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 .
Status of the Claims
Claims 1-10 are currently pending.
Claims 7-10 are withdrawn from consideration.
Election/Restrictions
Applicant’s election of Group I, claims 1-6, in the reply filed on 05/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2026.
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 1-6 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.
Regarding claim 1,
The term “excellent compression performance and low-temperature performance” in claim 1 is a relative term which renders the claim indefinite. The term “excellent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what would be considered “excellent” compression and low-temperature performance as “excellent” is a subjective term. For examination purposes, any rubber gasket meeting the structural requirements of claim 1 will satisfy the claim limitations.
Regarding claims 2-4 and 6,
Claims 2-4 and 6 contain the trademark/trade names 220L, TP-95, carbon black N220 and carbon black N990. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe components within the claimed rubber sealing gasket and, accordingly, the identification/description is indefinite.
Regarding claim 5,
Claim 5 is indefinite due to being dependent on claims 1 and 4.
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Moritani (US 2009/0062445 A1) in view of Song et al. (KR 10-2021/0114201 A; machine translation).
Regarding claims 1-3,
Moritani teaches a rubber sealing gasket characterized in that the rubber sealing gasket is prepared from the following raw materials: hydrogenated nitrile-butadiene rubber (NBR) at 100 parts, wherein the hydrogenated NBR is HNBR 2020L with an acrylonitrile content of 36%, an iodine index of 28, and would inherently meet the Mooney viscosity, specific gravity, and hydrogenation rate as it is the same tradename as required by the specification (Moritani: abstract; par. 0011); processing aid at that may be a mixture of an activating agent such as zinc oxide and stearic acid (Moritani: par. 0017 and 21-42, Table 1), an anti-aging agent such as antioxidant such as anti-MBZ (corresponds to MB) (Moritani: par. 0017 and 0021-0042, Table 1), and a plasticizing agent such as di(butoxyethyoxyethyl) adipate (the common name for TP-95) (Moritani: par. 0012); a reinforcing filler such as carbon black or a mixture of different grades of carbon black in 20 to 150 parts, which overlaps with the claimed 45 to 65 parts (Moritani: par. 0017 and 0018); a vulcanizing agent such as dicumyl peroxide in about 1 to about 10 parts, which overlaps with the claimed 4.8 parts to 5.2 parts (Moritani: par. 0015); and a co-crosslinking agent such as triallyl isocyanurate (TAIC) from about 0.5 parts to 10 parts, which overlaps with the claimed 4.8 parts to 5.2 parts, and when a mixture is used each may be presnt in the aforementioned parts range which would overlap with the two types of carbon black being from 20 parts to 30 parts and 25 to 35 parts (Moritani: par. 0016).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Moritani is silent towards the amount of processing aid being in 12.3 parts to 13.7 parts and towards one of processing aids being an anti-aging agent such as RD (also known as TMQ 2,2,4-trimethyl-1,2-dihydroquinoline).
Song teaches an NBR gasket that utilizes various additives for improved gasket properties such as a combination of a metal oxide, such as zinc oxide, at 5 to 7 parts, 3 to 9 parts by weight of an antioxidant such as MB or RD, and 0.5 to 1 parts by weight of an processing aid such as plasticizer (Song: abstract; par. 0021-0023). The combination would correspond to the claimed processing aid with a total range of from 8.5 to 17 parts when the three components are combined, which overlaps with the claimed 12.3 parts to 13.7 parts. Additionally, RD is a known functional equivalent for an antioxidant with MB, thus, it would be obvious to utilize MB and RD alone or together in a mixture with other anti-aging agents to achieve the desired antioxidant properties.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Moritani and Song are in the corresponding field of rubber sealing gaskets comprising overlapping additives. Therefore, it would be obvious to one of ordinary skill in the art to configure the processing aid of Moritani to have the claimed processing aid proportions to achieve the desired properties for the gasket as taught by Song.
The rubber sealing gasket may be considered to have excellent compression performance and low-temperature performance based on the interpretation of the limitations in the Section 112b rejection above. Further, Moritani in view of X teach the claimed structure and would thus be expected to yield the same properties that are considered “excellent”.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Moritani in view of Song and in further view of Biscoglio (CN 103068864 A; machine translation).
Regarding claim 4,
Moritani and Song do not explicitly teach the carbon black mixture is carbon black N220 and N990. However, Moritani does tech the use of carbon black and various different grades of carbon black mixed together in the disclosed and claimed proportions as explained in the rejection of claim 1 above.
Biscoglio teaches the use of different grades of carbon black, including N220 and N990, in various applications including gaskets (Biscoglio: abstract; par. 0056-0057 and 0082). The grade and type of carbon black is chosen depending on the desired performance of particle size that results in different hardness, weather resistance, cracking properties, absorbing properties, and so forth (Biscoglio: par. 0057).
Moritani and Biscolgio are in the corresponding field of gaskets which utilize carbon black. Therefore, it would be obvious to one of ordinary skill in the art to select from the list of carbon black grades in the rubber sealing gasket of Moritani, including N220 and N990, to achieve the desired performance and properties for the intended use in gaskets as taught by Biscolgio.
Regarding claim 5,
Moritani in view of Song and Biscoglio teaches the rubber sealing gasket required by claim 4. Moritani further teaches the vulcanizing agent is dicumyl peroxide (DCP) and the co-crosslinking agent is triallyl isocyanurate (TAIC) as explained in the rejection of claim 1 above.
Regarding claim 6,
Moritani in view of Song and Biscoglio teaches the rubber sealing gasket required by claim 5. However, the combination of Moritani and Song teach overlapping proportions of the additives based on 100 parts by mass of the hydrogenated nitrile butadiene rubber as explained above. That is, it is known to adjust and select within the claimed ranges and proportions when more than one additive is used together, alone, or in combination to result in the desired properties for use in rubber gaskets.
Moritani, Song, and Biscoglio and the claims differ in that the combination does not teach the exact same proportions as recited in the instant claims. However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the compositional proportions taught by Moritani and Song overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003). Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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