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 .
Response to Arguments
In their response dated 7/7/2026 the applicant affirmed election of Group I with traverse. No arguments were present traversing the restriction.
Applicants further argued that the prior art of record as applied in the rejection dated 5/22/2026 fails to teach the mass ratio between claimed bismaleimide and rubber-metal adhesion promoter in a range of 0.5-100 or less. The applicants further argued that the combination would not arrive at the rubber composition recited in amended claim 1.
The applicants further argued the advantageous effects, that the durability is likely to be improved. The prior art of record fails to provide teachings, motivation or suggestion that would have led one of ordinary skill in the art to arrive at claim 1 with a reasonable expectation of success.
Examiner’s response:
Examiner disagrees.
As such the response to the arguments will flow more logically if 2nd argument is addressed first. As it was mentioned in the first office action on the merits dated 5/22/2026, Otsuki teaches the adhesion promoter of the instant invention wherein the accelerator is sulfenamide not bismaleimide. The rubber component of Otsuki is listed in [0034], with natural rubber being preferred, specifically the examples disclose the composition based on 100 parts of natural rubber. Sulfenamide in Otsuki is utilized in a range of 0.01-10 phr.
The examiner relied upon Uchino to provide the limitation of the claimed bismaleimide.
Uchino discloses a rubber composition specifically utilized to improve adhesion to the steel cords. This is the same field of endeavor as Otsuki. The composition of Uchino also utilizes 100 parts of natural rubber, and studies the effects of the bismaleimide and sulfenamide on the adhesive properties of the rubber composition to the steel cords.
In Tables 1 and 2, the comparative examples 1-4 use vulcanization accelerator DZ (tradename for sulfenamide) in an amount of 1-2 phr.
Inventive examples 1-5 disclose use of 1.0 phr. of sulfenamide accelerator, which was supplemented by claimed bismaleimide in an amount of 2.0 phr.
Comparative examples 5 and 6 disclose use of sulfenamide accelerator in 1.0 phr. with bismaleimide in an amount of 6.0 phr.
The results of Uchino show that when bismaleimide is added to composition in an amount of 2.0 phr., the composition has better adhesion between rubber and steel cord. Other properties that were also improved include storage modulus, loss factor and elongation at break (eb) retention.
At an amount of 6.0 of bismaleimide the adhesion between rubber and steel cords deteriorated.
In [0027] Uchino indicated that the amount of bismaleimide has to be kept within 0.1-5 phr. When content of bismaleimide is less than 0.1 phr., compounding effect is not developed. When the content of bismaleimide exceeds 5 phr. the reversion is increased to degrade the low heat buildup property. Consequently, per 100 parts of natural rubber, Uchino clearly states that the content of bismaleimide cannot be higher than 5 phr. This follows applicants’ own statement in the specification [0061] as originally filed. Specifically, that there is a limit of how much bismaleimide can be utilized before the composition begins to deteriorate.
Consequently, contrary to the applicant’s arguments, Uchino clearly shows the advantages of using bismaleimide and provides data along with the comments directed at the criticality of the bismaleimide content. Consequently, the content of the bismaleimide has to be within 0.1-5 phr. of natural rubber.
With respect to applicant’s argument regarding their invention, term “likely improved” is not really the most effective way to present any unexpected results.
Applicants’ own data (Table 2) discloses 100 parts of natural rubber, the maleimide is utilized in 1 phr. and second vulcanization accelerator (CBS) is also sulfenamide utilized in an amount of 0.9 phr. Applicant’s comparative data also does not utilize bismaleimide. As it was mentioned in the arguments above it is the bismaleimide and its content that is studied as well as its effect on several properties.
Sulfur as main vulcanizing agent per 100 parts of natural rubber: Otsuki discloses sulfur in an amount of 5 phr., Uchino discloses sulfur in an amount of 6 phr., which is the same amount utilized in the instant invention.
The results obtained by instant inventors cannot be compared side by side with the results of either Otsuki or Uchino, since the aging process as well as actual testing are not the same. While Uchino discloses standard JIS and ASTM procedures that were follow (the procedures explain the process), applicant’s tests are different. At least none of the standard tests in Uchino mapped onto process utilized by the applicants. However, number-wise the results are spot on, especially with respect to adhesion properties.
In summary, based on improvements disclosed in Uchino, one of ordinary skill in the art at the time instant invention was filed would have more than enough reasons to modify Otsuki in order to achieve better adhesion between rubber composition and the steel cords. One of ordinary skill in the art would also be motivated to take Uchino’s statement of criticality into account, in order to avoid or minimize any reversion and deterioration of the rubber composition.
Last but not least, instant claims require presence of rubber component (any rubber), at least 0.01 phr. of adhesion promoter, carboxylic acid salt having 2-25 carbon atoms and 4,4’-diphenylmethanbismaleimide such that ratio of bismaleimide to adhesion promoter is 0.05-100 or less.
Applicants’ examples, disclose 100 parts of specifically natural rubber, carbon black (60 phr.) zinc oxide (10 phr.), neodecanoic acid , antioxidant, sulfur (6 phr.), bismaleimide (1 phr.) and sulfenamide 90.9 phr.). Consequently, the applicants’ examples are not commensurate with the scope of the claims. Applicant’s example do not reflect any data which would show that any rubber, fillers or additives can be utilized and still the adhesion as argued in the response.
In summary, the amendment did not overcome the rejections of record. The rejections of record will be restated to reflect the amendments to the claims.
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 1-15 and 17-20 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.
Claim 1 is directed to a ratio of bismaleimide to adhesion promoter as 0.5 or more and 100 or less. There are two issues with this limitation. Specifically, the ratio looks more like an amount of bismaleimide based on the content of adhesion promoter not a ratio. Additionally, with ratio of 100, the content of adhesion promoter would be zero based on 100%. The applicants are requested to clarify the content of bismaleimide or its ratio.
Dependent claims inherit the deficiencies of the independent claim.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-14, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki (EP 3 196 243 provided by the applicants) in view of Uchino (US 2002/0088522).
With respect to claims 1, 5, 9, 10 and 19, Otsuki discloses adhesion promoter which is utilized to bond rubber to the metal cords. The adhesion promoted comprises following compound (p. 3):
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RCOO is an aliphatic carboxylic acid having 2-25 carbon atoms. M is a metal selected from bismuth, copper, antimony, silver or niobium. Most preferable metals are copper and bismuth [0011] which meet the limitation of instant claims 5, 9 and 19. Component Z is selected from Z-1 to Z-4.
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Wherein the adhesion promoter is utilized in amount of 0.01-10 parts by mass (p. 3 [12]). Wherein formula z-1 meets the limitation of claim 10.
Otsuki however, discloses the accelerators which are sulfenamides, not bismaleimides. The accelerators are utilized in amount of 1-12 parts by mass.
Uchino discloses composition for improving adhesion between the steel cords and rubber. As it was mentioned in the arguments above, the composition is also based on 100 parts of natural rubber, same additives. The curative system also comprises sulfur and sulfenamide, wherein bismaleimide is utilizes along with sulfenamides to improve adhesion between rubber and metal cords. The bismaleimide compounds can be used with the same sulfenamide compounds as those of Otsuki. Exemplified compounds include 4,4’-diphenylmethane bismaleimide [0065].
Uchino clearly shows that utilizing bismaleimide compound in addition to sulfenamide improves adhesion force between rubber and the cord (see examples, tables 1 and 2 also refer to the response to arguments section). Uchino teaches that conventional steel cords are coated with brass wherein the coating has following content: Cu-63%, Zn-37%; or Cu-63% and Co in the surface layer [0065]. While formation of oxide by bonding cobalt or nickel to oxygen is very stable due to the strong interaction such is not observed when copper is utilized [0044]. Results of the examples in Uchino clearly show that use of bismaleimide compound with steel cords that have brass coating on results in a rubber article with increased rubber hardness and without damaging low heat buildup property, as well as improved adhesion to steel cords and resistance to deterioration. The use of bismaleimide clearly results in better properties compared to the composition where bismaleimide is not utilized.
Uchino further discloses criticality of the content of bismaleimide. Specifically, if the content is less than 0.1 the compounding effect is not developed. If the content is more than 5 phr., the reversion is increased degrading the low heat buildup property. Consequently, seeing the increase in adhesion properties in Uchino as well as the criticality statement above, one of ordinary skill in the art would want to increase adhesion of the rubber composition to steel cord by small addition of bismaleimide, such that its content does not degrade the properties.
With guidance from Uchino, one of ordinary skill in the art would be more than motivated include bismaleimide sulfenamide accelerator combination in the composition of Otsuki, minimizing the and thereby obtain the claimed invention. Consequently, as it was mentioned above the content of adhesion promoter in composition of Otsuki is 0.01-10 phr. and the content of bismaleimide would be 0.01-5 phr. This would encompass the ratio of bismaleimide to adhesion promoter of 0.5:1 to 1:1.
It should be noted that while ranges disclosed in Otsuki clearly encompass the content of the instant invention, the adhesion promoter is utilized in an amount of 4 phr., sulfenamide is utilized in an amount of 0.5 phr., the content of the bismaleimide would be around 1 phr., because Uchino discloses content of bismaleimide to be twice the content of sulfenamide.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize bismaleimide of Uchino in the product of Otsuki and thereby obtain claimed invention. Both references utilize steel cords even if cords of Otsuki are conventional, Uchino clearly shows improvement in adhesion between rubber and steel cords. Uchino further proves by the way of examples that small addition of the bismaleimide improves several properties in the steel cord – rubber composites.
With respect to claims 3 and 17, Otsuki discloses use of fillers in the rubber composition. Exemplified filler is carbon black [0066]. Silica is also taught in [0044-0046].
With respect to claims 4 and 18, exemplified rubber of Otsuki is natural rubber [0066]. Other suitable rubbers are listed in [0043].
With respect to claims 6-8, 11, 12 and 20, exemplified acids of Otsuki are monocarboxylic acids and include ethyl hexanoic acid (synthesis example 1), neodecanoic acid (synthesis example 2). In [0029-0030]. Otsuki further discloses hexadecenoic acid and octadecanoic acid. These are saturated acids.
With respect to claim 13, Otsuki utilizes vulcanizing agent to make a rubber composite comprises metal cords [0047-0051] wherein the composition is vulcanized to obtain the article.
With respect to claim 14, Otsuki discloses that the composite can be utilized to make a tire [0052] and conveyor belt [0009].
Claims 2 and 20 rejected under 35 U.S.C. 103 as being unpatentable over Otsuki (EP 3 196 243 provided by the applicants) in view of Uchino (US 2002/0088522) as applied to claims 1, 3-14, 17-19 above, and further in view of Miyazaki (US 2006/0089439).
The discussion of the disclosure of Otsuki and Uchino as presented in paragraph 1 of this office action is incorporated here by reference.
In summary Otsuki discloses vulcanizable rubber composition comprising metal salts of carboxylic acid according to claim 1 of the instant invention. Otsuki however does not disclose compounds such as hexamethylenebisthiosulfates.
Miyazaki states that in rubber compositions for coating steel cords, sulfur is the component that causes vulcanization of the rubber [0011]. The amount of sulfur is critical (at least 3 parts) in order to prevent peeling [0012] while at the amounts of more than free insoluble sulfur is not bonded and as a result tensile properties are deteriorated [0012].
Miyazaki disclosed use of hexamethylenebisthiosulfate disodium dihydrate (HTS) due to dissociation of polysulfur bonds result in stabilized composition which not only has improved tensile strength after aging but also improves adhesion between the rubber and steel cords [0014-0015].
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the HTS compounds of Miyazaki in the composition of Otsuki and thereby obtain the claimed invention. Such modification, as disclosed in Miyazaki would result in composition having no or minimal content of free sulfur while maintaining tensile properties of the composition.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuki (EP 3 196 243 provided by the applicants) in view of Uchino (US 2002/0088522) as applied to claims 1, 3-15, 17-19 above, and further in view of Esashi (US 4,609,499)
The discussion of the disclosure of Otsuki and Uchino as presented in paragraph 1 of this office action is incorporated here by reference.
In summary Otsuki discloses vulcanizable rubber composition comprising metal salts of carboxylic acid according to claim 1 of the instant invention. Otsuki teaches that the composition can be utilized to make articles such as tires and conveyor belts and the like but fails to define the “and the like”.
Esashi discloses another composition comprising monocarboxylic acid with formula Z-1. Specifically, the formula is (Abstract):
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Esashi states that such compounds result in improved adhesion between steel cords and a rubber to be vulcanized much like the compounds of Otsuki. Therein Y1-3 are monocarboxylic acids having 2-24 carbon atoms. The same acids as those of Otsuki are disclosed.
The articles disclosed in Esashi include tires, belts, conveyors, hoses and the like, all of which articles require good adhesion between rubber and metal cords and ability to maintain that adhesive strength over long period of time (col. 1). This exposure includes various environments such as high temperatures, humidity.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed what Otsuki means by “and the like”. Esashi is one of the references which lists more articles which require proper adhesion between rubber and the steel cord reinforcement that will last over long period of time. Consequently, one of ordinary skill in the art would readily realize that making hoses is within purview of PHOSITA
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Esashi clearly establishes what is known in the art and which articles require the same type of vulcanizable rubber/steel cord reinforcement adhesion.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 3, 2026
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