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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 12-14 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (JP 5-179216) in view of Chloroprene Rubber Skyprene; Tosoh Corporation; 03/2014. English machine translation of Hayashi et al. (JP 5-179216) for citation.
Regarding claims 1-7 and 13-14: Hayashi et al. (JP ‘216) discloses solvent-type polychloroprene adhesive compositions [0001], wherein Example 9 [Ex. 9; 0027; Table 1, Ex. 9], prepared as Ex. 1 [0017; 0019], contains 50 parts by weight CR Skyprene 510 (fast crystallization CR; corresponding to the first chloroprene rubber having a 100% increased Shore A hardness in no more than 2 hours when crystallizing at -10 oC; see instant specification pg. 3, ln. 32 – pg. 4, ln. 7), 25 parts by weight CR Skyprene G-40S (fast crystallization CR; corresponding to the first chloroprene rubber), 25 parts by weight CR Skyprene Y-20E (Medium crystallization CR; corresponding to the second chloroprene rubber having a 100% increased Shore A hardness in more than 2 hours when crystallizing at -10 oC {via Skyprene 570}; see instant specification pg. 4, ln. 18-25), 4 parts by weight MgO, 5 parts by weight ZnO, 2 parts by weight anti-aging agent, 100 parts by weight phenol-formaldehyde resin, 10 pbw MgO, and 376 parts by weight mixed solvent (226 parts by weight toluene, 75 parts by weight cyclohexane, 75 parts by weight ethyl acetate) (corresponding to 8.4 wt% CR Skyprene 510; 4.2 wt% CR Skyprene G-40S; 4.2 wt% CR Skyprene Y-20E; 3:1 weight ratio (510 & G-40S):Y-20E; 16.8 wt% total chloroprene rubber (510, G-40S and Y-20E) [Ex. 9; 0027; Table 1, Ex. 9].
Chloroprene Rubber Skyprene provides evidence for: Skyprene G-40S as fast crystallization rate CR [pg. 16]; Skyprene Y-20E as medium crystallization rate CR [pg. 7]; Skyprene 510 as fast crystallization rate CR [pg. 16]; Skyprene 570 as medium crystallization rate CR [pg. 16] [see also MPEP 2112.01].
Regarding claims 8 and 19: Hayashi et al. (JP ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1].
Claims 8 and 19 further defines species of the adhesion promoter recited in claim 1. However, as claimed, such species only further define the genus of the optional adhesion promoter (i.e. claims 1, 8 and 19 do not require the contact adhesive composition to comprise the adhesion promoter).
Regarding claim 12: Hayashi et al. (JP ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1].
Claim 12 further defines species of the tackifier resin recited in claim 1. However, as claimed, such species only further define the genus of the optional tackifier resin (i.e. claims 1 and 12 do not require the contact adhesive composition to comprise the tackifier resin).
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.
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.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JP 5-179216) as applied to claim 1 above, and further in view of Mori et al. (US 5,252,668).
Regarding claims 9-11: Hayashi et al. (JP ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1].
Hayashi et al. (JP ‘216) does not disclose an aminosilane. However, Mori et al. (US ‘668) discloses chloroprene adhesive compositions [abstract], wherein the adhesive composition contains ~0.45 wt% γ-aminopropyltriethoxysilane [3:30-44; Table 1]. Hayashi et al. (JP ‘216) and Mori et al. (US ‘668) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of chloroprene adhesive compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined ~0.45 wt% γ-aminopropyltriethoxysilane, as taught by Mori et al. (US ‘668) in the invention of Hayashi et al. (JP ‘216), and would have been motivated to do so since Mori et al. (US ‘668) suggests ~0.45 wt% γ-aminopropyltriethoxysilane affords chloroprene adhesives having excellent initial bonding strength and high heat resistance [3:15-21; Table 1].
Response to Arguments
Applicant's arguments filed 7/22/26 have been fully considered but they are not persuasive. The rejection of claims based upon Hayashi et al. (JP 5-179216) (English machine translation) in view of Chloroprene Rubber Skyprene; Tosoh Corporation; 03/2014 is maintained
Hayashi et al. (JP ‘216) discloses solvent-type polychloroprene adhesive compositions [0001], wherein Example 9 [Ex. 9; 0027; Table 1, Ex. 9], prepared as Ex. 1 [0017; 0019], contains 50 parts by weight CR Skyprene 510 (fast crystallization CR; corresponding to the first chloroprene rubber having a 100% increased Shore A hardness in no more than 2 hours when crystallizing at -10 oC; see instant specification pg. 3, ln. 32 – pg. 4, ln. 7), 25 parts by weight CR Skyprene G-40S (fast crystallization CR; corresponding to the first chloroprene rubber), 25 parts by weight CR Skyprene Y-20E (Medium crystallization CR; corresponding to the second chloroprene rubber having a 100% increased Shore A hardness in more than 2 hours when crystallizing at -10 oC {via Skyprene 570}; see instant specification pg. 4, ln. 18-25), 4 parts by weight MgO, 5 parts by weight ZnO, 2 parts by weight anti-aging agent, 100 parts by weight phenol-formaldehyde resin, 10 pbw MgO, and 376 parts by weight mixed solvent (226 parts by weight toluene, 75 parts by weight cyclohexane, 75 parts by weight ethyl acetate) (corresponding to 8.4 wt% CR Skyprene 510; 4.2 wt% CR Skyprene G-40S; 4.2 wt% CR Skyprene Y-20E; 3:1 weight ratio (510 & G-40S):Y-20E; 16.8 wt% total chloroprene rubber (510, G-40S and Y-20E) [Ex. 9; 0027; Table 1, Ex. 9].
The examiner notes that the instant specification provides support for CR Skyprene 510 as a fast crystallization CR having a 100% increased Shore A hardness in no more than 2 hours when crystallizing at -10 oC [see instant specification pg. 3, ln. 32 – pg. 4, ln. 7]. Additionally, the instant specification provides support for CR Skyprene Y-20E as a medium crystallization CR having a 100% increased Shore A hardness in more than 2 hours when crystallizing at -10 oC {via Skyprene 570} [see instant specification pg. 4, ln. 18-25].
Chloroprene Rubber Skyprene provides evidence for: Skyprene G-40S as fast crystallization rate CR [pg. 16]; Skyprene Y-20E as medium crystallization rate CR [pg. 7]; Skyprene 510 as fast crystallization rate CR [pg. 16]; Skyprene 570 as medium crystallization rate CR [pg. 16] [see also MPEP 2112.01].
Mori et al. (US 5,252,668) was relied on for disclosing chloroprene adhesive compositions [abstract] containing ~0.45 wt% γ-aminopropyltriethoxysilane [3:30-44; Table 1] affords chloroprene adhesives having excellent initial bonding strength and high heat resistance [3:15-21; Table 1].
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Mori et al. (US 5,252,668) discloses ~0.45 wt% γ-aminopropyltriethoxysilane [3:30-44; Table 1] affords chloroprene adhesives having excellent initial bonding strength and high heat resistance [3:15-21; Table 1].
In response to applicant's 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).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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