DETAILED ACTION
Claim Rejections - 35 USC § 102 and 103
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.
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 to 3, 5, 6, 8, 9, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anti-cipated by Nakamura 4,341,675.
The rejections below are maintained from the previous office action, with the
exception of the new grounds of rejection necessary to address new claims 21 and 22.
Nakamura teaches a rubber composition that contains both an ethylene propyl-
ene diene rubber and a silicone rubber (meeting the rubber in claim 1 as well as claims 2 and 3). This also contains a polyoxyalkylene-organosiloxane copolymer (meeting the claimed amphiphilic dimethylsiloxane block copolymer as well as claims 5, 8 and 9).
Please see column 2, line 64, through the top of column 3 and column 3, lines 22 to 52. This teaches the rubbers. Column 4, lines 58 and on, teach the block copolymer.
More specifically, see Example 1 and Table 1 which shows a combination of rubber as well as a dimethylsiloxane ethylene oxide block copolymer in an amount of 2.8 wt% (when calculated based on the total of the composition and meeting claim 6). The elongation (defined specifically in column 8, lines 48 and 49 as elongation of break) is 550%. This meets the claimed requirement of greater than about 140%.
In view of the above, each of claims 1 to 3, 5, 6, 8 and 9 are anticipated.
For claim 21, note that the block copolymer is homogeneously blended prior to curing which will result in the copolymer being embedded in the rubber matrix. See below for further discussion.
For claim 22, note that this is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patent-ability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In the instant application, the Examiner does not see a patentable difference between the prior art and the claims such that this claim is rejected for reasons consistent with that noted for claim 1. Specifically, the block copolymer in Nakamura is distributed throughout the rubber therein and this will also result from the method by which the composition of claim 22 is prepared.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura 4,341,675.
While this reference does not specifically show a composition having an amount of block copolymer within this claimed range, the teachings of Nakamura clearly render such an amount obvious. Note column 6, line 10, which teaches a range of from 1 to 30, preferably 2 to 15. This is based on the total amount of rubbers and includes amounts that are within the claimed range such that one having ordinary skill in the art would have found an amount within the claimed range to have been within routine experimentation of the teachings in Nakamura. This is particularly true when one considers the presence of additional components which will lower the percentage of polyoxyalkylene-organosiloxane copolymer in the entire composition.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura 4,341,675, and further in view of the “What is Santoprene” article, attached herewith.
Nakamura teaches the use of ethylene propylene diene rubber, as noted above.
This differs from claim 4 in that Nakamura does not specifically teach EPDM rubber particles encapsulated in a polypropylene.
The “What is Santoprene” article teaches such a rubber. It is described as EPDM rubber in a thermoplastic matrix of polypropylene. This is the same EPDM used in the instant working examples as representative of the rubber in claim 4. This article teaches various properties and benefits of Santoprene. It looks, feels and behaves like EPDM but offers simple, flexible part design and manufacturing. It exhibits the properties of rubber while providing the ease of processing plastics. It has long-term performance and is useful in various ways, including automotive, electrical and construction.
From this one having ordinary skill in the art would have found the use of the commercially available EPDM based Santoprene as the EPDM of Nakamura in an effort to take advantage of the known benefits and properties thereof. In such a manner the skilled artisan, having this knowledge, would have found the instant claim obvious.
The Examiner also cited SantopSeal article “Santoprene Tubing: A Sustainable
Choice for Industrial Applications” as being of general interest. This reference serves to further demonstrate the benefits and properties of Santoprene, particularly in the tubing (or hose) industry, and supports the rejection rationale that Santoprene and the benefits and properties thereof are known in the art.
Response to Arguments
Applicants’ traversal has been considered but is not deemed persuasive. They argue that Nakamura does not disclose a composition embedded within a rubber, where embedded means that the block copolymer is present and dispersed within the rubber matrix and at least partially below the surface thereof. They also state that the composi-tion of Nakamura is formed by “the simple mixing of polymer components” and mixing would not result in the block copolymer embedded within a rubber at least partially below the surface. It is important to note, though, that applicants do not provide any support or reasoning for this position.
On the other hand, the Examiner notes that Nakamura teaches a homogeneous
blend of the copolymer in the rubber composition. This occurs by various mixing tech-niques as found in column 7, line 23 to 35, and column 8, line 43. Applicants are reminded of the definition of homogeneous, some of which are shown below:
of uniform structure or composition throughout
composed of parts or elements that are all of the same kind; not heterogeneous.
Homogeneous is used to describe a group or thing which has members or parts that are all the same.
The word homogeneous indicates that the block copolymer is dispersed in a consistent manner throughout the entire rubber and thus will be embedded into the rubber in a manner that meets the claims.
In view of the above, this rejection is 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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
9/14/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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