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 .
Election/Restrictions
Applicant’s election with traverse of Group I, corresponding to Claims 1-15, in the reply filed on February 4, 2026, along with Applicant’s election with traverse of Species (ii), drawn to a W-type chloroprene and corresponding to Claims 1-6 and 8-15, is acknowledged. The traversal is on the ground that there is overlap between the Groups and Species such that the search burden associated with examining all of the Groups and Species is believed to be minimal. This is not found persuasive because the inventions according to the different Groups have acquired a separate status in the art in view of their different classification and the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries) and the inventions according to the different Species are distinct from one another and do not overlap in claim scope.
The requirement is still deemed proper and is therefore made FINAL. Claims 7 and 17-19 are withdrawn from consideration.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8 recites “the elastomeric composition comprises one or more accelerators accelerator(s)” in line 4. An amendment should be provided to delete the repeated word. Appropriate correction is required.
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 1-6 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 4,603,712 to Krause (“Krause”) in view of U.S. Patent Application Publication No. 2020/0024801 to Scodro (“Scodro”).
With regard to Claims 1, 2, 14, and 15, Krause a multilayer elastomeric hose that comprises an inner tube layer, a reinforcement layer disposed outwardly from the inner tube layer, and an outer cover layer disposed outwardly from the reinforcement layer. See, e.g., Abstract, Figure 1, column 3, lines 4-34. Krause discloses that the reinforcement layer includes one or more interlayers composed of a polychloroprene formulation that bonds to the inner tube layer, the outer cover layer, or both. Column 1, lines 46-57; see also column 5, lines 14-20 (“The reinforcement may be twined about the inner tube in continuous fashion using a braiding or knitting machine, for instance, or wrapped on the tube, and in the latter case is preferably rubberized, according to the invention, with the interlayer tie gum applied to one or both surfaces of the reinforcement.”). Krause also discloses that the outer cover layer can be composed of various types of rubber material, such as natural rubber, butadiene-styrene rubber, isoprene, nitrile rubber, or chloroprene. However, Krause does not disclose combining a polychloroprene rubber with a sustainable vulcanizing agent being at least partially derived from a sustainable source of treated dregs. Scodro is related to providing alternative methods of manufacturing vulcanized rubber. See, e.g., Abstract, entire document. Scodro teaches that a simple process for treating a sustainable source of dregs can be used to generate a vulcanization activator that is suitable for providing vulcanized rubber having similar or enhanced properties in relation to those already known. Paragraph [0016]. Scodro teaches that the dregs contain silica which act as a reinforcement agent improving the cohesion of rubber. Paragraph [0038]. Scodro discloses that the vulcanizing agent derived from treated dregs comprises 35-50% CaO and 2-20% MgO. Paragraph [0054]. Scodro discloses that ZnO can be incorporated into the sustainable vulcanization agent in an amount 0 to 5 phr in combination with the treated dregs being present in an amount of 1 to 5 phr. Paragraphs [0062] to [0070]. This ZnO amount range encompasses the claimed amount of 20-40% ZnO when, for example, the person having ordinary skill in the art provides 1 phr of ZnO in combination with 3 phr of treated dregs. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. M.P.E.P. 2144.05. Moreover, Scodro provides motivation for the person having ordinary skill in the art to comparatively diminish the amount of ZnO in the composition, noting that novel dreg composition presents the potential to diminish the use of ZnO in the vulcanization process. Paragraph [0038]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a sustainable vulcanizing agent comprising 25%-50% CaO, 2% to 20% MgO, and 20% to 40% ZnO adapted to cure the polychloroprene elastomer disclosed by Krause in order to provide a cohesive rubber compound material having improved environmental impact, as shown to be known in the art by Scodro. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claims 3 to 5, Scodro discloses using treated dregs in an amount of 1 to 5 parts per 100 parts of elastomer. Paragraphs [0062] and [0066]. With regard to Claim 6, Scodro does not require any additional vulcanizing agents to be used within the vulcanization systems. With regard to Claim 8, Krause discloses using W-type chloroprene. Column 5, line 35. Moreover, both Krause, column 5, line 43, and Scodro, paragraph [0065], disclose that an accelerator can be present in an amount of 1 to 8 phr. With regard to Claim 9, Scodro discloses vulcanizing agent composition has a loss on ignition of 35 to 45 and overlapping amounts of the claimed oxides. Paragraphs [0024] to [0037]. With regard to Claim 10, Scodro discloses that the treated dregs are derived from cellulose production residue. Paragraph [0001]. With regard to Claim 11, Scodro discloses that a reinforcing agent, such as carbon black, can be present in an amount of 48 to 52 phr, paragraph [0069], a plasticizer can be present in an amount of 8 to 12 phr, paragraph [0067], an antioxidant, which functions as an antidegradant, can be present in an amount of up to 1.2 phr, paragraph [0068], and zinc oxide, which can act as an acid receptor, is present in an amount of up to 5 phr. Paragraph [0063]. Additionally, a portion of the MgO, paragraph [0030], can be considered as functioning as an acid receptor. With regard to Claims 12 and 13, although the combination of Krause with Scodro does not specifically disclose that the elastomeric composition exhibits about the same tensile, modulus, hardness, tear strength, abrasion resistance, and cure behavior as a same comparative elastomeric composition using zinc oxide only as the vulcanizing agent instead of the sustainable vulcanizing agent, in which the zinc oxide is present in the comparative composition as a 1:1 replacement of the sustainable vulcanizing agent, it is reasonable to presume that such a combination of properties is inherent to the material disclosed by Krause, as combined with Scodro. Support for the presumption is found because the combination of references teaches using similar materials, i.e., polychloroprene elastomer resin vulcanized with an agent derived from a sustainable source of treated dregs, provided in similar amounts to provide a similar end-use product, i.e., vulcanized rubber. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019).
Claims 1-6 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0275886 to Clark et al. (“Clark”) in view of Scodro.
With regard to Claims 1, 2, 14, and 15, Clark a multilayer hose that comprises an elastomeric inner tube layer, a reinforcement layer disposed outwardly from the elastomeric inner tube layer, and a weather resistant outer cover layer disposed outwardly from the reinforcement layer. See, e.g., Abstract, Figure 1, paragraph [0010]. Clark discloses that the elastomeric inner tube layer comprises a chloroprene rubber. Paragraph [0031]. However, Clark does not disclose combining a polychloroprene rubber with a sustainable vulcanizing agent being at least partially derived from a sustainable source of treated dregs. Scodro is related to providing alternative methods of manufacturing vulcanized rubber. See, e.g., Abstract, entire document. Scodro teaches that a simple process for treating a sustainable source of dregs can be used to generate a vulcanization activator that is suitable for providing vulcanized rubber having similar or enhanced properties in relation to those already known. Paragraph [0016]. Scodro teaches that the dregs contain silica which act as a reinforcement agent improving the cohesion of rubber. Paragraph [0038]. Scodro discloses that the vulcanizing agent derived from treated dregs comprises 35-50% CaO and 2-20% MgO. Paragraph [0054]. Scodro discloses that ZnO can be incorporated into the sustainable vulcanization agent in an amount 0 to 5 phr in combination with the treated dregs being present in an amount of 1 to 5 phr. Paragraphs [0062] to [0070]. This ZnO amount range encompasses the claimed amount of 20-40% ZnO when, for example, the person having ordinary skill in the art provides 1 phr of ZnO in combination with 3 phr of treated dregs. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. M.P.E.P. 2144.05. Moreover, Scodro provides motivation for the person having ordinary skill in the art to comparatively diminish the amount of ZnO in the composition, noting that novel dreg composition presents the potential to diminish the use of ZnO in the vulcanization process. Paragraph [0038]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a sustainable vulcanizing agent comprising 25%-50% CaO, 2% to 20% MgO, and 20% to 40% ZnO adapted to cure the polychloroprene elastomer disclosed by Clark in order to provide a cohesive rubber compound material having improved environmental impact, as shown to be known in the art by Scodro. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claims 3 to 5, Scodro discloses using treated dregs in an amount of 1 to 5 parts per 100 parts of elastomer. Paragraphs [0062] and [0066]. With regard to Claim 6, Scodro does not require any additional vulcanizing agents to be used within the vulcanization systems. With regard to Claim 9, Scodro discloses vulcanizing agent composition has a loss on ignition of 35 to 45 and overlapping amounts of the claimed oxides. Paragraphs [0024] to [0037]. With regard to Claim 10, Scodro discloses that the treated dregs are derived from cellulose production residue. Paragraph [0001]. With regard to Claim 11, Scodro discloses that a reinforcing agent, such as carbon black, can be present in an amount of 48 to 52 phr, paragraph [0069], a plasticizer can be present in an amount of 8 to 12 phr, paragraph [0067], an antioxidant, which functions as an antidegradant, can be present in an amount of up to 1.2 phr, paragraph [0068], and zinc oxide, which can act as an acid receptor, is present in an amount of up to 5 phr. Paragraph [0063]. Additionally, a portion of the MgO, paragraph [0030], can be considered as functioning as an acid receptor. With regard to Claims 12 and 13, although the combination of Clark with Scodro does not specifically disclose that the elastomeric composition exhibits about the same tensile, modulus, hardness, tear strength, abrasion resistance, and cure behavior as a same comparative elastomeric composition using zinc oxide only as the vulcanizing agent instead of the sustainable vulcanizing agent, in which the zinc oxide is present in the comparative composition as a 1:1 replacement of the sustainable vulcanizing agent, it is reasonable to presume that such a combination of properties is inherent to the material disclosed by Clark, as combined with Scodro. Support for the presumption is found because the combination of references teaches using similar materials, i.e., polychloroprene elastomer resin vulcanized with an agent derived from a sustainable source of treated dregs, provided in similar amounts to provide a similar end-use product, i.e., vulcanized rubber. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Clark in view of Scodro, as applied to Claim 1 above, and further in view of Krause.
With regard to Claim 8, Scodro disclose that an accelerator can be present in an amount of 1 to 8 phr. Paragraph [0065]. However, Clark does not disclose using W-type chloroprene. Krause is also related to multilayer elastomeric articles useful as a hose. See, e.g., Abstract, entire document. Krause discloses W-type chloroprene is a useful chloroprene for manufacturing hose materials. Column 5, line 35. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to use W-type chloroprene to make the elastomeric layer of the hose disclosed by Clark because Krause teaches that such a chloroprene is suitable for use in similar applications, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960).
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/ Primary Examiner, Art Unit 1789