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 .
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.
Priority
This application is a 371 of PCT/IB2022/000114 03/08/2022; PCT/IB2022/ 000114 has PRO 63/157,995 03/08/2021.
Election/Restrictions
Applicant’s election with traverse of claims 1-2, 12-13, 17-18, 20-21, 25-26, 28, 33-34, 42-43, 48, 50-51 and species i. VNB for the diene; ii. Paraffinic oil for the oil; iii. Carbon black for the filler; iv. A mixture of paraffinic wax and polyethylene wax; v. A mixture of MMBI and ZMMBI in the reply filed on 05/11/26 is acknowledged. The traversal is on ground of rejoinder. Composition claim 53 amended to depends from claim 1 is rejoined and examined in this Office action. Claim 62 is withdrawn and directed to a process claim. Please find the citation from previous Office action “9. The examiner has required restriction between product claims and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.”
Claims 1-2, 12-13, 17-18, 20-21, 25-26, 28, 33-34, 42-43, 48, 50-51, 53 are examined in this Office action.
Claim Rejections - 35 USC § 102
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 12-13, 20-21, 33, 42-43, 50-51 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Horie (US 2007/0021565).
Regarding claims 1-2, 12-13, 20, 33, 42, 50, Horie discloses a rubber composition comprises an ethylene-propylene-diene based (EPDM) such as blend of 5-ethylidene-2-norbornene (ENB) and dicyclopentadiene (DCPD), dicumyl peroxide, SRF carbon black, zinc oxide, antioxidant, paraffinic processed oil, and a cross-linking aid comprising a polyfunctional unsaturated compound such as triallyl isocyanurate, triallyl cyanurate, ethylene glycol dimethacrylate, trimethylolpropane trimethacrylate (read on coagent) (para [0010]-[0015], Examples 1-4). Thus, Horie discloses the structural feature requirement of the rubber composition of claims 1-2, 12-13, 20, 33, 42, 50. Horie in Table, para [0029] further discloses the EPDM rubber composition is subjected to prolonged thermal aging and evaluated for retention of mechanical properties. In Example 1, the EPDM composition is molded and subjected to a hot water immersion test according to JIS K6258, wherein changes in physical properties are determined after immersion at 200 0C for 500 hours. Horie reports that, after this aging exposure, the composition exhibit only a 10% decrease in tensile strength and 15% increase in elongation. Accordingly, the Example 1 composition retains approximately 90% of its original tensile strength and substantially 85% elongation after aging. These values exceed the claimed requirements of retaining at least 55% tensile strength and/or at least 35% elongation at break.
The claimed heat-aging condition is a condition for measuring a performance property of the composition and is not a structural limitations of the rubber composition. Moreover, claim 1 does not limit the heat-aging environment to dry air, oven aging, or any particular aging medium. The hot water thermal aging disclosed by Horie therefore fall within the scope of claimed heat-aging condition. Additionally, the condition of Horie, e.g. 200 0C for 500 hours represents a more severe thermal exposure than claimed 350 0F (approximately 177 0C) for 504 hours, while evaluating the same mechanical properties.
Because Horie discloses the claimed rubber composition and demonstrate that the composition inherently possesses the claimed heat- aging retention characteristics, Horie anticipates claims 1-2, 12-13, 20, 33, 42, 50.
Alternatively, even if claimed heat-aging condition is interpreted as requiring a different aging environment, it would have been obvious to select the disclosed rubber composition and optimize aging resistance because Horie expressly teaches that the purpose of the formulation is improved resistance to prolonged high-temperature exposure and retention of mechanical properties. Further, prior art represents a more severe thermal exposure than claimed and the claimed exposure time is close enough. The claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.”
In re Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 21, Horie discloses carbon black 38.58 phr (70 parts by weight based on 181.5 parts, para [0015]), fall into claimed about 10 to about 100 phr.
Regarding claim 43, Horie discloses 0.83 phr (1.5 parts by weight based on 181.5 parts, para [0015]) is close enough to claimed about 1 to about 10 phr. The claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” In re Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 51, Horie discloses ~10 phr (20 parts by weight based on 201.5 parts, para [0015], [0023), fall into claimed about 5 to about 25 phr.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Horie as applied to claims 1-2 above, and further in view of Ichino (US 2021/0009730).
Horie includes the features of claims 1-2 above.
Regarding claim 48, Horie does not disclose elected species of the EPDM, e.g. VNB.
However, Ichico discloses a rubber composition comprising EPDM comprising 5-ethylidene-2-norbornene (ENB) and functionally equivalent 5-vinyl-2-norbornene (VNB) (para [0040]-[0046]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the VNB of the claims in the composition of Horie because Ichico teaches that the claimed VNB and ENB of Horie are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Horie as applied to claims 1-2 above, and further in view of Dias (US 2004/ 0132894).
Horie includes the features of claims 1-2 above.
Regarding claim 17-18, Horie does not disclose zinc salt internal lubricant, wherein the zinc salt internal lubricant is present in an amount of about 5 to about 30 phr.
However, Dias discloses a rubber composition comprising EPDM and zinc salt internal lubricant such as STRUCKTOL present in an amount of 7 phr (para [0019], [0118], table14), fall into claimed range of about 5 to about 20 phr.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Horie with internal lubricant such as STRUCKTOL in an amount of 7 phr, as taught by Dias. The rationale to do so would have been motivation provided by of Dias that to do so would help to reduce compound viscosity, prevent scorch by minimizing friction between polymer chains during mixing, and aid in mold release during curing.
Claim 25-26, 28, 34 are rejected under 35 U.S.C. 103 as being unpatentable over Horie as applied to claims 1-2, 33 above, and further in view of Westwood (US 2007/0167553).
Horie includes the features of claims 1-2, 33 above.
Regarding claims 25-26, 28, Horie does not disclose wax such as low molecular weight polyethylene copolymer wax and paraffin wax, wherein the wax is present in an amount of about 1 to about 20 phr.
However, Westwood discloses a rubber composition comprising EPDM and processing aid such as low molecular weight polyethylene copolymer wax and paraffin wax, wherein the wax is present in an amount of 0.1 to 5 phr (para [0017], [0067]-[0068]), overlapping claimed range of about 1 to about 20 phr.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Horie with wax such as low molecular weight polyethylene copolymer wax and paraffin wax, wherein the wax is present in an amount of 0.1 to 5 phr, as taught by Westwood. The rationale to do so would have been motivation provided by of Westwood that to do so would help to improve rubber compounding and manufacturing.
A prima facie case of obviousness exists for the rubber composition, wherein Westwood teaches the wax is present in an amount of 0.1 to 5 phr, overlapping the requirement of claim 26. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 34, Horie does not disclose coagent in amount of about 1 to about 20 phr .
However, Westwood discloses a rubber composition comprising EPDM a coagent such as SR 634 present in an amount of 3 to 24 phr (table 1), overlapping claimed range of about 1 to about 20 phr, to provide a cross-linking (para [0008]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Horie with coagent such as SR 634 present in an amount of 3 to 24 phr, as taught by Westwood. The rationale to do so would have been motivation provided by of Westwood that to do so would provide a cross-linking.
A prima facie case of obviousness exists for the rubber composition, wherein Westwood teaches the coagent such as SR 634 present in an amount of 3 to 24 phr, overlapping the requirement of claim 34. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Claim 48 is are rejected under 35 U.S.C. 103 as being unpatentable over Horie as applied to claims 1-2 above, and further in view of Zhou (US 2021/ 0245459).
Horie includes the features of claims 1-2 above.
Regarding claim 48, Horie does not disclose methyl-2-mercaptobenzimidazole
(MMBI), zinc-2-methylmethylmercaptobenzimidazole (ZMMBI), or combination thereof.
However, Zhou discloses a rubber composition comprising EPDM and ageing stabilizers such as methyl-2-mercaptobenzimidazole (MMBI), zinc-2-methylmethyl- mercaptobenzimidazole (ZMMBI), or combination thereof (para [0046], [0076], [0080]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Horie with methyl-2-mercaptobenzimidazole (MMBI), zinc-2-methylmethyl- mercaptobenzimidazole (ZMMBI), or combination thereof, as taught by Zhou. The rationale to do so would have been motivation provided by of Zhou that to do so would prevent rubber from degrading, cracking, and hardening due to exposure to heat, oxygen, ozone, and light.
Allowable Subject Matter
Claim 53 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Closest prior arts are Horie (US 2007/0021565) and Dias (US 2004/ 0132894),
Claim 53 require the EPDM; about 30 to about 50 phr of a paraffinic oil with a molecular weight in a range of from 390 g/mol to 800 g/mol; about 5 to about 30 phr of a zinc salt internal lubricant about 20 to about 50 phr of a N550 type carbon black and about 15 to about 25 phr of a N700 carbon black; a wax; a coagent; about 5 to about 25 phr of zinc oxide; peroxide; and about 1 to about 5 phr ZMTI and about 0.5 to about 4 phr TMQ.
Horie discloses EPDM, paraffinic oil with a molecular weight 700 g/mol, a wax; a coagent; about 5 to about 25 phr of zinc oxide; peroxide (para [0015], [0023]) but does not discloses claimed amount of paraffinic oil, claimed carbon black N550 and N700, internal lubricant, ZMTI, TMQ, and their amounts.
Dias discloses zinc salt internal lubricant such as STRUCKTOL present in an amount of 7 phr (para [0019], [0118], table14). Closest prior arts do not disclose claimed features.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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