DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 8/14/26. In particular, claim 10 has been amended to further limit the diene monomer and the ratio of (a) to (b). Claims 21-22 are new.
Note that the rejections are substantially similar to the previous rejections, however have been amended to reflect the new limitations.
The newly introduced limitations and/or the new claims were not present at the time of the preceding action. For this reason, the present action is properly made final.
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
Claim(s) 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 6962428 or under 35 U.S.C. 102(a)(2) as being anticipated by US 2022/0173401 (herein Hirabayashi) as evidenced by US 2019/0077938 (herein Fukumine) and US 2004/0097660 (herein Bender).
Note that the US PGPub is the English counterpart of the JP document, which are both identical. For date purposes, the JP document is utilized for its publication and 102(a)(2) date, while the PGPub is relied upon for the filing date/102(a)(2) date. The citations below refer to the PGPub, which is also utilized as the English translation of the JP document.
The JP document was published on 11/5/21. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The PGPub relied upon foreign priority, which was filed 9/3/20. A machine translation of the foreign priority of US 2022/0173401 and JP 6962428 has been mailed with the instant action.
As to claims 10-13, Hirabayashi discloses a nitrile group containing copolymer rubber comprising acrylonitrile (a), methacrylonitrile (b) and butadiene (c, conjugated diene). See examples, specifically examples 8 in table 1 and described in paragraph 272-276. The acrylonitrile (a) and methacrylonitrile (b) are present in 35 wt% (20+15). The ratio of (a) to (b) is 57:43. The amount of diene monomer is 55 wt%. Again, see copolymer 8 in table 1. Note that BD = butadiene, AN = acrylonitrile, MAN = methacrylonitrile, and BA = butyl acrylate. Also note that the claims comprise open transitional phraseology viz comprising.
Hirabayashi is silent on the iodine value.
However, Hirabayashi discloses that the hydrogenation rate with 99.6%. See examples and paragraph 275. Moreover, the butadiene content of examples 4 and 5 are 45 and 65 wt% respectively. The iodine value of nitrile rubbers is a measurement of the degree of hydrogenation. See paragraph 20 of Bender for evidence. Further, it is known that hydrogenation of nitrile rubbers reduces the iodine value to below 120. See paragraph 47 of Fukumine for evidence. In other words, iodine reacts with unsaturated double bonds of the conjugated diene units, which are removed by hydrogenation. Therefore, turning back to Hirabashi, the copolymers of examples 8 has 0.26 g residual butadiene bonds after hydrogenation (deduced: (1-0.996)*65). This translates to an iodine value of about 1.2 respectively (deduced: 0.26*127*2/54), which is within the claimed range.
Claim Rejections - 35 USC § 103
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6962428 and/or US 2022/0173401 (herein Hirabayashi) as evidenced by US 2019/0077938 (herein Fukumine) and US 2004/0097660 (herein Bender) in view of US 2018/0134831 (herein Shiono).
The discussion with respect to Hirabayashi et al. set-forth above is incorporated herein by reference.
As to claims 19-20, Hirabayashi is silent on crosslinking the composition.
Shiono discloses that a composition comprising the rubber is crosslinked with a crosslinking agent. See paragraph 59-60. The rubber is crosslinked to yield a material that is cold resistant and oil resistant. See paragraph 5, 15 and examples.
It would have been obvious at the time of the invention to have modified the rubber/composition of Hirabayashi via utilizing a crosslinking agent to obtain a crosslinked rubber composition as taught by Shiono because one would want to improve cold and oil resistance.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6962428 and/or US 2022/0173401 (herein Hirabayashi) as evidenced by US 2019/0077938 (herein Fukumine) and US 2004/0097660 (herein Bender).
The discussion with respect to Hirabayashi et al. set-forth above is incorporated herein by reference.
As to claims 21-22, Hirabayashi discloses that the copolymer comprises carboxyl group structural units (monomers). See paragraph 95, 106-112. Hirabayashi discloses that the carboxyl group containing monomer unit is e.g. methacrylic acid (see both structure of formula 9 when R is methyl (paragraph 111). The carboxyl containing monomer is present in 1 wt% or less. See paragraph 112. The carboxyl containing monomer is taught to be present in amounts to prevent gelation, while also improving the adsorption force, viscosity and dispersion efficiency of the material. See paragraph 107 and 112. Therefore, it would have been obvious at the time of the invention to added appropriate amounts of the carboxyl group containing monomer, including amounts within the claimed range, because one would want to optimize the properties such as adsorption force, viscosity, dispersion efficiency and gelation. See paragraph 107 and 112. Moreover, It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Claim(s) 10-13 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0173401 (herein Hirabayashi) in view of US 2018/0134831 (herein Shiono).
As to claims 10-13, Hirabayashi discloses a nitrile group containing copolymer rubber comprising acrylonitrile (a), methacrylonitrile (b) and butadiene (c, conjugated diene). See examples, specifically examples 8 in table 1 and described in paragraph 272-276. The acrylonitrile (a) and methacrylonitrile (b) are present in 35 wt% (20+15). The ratio of (a) to (b) is 57:43. The amount of diene monomer is 55 wt%. Again, see copolymer 8 in table 1. Note that BD = butadiene, AN = acrylonitrile, MAN = methacrylonitrile, and BA = butyl acrylate. Also note that the claims comprise open transitional phraseology viz comprising.
Hirabayashi is silent on the iodine value.
Shiono discloses similar nitrile group containing copolymer rubbers. See abstract, paragraph 5-8 and examples. Shiono discloses that the iodine value is preferably less than 50 in order to improve heat resistance and ozone resistance of the rubber. See paragraph 42.
It would have been obvious at the time of the invention to have modified the rubber of Hirabayashi to have an iodine value to lower than 50 as suggested by Shiono because one would want to improve heat resistance and ozone resistance.
As to claims 19-20, Hirabayashi is silent on crosslinking the composition.
Shiono discloses that a composition comprising the rubber is crosslinked with a crosslinking agent. See paragraph 59-60. The rubber is crosslinked to yield a material that is cold resistant and oil resistant. See paragraph 5, 15 and examples.
It would have been obvious at the time of the invention to have modified the rubber/composition of Hirabayashi via utilizing a crosslinking agent to obtain a crosslinked rubber composition as taught by Shiono because one would want to improve cold and oil resistance.
As to claims 21-22, Hirabayashi discloses that the copolymer comprises carboxyl group structural units (monomers). See paragraph 95, 106-112. Hirabayashi discloses that the carboxyl group containing monomer unit is e.g. methacrylic acid (see both structure of formula 9 when R is methyl (paragraph 111). The carboxyl containing monomer is present in 1 wt% or less. See paragraph 112. The carboxyl containing monomer is taught to be present in amounts to prevent gelation, while also improving the adsorption force, viscosity and dispersion efficiency of the material. See paragraph 107 and 112. Therefore, it would have been obvious at the time of the invention to added appropriate amounts of the carboxyl group containing monomer, including amounts within the claimed range, because one would want to optimize the properties such as adsorption force, viscosity, dispersion efficiency and gelation. See paragraph 107 and 112. Moreover, It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Response to Arguments
Applicant's arguments are directed towards examples not addressed in the new rejections. The new rejections point to example 8.
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 MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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