DETAILED ACTION
This office action follows a reply filed on January 30, 2026. No claims have been amended. Claims 1-3, 17-19 and 32-37 are currently pending and under examination.
The rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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
Claims 1-3, 17-19 and 32-37 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita (US 6,207,723) and further in view of CA 2263990, Harvey (US 1,819,416) and Bryson (US 4,148,763).
Matsushita teaches a rubber composition comprising reclaimed rubber, where the reclaimed rubber is obtained by applying heat and shear stress to a vulcanized rubber, and blending the reclaimed rubber with a virgin rubber and/or thermoplastic resin.
Matsushita teaches that the reclaimed rubber has fluidity and a high gel content, suggesting the reclaimed rubber in a form which meets applicants’ gel.
Matsushita teaches the addition of a reclaiming agent, such as diphenyl disulfide, phenylhydrazine-iron chloride, peroxide and the like, during the exertion of heat and stress (col. 14, ll. 49-57). These reclaiming agents are free of petroleum oils or their derivatives.
Matsushita teaches the additives for the reclaimed rubber to include reclaiming oil (col. 14, l. 46); however, does not teach suitable examples thereof.
CA ‘990 teaches that cashew nut husk oil can be used to depolymerize recycled rubber (p. 4). CA ‘990 teaches that it acts as a binder for particles of recycled rubber.
Harvey teaches that the characteristic effect of cashew nut shell liquid on rubber makes it valuable in the reclamation of rubber in its fully vulcanized state, further teaching that it can be left in the rubber in the further use of the rubber (p. 2, ll. 28-35). Harvey teaches that particular proportions of cashew nut shell liquid and rubber for general use are, for example, equal parts by weight, but these proportions can be varied greatly in both directions (p. 3, ll. 15-25).
Bryson teaches an aromatic reclaim oil for devulcanizing/depolymerizing rubber, in combination with a disulfide reclaiming catalyst, where the oil is generally present from 5-25 phr of scrap rubber (col. 3, ll. 41-43). Bryson also shows that the amount of reclaim oil effects the Mooney viscosity, where 16 phr resulted in a lower Mooney viscosity than when 12 phr was used (See Table No. 1 and note that the amount of reclaim oil is listed in an amount based on 200 parts of rubber).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used 5-25 phr of cashew nut husk oil as the reclaiming oil additive in Matsushita, as Matsushita suggests the inclusion of a reclaiming oil and does not limit the type, where CA ‘990 and Harvey teach that cashew nut husk oil can depolymerize rubber and Bryson teaches that an amount of 5-25 phr reclaim oil is generally used in the devulcanization/depolymerization of rubber in combination with a disulfide reclaim catalyst.
Matsushita teaches the reclaimed rubber as having a fluidity, which can be finely dispersed throughout the virgin rubber (col. 4, ll. 43-47) having a Mooney viscosity between 10-120 (col. 7, ll. 45-50), the range of which overlaps with the claimed range of 20 or less in instant claim 1, 15 or less in instant claim 2 and 12 or less in instant claim 3. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Again, Bryson shows that increasing the amount of reclaim oil can reduce the Mooney viscosity.
Matsushita shows that the addition of such to polypropylene improves the elongation at break, suggesting the flexibility of the polymer improved, further suggesting the reclaimed rubber acts as a plasticizer (col. 23, Table 8). Additionally, Harvey teaches that cashew nut shell liquid can plasticize rubber.
Matsushita in view of CA ‘990, Harvey and Bryson is prima facie obvious over instant claims 1-3 and 17-19.
As to claims 32-37, Matsushita teaches blending reclaimed rubber a non-vulcanized virgin rubber and/or a thermoplastic resin to form a rubber composition. A blend of the reclaimed rubber and a non-vulcanized virgin rubber is inherently free of petroleum oils, as Matsushita does not require the inclusion of petroleum oils, nor does Matsushita require the inclusion of the thermoplastic resin.
Response to Amendment
The declaration under 37 CFR 1.132 filed January 30, 2026 is insufficient to overcome the rejection of claims 1-3, 17-19 and 32-37 based upon the rejection set forth in the last Office action because:
With regards to the CA 2263990 reference, CA ’990 was used to teach that CNSO can be used to depolymerize rubber. While CA ’990 exemplifies a rubber:CNSO of about 1:5, the CA ‘990 reference does not teach that this is the only amount of oil that can be used to depolymerize rubber.
With regards to the Harvey reference, Harvey teaches that “Particular proportions of cashew nut shell liquid and rubber for general use are, for example, equal parts by weight, but these proportions can be varied greatly in both directions.”
Applicants responded that “As one of ordinary skilled in the art of vulcanized rubber, I do not read this disclosure in Harvey as covering or overlapping our range of 2 to 30- parts bio-oil PHR.”
This is merely an opinion.
Applicants also argue in the declaration that Harvey does not exclude petroleum oil, arguing that Harvey teaches that a key advantage of his invention is that the cashew nutshell oil increases the solubility of rubber in petroleum oils.
The examiner disagrees. Harvey teaches multiple embodiments. One particular embodiment is that described by applicants. Another possible embodiment specifically teaches that the rubber can be mixed with or dissolved in cashew nut shell liquid with the aid of heat, where the two can be mixed together and heated in an oven to bring about the solution, or the two can be mixed together on calendaring rolls and the heat produced by the friction of the materials on the rolls utilized to bring about the mixture or solution (p. 2, ll. 101-109). This teaching specifically teaches mixing two components: rubber and cashew nut shell liquid. Therefore, this particular embodiment does not require the presence of petroleum oil.
Please consider the following:
MPEP 2123 [R-5] Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.
Response to Arguments
Applicant's arguments filed January 30, 2026 have been fully considered but they are not persuasive. (CNSO and CNSL are both abbreviations for cashew nut shell oil/liquid).
Applicants argue that the prior art, as a whole, does not read on the claimed combination of a low Mooney viscosity and 2-30 PHR bio-oil.
Matsushita teaches preparing a reclaimed rubber with a Mooney viscosity of 10-120, which overlaps the claimed range of 5-20. Matsushita teaches additives for the reclaimed rubber to include reclaiming oil, but does not teach the amount or the types which can be used, motivating one of ordinary skill in the art to look to the prior art.
CA ‘990 teaches that CNSO depolymerizes rubber.
Harvey teaches that the softening and fluidity of rubber under heat and pressure is also a characteristic of the CNSO and rubber mixture, specifically teaching that “Particular proportions of cashew nut shell liquid and rubber for general use are, for example, equal parts by weight, but these proportions can be varied greatly in both directions.”
The phrase “varied greatly in both directions” can obviously be left to interpretation, so one of ordinary skill in the art would look to the prior for guidance for a particular amount.
While Bryson does not teach a bio-oil as the reclaim oil, Bryson does teach that
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Matsushita alone teaches a reclaimed rubber with an overlapping range of Mooney viscosity. Looking to applicants’ specification, applicants carry out the devulcanization of 100 parts of whole tire truck bus radial tire rubber (40 mesh) using 1.00 PHR alkylphenol desulfurized oligomer and 2.50 PHR CNSL in Example 1 and 1.00 PHR alkylphenol desulfurized oligomer 50.00 PHR CNSL in Example 2. Example 1 provides a devulcanized rubber with a Mooney viscosity of 10-14 and Example 2 provides such with a Mooney viscosity of 8-13.
Here, applicants own evidence suggests that the oil doesn’t affect the Mooney viscosity, as a similar Mooney viscosity can be obtained when using 2.5 phr bio-oil or 50 phr bio-oil; therefore, one of ordinary skill in the art would have a reasonable expectation of achieving the Mooney viscosity of Matsushita regardless of the amount of oil added.
While Bryson does not teach a bio-oil for reclamation, Bryson teaches that reclaim oil is generally used within the claimed range, and with the teaching of Harvey, that the proportions can be widely varied, one of ordinary skill in the art would expect that the use of 5-25 PHR reclaim oil (suggested by Bryson) would work in the reclamation of rubber in Matsushita.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766