DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
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.
Claims 1-2, 11-13, 17, 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 2021/0054116).
Regarding claim 1: Lee is directed to a uncured composition comprising:
An elastomer of a rubber base ([0033] Lee), a vulcanization [curing agent] ([0070] Lee), a vulcanization accelerator[co-curative] ([0071] Lee), and a diluent, wherein the diluent comprises a highly reactive polyisobutene comprising at least 80 mol% of terminal vinylidene groups ([0046] Lee).
Regarding claim 2: The diluent consists of the highly reactive polyisobutene.
Regarding claim 11: The diluent comprises a highly reactive polyisobutene comprising at least 80 mol% of terminal vinylidene groups ([0046] Lee).
Regarding claim 12: The highly reactive polyisobutene has an average molecular weight of 350-6000 g/mol ([0045] Lee).
Regarding claim 13: The base resin elastomer can comprise repeat units formed by residues of ethylene, propylene, isobutene, butadiene, isoprene, styrene, and combinations thereof ([0035] Lee).
Regarding claims 17, 19-20: A vulcanized rubber composition, and an article of a tire are disclosed ([0072] Lee).
Claim Rejections - 35 USC § 102/103
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.
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lee et al. (US 2021/0054116).
Regarding claim 18: Lee doesn't specifically recite the composition after cure has the properties recited. However, the composition after cure produced in Lee is substantially identical to the composition after cure produced in the instant invention, as discussed previously.
Case law holds that 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).
Hence, Lee provides a prima facie case of either anticipation or obviousness for a composition after cure having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
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.
Claims 3-5, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Dall’Abaco et al. (US 2019/0381832).
Regarding claim 3: A second diluent of a second polyisobutene comprising at most 20 mol% terminal vinylidene groups, a hydrocarbon oil, or combination thereof is not mentioned.
Dall’Abaco is directed to a composition for tires comprising a an elastomer and a polyisobutene and also comprises a hydrocarbon oil of a mineral oil plasticizer. One skilled in the art would have been motivated to have included a mineral oil plasticizer additive to improve processability ([0072] Dall’Abaco). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a mineral oil plasticizer in the composition of Lee.
Regarding claims 4-5: The hydrocarbon oil plasticizer in Dall’Abaco is used in 0-70 phr ([0072] and the highly reactive polyisobutylene is used in an amount of 2-40 parts by weight per 100 parts rubber base (2-40 phr) ([0036] Lee). Therefore, a weight ratio of 1:20 to about 1:2 is well within the scope of Lee and Dall’Abaco.
Regarding claim 8: While claim 8 further limits the second polyisobutene average molecular weight, claim 3 claims a diluent comprises a second diluent comprising a second polyisobutene or a hydrocarbon oil in the alternative. Hence, the limitations of claim 8 are met for the same argument above regarding claim 3.
Regarding claims 9-10: The plasticizer of Dall’Abaco includes mineral oil or vegetable oil or a combination thereof.
Claims 14-15 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Sugimoto et al. (US 2018/0201774).
Regarding claim 14: Sugimoto doesn’t mention an organic peroxide curing agent.
Sugimoto is directed to a rubber composition for tires and use as a sealant in the tires, which comprises the same rubber component and polyisobutene ([0033]-[0034] Sugimoto). The composition is cured with a quinone dioximide compound including benzoquinone dioxime, p-quinone dioxime, p-quinone dioxime dibenzoate ([0048] Sugimoto). One skilled in the art would have been motivated to have selected the curing agent of Sugimoto in the composition of Lee to improve adhesion, sealing performance, fluidity, and processability ([0047] Sugimoto). Therefore, would have been obvious to one skilled in the art at the time the invention was filed to have selected a quinone dioximide compound of Sugimoto in the composition of Lee.
Regarding claim 15: The composition is cured with an organic peroxide including benzoyl peroxide, dibenzoyl peroxide, and p-chlorobenzoyl peroxide; peroxyesters ([0045] Sugimoto). One skilled in the art would have been motivated to have selected the curing agent of Sugimoto in the composition of Lee to improve adhesion, sealing performance, fluidity, and processability ([0044] Sugimoto). Therefore, would have been obvious to one skilled in the art at the time the invention was filed to have selected a peroxide compound of Sugimoto in the composition of Lee.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Wang et al. (US 5,473,017).
Regarding claim 15: Lee mentions a sulfur curing agent, although doesn’t mention an organic peroxide curing agent.
Wang is directed to a composition comprising an elastomer and diolefin, wherein the diolefin preferably comprises polyisobutene (col. 9 ll. 45-50 Wang). The composition can be vulcanized utilizing either sulfur or peroxide, wherein peroxide include peroxyesters and diacyl peroxides of benzoyl peroxide (col. 9 l. 64 – col. 10 l. 9 Wang).
At the time of filing, a person of ordinary skill in the art would have found it obvious to substitute sulfur for peroxyesters and diacyl peroxides of benzoyl peroxide, and would have been motivated to do so because they are art recognized equivalents used for the same purpose and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. Further, the substitution of one curing agent for another is within the level of ordinary skill in the art. In addition, the substitution of is obvious when it does no more than yield predictable results. MPEP 2144.06(II).
Claims 6, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee.
Regarding claim 6: The rubber base can include a butadiene rubber (equivalent to isobutylene comprising at most 10 mol% terminal vinylidene groups, i.e. 0 mol% terminal vinylidene groups ([0035] [0040] Lee). While a specific uncured composition simultaneously comprising an elastomer and a butadiene rubber, it would have been obvious to have selected such a composition since Lee discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to have selected a second polyisobutene comprising at most 10 mol% vinylidene groups to arrive at claim 6 of the present invention.
Regarding claim 16: Lee discloses the modified polyisobutylene is present in an amount of 2-40 parts by weight per 100 parts rubber base (2-40 phr) ([0036] Lee). While the amount in Lee in an amount of 40 parts per 100 part rubber base and the claimed about 50 weight percent of the composition do not overlap. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Specifically, Lee does not suggest a composition further comprising a second polyisobutene having about 5 mol% to almost 20 mol% terminal vinylidene groups.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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