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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 11 is objected to because of the following informalities:
Claim 11, line 2, recites “at least one or more.” Correction of the redundant language is required. The claim should read as either “at least one” or “one or more.”
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.
Claims 1-12 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.
Claim 1, line 7, recites “a dynamic viscosity at 40°C of 2500 mm2/s.” Because dynamic viscosity uses the unit Pa·s, rather than mm2/s, it is unclear what property is being claimed. Para. 0011 of the instant specification notes that the viscosity is measured in accordance with JIS K 2283:2000, which is a method for measuring kinematic viscosity. For the purpose of further examination, the property being claimed will be taken to be the kinematic viscosity with a unit of mm2/s.
Claims 2-12 are indefinite due to dependence on indefinite claim 1.
Claim 3, line 2, recites “at least one type selected from.” The use of the word “type” so extends the scope of the expression as to render it objectionably indefinite. For the purpose of further examination, it will be taken to read “at least one selected from.”
Claim 4, lines 1-2, recites “the dynamic viscosity if the plasticizer (C) at 40°C is 1 to 2000 mm2/s.” Because dynamic viscosity uses the unit Pa·s, rather than mm2/s, it is unclear what property is being claimed. Para. 0011 of the instant specification notes that the viscosity is measured in accordance with JIS K 2283:2000, which is a method for measuring kinematic viscosity. For the purpose of further examination, the property being claimed will be taken to be the kinematic viscosity with a unit of mm2/s.
Claim 11, line 2, recites “at least one or more types selected from.” The use of the word “type” so extends the scope of the expression as to render it objectionably indefinite. For the purpose of further examination, it will be taken to read “at least one or more selected from.”
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 and 11-12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Giannini et al (US 2019/0092103 A1), as evidenced by ExxonMobil (Escorez 1102 Product Datasheet, May 5 2020) and Haus et al (Viscosity properties of mineral paraffinic base oils as a key factor in their primary biodegradability, November 2000, Biodegradation, Vol 11, p.365-369).
Regarding Claims 1 and 3-8: Giannini teaches a sealing composition comprising a rubber component (para. 0068-0069), a tackifier (para. 0071), and a plasticizer (para. 0072), wherein the tackifier is a C5 petroleum resin, a C9 petroleum resin, or a C5/C9 copolymer (para. 0096) and the plasticizer is a paraffinic oil (para. 0103). Giannini teaches that the tackifier resin is present at 5-50phr (para. 0122) and the plasticizer is present at 25-65phr (para. 0127). Based on calculations, the mass ratio of the plasticizer to the tackifier is from 0.5-13.
Giannini does not explicitly teach the softening point of the tackifier. However, Giannini teaches Escorez 1102 as an example of the tackifier (para. 0096), which ExxonMobil teaches has a softening point of 100°C (p.1, Properties).
Giannini does not explicitly teach the kinematic viscosity of the plasticizer. However, Haus teaches that paraffinic oils typically have kinematic viscosities at 40°C of about 10-600 mm2/s (p.365, Abstract; p.367, Table 1).
Regarding Claim 2: Giannini teaches that the rubber component comprises a styrenic thermoplastic elastomer and/or a diene elastomer (para. 0068-0069), wherein the styrenic thermoplastic elastomer may be a styrene-butadiene copolymer (para. 0076) and the diene elastomer may be a butadiene rubber or an isoprene rubber (para. 0085).
Regarding Claim 10: Giannini teaches 0.1-6phr of a peroxide crosslinking agent (para. 0093).
Regarding Claim 11: Giannini teaches thiazole and thiuram vulcanizing agents (para. 0089).
Regarding Claim 12: Giannini teaches a self-sealing tire using the sealing composition (para. 0002).
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.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Giannini et al (US 2019/0092103 A1), as evidenced by ExxonMobil (Escorez 1102 Product Datasheet, May 5 2020) and Haus et al (Viscosity properties of mineral paraffinic base oils as a key factor in their primary biodegradability, November 2000, Biodegradation, Vol 11, p.365-369).
Giannini teaches all of the limitations of claim 1, wherein the mass ratio of the plasticizer and the tackifier is from 0.5-13, as set forth above. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping mass ratio of the plasticizer and the tackifier is from 0.5-13 and would have been motivated to do so at the lower end of the range to achieve sufficient tackiness/adhesion of the sealant.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, Mark Eashoo can be reached at (571)272-1197. 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.
/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767