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 .
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2023-069790 filed 4/21/2023, which papers have been placed of record in the file.
Claims 1-9 are pending.
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.
Claim 7 is 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.
Claim 7 recites …(ML1+4 (100 ˚C))… and it would not be clear why parenthesis are recited. Specifically, the parenthesis renders the claim indefinite because it is unclear whether the limitations within the parenthesis are part of the claimed invention or are optional. See MPEP § 2173.05(d).
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
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 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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsutani et al. (US 2021/0147657) in view of Matsui et al. (US 2016/0053073).
Regarding claim 1: Matsutani is directed to a medical rubber composition comprising:
A base polymer containing halogenated isobutylene-isoprene rubber, e.g. CHLOROBUTYL 1066 and
An acid acceptor including magnesium oxide in an amount of 1-10 parts with respect to 100 parts by mass base polymer ([0051]-[0054]).
A BET surface area of magnesium oxide is not mentioned.
Matsui is directed to a rubber composition including a isobutylene or isoprene rubber ([0023] Matsui) as well as an acid acceptor of magnesium oxide with a BET specific surface area of 20-200 m2/g. One skilled in the art would have been motivated to have selected the magnesium oxide of Matsui as the magnesium oxide acid acceptor of choice in Matsutani for good dispersibility, sufficient scorch-preventing performance, lower acid-receiving effect so that a shaped body is discolored, or a resulting rubber composition may be lowered in scorch-preventing performance to degrade storage stability. ([0032] Matsui). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the magnesium oxide acid acceptor as the magnesium oxide acid acceptor of choice in Matsutani.
Regarding claim 2: CHLOROBUTYL 1066 is defined by the present invention as a chlorinated isobutylene-isoprene rubber.
Regarding claim 3: Magnesium oxide is disclosed by both Matsutani and Matsui.
Regarding claim 4: The upper limit of the particle size is 5 μm ([0030] Matsui).
Regarding claim 5: A vulcanizing agent is disclosed ([0050] Matsutani).
Regarding claim 6: The composition can comprise a filler ([0055] Matsutani).
Regarding claim 7: The combination of Matsutani and Matsui doesn't specifically recite a Mooney viscosity. However, the medical rubber composition produced in Matsutani and Matsui is substantially identical to the medical rubber composition produced in the instant invention.
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, the combination of Matsutani and Matsui suggests a medical rubber composition having a Mooney viscosity 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.
Regarding claim 8: A stopper for a syringe is disclosed ([0066] Matsutani).
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The teachings of Konishi et al. (US 2023/0008859) are relevant art but not discussed above. Konishi is directed to a medical rubber composition comprising a base polymer of an isobutylene-isoprene rubber including halogenated isobutylene-isoprene rubber ([0018]) and an acid acceptor of magnesium oxide ([0044]).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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