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
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0116612 (Bauerle).
Bauerle discloses a fluoroelastomer curable composition comprising:
a fluoroelastomer (meets Applicant’s fluoroelastomer (a)); and
a polyhydroxy crosslinking agent of the formula [0031]
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(when x is 0 and n is 1 generically embraces Applicant’s compounds (b1) and (b2)) (e.g., abstract, [0031-0032], examples, claims).
In essence, Bauerle differs from claims 1 and 2 in not expressly setting forth a polyhydroxy crosslinking agent having a 2-hydroxyl substituted phenyl group (per Applicant’s compound (b1)) or a 3-hydroxyl substituted phenyl group (per Applicant’s compound (b2)). However, it is within the purview of Bauerle’s inventive disclosure, and obvious to one having ordinary skill in the art, to use a polyhydroxy crosslinking agent per formula [0031] wherein x is 0, n is 1 and at least one of the OH groups is either in the 2 position (meets Applicant’s compound (b1)) or 3 position (meets Applicant’s compound (b21)) on the phenyl group with the reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness, Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297.
As to claim 3, it is within the purview of Bauerle’s inventive disclosure, and obvious to one having ordinary skill in the art, to use a polyhydroxy crosslinking agent per formula [0031] wherein x is 0, n is 1, one of the OH groups is in the 2 position and the other OH group is in the 2 or 4 positions (meets Applicant’s first and second depicted compounds) or one of the OH groups is in the 3 position and the other OH group is in the 3 position (meets Applicant’s third depicted compound) with the reasonable expectation of success.
As to claim 4, it is within the purview of Bauerle’s inventive disclosure, and obvious to one having ordinary skill in the art, to use a polyhydroxy crosslinking agent per formula [0031] wherein x is 0, n is 1, one of the OH groups is in the 2 position and the other OH group is in the 2 position (meets Applicant’s first depicted compound) or one of the OH groups is in the 3 position and the other OH group is in the 3 position (meets Applicant’s second depicted compound) with the reasonable expectation of success.
As to claim 5, it is within the purview of Bauerle’s inventive disclosure ([0016]/Example 3), and obvious to one having ordinary skill in the art, to use a fluoroelastomer containing vinylidene fluoride units with the reasonable expectation of success.
As to claim 6, Bauerle’s fluoroelastomer curable composition contains 0.1 to 20 pbw of the polyhydroxy crosslinking agent [0031] (embracing, and rendering obvious to one having ordinary skill in the art, the presently claimed content).
As to claim 7, it is within the purview of Bauerle’s inventive disclosure [0038], and obvious to one having ordinary skill in the art, to further include preferably from 0.5 to 3.0 parts of a crosslinking accelerator for its expected additive effect.
As to claims 8 and 9, it is within the purview of Bauerle’s inventive disclosure [0037], and obvious to one having ordinary skill in the art, to further include preferably from 1 to 7 parts of an acid acceptor inclusive of metal oxides for its expected additive effect.
As to claim 10, Bauerle discloses the production of molded articles from the fluoroelastomer curable composition [0042].
Response to Arguments
Applicant's arguments filed July 09, 2026 have been fully considered but they are not persuasive.
In response to Applicants’ argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thus, Bauerle may be relied upon for all that it teaches, including non-preferred embodiments because a non-preferred portion of a reference is just as significant as the preferred portion in assessing the patentability of the claims, Merck & Co. v. Biocraft Laboratories, 10 USPQ2d 1843. “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use”, In re Gurley, 31 USPQ2d 1130. Notably, Bauerle’s polyhydroxy crosslinking agent of the formula [0031]
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includes compounds meeting the presently claimed compound (b1) or compound (b2) when x is 0, each n is 1 and at least one OH group is in the 2-position (ortho) or 3-position (meta). The selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness, Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297.
Applicants’ experimental data per Tables 1 and 2 has been reviewed but is not deemed probative of unexpected results for the claimed subject matter. In Table 1, Example 1 comprising 2,2’-dihydroxybiphenyl (agent A) exhibits improved crosslinking characteristics and physical properties as compared to Comparative Example 1 comprising 4,4’-dihydroxybiphenyl (agent B). However, the data pertains solely to one compound (b1), whereas the present claims are not so limited. Thus, the claims are not commensurate in scope with said showing.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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