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 .
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 3, 10 15-16 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 3 recites the broad recitation at least 50%, and the claim also recites preferably at least 70% and the limitation more preferably at least 80% which are the narrower statements of the range/limitation.
Also, claim 10 contains the limitation between 0.005 phr and 15 phr and the narrower limitation preferably between 0.01 phr and 10 phr.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 15-16 contain the Use of a composition and the Use of at least one long chain olefin, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-16 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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(s) 1-14 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,239,862 (herein Matthews) as evidenced by US 4,632,769 (herein Gutierrez), the C24-28 Olefin NIH website (2026) and the C24-28 Safety Datasheet (2022) and Chapter 1 of Paraffin – An Overview by Fathis Samir Soliman 2020 (herein Soliman).
As to claims 1-4, 12 and 16, Matthews discloses an elastomeric composition (see col. 1, lines 15-60) comprising EPDM (elastomeric terpolymer of ethylene-propylene and dicyclopentadiene) and an olefin. See examples d, e and g in table II. The olefin is either (see col. 6, lines 30-50):
Olefin I, which is "Olefin 18+" (trademark of Ethyl Corp.), linear C18 to C34 olefins (90%), alcohols (8%), paraffin (2%). Note that linear C18 to C34 linear olefins must have a molecular weight between 252 and 478 g/mol, averaging about 365 g/mol, depending on breakdown
Olefin II, which is "Gulftene 24-28" (trademark Gulf Oil Co.), mixed C22 -C30+ alpha-olefins. Note that Guftene 24-28 is a mixture of alpha-olefins comprising 1% C22, 30% C24, 39% C26, 20% C28 and 10% C30 and higher (see col. 45-55 of Gutierrez for evidence). Specifically, all the olefins are linear alpha olefins 1-octacosene, 1-hexacosene, 1-heptacosene, 1-pentacosene, 1-tetracosene (see the C24-28 Olefin NIH website for evidence) and that the olefins comprise about 24.2 % branched olefins (thus about 76.8% linear, see the Alphaplus C24-28 Safety Datasheet 2022 for evidence). Thus, the molecular weight is deduced to be about 367 g/mol (deduced: 309*0.01+337*0.3+365*0.39+393*0.2+421*0.1).
Note to claim 16, although the same long chain olefin is present and thus must act as protective compound against the action of ozone, since the same materials would yield the same properties.
As to claim 5, the long chain olefin is about 10 phr per 100 parts elastomer polymers to about 13 phr (examples d, e and g).
As to claim 6 and 11, example b comprises Alcohol I, which comprises 66% linear primary alcohols and about 34% olefins (also linear primary/alpha olefin). Therefore, the amount of linear alpha olefin is about 4 parts per 100 parts. Given that the alcohols are described as linear, it is reasonable to take the position that the majority (50% or more) of the olefins are also linear since the alcohols are prepared from the olefins.
As to claim 7, the long chain olefin is present in the composition. See e.g. example d. The other additives are paraffinic oil, curative and stabilizer, none of which protect against ozone. Thus, the long chain olefin is present as the sole protective compound against the action of ozone.
As to claims 8-10, the Olefin I comprises C18 to C38 paraffin at 2%. See col. 6, lines 30-50. C18 to C38 paraffins are a paraffin petroleum wax. See page 1 of the Further, it is present in about 0.2 phr (deduced 0.02*10). In the alternative, 10 parts of amorphous PP (ring and ball softening point of 305 ° C) also reads on a wax, which is present in 10 parts (see table II and col. 6, lines 20-26). Thus the ratio of wax to olefin is about 50:50 for the amorphous PP wax.
As to claim 13, the composition comprises a curative, which is a peroxide, which crosslinks the EPDM. See examples, specifically col. 6, lines 35-45.
As to claim 14, the composition may comprise fillers such as fibrous fillers such as silica, thus reading on reinforcing filler. See col. 5, lines 35-45.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,239,862 (herein Matthews) as evidenced by US 4,632,769 (herein Gutierrez), the C24-28 Olefin NIH website (2026) and the C24-28 Safety Datasheet (2022) and Chapter 1 of Paraffin – An Overview by Fathis Samir Soliman 2020 (herein Soliman) in view of US 2003/0069346 (herein Borsinger).
The discussion with respect to Matthews et al. set-forth above is incorporated herein by reference.
As to claim 15, Matthews is silent on using the composition for tires, etc.
Borsinger teaches similar compositions (see examples) and teaches that they are suitable for tires, etc. See abstract, paragraph 23 and examples.
It would have been obvious at the time of the invention to have modified the composition of Matthews for tires as taught by Borsinger because one would want to utilize similar rubber compositions taught as suitable in their end-use applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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