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 .
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.
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.
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 1-3, 7-9, 13-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tokumitsu (U.S. 20040266938) in view of Vulcan 3 technical datasheet and as evidenced by Omnés “Effective Properties of carbon black filled natural rubber: Experiments and modeling”.
Note the as-filed specification discloses “about” is +/- 20 % of the claimed value. (see page 3 of the as-filed specification. (repeated below)
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For the instant case, relevant to the Claim 3, abouts 80 parts +/- 20 % is 64 – 96 parts.
In ¶[0020] Tokumitsu teaches a hydrogenated NBR (HNBR) which has a Mooney viscosity as claimed of 70 and a bound acrylonitrile content of 44.2% which reasds these values in Claim 1. (See abstract for specific Mooney 1-4 100 oC teaching and bound teaching).
The amount of 100 parts of HNBR reads over the hydrogenated nitrile rubber of Claim 1 and Claim 2’s list of hydrogenate nitrile rubbers (hydrogenating conjugated dienes).
The carbon black is 90 parts which makes the sum total 100 + 90 which reads over the sum total of Claim 1. Additionally, summing all fillers in the example of Tokumitsu (carbon black, carbon fiber and graphite) is 150 parts of filler which reads over at least 140 limitation of Claim 1 if interpreted to be the sum total of fillers in the composition.
The sum total is reasonably suggested to be interpretated as sum total of HNBR and filler (carbon black) as the as-filed specification does not further disclose an alternative interpretation nor definition and the as-filed specification examples of rubber + filler (carbon black) all sum to at least 140 parts. Furthermore, the as-filed specification does not disclose any additional fillers nor does it reasonably suggest the additional additives of the demonstrations in the as-filed specification can be considered fillers. Further, the exemplified amounts in the inventive examples of the as-filed specification do not sum to at least 140 parts sum total at every instance unless the above interpretation is valid.
Claim 3 is read over as above as the about 80 limitation on the range encompasses 64 to 96 parts under Applicant’s definition and 90 parts carbon black reads over said defined range.
Claim 7, Claim 8, and Claim 9 are read over as they are simply different combinations of the above claims and are read over for the same reasons.
In the event Applicant changes the limits to a smaller +/- range, Tokumitsu is still applicable for the reasons put forth below with respect to the amount of carbon black and, additionally, the particle size, surface area and OAN not specifically taught by Tokumitsu.
In ¶[0020] Tokumitsu teaches a hydrogenated NBR (HNBR) which has a Mooney viscosity as claimed of 70 and a bound acrylonitrile content of 44.2% which reads over these values in Claim 1. (See abstract for specific Mooney 1-4 100 oC teaching and bound teaching).
The amount of 100 parts of HNBR reads over the hydrogenated nitrile rubber of Claim 1.
The carbon black is 90 parts which makes the sum total 100 + 90 which reads over the sum total of Claim 1. The sum total is reasonably suggested to be interpretated as sum total of HNBR and filler (carbon black) as the as-filed specification does not further disclose an alternative interpretation nor definition and the as-filed specification examples of rubber + filler (carbon black) all sum to at least 140 parts. Furthermore, the as-filed specification does not disclose any additional fillers nor does it reasonably suggest the additional additives of the demonstrations in the as-filed specification can be considered fillers. Further, the exemplified amounts in the inventive examples of the as-filed specification do not sum to at least 140 parts sum total at every instance unless the above interpretation is valid.
The amount of 90 parts carbon black is not in the explicit range (not considering “about” language) of Claim 3, and, further, Tokumitsu does not teach or suggest particle sizes, surface area nor OAN of Claims 1, 7, and 13.
With respect to the amount of carbon black, Tokumitsu teaches in 30 to 100 parts of carbon black (¶[0011]).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Tokumitsu, in particular that of Example 1 above, such that the amount of carbon black was 30 -100 parts because Tokumitsu teaches this amount it recommended. One of ordinary skill in the art would have been motivated to maintained the total amount of filler and adjust the graphite and carbon fiber accordingly to 150 parts per 100 parts of HNBR because this is the total amount of filler exemplified in Example 1 by Tokumitsu. This 30 to 100 parts of carbon black overlaps the recited range of Claim 3.
Note that Applicant has no comparisons of on the effect of changing the amount of the carbon black without changing the particle size, surface area and OAN to the values below.
Tokumitsu does not teach or suggest particle sizes, surface area nor OAN of Claims 1, 7 and 13 and Tokumitsu is not specific to the carbon black to be used.
Vulcan 3 teaches a carbon black which has excellent extrusion characteristics processing considerations and can be used in industrial rubber products, conveyer belts, and solid tires to provide moderate abrasion resistance. (See page 1 of the technical data sheet performance features section). Vulcan 3 is ASTM N330 (see page 1 first paragraph). Vulcan 3 also teaches the OAN is 102 which reads over the OAN of Claim 1.
Omnés provides evidence in Table 1 page 1142 that N330 has an average particle size of 29 nm and surface area of 84 m2/g which meets the limitations of Claim 1, 7 and 13.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Tokumistu, in particular that of Example 1, by substituting the HAF carbon black with Vulcan 3 for the advantage of excellent extrusion characteristics in processing and moderate abrasion resistance as suggested by Vulcan 3 as discussed above.
Claims 7-9, 13-17, and 20 are different combinations of Claim 1-3 which are rejected for the same reasons as Claims 1 as discussed above.
In general as §103s (including combined with §102) are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Note that evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP §2131.04.
The claims do not appear to be commensurate in scope with the showing of allegedly unexpected results as they are open to any bound AN content, any amount of filler (unbounded above 140 depending on how to interpret “sum of” language) and do not have any of the particulars of the carbon black (such as claims 4-6) in each independent claim. Therefore, for at least these reasons the required nexus between the claims and the showing of allegedly unexpected results is not present at this time. This is also the same analysis for each independent claim.
Finally, the results do not appear to be truly unexpected. The results to abrasion resistance appear expected as Vulcan teaches moderate abrasion resistance and Tokumitsu teaches improved wear characteristics (i.e. abrasion characteristic). As there is no indication what the comparative carbon black compared against is and there is no indication the comparative carbon black is known to be better in abrasion resistance over N330, the results appear to expected. In other words, Vulcan suggest the choice of carbon black has an effect on abrasion resistance and there is nothing of record to suggest the abrasion resistance seen in using N330 is giving the expected result vs. other carbon black. Finally, Tokumitsu teaches improved wear which is reasonably suggested to encompass abrasion resistance. With respect to the compression set data disclosed by Applicant in Figure 2, the data is not conclusive of any allegedly unexpected effect from a specific carbon black as the graph reasonably suggest relatively similar behavior between the two carbon blacks tested.
Response to Arguments
Applicant’s claim amendment and remarks filed August 27, 2026 have been fully considered but are not sufficient to move the application to allowance. Applicant has placed the specific carbon black limitations of Claims 4-6, Claims 10-12 and Claim 18 and 19 into their respective independent claims. This has necessitated reformulating the rejections of record based on Tokumitsu under §103. This modification of the grounds of rejection has been necessitated by Applicant’s amendment.
Applicant’s remarks filed August 27, 2026 have been fully considered but are not persuasive.
Applicant argues Tokumitsu teaches away from using carbon black as a filler or changing the characteristics of the carbon black used in Tokumitsu. This argument is not persuasive. Tokumitsu does not limit the type of carbon black used and, also, exemplifies a composition in which HAF carbon black, graphite and carbon fibers are used. Therefore, it cannot be said that Tokumitsu teaches away from changing the carbon black and one of ordinary skill in the art is not a slave to Tokumitsu’s examples. Additionally, the claims do not exclude graphite nor carbon fibers.
Applicant argues there is no motivation to selected Vulcan 3 for use in Tokumitsu’s composition as none of Vulcan’s 3 benefits used are directed to the same properties Tokumitsu teaches carbon black is used in the composition. This argument is not persuasive. The properties Applicant argues for Vulcan 3 are not used in the rejection of record. The motivation to combine is based on using Vulcan 3 for its excellent extrusion characteristics in processing and moderate abrasion resistance. Tokumitsu is drawn to compositions with improved wear characteristics (i.e. abrasion resistance – Tokumitsu exemplifies wear characteristics) and, therefore, the above motivation is relevant to one of ordinary skill in the art practicing Tokumitsu.
Further, Tokumitsu implies the carbon black generally has carbon dioxide gas shieldability and thermal conductivity as Applicant states and does not limit the type of carbon black to be used in ¶[0012] There is no evidence to suggest N330 version of carbon black does not have these properties/benefits already and simply has additional advantages such as excellent extrusion characteristics in processing and moderate abrasion resistance that can be used to modify the compositions of Tokumitsu further. Additionally, Vulcan 3 teaches a carbon black which has excellent extrusion characteristics processing considerations and can be used in industrial rubber products, conveyer belts, and solid tires to provide moderate abrasion resistance. (See page 1 of the technical data sheet performance features section). The hoses and sealing members of Tokumitsu would fall under industrial rubber products of Vulcan 3.
Applicant argues their claimed compositions have unexpected results. This argument is not persuasive. The Examiner has already provided an analysis of any allegedly unexpected results in the as filed specification.
The claims do not appear to be commensurate in scope with the showing of allegedly unexpected results as they are open to any bound AN content and any amount of filler (unbounded above 140 depending on how to interpret “sum of” language).. Therefore, for at least these reasons the required nexus between the claims and the showing of allegedly unexpected results is not present at this time. This is also the same analysis for each independent claim.
Finally, the results do not appear to be truly unexpected. The results to abrasion resistance appear expected as Vulcan teaches moderate abrasion resistance and Tokumitsu teaches improved wear characteristics (i.e. abrasion characteristic). As there is no indication what the comparative carbon black compared against is and there is no indication the comparative carbon black is known to be better in abrasion resistance over N330, the results appear to expected. In other words, Vulcan suggest the choice of carbon black has an effect on abrasion resistance and there is nothing of record to suggest the abrasion resistance seen in using N330 is giving the expected result vs. other carbon black. Finally, Tokumitsu teaches improved wear which is reasonably suggested to encompass abrasion resistance. With respect to the compression set data disclosed by Applicant in Figure 2, the data is not conclusive of any allegedly unexpected effect from a specific carbon black as the graph reasonably suggests relatively similar behavior between the two carbon blacks tested.
Applicant has only placed the particulars of the carbon black in the claims in an attempt to make the claims commensurate in scope with the showing of allegedly unexpected results. Applicant has not addressed any of the previously made remarks regarding the commensurate in scope required outside of the particulars of the carbon black. Note that each independent claim must be commensurate in scope with the showing of unexpected results. Therefore, Applicant’s assertation the claims are commensurate in scope with the showing of allegedly unexpected results is not persuasive.
Applicant’s remarks to their as-filed specification’s descriptions of the results of their testing are not persuasive. These arguments are not persuasive as they have been previously considered in the above the truly unexpected requirement analysis first put forth in the non-final action dated June 29, 2026. Applicant provides no additional remarks in response to the above analysis. Specifically, it has been previously put forth the abrasion resistance improvement found using N330 (Vulcan 3) is known already based on Vulcan 3’s disclosure and the compression set data provided in the as-filed specification is not conclusive.
Therefore, for the above reasons, the rejections based on Tokumitsu and Vulcan 3 are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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