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 Objections
Claim 1 is objected to because of the following informalities:
In claim 1, (b), the Examiner suggests adding “functional group” after “at least one” for clarity.
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 1-7 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.
Regarding claim 1, the limitation “type” is unclear in line 8 and renders the claim indefinite. The Examiner suggests removing “type silane coupling agent” from the claim.
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.
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (“Yamamoto”, JP 2014 065248A).
Regarding claim 1, Yamamoto discloses a laminate in which a metal member and a sealing rubber member are bonded via a primer layer ([0001]). The sealing rubber member contains a rubber component comprising at least one of EPDM or EPM ([0009]) and a copolymer oligomer of an amino group-containing silane coupling agent (corresponds to hydrophilic functional group) and a vinyl group-containing silane coupling agent (corresponds to hydrophobic functional group) ([0009]).
Yamamoto does not teach the molar ratio of Ma/Mb is 0.33 to 3.00.
However, Yamamoto teaches the weight ratio between the amino group (a) and the vinyl group (b) is in the range of (a)/(b) = 100/200 to 100/50, which is considered to overlap the claimed range. (Molar ratio Ma/Mb = 0.30-1.19 when the vinyl group is 27g/mol and the amino group is 16g/mol). Furthermore, Yamamoto teaches amino group-containing silane coupling agents and vinyl group-containing silane coupling agents (see lists in [0045]-[0046]) identical to those disclosed in Applicant’s specification.
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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding claim 2, Yamamoto teaches the ethylene content of the EPDM or EPM is preferably 53% by weight or less ([0021]), which overlaps the claimed range.
Yamamoto does not expressly teach the propylene content.
However, one of ordinary skill in the art would appreciate that the balance, after taking into account the ethylene content, would be the propylene content. For example, if the ethylene content was 53%, the propylene content would be 47%, which would read on the claimed propylene content.
Regarding claim 3, Yamamoto teaches the diene content of the EPDM is preferably in the range of 4 to 15% by weight ([0019]), which overlaps the claimed range.
Regarding claim 4, Yamamoto teaches a more preferred softener (i.e. plasticizer) has a pour point of -40oC or lower ([0038]), which overlaps the claimed range. Furthermore, Yamamoto teaches identical plasticizers ([0037]) to those disclosed in Applicant’s specification.
Regarding claim 5, Yamamoto teaches including a reinforcing agent such as carbon black ([0039]) in the range of 10 to 150 parts by weight per 100 parts by weight of the rubber component ([0040]), which overlaps the claimed range. See also Table 1, Examples.
Regarding claim 6, Yamamoto teaches an embodiment containing no silane coupling agent in Table 1, Example 5.
Regarding claim 7, Yamamoto teaches the laminate is used for sealing between metal members for constituting a fuel cell ([0056]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL H. LEE whose telephone number is (571)272-2548. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL H. LEE
Primary Examiner
Art Unit 1746
/DANIEL H LEE/Primary Examiner, Art Unit 1746
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