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 U.S.C § 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.
Claims 1-10, 23, and 28-33 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 is directed to a method of making a seal, and the claim recites a method of applying a composition to a “seal dimensional mold”. The claims and the specification do not set forth the meaning of a “dimensional mold”. Molds are physical and thus by necessity have physical (spatial) dimensions. The recitation in the claim that the mold is “dimensional” does not add any clear meaning or limitation to the identity of the mold that would distinguish it from another mold. The claim does not set forth the meaning of a “dimensional mold” with reasonable clarity.
The examiner does not find any clarification of the recited a “dimensional mold” in the specification.
Claims 2-10, 23, and 28-33 are ultimately dependent upon independent claim 1, and they are indefinite for the same reason.
Claim 4 recites the phrase “19-51% acrylonitrile butadiene rubber”. The claim does not set forth with reasonable clarity what aspect of the rubber the percentage refers to, or what other quantity the amount of the rubber is a percentage of. One of ordinary skill in the art would not be reasonably apprised of the scope of the recited percentage ranges.
The examiner does not find any clarification of the cited percentages in the specification.
Claim 7 recites the term “kaolite”, and this is a trade name. Trade names are used to identify a source of goods rather than the goods themselves. That is, a trade name does not identify or describe the actual goods associated with trade name. One of ordinary skill in the art would not be reasonably apprised of the scope of the claims because the trade names cannot be used properly to identify any particular material or product. Because the trade names are used in a claim as a limitation to identify or describe a particular material or product, the claims do not comply with the requirements of the 35 U.S.C. § 112(b). See MPEP 2173.05(u).
Applicant is reminded that amendments to the claims must find written descriptive support in the original disclosure for compliance with 35 U.S.C. § 112(a).
Claim Rejections – 35 U.S.C. § 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 9-10, 23, and 31-33 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US Patent No. 6,358,580 B1 (herein “Mang”).
As to claim 1: Mang describes methods of making sealing compositions (see the abstract) that are self-healing (see col. 6, ll. 51-54). Mang describes a method of making a seal (see Inventive Example 1 at col. 9, l. 63 to col. 10, l. 32) comprising mixing a rubber mixture and potato starch (see col. 10, ll. 16-17), corresponding to the presently recited water-swellable elastomeric composition; milling the mixed composition (see the further mixing at col. 10, ll. 20-22); and applying the composition into a mold (see col. 10, ll. 24-32).
As to claim 9: Mang further discloses the activator zinc oxide (see col. 10, l. 9).
As to claim 10: The presently recited “backing seal” has been interpreted to refer to the use of the seal in a manner that “backs” another material. This is an intended use of the seal rather than any particular structural characteristic that would distinguish the claimed seal from Mang’s seal. Mang’s seal is therefore considered to fall within the scope of the presently recited backing seal.
As to claim 23: Mang further discloses a step of curing (see “Crosslinking” at col. 10, l. 23).
As to claim 31: Mang further discloses a dual roll mill (see col. 9, l. 67 to col. 10, l. 1).
As to claim 32: Mang’s seal swells >100% by volume upon exposure to water (see the fourth entry of the table bridging col. 8-9).
As to claim 33: Mang does not disclose the amount by which the leakage rate of the seal changes after 1 hour at 3000 psi in 50:50 v/v water/ethylene glycol. Because Mang’s seal includes the same ingredients as the presently claimed seals, there is a reasonable basis to conclude that Mang’s seal would have the same leakage characteristics as the presently claimed seals. Case law holds that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01(I)-(II). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I)
Claim Rejections – 35 U.S.C. § 103
The following is a quotation of (pre-AIA ) 35 U.S.C. § 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Mang.
The discussion set forth above regarding Mang with respect to base claim 1 is incorporated here by reference. As set forth above, Mang describes a method according to base claim 1, and Mang’s method includes the elastomer natural rubber (see col. 10, l. 3). Mang further discloses that the elastomer is selected from a list which includes acrylonitrile-butadiene rubber, among others (see col. 6, ll. 18-29 and NBR at col. 6, l. 23).
Mang does not specifically disclose an embodiment of a method comprising acrylonitrile-butadiene rubber.
In light of Mang’s disclosure of suitable elastomers, one of ordinary skill in the art would have been motivated by ordinary creativity to make Mang’s compositions using any of the disclosed elastomers, including the acrylonitrile-butadiene rubber. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using acrylonitrile-butadiene rubber.
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Mang, as applied above, in view of Journal of Food Science 1991, 56(6), 1593-1596, 1599 (herein “Penner”).
As to claim 3: The discussion set forth above regarding Mang with respect to base claims 1-2 is incorporated here by reference. As set forth above, Mang suggests a method according to base claim 2, and Mang’s method includes the polysaccharide potato starch.
Mang more generally discloses that the seals described therein are made with a polysaccharide (see component (A) at col. 2, ll. 45-50) such as several plant-based polysaccharides such as pectin and others. Pectin is a well-known dietary fiber.
Mang does not disclose the source of the polysaccharides, including the recited fibers.
Penner describes the nonstarch polysaccharide components of carrot fiber (see the abstract and the paragraph bridging pp. 1593-1594). Penner discloses that the polysaccharides included pectic polysaccharides (see the last full paragraph on p. 1594 and the full paragraph on p. 1595).
In light of Mang, one of ordinary skill in the art would have been motivated by ordinary creativity to use a well-known and conventional source for the polysaccharides described therein, including pectin. In light of Penner, it is evident that one of ordinary skill in the art would be apprised that carrot fiber includes pectin, one of the polysaccharides described in Mang. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using any well-known and conventional source for the polysaccharides such as pectin, including carrot fiber.
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Mang, as applied above, in view of the Lachat thesis and Penner.
The discussion set forth above regarding Mang with respect to base claims 1-2 is incorporated here by reference. As set forth above, Mang suggests a composition according to base claim 2, and Mang’s method includes the elastomer natural rubber (see col. 10, l. 3) and the polysaccharide potato starch.
Mang further discloses that the seals described therein are made with an elastomer that is selected from a list which includes acrylonitrile-butadiene rubber, among others (see col. 6, ll. 18-29 and NBR at col. 6, l. 23). Mang further discloses that the seals described therein are made with a polysaccharide (see component (A) at col. 2, ll. 45-50) such as several plant-based polysaccharides such as pectin and others. Pectin is a well-known dietary fiber.
Mang does not specifically disclose an embodiment of a method comprising acrylonitrile-butadiene rubber, and Mang does not disclose the source of the polysaccharides, including the recited carrot fiber.
The Lachat thesis describes the oil resistance of nitrile rubbers. The Lachat thesis discloses that swelling by hydrocarbon oils and thermal degradation decrease as acrylonitrile content increases (see the abstract). The Lachat thesis also discloses characterizations of NBR rubbers with 20% or 40% acrylonitrile content (see the second paragraph on p. iv).
In light of Mang’s disclosure of acrylonitrile butadiene rubber, one of ordinary skill in the art would have been motivated by ordinary creativity to make Mang’s compositions using any known acrylonitrile butadiene rubber. In light of the Lachat thesis, one of ordinary skill in the art would have been apprised of acrylonitrile butadiene rubbers having an acrylonitrile content of 20% or 40%. One of ordinary skill in the art would have been motivated to use such a rubber to make Mang’s compositions based upon the desired degree of swelling of the composition by hydrocarbon oils. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using an acrylonitrile butadiene rubber with 20% or 40% acrylonitrile content.
Penner describes the nonstarch polysaccharide components of carrot fiber (see the abstract and the paragraph bridging pp. 1593-1594). Penner discloses that the polysaccharides included pectic polysaccharides (see the last full paragraph on p. 1594 and the full paragraph on p. 1595).
In light of Mang, one of ordinary skill in the art would have been motivated by ordinary creativity to use a well-known and conventional source for the polysaccharides described therein, including pectin. In light of Penner, it is evident that one of ordinary skill in the art would be apprised that carrot fiber includes pectin, one of the polysaccharides described in Mang. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using any well-known and conventional source for the polysaccharides such as pectin, including carrot fiber.
Claims 5-8 are rejected under 35 U.S.C. § 103 as being unpatentable over Mang, the Lachat thesis, and Penner, as applied above, and further in view of US Patent Application Publication No. 2014/0087977 A1 (herein “Kim”).
As to claim 5: The discussion set forth above regarding Mang, the Lachat thesis, and Penner with respect to base claim 4 is incorporated here by reference. As set forth above, Mang, the Lachat thesis, and Penner suggest a method according to base claim 4.
Mang does not specifically disclose an embodiment of a composition comprising the recited diffusion promoters.
Kim describes water swellable elastomeric compositions (see the abstract) comprising a swelling agent (see ¶ [0027]) including a high molecular weight superabsorbent polymer such as polyacrylic acid salts and others (see ¶ [0034]) and a low molecular weight salt such as sodium acetate, sodium triphosphate, various others, or mixtures and combinations thereof (see ¶ [0035]). The combination of swelling agents provides various properties (see ¶ [0033]) including a fast absorption rate of water due to the low molecular weight salt (see item (1) in ¶ [0033]), corresponding to the presently recited promotion of diffusion.
In light of Kim, one of ordinary skill in the art would have been motivated to make Mang’s compositions using a combination of a high molecular weight superabsorbent polymer such as polyacrylic acid salts and a low molecular weight salt such as sodium acetate as the swelling agent in order to take advantage of its effects as described by Kim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using acrylonitrile butadiene rubber and a combination of a high molecular weight superabsorbent polymer such as polyacrylic acid salts and a low molecular weight salt such as sodium acetate as a swelling agent.
As to claims 6-7: As set forth above, Mang, the Lachat thesis, and Penner suggest a method according to base claim 5. Mang does not specifically disclose an embodiment of a composition comprising the recited fluid retaining agents.
Mang discloses that the compositions may include customary additives, including fillers such as kaolin, among others (see col. 3, ll. 33-43).
In light of Mang’s disclosure of fillers, one of ordinary skill in the art would have been motivated by ordinary creativity to make Mang’s compositions using any of the disclosed fillers, including kaolin.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using kaolin as a filler. Because kaolin includes the same mineral (kaolinite) as does the presently recited material known by the trade name Kaolite, there is a reasonable basis to conclude that Mang’s filler kaolin would function as a fluid retaining agent for the same reason that it performs this function in the present case.
As to claim 8: As set forth above, Mang, the Lachat thesis, and Penner suggest a method according to base claim 5. Mang further discloses that the compositions may include additives such as fillers (see col. 3, l. 35) such as reinforcing fillers such as silica, carbon blacks, or others (see col. 3, ll. 39-44).
Mang does not specifically disclose an embodiment of a composition comprising a reinforcing filler.
In light of Mang’s disclosure of suitable fillers, one of ordinary skill in the art would have been motivated by ordinary creativity to make Mang’s compositions using any of the disclosed fillers, including silica or others. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using a reinforcing filler such as silica or others.
Claims 28-29 are rejected under 35 U.S.C. § 103 as being unpatentable over Mang, as applied above, in view of Kim.
As to claim 28: As set forth above, Mang discloses a method according to base claim 1. Mang’s method includes adding the base polymer to a mixer (see col. 10, ll. 3-4), adding potato starch (see col. 10, l. 17), and adding a curing agent (see col. 10, ll. 9-12).
Mang discloses that the compositions may include customary additives, including fillers such as kaolin, among others (see col. 3, ll. 33-43).
Mang does not disclose an embodiment of a method comprising the addition of the presently recited diffusion promoter, fluid retaining agent, and filler.
In light of Mang’s disclosure of fillers, one of ordinary skill in the art would have been motivated by ordinary creativity to make Mang’s compositions using any of the disclosed fillers, including kaolin.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using kaolin as a filler. Because kaolin includes the same mineral (kaolinite) as does the presently disclosed material known by the trade name Kaolite, there is a reasonable basis to conclude that Mang’s filler kaolin would function as a fluid retaining agent for the same reason that it performs this function in the present case.
Kim describes water swellable elastomeric compositions (see the abstract) comprising a swelling agent (see ¶ [0027]) including a high molecular weight superabsorbent polymer such as polyacrylic acid salts and others (see ¶ [0034]) and a low molecular weight salt such as sodium acetate, sodium triphosphate, various others, or mixtures and combinations thereof (see ¶ [0035]). The combination of swelling agents provides various properties (see ¶ [0033]) including a fast absorption rate of water due to the low molecular weight salt (see item (1) in ¶ [0033]), corresponding to the presently recited promotion of diffusion.
In light of Kim, one of ordinary skill in the art would have been motivated to make Mang’s compositions using a combination of a high molecular weight superabsorbent polymer such as polyacrylic acid salts and a low molecular weight salt such as sodium acetate as the swelling agent in order to take advantage of its effects as described by Kim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to have made Mang’s compositions using acrylonitrile butadiene rubber and a combination of a high molecular weight superabsorbent polymer such as polyacrylic acid salts and a low molecular weight salt such as sodium acetate as a swelling agent.
As to claim 29: Mang’s process further includes adding the activator zinc oxide (see col. 10, l. 9).
Claim 30 is rejected under 35 U.S.C. § 103 as being unpatentable over Mang, as applied above, in view of ASTM D 3182.
As set forth above, Mang discloses a method according to base claim 1. Mang’s method includes adding the base polymer and further ingredients to a mixer (see col. 10, ll. 3-22). Mang does not disclose that the mixing conforms to ASTM D 3182, as is presently recited.
ASTM D 3182 specifies the mixing equipment, general mixing procedures, vulcanization equipment and procedures for rubber compounds and vulcanized sheets (see section 1.1). ASTM D 3182 discloses that the standard practices therein are used in preparing rubber compounds for quality control of production (see section 3.1).
In light of ASTM D 3182, one of ordinary skill in the art would have been motivated to make Mang’s rubber compositions using mixing equipment, general mixing procedures, and vulcanization equipment in accordance with ASTM D 3182 in order to have a standard practice for use in the quality control of the 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 performed the mixing of Mang’s process in accordance with ASTM D 3182.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 10, 23, and 32-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,230,652 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-3 and 23: US ‘652 claims a method (see claim 14 of US ‘652) comprising mixing a water-swellable elastomeric composition comprising a base polymer comprising an acrylonitrile butadiene rubber and a plant-based polysaccharide comprising carrot fiber; milling the rubber, applying to seal dimensional mold, and curing the seal article.
As to claim 10: The presently recited “backing seal” has been interpreted to refer to the use of the seal in a manner that “backs” another material. This is an intended use of the seal rather than any particular structural characteristic that would distinguish the claimed seal from the seal claimed in US ‘652. The seal of US ‘652 therefore considered to fall within the scope of the presently recited backing seal.
As to claim 23: US ‘652 further claims a step of curing (see the end of claim 14 of US ‘652).
As to claims 32-33: US ‘652 does not claim a method specifying the swelling by volume or amount by which the leakage rate of the seal changes after 1 hour at 3000 psi in 50:50 v/v water/ethylene glycol. Because the seal of US ‘652 includes the same ingredients as the presently claimed seals, there is a reasonable basis to conclude that the seal of US ‘652 would have the same leakage characteristics as the presently claimed seals. Case law holds that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01(I)-(II). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I)
Claim 14 of US ‘652 thus reads on present claims 1-3, 10, 23, and 32-33 in an anticipatory manner.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,230,652 B2 in view of the Lachat thesis. Although the claims at issue are not identical, they are not patentably distinct from each other.
The discussion set forth above regarding US ‘652 with respect to base claims 1-2 is incorporated here by reference. As set forth above, US ‘652 claims a method according to base claim 2, and the method of US ‘652 includes the elastomer acrylonitrile-butadiene rubber.
US ‘652 does not claim the presently recited percentages pertaining to acrylonitrile-butadiene rubber.
The Lachat thesis describes the oil resistance of nitrile rubbers. The Lachat thesis discloses that swelling by hydrocarbon oils and thermal degradation decrease as acrylonitrile content increases (see the abstract). The Lachat thesis also discloses characterizations of NBR rubbers with 20% or 40% acrylonitrile content (see the second paragraph on p. iv).
In light of the recitation in US ‘652 of acrylonitrile butadiene rubber, one of ordinary skill in the art would have been motivated by ordinary creativity to make the compositions of US ‘652 using any known acrylonitrile butadiene rubber. In light of the Lachat thesis, one of ordinary skill in the art would have been apprised of acrylonitrile butadiene rubbers having an acrylonitrile content of 20% or 40%. One of ordinary skill in the art would have been motivated to use such a rubber to make the compositions of US ‘652 based upon the desired degree of swelling of the composition by hydrocarbon oils. It would have been obvious to one of ordinary skill in the art to have made the compositions of US ‘652 using an acrylonitrile butadiene rubber with 20% or 40% acrylonitrile content.
Claims 5-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,230,652 B2 in view of the Lachat thesis, as applied above, and further in view of Kim. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 5: The discussion set forth above regarding US ‘652 with respect to base claim 4 is incorporated here by reference. As set forth above, US ‘652 and the Lachat thesis suggest a method according to base claim 4.
US ‘652 further claims a generic diffusion promoter (see component (iii) of claim 14 of US ‘652). US ‘652 does not claim the presently recited species of diffusion promoters.
Kim describes water swellable elastomeric compositions (see the abstract) comprising a swelling agent (see ¶ [0027]) including a high molecular weight superabsorbent polymer such as polyacrylic acid salts and others (see ¶ [0034]) and a low molecular weight salt such as sodium acetate, sodium triphosphate, various others, or mixtures and combinations thereof (see ¶ [0035]). The combination of swelling agents provides various properties (see ¶ [0033]) including a fast absorption rate of water due to the low molecular weight salt (see item (1) in ¶ [0033]), corresponding to the presently recited promotion of diffusion.
In light of Kim, one of ordinary skill in the art would have been motivated to make the compositions of US ‘652 using a combination of a high molecular weight superabsorbent polymer such as polyacrylic acid salts and a low molecular weight salt such as sodium acetate as the swelling agent in order to take advantage of its effects as described by Kim.
It would have been obvious to one of ordinary skill in the art to have made the compositions of US ‘652 using acrylonitrile butadiene rubber and a combination of a high molecular weight superabsorbent polymer such as polyacrylic acid salts and a low molecular weight salt such as sodium acetate as a swelling agent.
As to claims 6-8: US ‘652 further claims a fluid retaining agent kaolinite (see component (iv) of claim 14 of US ‘652) and a silica reinforcing filler (see component (v) of claim 14 of US ‘652).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,230,652 B2 in view of the Lachat thesis and Kim, as applied above, and further in view of Mang. Although the claims at issue are not identical, they are not patentably distinct from each other.
The discussion set forth above regarding US ‘652 with respect to base claim 5 is incorporated here by reference. As set forth above, US ‘652 and the Lachat thesis suggest a method according to base claim 5.
US ‘652 does not claim a method including the presently recited additives.
Mang describes methods of making sealing compositions (see the abstract) that are self-healing (see col. 6, ll. 51-54). Mang discloses that the compositions may include customary additives such as crosslinking agents for rubber, crosslinking accelerants, activators, and crosslinking agents for elastomers (see col. 3, ll. 33-39).
In light of Mang, one of ordinary skill in the art would have been motivated to make the compositions claimed by US ‘652 using additives such as crosslinking agents for rubber, crosslinking accelerants, activators, and crosslinking agents for elastomers in order to take advantage of their respective effects on the curing of the rubber compositions. It would have been obvious to one of ordinary skill in the art to have made the compositions claimed by US ‘652 using additives such as crosslinking agents for rubber, crosslinking accelerants, activators, and crosslinking agents.
Claims 28-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,230,652 B2 in view of Mang. Although the claims at issue are not identical, they are not patentably distinct from each other.
The discussion set forth above regarding US ‘652 with respect to base claim 1 is incorporated here by reference. As set forth above, US ‘652 claims a method according to base claim 1, including the addition of a base polymer, a plant-based polysaccharide, a diffusion promoter, a fluid retaining agent, and a filler to a mixer.
US ‘652 does not claim a method including the presently recited curing agent.
Mang describes methods of making sealing compositions (see the abstract) that are self-healing (see col. 6, ll. 51-54). Mang discloses that the compositions may include customary additives such as crosslinking agents for rubber, crosslinking accelerants, activators, and crosslinking agents for elastomers (see col. 3, ll. 33-39).
In light of Mang, one of ordinary skill in the art would have been motivated to make the compositions claimed by US ‘652 using additives such as crosslinking agents for rubber, crosslinking accelerants, activators, and crosslinking agents for elastomers in order to take advantage of their respective effects on the curing of the rubber compositions. It would have been obvious to one of ordinary skill in the art to have made the compositions claimed by US ‘652 using additives such as crosslinking agents for rubber, crosslinking accelerants, activators, and crosslinking agents.
Claims 30-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,230,652 B2 in view of ASTM D 3182. Although the claims at issue are not identical, they are not patentably distinct from each other.
The discussion set forth above regarding US ‘652 with respect to base claim 1 is incorporated here by reference. As set forth above, US ‘652 claims a method according to base claim 1, including the addition of a base polymer, a plant-based polysaccharide, a diffusion promoter, a fluid retaining agent, and a filler to a mixer.
US ‘652 does not claim a method including the presently recited mixing that conforms to ASTM D 3182 or that includes a dual-roll mill.
ASTM D 3182 specifies the mixing equipment, general mixing procedures, vulcanization equipment and procedures for rubber compounds and vulcanized sheets (see section 1.1). ASTM D 3182 discloses that the standard practices therein are used in preparing rubber compounds for quality control of production (see section 3.1). ASTM D 3182 discloses a dual-roll mill (see section 6.1.1.).
In light of ASTM D 3182, one of ordinary skill in the art would have been motivated to make the rubber compositions of US ‘652 using mixing equipment, general mixing procedures, and vulcanization equipment in accordance with ASTM D 3182, including a dual-roll mill, in order to have a standard practice for use in the quality control of the 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 performed the mixing of the process of US ‘652 in accordance with ASTM D 3182.
Conclusion
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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