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 § 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) 1-4, 6, 8, 10-15, 20-27, and 29-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0230415 (herein Takayama).
As to claims 1-2, 6, and 8, Takayama discloses composition for a thermoplastic vulcanizate. See abstract, paragraph 2 and examples in tables 1-2. The composition comprises:
From about 20 to 60 parts by mass of ethylene-based copolymer rubber (paragraph 23, referred to as component A), which is exemplified as EPDM. See abstract and paragraph 19-23 generally. In the examples, the specific EPDM utilized is 3072 EPM. See paragraph 89.
From about 4 to 14 parts by mass of a styrenic thermoplastic elastomer (see paragraph 33-38, referred to as component C). In the examples, the specific styrenic thermoplastic elastomer utilized is Toughtec H1272, which is exemplified as 12 and 17 wt%. See paragraph 91.
From about 1 to 40 parts by mass of polypropylene (reading on thermoplastic polyolefin, referred to as component B). See paragraph 24-32. In the examples, the specific polypropylene utilized are Prime Polypro B241 and/or EL-Pro P740J, which is exemplified in 10, 12, 17 and 8 wt%. See paragraph 90-91.
From about 0.01 to 15 parts by mass of a crosslinker, such as phenol based vulcanizing agents (reading on phenolic resin). See paragraph 43-49.
From 5 to 70 parts by mass of a softening agent, specifically a process oil (referred to as component D). See paragraph 39-42. In the examples, the specific oil is Diana Process Oil PW-100, which is exemplified in e.g. about 30, 28, 25 wt%.
Additives, such as a slip agent (additive), are taught in 0.01 to 20 parts by mass. See paragraph 50-52.
From about 1 to 50 parts by mass of a filler such as talc (note that all fillers listed in paragraph 55 are inorganic filler). See paragraph 50-55.
These amounts overlap the claimed ranges. The examples have ethylene propylene diene rubber outside the claimed range and the slip agent and inorganic filler are not present. Nevertheless, Takayama teaches each component is suitable and teaches that the ethylene diene rubber is adjusted to control softness (paragraph 23), polypropylene range controls softness and oil resistance (paragraph 32), styrenic thermoplastic elastomer range controls formability, heat resistance, oil resistance, releasability, etc. (see paragraph 37), oil range controls oil resistance, heat resistance and roll processability (paragraph 42), crosslinking agent (phenolic resin) range controls a balance of fluidity and physical properties (paragraph 48), slip agents control slippages (paragraph 54) by definition and filler reduces cost by definition. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Further, it would have been obvious to modify the various ranges in order to optimize the various properties as elucidated above.
As to claim 3, the polypropylene is a copolymer or homopolymer of polypropylene. See paragraph 27.
As to claim 4, the examples show that the polypropylene has a density of e.g. 0.91 g/cm3. See paragraph 93.
As to claim 10, a thermoplastic vulcanizate is made by dynamically vulcanizing the composition. See paragraph 56-63 and examples.
As to claim 11, Takayama is silent on the crystallinity. However, all the components are the same and the amounts are taught in overlapping ranges. Since the claimed crystallinity would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
As to claims 12-13, Takayama is silent on the tensile strength and elongation at break after aging. However, Takayama teaches that the composition is heat aging resistant. See paragraph 3 and examples. Further, all the components are the same and the amounts are taught in overlapping ranges. Since the claimed tensile strength and elongation at break after aging would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
As to claim 14, Takayama is silent on the coefficient of friction. However, all the components are the same and the amounts are taught in overlapping ranges, including slip agents which control said properties. Since the claimed friction properties would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
As to claim 15, Takayama discloses corner molds form from the composition. See paragraph 66.
As to claims 20-21, 26-27, Takayama discloses composition for a thermoplastic vulcanizate. See abstract, paragraph 2 and examples in tables 1-2. The composition comprises:
From about 20 to 60 parts by mass of ethylene-based copolymer rubber (paragraph 23, referred to as component A), which is exemplified as EPDM. See abstract and paragraph 19-23 generally. In the examples, the specific EPDM utilized is 3072 EPM. See paragraph 89.
From about 4 to 14 parts by mass of a styrenic thermoplastic elastomer (see paragraph 33-38, referred to as component C). In the examples, the specific styrenic thermoplastic elastomer utilized is Toughtec H1272, which is exemplified as 12 and 17 wt%. See paragraph 91.
From about 1 to 40 parts by mass of polypropylene (reading on thermoplastic polyolefin, referred to as component B). See paragraph 24-32. In the examples, the specific polypropylene utilized are Prime Polypro B241 and/or EL-Pro P740J, which is exemplified in 10, 12, 17 and 8 wt%. See paragraph 90-91.
From about 0.01 to 15 parts by mass of a crosslinker, such peroxide (reading on peroxide crosslinking agent). See paragraph 43-49. The peroxide is exemplified as Perhexa and is present in 0.3 wt%.
From 5 to 70 parts by mass of a softening agent, specifically a process oil (referred to as component D). See paragraph 39-42. In the examples, the specific oil is Diana Process Oil PW-100, which is exemplified in e.g. about 30, 28, 25 wt%.
Additives, such as a slip agent (additive), are taught in 0.01 to 20 parts by mass. See paragraph 50-52.
From about 1 to 50 parts by mass of a filler such as talc (note that all fillers listed in paragraph 55 are inorganic filler). See paragraph 50-55.
These amounts overlap the claimed ranges. The examples have ethylene propylene diene rubber outside the claimed range and the slip agent and inorganic filler are not present. Nevertheless, Takayama teaches each component is suitable and teaches that the ethylene diene rubber is adjusted to control softness (paragraph 23), polypropylene range controls softness and oil resistance (paragraph 32), styrenic thermoplastic elastomer range controls formability, heat resistance, oil resistance, releasability, etc. (see paragraph 37), oil range controls oil resistance, heat resistance and roll processability (paragraph 42), crosslinking agent (phenolic resin) range controls a balance of fluidity and physical properties (paragraph 48), slip agents control slippages (paragraph 54) by definition and filler reduces cost by definition. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Further, it would have been obvious to modify the various ranges in order to optimize the various properties as elucidated above.
As to claim 22, the polypropylene is a copolymer or homopolymer of polypropylene. See paragraph 27.
As to claim 23, the examples show that the polypropylene has a density of e.g. 0.91 g/cm3. See paragraph 93.
As to claims 24-25, the peroxide is 2,5-dimethyl-2,4-di-(tert-butyperoxy)hexane. See paragraph 45 and examples.
As to claim 29, a thermoplastic vulcanizate is made by dynamically vulcanizing the composition. See paragraph 56-63 and examples.
As to claim 30, Takayama is silent on the crystallinity. However, all the components are the same and the amounts are taught in overlapping ranges. Since the claimed crystallinity would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
As to claims 31-32, Takayama is silent on the tensile strength and elongation at break after aging. However, Takayama teaches that the composition is heat aging resistant. See paragraph 3 and examples. Further, all the components are the same and the amounts are taught in overlapping ranges. Since the claimed tensile strength and elongation at break after aging would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
As to claim 33, Takayama is silent on the coefficient of friction. However, all the components are the same and the amounts are taught in overlapping ranges, including slip agents which control said properties. Since the claimed friction properties would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
As to claim 34, Takayama discloses corner molds form from the composition. See paragraph 66.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0230415 (herein Takayama) in view of WO 2021/041051 (herein Iyer) and/or US 7,049,356 (herein Itoh).
The discussion with respect to Takayama set-forth above is incorporated herein by reference.
As to claim 5, Takayama is silent on the stannous chloride and zinc chloride.
Iyer teaches similar compositions with rubbers and polyolefins, etc. See abstract and examples. Iyer teaches that the phenolic resin is used/crosslinked in a combination of 0.5 to 2 parts stannous chloride and 0.1 to 6 parts zinc oxide (note that that these amounts closely overlap the claimed range and are exemplified within the claimed range). See paragraph 202-203 of Iyer. Itoh teaches that a combination of stannous chloride and zinc chloride (exemplified in 0.3 and 0.5 wt% respectively) are added to help crosslink (increase crosslink efficiency) phenolic resin with EPDM. See paragraph bridging col. 7-8 of Itoh.
It would have been obvious at the time of the invention to have modified the composition of Takayama with stannous chloride and zinc chloride in the claimed amounts as suggested by Iyer and Itoh because one would want to increase the crosslink efficiency and help crosslink phenolic resin with EPDM. See paragraph bridging col. 7-8 of Itoh and paragraph 202-203 of Iyer.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0230415 (herein Takayama) in view of WO 2021/041051 (herein Iyer) as evidence by Tugui et al. European Polymer Journal 120 (2019) 109243 (herein Tugui).
The discussion with respect to Takayama set-forth above is incorporated herein by reference.
As to claim 7, Takayama is silent on the slip agent being polysiloxane having a molecular weight of 700,000 g/mol.
Iyer teaches similar compositions with rubbers and polyolefins, etc. See abstract and examples. Iyer teaches that the slip agent is HMB-0221, which is an ultrahigh molecular weight polysiloxane (paragraph 102 and 212-217). The slip agents are taught by Iyer as improving friction coefficient while also improving abrasion resistance. See paragraph 211 of Iyer. The term ultrahigh molecular weight implies molecular weights of about 1 million or higher. See page 109243 of Tugui for evidence.
It would have been obvious at the time of the invention to have modified the composition of Takayama with a ultrahigh molecular weight polysiloxane (molecular weight of about 1,000,000 g/mol or more) as suggested by Iyer and Itoh because one would want to improve the friction coefficient and abrasion resistance. See paragraph 211 of Iyer.
Claim(s) 9 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0230415 (herein Takayama) in view of WO 2020/191393 (herein Iyer2).
The discussion with respect to Takayama set-forth above is incorporated herein by reference.
As to claims 9 and 28, Takayama is silent on the slip agent being polysiloxane having a molecular weight of 700,000 g/mol.
Iyer2 teaches similar compositions and thermoplastic vulcanizates. See abstract and examples. Iyer2 teaches that polyhedral oligomeric silsesquioxane (POSS, see paragraphs 46-53) compounds are added in amounts of 2 to 10 wt% (paragraph 39) in order to improve the friction coefficient, permeability and tensile properties. See paragraph 158-159.
It would have been obvious at the time of the invention to have modified the composition of Takayama with the POSS of Iyer2 in amounts of 2 to 10 wt% because one would want to improve the friction coefficient, permeability and tensile properties. See paragraph 158-159 of Iyer2.
Claim(s) 16-19 and 35-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0230415 (herein Takayama) in view of WO 2021/038974.
In setting forth the instant rejection, the US equivalent, US 2022/0177654 (herein Mizuno), is relied upon as the English translation of the WO document.
As to claims 16-19 and 35-38, Takayama is silent on the specifics of corner molding (paragraph 66-67) for automotive assembly using the composition discussed previously.
Mizuno discloses similar thermoplastic vulcanizates for corner moldings in automotive assemblies. See abstract and examples. Mizuno discloses that the corner molding is fused (adhered) to a glass run channel comprising a thermoplastic vulcanizate at a joint. See paragraph 141-136.
It would have been obvious at the time of the invention to have utilized the thermoplastic vulcanizate of Takayama in the automotive assembly of Mizuno including utilizing the vulcanizate in both the corner (thus including vulcanized EPDM) and the joint because one would want to utilized the improved thermoplastic vulcanizate of Takayama in similar automotive assemblies which are the intended use of the composition. As to the properties of the claims, Takayama is silent. However, all the components are the same and the amounts are taught in overlapping ranges. Since the claimed properties would naturally flow from the same materials, it is reasonable to take the position that the property is inherent.
Allowable Subject Matter
Claims 39-40 are 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.
As to claims 39-40, the specifics of the crosssection area and the bend in conjuction with the breakage property are not taught in the prior art of record.
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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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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