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 .
This communication responds to the application and amended claim set filed May 14, 2024. Claims 1-12 are currently 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 and 4-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pask et al. hereinafter Pask. (DE 3723800 A1).
Regarding claim 1, Pask teaches a composition for erasers comprising EPDM [0008], inorganic filler including chalk (calcium carbonate), factice (polymerization product of vegetable and animal oils [0017]) and plasticizers such as paraffins oils and hydrocarbon polymers (i.e. polyisobutylene) ([0020]-[0021], claim 1, Table: page 4 of original document), as required by the instant claim.
Regarding claim 2, Pask teaches the composition comprises 40 to 85 parts by weight of EPDM, 15 to 60 parts by weight of polyolefin with a Vicat softening point above 80°C, 100 to 225 parts by weight of inorganic filler, up to 100 parts by weight of sulfur-free factice and further aids (claim 1). Pask further exemplifies a composition comprising 193.9 parts by weight of EPDM I, 179.7 parts by weight of EPDM II, 99.3 parts by weight of polypropylene, 945.9 part by weight of calcium carbonate, 283.7 parts by weight of factice, 94.6 parts by weight of paraffin oil (plasticizer) and 2.84 peroxide granules (Example 1, p.4). Thus , by examiner calculations the composition of Pask comprises approximately 21 wt.% of EPDM, 53 wt.% of calcium carbonate, 15.8 wt.% of factice (vegetable and animal oils), 5.26 wt.% of paraffin oil (plasticizer), as required by the instant claim.
Regarding claim 4, Pask teaches the composition wherein the plasticizer comprises paraffins oils and hydrocarbon polymers (i.e. polyisobutylene) [0021].
Regarding claim 5, Pask teaches the composition comprising polyolefins such as polyethylene, polypropylene [0013], thereby reading on the hardness regulator.
Regarding claim 6, Pask teaches the composition comprising inorganic fillers including chalk (calcium carbonate), clay, aluminum oxide and mixtures thereof [0016], inorganic pigments such as titanium dioxide, iron oxide [0022], as required by the instant claim.
Regarding claims 7-8 and 10-12, note that the discussion supra for claims 1-2 and 4-6 presently applies, wherein Pask teaches an eraser comprising the composition as recited in the instant claims (title).
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 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pask et al. hereinafter Pask. (DE 3723800 A1).
Pask teaches the composition according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 3, Pask teaches the EPDM comprises ethylene/polypropylene/diene with an ethylene content of 35 to 85 wt.% ethylene in the EPDM ([0006]-[0007] and a diene content of 0.5-10 wt.% based on the EPDM [0009].
Pask and the claims differ in that Pask does not teach the exact claimed ranges for the ethylene content 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 ranges taught by Pask overlap the instantly claimed ranges 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, MPEP 2144.05.
Regarding claim 9, note that the discussion supra for claims 1 and 3 presently applies, wherein Pask teaches an eraser comprising the composition as recited in the instant claims (title).
Claims 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakubo et al. hereinafter Kawakubo (US4374225 A).
Regarding claim 1, Kawakubo teaches an eraser composition comprising a low crystallizable polyolefin thermoplastic elastomer and normal synthetic rubbers such as ethylene-propylene terpolymer including EPDM, chlorinated polyethylene among others (col.5:55); factice and a filler including calcium carbonate ( col.6:31-32, abstract), wherein factice is produced by polymerizing vegetable oil and fish oil with sulfur chloride (col.6:19-21), which is interpreted to read on the vegetable and animal oil plasticizer of the instant claim.
Kawabubo does not teach the claimed component in one embodiment. However, Kawabubo does teach the polyolefin thermoplastic elastomer, the EPDM, the factice and calcium carbonate can be used in the composition together. It would have been obvious to substitute chlorinated polyethylene for the EPDM in the examples because Kawabubo specifically teaches that these synthetic rubber can be substituted and it would be expected to have a reasonable expectation of success (improved flexibility and wearing properties of the eraser (col.5: 58-64)) given that Kawabubo teach them as potential synthetic rubbers for use in the different embodiments.
Regarding claim 2, Kawakubo teaches 50-100 part of synthetic rubber including EPDM based on 100 parts of low crystallizable polyolefin thermoplastic elastomer (col 5: 42-58), 50-800 parts of factice (col.6:28-30) and 0-500 parts of filler including calcium carbonate (col.6: 31-39 ). By examiner’s calculation, the composition comprises approximately 6.67 wt.% - 50 wt.% of polyolefin, 6.7 wt.% to 25 wt.% of EPDM, 25-53 wt.% of factice and 0 to 71.43 wt.% of filler, which overlaps with the claimed amounts of EPDM, plasticizer (factice) and filler. in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kawakubo.
Regarding claim 4, Kawakubo teaches the composition comprises factice which includes vegetable oil and fish oil, thereby reading on the vegetable and animal oil as recited in the instant claim.
Regarding claim 5, Kawakubo teaches the composition comprises a polyolefin thermoplastic elastomer which contains a polyolefin derived from ethylene and α-olefin and a grafted rubber like soft elastomer, wherein the rubber part provides flexibility, while the polyolefin hard part performs the physical bond and crosslinking structure function (col.4: 25-51), which is related to hardness. Therefore, the ethylene and α-olefin contained in the polyolefin thermoplastic elastomer is interpreted as reading on the hardness regulator as recited in the instant claim.
Regarding claim 6, Kawakubo teaches the composition comprises filler such as calcium carbonate, silica, clay, alumina and predetermined amount of pigment including titanium oxide (claims 1 and 5, col.6:31-39)
Regarding claims 7-8 and 10- 12, note that the discussion supra for claims 1-2 and 4-6 presently applies, wherein Kawakubo teaches an eraser comprising the composition as recited in the instant claims (title, claims).
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakubo (US4374225 A) in view of Pask (DE 3723800 A1).
Kawakubo teaches the composition according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 3, Kawakubo is silent on the diene content and the ethylene content of EPDM as recited by the instant claim.
However, Pask teaches a composition for an eraser as discussed in the paragraph 6 above, wherein Pask teaches the EPDM comprises ethylene/polypropylene/diene with an ethylene content of 35 to 85 wt.% ethylene in the EPDM ([0006]-[0007] and a diene content of 0.5-10 wt.% based on the EPDM [0009]. Pask offer the motivation of using the EPDM as taught by Pask in the composition of Kawakubo to yield erasers with a particularly desirable combination of softness, strength and abrasion behavior [0007].
Regarding claim 9, note that the discussion supra for claims 1 and 3 presently applies, wherein Kawakubo in view of Pask teach an eraser comprising the composition as recited in the instant claims (title, claims).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
JPH09123688 A by Tanaka
JPH11334288 A by Kin
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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