrylic acid alkyl ester may be methyl acrylate…”), and a carboxyl group-containing monomer comprising a carboxyl group (para. 20: “The…rubber employs an ethylene acrylate rubber with a cross-linking group…. Such a cross-linking group is a carboxyl group, epoxy group, or halogen group. Among such groups, carboxyl group is preferable…”);
Note: as explained by both Otani (para. 22) and applicant’s own specification (para. 88), such terpolymers are commercially available, e.g., under the trade name VAMAC® by DuPont.
hexamethylenediamine carbamate (as a cross-linking agent; para. 35: “hexamethylene diamine carbamate or the like…”, see also para. 33-36 & para. 59);
diazabicycloundecene (as a cross-linking promoter; para. 37: “1,8-diazabicyclo [5.4.0] undec-7-ene (DBU)” & para. 60: “DBU (diazabicycloundecene)”;
Note: Otani suggests the use of commercially available “Vulcofac ACT55 (Safic-Alcan)” (para. 37), the same commercial product proposed in applicant’s specification (para. 91).
carbon black (paras. 12, 39 & 40; e.g., in para. 39: “Carbon black is added in order to reinforce an ethylene acrylate rubber composition…”); and
a plasticizer (paras. 23-32 & paras. 53-54; e.g., in para. 26, several plasticizers are suggested, including a trimellitate ester based plasticizer, a pyromellitate ester based plasticizer etc.).
With respect to the limitation wherein the rubber composition has a content of the carbon black of from 82 to 87 parts by mass per 100 parts by mass of the ternary copolymer, Otani discloses that the carbon black is preferably provided in a range from 20 to 150 parts by mass per 100 parts by mass of the ternary copolymer (i.e., the ethylene acrylate rubber) and, more preferably, an amount from 30 to 100 parts by mass (para. 40).
While Otani does not explicitly disclose the content being from 82 to 87 parts by mass per 100 parts by mass of the copolymer, as set forth in MPEP § 2144.05(I), in the case 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 USPQ 90 (CCPA 1976).
Furthermore, as set forth in MPEP § 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").
As noted by Otani, the carbon black is added to reinforce the composition (para. 39); amounts less than 20 parts per mass may fail to maintain tensile strength while amounts over 150 parts by mass may be difficult to process (para. 40).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the of the claimed invention to modify the composition of Otani to have a content of the carbon black of from 82 to 87 parts by mass per 100 parts by mass of the ternary copolymer as a matter of routine optimization (e.g., providing a desired balance between strength and flexibility/workability for a particular application), especially since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
While Otani is reasonably seen as rendering obvious the limitations of claim 1, to promote compact prosecution, the following additional teaching is provided.
Nadkarni is generally directed to a hose for automotive applications and teaches that such hoses should have “good flexibility” and “high strength” and must be capable of withstanding “temperature extremes in under-the-hood applications” (col. 1, lines 11-21).
Nadkarni teaches a hose layer (i.e., an outer layer) may be formed from a ternary copolymer comprising ethylene, acrylate, and an unsaturated carboxy acid (col. 4, lines 42-54). In Table 2 (in col. 5), Nadkarni suggests the use of Vamac G and Vamac HG by Dupont.
Finally, Nadkarni teaches that this ethylene acrylate terpolymer hose layer may have “80 parts by weight of carbon black” (col. 2, lines 54-57; see also table 2 & published claims 4 & 5).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Otani to have a content of the carbon black of from 82 to 87 parts by mass per 100 parts by mass of the ternary copolymer, in view of the teachings of Nadkarni, which teaches a content of carbon black of 80 parts by mass per 100 parts of an ethylene acrylate terpolymer hose layer, in order to provide a hose layer with a desired balance of properties for a particular application (e.g., as an automotive hose), considering that Otani already discloses a preferred content of carbon black to be in the range of 30 to 100 parts by mass, whereby the 80 parts by mass value taught by Nadkarni is one suitable example falling within the preferred range, and further considering that it has been held that a prima facie case of obviousness exists even where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Examination Note: to promote compact prosecution, attention is drawn to US 2018/0105686 A1, cited in the PTO-892 provided with the previous action. Examples 1-3 in table 1-1 thereof reveals compositions which differ only in the amount of carbon black, the amounts being 80, 90, and 100 respectively, wherein an increasing amount of carbon black results in an increase in tensile strength and hardness, with a corresponding decrease in elongation at break.
Regarding claim 4, Otani discloses the additional limitation wherein the plasticizer comprises an ester plasticizer (see paras. 26-29: e.g., “…at least one plasticizer selected from the group consisting of a polyether ester based plasticizer, a trimellitate ester based plasticizer, a pyromellitate ester based plasticizer and a hydrogenated hydrocarbon based plasticizer”).
Regarding claim 5, Otani discloses or otherwise renders obvious the additional limitation wherein a content of the plasticizer is 5 parts by mass or more and 15 parts by mass or less per 100 parts by mass of the ternary copolymer.
In particular, Otani suggests a preferred content range for the plasticizer of “10 to 20 parts by mass” (para. 31), which overlaps the claimed range and, as set forth in MPEP § 2144.05(I), In the case 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 USPQ 90 (CCPA 1976).
Furthermore, Otani discloses, in Table 1 (pg. 4), several examples which fall within the claimed range:
Example 1 comprises 10 parts by mass of an ester based plasticizer (clearly within the claimed range of 5 to 15).
Examples 3 & 4 each utilize a blend of two ester based plasticizers, totaling 15 parts by mass, with one plasticizer being 10 parts by mass and the other being 5 parts by mass. Whether considered together (e.g., as 15 parts by mass) or separately (as 5 parts by mass; and 10 parts by mass, respectively), each of these also falls within the claimed range.
Regarding claim 6, Otani discloses or otherwise renders obvious the additional limitation wherein a content of the hexamethylenediamine carbamate is 1 part by mass or more and 1.6 parts by mass or less per 100 parts by mass of the ternary copolymer.
In particular, Otani discloses that the cross-linking agent (which may be hexamethylenediamine carbamate; see para. 35) may be provided in a range from 0.05 to 30 parts by mass per 100 parts by mass of the copolymer, with a “preferred” range of 0.1 to 10 parts by mass, and a “more preferred” range of 0.3 to 1 parts by mass (para. 36).
As can be seen, the two broader ranges clearly encompass the claimed range, while the narrowest preferred range overlaps the claimed range. As set forth in MPEP § 2144.05(I), In the case 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 USPQ 90 (CCPA 1976).
In the examples set forth in Table 1 (pg. 5), Otani discloses the use of 0.9 parts by mass of hexamethylene diamine carbamate, which is clearly close to the claimed range of 1 to 1.6 parts by mass. As further set forth in MPEP § 2144.05(I), a prima facie case of obviousness exists even where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Furthermore, as set forth in MPEP § 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").
If not already seen as such would have been obvious to a person having ordinary skill in the art before the effective filing date of the of the claimed invention to modify the composition of Otani to have a content of the hexamethylenediamine carbamate of 1 part by mass or more and 1.6 parts by mass or less per 100 parts by mass of the ternary copolymer, as a matter of routine optimization (e.g., to control the degree of cross-linking in the final composition), especially since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Otani in view of Nadkarni as applied to claim 1 above, and further in view of Cunningham (US 7,063,181) and Beck (US 2005/0059763 A1).
Regarding claim 2, with respect to the limitation wherein the rubber composition it crosslinked with crosslinking performed through only primary crosslinking, Otani discloses that the cross-linking process “may be performed in a single stage, or in two stages” (para. 47). While Otani explains that the second stage serves to “securely cross-link the…composition up to the internal portion”, as set forth in MPEP § 2144.04(II)(A), it has been held that omission of a step or element is obvious if the function of the step or element is not desired.
Thus, a person having ordinary skill in the art would have understood that the second cross-linking step is optional, and may be omitted if a lower degree of cross-linking was desired or otherwise considered sufficient for a particular application.
Examination Note: to promote compact prosecution, it is noted that the use of only primary crosslinking, or otherwise omitting an (optional) secondary crosslinking step, is well-known in the art. See, e.g., US 2017/0190868 A1 to Furukawa [e.g., see abstract: “an ethylene-acrylic rubber composition that is excellent in the compression set and… crosslinking bonding even when no secondary crosslinking is caused…”]; US 2020/0002523 A1 to Furuko et al. [Para. 103 & 108]; and US 2020/0216625 A1 to Yagi (e.g., para. 286, characterizing a secondary crosslinking step as “not essential”).
With respect to the limitations wherein an elongation at break of a cured product after the primary crosslinking is 220% or more, and a type A durometer hardness of the cured product after the primary crosslinking is 75 or more and 85 or less, as set forth in MPEP § 2112.01(I), 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).
Similarly, as set forth in MPEP § 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In view of the above, as the composition of Otani (as modified above to have a content of the carbon black of from 82 to 87 parts by mass per 100 parts by mass of the copolymer) is identical or substantially identical to the claimed composition and may be produced by a substantially identical process (i.e., single stage / primary-only crosslinking), a prima facie case of obviousness has been established regarding the claimed elongation-at-break and type A durometer hardness values.
See also MPEP §2113(II): “As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
However, to promote compact prosecution, the following additional teachings are provided.
Cunningham teaches a hose (10) for automotive applications, including at least one layer (14) formed from an ethylene-acrylic rubber composition. Cunningham suggests (col. 3, lines 22-27) that the layer (14) should have a hardness in the range of approximately 70-80 durometer as a “durometer value below 70 may be too soft to obtain an adequate seal, whereas a durometer value above 80 renders it more difficult to manufacture…and provides less noise dampening properties”.
Beck also teaches a hose for automotive applications, e.g., a transmission oil cooler hose (see abstract) and compositions for such hoses (which may at least partially comprise ethylene-acrylic rubber (AEM)), wherein the hose is vulcanized / crosslinked (see para. 75).
In the table on pg. 5, Beck discloses properties of various compositions for such hoses, including original properties, and properties of such hoses after exposure to various environments (e.g., 70 hours @175°C in transmission fluid, etc.). In at least the first three examples, the original properties of the hose exhibit elongations of 262, 240, and 265 (each >220%), and type A durometer (shore) hardness of 74, 79, 76 (the latter two being within the claimed range; the first being clearly close).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the rubber composition for hoses of Otani such that an elongation at break of a cured product (i.e., after the single-stage / primary crosslinking) is 220% or more (e.g., 240-265 as in Beck), and such that a type A durometer hardness of the cured product (after the primary crosslinking) is 75 or more and 85 or less (e.g., 76 or 79 as in Beck, each within the range of 70-80 as suggested by Cunningham), in view of the teachings of Cunningham and Beck, to provide a composition for a hose layer with properties in ranges known to be suitable for use in particular applications (e.g., as an automotive fluid hose, such as a transmission oil hose, etc.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Otani in view of Nadkarni as applied to claim 1 above, and further in view of Koelblin (US 2012/0227997 A1).
Regarding claim 3, Otani discloses various examples of carbon black which may be used, including “FEF”, among others (para. 0039).
Note: as understood the ASTM designation N550 corresponds to FEF carbon black: see applicant’s own para. 87: “FEF carbon black, N550”).
Nadkarni also teaches the use of N550 carbon black (see footnote 10 in table 2: “N550…DBP absorption No. 121; Continex N550 by Continental Carbon”).
With respect to the limitations wherein the carbon black comprises a carbon black C1 having a nitrogen adsorption specific surface area of 38 m2/g or more and 45 m2/g or less and a DBP oil absorption of 100 ml/100 g or more and 130 ml/100 g or less, as best understood, FEF / N550 carbon black would reasonably be expected to have properties falling within the claimed ranges. However, to promote compact prosecution, the following additional teaching is provided.
Koelblin teaches (para. 104) a commercially available carbon black (“Purex HS 45”) of “improved N550” type having a BET specific surface area (nitrogen adsorption specific surface area) of 41 m2/g (within the claimed range of 38-45) and an oil absorption of 121 ml/100g (within the claimed range of 100-131, and identical to the 121 ml/100g value of the N550 taught by Nadkarni).
Note: “BET specific surface area” and “nitrogen adsorption specific surface area” are understood to be synonymous in this context: the method of determining surface area by nitrogen specific adsorption is based upon the Brunauer–Emmett–Teller (BET) theory.
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Otani such that the carbon black comprises a carbon black C1 having a nitrogen adsorption specific surface area of 38 m2/g or more and 45 m2/g or less and a DBP oil absorption of 100 ml/100 g or more and 130 ml/100 g or less (e.g., an FEF/N550 carbon black, having a surface area of 41 m2/g and an oil absorption of 121 ml/100g), in view of the teachings of Koelblin, as Otani already discloses that various grades of carbon black may be used, including FEF (i.e., N550), which is otherwise known to be used in similar applications (e.g., as in Nadkarni), with Koelblin teaching a commercially available example of such a carbon black, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 8-10 & 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Otani in view of Nadkarni as applied to claim 1 above, and further in view of Beck.
Regarding claim 8, Otani discloses that the rubber composition may be used to at least partially form a hose (i.e., a flexible pipe), and may be used for automobile applications (para. 48; see also para. 3).
While Otani does not specifically disclose such a hose (pipe) to be a transmission oil pipe formed at least partially from the rubber composition, as set forth in MPEP § 2114(II), a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
However, to promote compact prosecution, the following additional teaching is provided.
Beck teaches a hose (flexible pipe) which may be used as a transmission oil pipe for automobiles (see abstract, para. 69, etc.), which may comprise an extruded inner layer (para. 72), a reinforcement layer (para. 73), and an outer layer (para. 74).
Beck teaches that various polymeric materials, including ethylene-acrylic rubbers (AEM) are known to be used for these applications (para. 007), and, even for the primary polymer disclosed by Beck (i.e., a vinyl ester copolymer), such may be blended with ethylene-acrylic rubber (paras. 13 & 21).
For the outer layer, Beck teaches that the layer may be made from “any of the commercially recognized materials for such use, e.g., elastomers…”, “Typically, the protective cover is a synthetic elastomer having good heat resistance, oil resistance, weather resistance and flame resistance” and may be, for example, a “vinylethylene-acrylic rubber” or an “acrylic rubber”, among others (para. 77).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a transmission oil pipe for automobiles at least partially from the rubber composition for hoses according to claim 1 (i.e., the composition of Otani, as otherwise modified above) in view of the combined teachings of Otani and Beck, as Otani already discloses that the composition, which has oil and heat resistance, may be “widely used in various situations such as a transport machine like an automobile…and a hose”, and Beck otherwise teaches that synthetic elastomer materials having “good heat resistance” and “oil resistance” may suitably be used to form such a transmission oil pipe, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
The above combination would have otherwise been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention as the simple substitution of one known heat and oil resistant elastomer (e.g., the elastomers originally taught for the transmission oil pipe of Beck) for another (i.e., the ethylene-acrylate terpolymer composition of Otani) to obtain predictable results (e.g., a transmission oil pipe having the benefits of the Otani composition, e.g., improve resistance to hydrolysis, etc.).
Regarding claim 9, the combination of Otani, Nadkarni, and Beck above renders obvious the additional limitation wherein a transmission oil pipe comprises an inner pipe and an outer pipe that together form the transmission oil pipe, wherein both of the inner pipe and the outer pipe are a cured product of the rubber composition for hoses according to claim 1 (i.e., the composition of Otani, as otherwise modified above; which has been crosslinked / vulcanized; see discussion provided for claim 2; see also Beck, para. 75 & Otani, para. 47).
In particular, as previously noted, Beck teaches that such a pipe may comprise “an inner layer…produced in a mono-extrusion of an annular configuration” (para. 72)(i.e., an inner pipe) and “an outer layer” applied over a reinforcement layer “in a mono-extrusion of an annular configuration” (para. 74).
Regarding claim 10, the combination of Otani, Nadkarni, and Beck set forth above further renders obvious a method for producing a transmission oil pipe for automobiles (i.e., a transmission oil pipe of the structure generally taught by Beck, using the rubber composition of Otani as otherwise modified above), comprising steps of:
producing an uncrosslinked pipe which is not yet crosslinked (i.e., as generally taught by Beck in paras. 71-74, the inner layer is extruded, a reinforcement layer is applied, and the outer layer is applied; crosslinking / vulcanizing is not yet performed) and which is formed at least partially from the rubber composition for hoses according to claim 1 (as set forth for claim 8 above); and
crosslinking the rubber composition (see Beck, para. 75: “vulcanizing the composite tubular structure in an autoclave),
wherein the crosslinking step involves performing only primary crosslinking by heating the uncrosslinked pipe (i.e., Otani discloses that the crosslinking may be performed in a single stage, at a heated condition from about 150ºC to 230°C [para 47]; Beck otherwise recites only a single vulcanization step, which may be performed using an autoclave, i.e., a pressurized heated vessel [para. 75]; see related discussion in the grounds of rejection for claim 2 above)..
Regarding claim 12, the combination of Otani, Nadkarni, and Beck set forth above further renders obvious the additional limitations wherein the step of producing the uncrosslinked pipe involves using the rubber composition for hoses as a rubber composition for an inner pipe (i.e., an inner layer of the transmission oil pipe, as may be produced by mono-extrusion; see para. 72 of Beck) and as a rubber composition for an outer pipe (i.e., an outer layer of the transmission oil pipe, as may be applied over a reinforcement layer by mono-extrusion; see para. 74 of Beck), and stacking the rubber composition for an outer pipe on the rubber composition for the inner pipe (i.e., stacked on the inner pipe after applying reinforcement layer on the inner pipe; see Beck, paras. 73-74), and
the step of crosslinking the rubber composition involves performing only the primary crosslinking on the rubber composition for hoses of the inner and outer pipes by heating the uncrosslinked pipe (see discussion for claim 10 above, not repeated for brevity; the crosslinking / vulcanizing step taught by Beck is performed after the outer pipe is stacked on the reinforcement layer and inner pipe).
Regarding claim 13, the combination of Otani, Nadkarni, and Beck set forth above further renders obvious the additional limitation wherein the method includes a step of disposing a reinforcing layer (see Beck, para. 73) between the rubber composition forming the inner pipe (i.e., the inner layer; para. 72 of Beck) and the rubber composition forming the outer pipe (i.e., the outer layer; para. 74 of Beck).
Regarding claim 14, the combination of Otani, Nadkarni, and Beck set forth above further renders obvious a transmission oil pipe for automobiles (i.e., a transmission oil pipe made by the methods set forth in claims 10, 12 & 13 above) comprising an inner pipe (i.e., an inner layer of a transmission oil pipe, as may be produced by mono-extrusion; see para. 72 of Beck), a reinforcing layer (see Beck, para. 73), and an outer pipe (i.e., an outer layer of a transmission oil pipe, as may be applied over a reinforcement layer by mono-extrusion; see para. 74 of Beck) that together form the transmission oil pipe, wherein the reinforcing layer is disposed between the inner pipe and the outer pipe (see paras. 71-74 of Beck), wherein both of the inner pipe and the outer pipe are a cured product of the rubber composition for hoses according to claim 1 (for use of the rubber composition for hoses according to claim 1, see discussion provided for claims 8-10 above; with respect to the compositions being cured, see discussion provided for claims 2, 10 & 12 above; see also Beck, para. 75 & Otani, para. 47).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Otani in view of Nadkarni and Beck as applied to claim 10 above, and further in view of Cunningham.
Regarding claim 11, with respect to the limitations wherein after the crosslinking step in which the rubber composition is crosslinked by performing only primary crosslinking, a resultant cured product of the rubber composition has an elongation at break of 220% or more and a type A durometer hardness of 75 or more and 85 or less, as set forth in MPEP § 2112.01(I), 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).
Similarly, as set forth in MPEP § 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In view of the above, as the composition of Otani (as modified above to have a content of the carbon black of from 82 to 87 parts by mass per 100 parts by mass of the copolymer) is identical or substantially identical to the claimed composition and may be produced by a substantially identical process (i.e., single stage / primary-only crosslinking), a prima facie case of obviousness has been established regarding the claimed elongation-at-break and type A durometer hardness values.
See also MPEP §2113(II): “As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
However, to promote compact prosecution, the following additional teachings are provided.
Cunningham teaches a hose (10) for automotive applications, including at least one layer (14) formed from an ethylene-acrylic rubber composition. Cunningham suggests (col. 3, lines 22-27) that the layer (14) should have a hardness in the range of approximately 70-80 durometer as a “durometer value below 70 may be too soft to obtain an adequate seal, whereas a durometer value above 80 renders it more difficult to manufacture…and provides less noise dampening properties”.
Beck also teaches a hose for automotive applications, e.g., a transmission oil cooler hose (see abstract) and compositions for such hoses (which may at least partially comprise ethylene-acrylic rubber (AEM)), wherein the hose is vulcanized / crosslinked (see para. 75).
In the table on pg. 5, Beck discloses properties of various compositions for such hoses, including original properties, and properties of such hoses after exposure to various environments (e.g., 70 hours @175°C in transmission fluid, etc.). In at least the first three examples, the original properties of the hose exhibit elongations of 262, 240, and 265 (each >220%), and type A durometer (shore) hardness of 74, 79, 76 (the latter two being within the claimed range; the first being clearly close).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the rubber composition for hoses of Otani (i.e., as utilized in a method for producing a transmission oil pipe as otherwise set forth for claim 10 above) such that, after the crosslinking step in which the rubber composition is crosslinked by performing only primary crosslinking, a resultant cured product of the rubber composition has an elongation at break of 220% or more (e.g., 240-265 as in Beck) and a type A durometer hardness of 75 or more and 85 or less (e.g., 76 or 79 as in Beck, each within the range of 70-80 as suggested by Cunningham), in view of the teachings of Cunningham and Beck, to provide a composition for a cured hose layer with properties in ranges known to be suitable for use in particular applications (e.g., as an automotive fluid hose, such as a transmission oil hose, etc.).
Response to Arguments
Applicant's arguments filed 08 July 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that “the presently claimed amount of carbon black, 82 to 87 per 100 parts of the ternary copolymer, is important for achieving balanced elongation at break and hardness at an excellent level”, and the related argument that narrowly defined ranges of compositional components are not made obvious by broadly defined ranges which literally encompass the narrowly defined ranges where applicant proves that the narrowly defined ranges are critical to achieving an unexpectedly superior result, these arguments are not found to be persuasive.
As set forth in the previous action (and again in this action), Otani discloses that carbon black may be provided in a range from 30 to 100 parts by mass, provides motivation to optimize within the claimed range by explaining that amounts less than 20 parts may fail to maintain tensile strength while amounts over 150 may be difficult to process. Moreover, Nadkarni teaches that an ethylene acrylate terpolymer hose layer may have “80 parts by weight of carbon black”, which is within applicant’s broader disclosed range and at least close to applicant’s now claimed preferred range. As set forth in MPEP § 2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Applicant’s specification as originally filed sets forth a range of carbon black of from 77 to 87 parts by mass, with the now-claimed narrower range of from “82 to 85 parts by mass” only being cited as “preferable” for “providing a superior effect”. Applicant points out that the higher amount “have further improved hardness and M100 while maintaining excellent elongation at break”. However, applicant has not established this narrower range to be critical to achieving an unexpected result.
As set forth in MPEP § 716.02, any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As set forth in MPEP § 716.02(b)(I), the burden is on applicant to establish that results of the claimed range are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.").
As set forth in MPEP § 716.02(c)(II), "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
Attention is drawn to US 2018/0105686 A1 (cited in the PTO-892 provided with the previous action). Tables 1-1 and 1-2 therein include 9 examples of rubber compositions for hoses comprising levels of carbon black of 80, 90, or 100, respectively. Comparing examples 1-3 of Table 1-1 reveals they comprise the same composition except for the amount of carbon black, wherein an increasing amount of carbon black results in an increase in tensile strength and hardness, with a corresponding decrease in elongation at break.
This relationship corresponds to the behavior suggested by Otani, where increasing carbon black increases tensile strength (but may eventually lead to decreased processibility, i.e., increased hardness / decreased elongation, etc.).
In the instant case, applicant’s examples also show increasing amounts of carbon black from 77 to 87 increases hardness and tensile strength while decreasing elongation at break. Thus, the results appear to be expected results of increasing the percentage of carbon black, rather than unexpected results attributable to the particular range
Applicant argues that, because Otani states that the second crosslinking stage serves to “securely cross-link the…composition to the internal portion” and as “there is no indication by Otani…that securely cross-linking the…composition is something not desired or required”, Otani does not suggest that the secondary crosslinking is optional. This argument is not found to be persuasive.
Otani explicitly recites that cross-linking “may be performed in a single stage, or in two stages” (para. 47). While Otani suggests that the second stage may securely link the composition to the internal portion, as set forth in MPEP § 2123(I), a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
See also MPEP § 2123(II): disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
As Otani clearly discloses that crosslinking may be performing in a single stage, this disclosure is not invalidated merely because Otani attributes certain benefits to a second crosslinking stage.
Applicant’s arguments regarding Furukawa, Furuko, and Yagi are not found to be persuasive. These references were recited to promote compact prosecution by demonstrating that it was already known in the art that rubber compositions in general (and acrylic rubbers in particular) were known to be usable with only primary crosslinking. Furukawa discloses an ethylene-acrylic rubber composition that is “excellent in the compression set and… crosslinking bonding even when no secondary crosslinking is caused…” while Furuko teaches that whether or not secondary crosslinking is required for an acrylic rubber may depend on “the shape and size of a crosslinked rubber” (i.e., the geometry of the component).
As set forth in MPEP § 2123(I), "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
It is noted that applicant’s own specification does not necessarily characterize the omission of a second crosslinking step to be critical to achieving an unexpected result. The specification suggests that crosslinking “may be performed through only primary crosslinking” (para. 71), and submits that “the secondary crosslinking is preferably not performed from the perspective of easily maintaining excellent elongation at break and hardness in an appropriate range…” (para. 74), but also admits that “The pipe obtained through primary crosslinking may be subsequently subjected to secondary crosslinking as long as the elongation at break….and the hardness is in an appropriate range… can be maintained in a balanced state” (para. 74).
Finally, it is noted that, even when a rubber composition for hoses is intended to be cross-linked through both primary and secondary crosslinking, such a composition would reasonably read on the claimed composition after primary crosslinking, prior to the secondary crosslinking step. Similarly, a pipe formed from such a composition, even if intended to undergo both primary and secondary crosslinking steps, would read on the claimed pipe after the primary crosslinking step, prior to the secondary crosslinking step.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
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 Richard K Durden whose telephone number is (571) 270-0538. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM ET.
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 supervisors can be reached by phone: Kenneth Rinehart can be reached at (571) 272-4881; Craig Schneider can be reached at (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Richard K. Durden/Examiner, Art Unit 3753
/ROBERT K ARUNDALE/Primary Examiner, Art Unit 3753
Prosecution Insights