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 .
Preliminary amendment filed 2/9/2024 is made of record. Claims 11-17 are amended; and claims 1-17 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8 and 12-17, drawn to crosslinked rubber composition. It is noted that claims 12-17 drawn to articles comprising the crosslinked rubber composition are kept with the crosslinked rubber composition since no materially significant limitations are recited in claims 12-17 that would patentably distinguish them from crosslinked rubber composition of claims 1-8.
Group II, claim(s) 9 and 11, drawn to method of preparing the crosslinked rubber composition of group I.
Group III, claim(s) 10, drawn to method of preparing a crosslinked rubber composition.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Specifically, claims of groups (I to II) and (III) lack a priori unity of invention, since hydrogenated conjugated diene-based polymer of these groups have different aromatic vinyl monomer unit content (such as less than 5 % by mass in groups I and II, and 5% by mass or more in group III. Additionally, there is lack of unity between I and II because even though the inventions of these groups require the technical feature of crosslinked rubber composition that is a crosslinked product of a rubber composition comprising 100 parts by mass of a rubber component (A) comprising 10% by mass or more and 100% by mass or less of a hydrogenated conjugated diene-based polymer and having an iodine value of 10 or more and 370 or less, and 10 parts by mass or more and 120 parts by mass or less of carbon black (B), wherein the hydrogenated conjugated diene-based polymer has a degree of hydrogenation of 10% or more and 99% or less, an aromatic vinyl monomer block content of less than 5% by mass and a weight average molecular weight of 150000 or more and 1500000 or less, and a change in shore A hardness after heating under air at 100°C for 72 hours compared with that before the heating satisfies the following expression (1): -10 < (Shore A hardness after heating) - (Shore A hardness before heating) <5 (1), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Guo et al (US 2003/0171500 A1). Specifically, Guo teach in example A a composition comprising 100 parts by weight of Therban C 3446, and 50 parts by weight of carbon (Table 5). Therban C 3446 has a Mooney viscosity of 58 at 1000C and residual double bonds of 3.5 to 4.5% (i.e., degree of hydrogenation greater than 95% and less than 99%). It is noted that iodine value is a measure of the degree of hydrogenation and Mooney viscosity is a measure of the molecular weight of hydrogenated nitrile rubber (falls within the range of Mooney Viscosity in present application, see paragraph 0023). The difference between Shore hardness at 230C and 1000C is 2. The formulations are subjected to peroxide curing (paragraph 0061).
During a telephone conversation with Robert Smyth on 7/21/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-8 and 12-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 7 i objected to because of the following informalities: Claim 7 recites “rubber-like polymer … polyurethane” (lines 4-7. For clarity and consistency within the claims, applicant is advised to rephrase “polyurethane” and “polyurethane rubber”. Appropriate correction and/or clarification are required.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al (US 2003/0171500 A1).
Regarding claim 1, Guo et al teach in example A (Table 5) a composition comprising 100 parts by weight of Therban C 3446 (i.e., reads on the amount of rubber component A comprising 100% by weight of hydrogenated conjugated diene-based polymer in present claim 1) and 50 parts by weight of carbon (Table 5) which reads on carbon black and its amount in present claim 1. The difference between Shore hardness at 230C and 1000C is 2 (Table 6). Therban C 3446 is composed of acrylonitrile and butadiene and hydrogenated to about 3.5 to 4.5% RDB (paragraph 0058 and 0026) which reads on hydrogenated conjugated diene-based polymer containing aromatic content of less than 5% by mass which includes 0% mass in present claim 1. The formulations are subjected to peroxide curing (paragraph 0061) which reads on crosslinked rubber composition in present claim 1.
Guo et al are silent with respect to degree of hydrogenation and iodine value; molecular weight; and difference in Shore Hardness after heating for 72 hours at 1000C
Regarding degree of hydrogenation and iodine value. It is noted that degree of hydrogenation and residual double bonds are inversely related and iodine value is a reflection of the degree of hydrogenation. Hence, it is the Office’s position that Therban C 3446, of Guo et al would implicitly have the degree of hydrogenation greater than 95% and less than 99% and iodine value falling within the range of 10 or more and 370 or less as in present claim 1.
Regarding molecular weight, it is noted that Mooney viscosity is a measure of the molecular weight of rubber polymer. Therban C 3446 has a Mooney Viscosity of 58 (ML 1+4 100 0C) (paragraph 0058) and falls within the range in present invention (see paragraph 0023 of present specification). Hence, it is the Office’s position that Therban C 3446 inherently has a molecular weight falling within the range of 150000 to 1500000 as in present claim 1.
Regarding difference in Shore A Hardness after heating for 72 hours at 1000C, given that compositional limitations are met and the difference in Shore A hardness after heating at 1000C and before heating falls within the claimed range, it is the Office’s position that the crosslinked rubber product, of Guo et al, inherently exhibits the change in Shore A hardness as in present claim 1 after heating to 1000C for 72 hrs. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-6 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Brandau et al (US 2014/0114026 A1).
Regarding claim 1, Brandau et al disclose vulcanizable compositions based on fully or partially hydrogenated nitrile rubber containing epoxy groups and specific crosslinkers (abstract). See example 1, wherein the nitrile rubber comprises butadiene (Table 1, paragraph 0207) which reads on hydrogenated conjugated diene-based polymer in present claim 1. See example V1 (Table 3, paragraph 0212), wherein the composition comprises 100 parts by weight of polymer A (i.e., reads on the amount of rubber component A comprising 100% by mass of hydrogenated conjugated diene-based polymer in present claim 1), Corax N 550/30 (i.e., reads on carbon black and its amount in present claim 1, see paragraph 0196) and Vulcanox® ZMB2/C5 (i.e., a crosslinker) and a vulcanizate is obtained (paragraph 0213) which reads on crosslinked rubber composition in present claim 1. Hydrogenation means a conversion of at least 50% and preferably 80 to 100% of the double bonds present in the starting nitrile rubber (paragraph 0151) which reads on the degree of hydrogenation in present claim 1. The nitrile rubber preferably has exclusively repeat units derived from acrylonitrile, 1,3-butadiene and glycidyl (meth)acrylate (paragraph 0142) which reads on aromatic vinyl monomer block content of less than 5% by mass, since it includes 0% by mass.
Brandau et al are silent with respect to the iodine value of rubber component A; molecular weight of hydrogenated conjugated diene-based polymer; and change in Shore A hardness.
However, regarding iodine value of rubber component A, it is noted that there is an inverse correlation between iodine value and degree of hydrogenation (i.e., higher the degree of hydrogenation, lower the iodine value). Given that degree of hydrogenation of the nitrile rubber, of Brandau et al, falls within the claimed range, one skilled in art prior to the filing of present application would have a reasonable basis to expect the rubber component A, of Brandau et al, comprising 100% by weight of the hydrogenated nitrile rubber having a degree of hydrogenation of at least 50%, to have an iodine value falling within the claimed range of 10 or more and 370 or less, absent evidence to the contrary.
Regarding molecular weight of hydrogenated conjugated diene-based polymer, it is noted that Mooney viscosity is a measure of the molecular weight of rubber polymer. Brandau et al teach that fully or partially hydrogenated rubbers containing epoxy groups have Mooney viscosity preferably in the range from 15 to 150 (paragraph 0154) and is similar to one in present invention (see paragraph 0023 or present application). Therefore, given that Mooney viscosity of hydrogenated nitrile rubber, of Brandau et al, is substantially similar to Mooney viscosity of hydrogenated conjugated diene-based polymer in present application, one skilled in art prior to the filing of present application would have a reasonable basis to expect the hydrogenated nitrile rubber, of Brandau et al, to have a molecular weight falling within the presently claimed range of 150000 to 1500000, absent evidence to the contrary.
Regarding change in Shore A hardness, given that crosslinked rubber composition, of Brandau et al, comprises substantially similar components having degree of hydrogenation (measure of iodine value) , Mooney viscosity (measure of molecular weight) and includes carbon black in amount falling within the presently claimed range, one skilled in art prior to the filing of present application would have a reasonable basis to expect the change in Shore A hardness after heating under air for 72 hours compared with that before the heating to satisfy the expression -10 < [Shore A Hardness after heating] - [Shore A hardness before heating] < 5, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 2, Brandau et al teach that glass transition temperature of the optionally fully or partially hydrogenated nitrile rubber are in the range of -800C to +200C (paragraph 0156) which overlaps with the glass transition temperature in present claim2. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 3, Brandau et al teach that hydrogenation means a conversion of at least 50% and preferably 80 to 100% of the double bonds present in the starting nitrile rubber (paragraph 0151) and overlaps with that in present invention (see page 21, 1st full paragraph). Therefore, it is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to use hydrogenated nitrile rubber having any degree of hydrogenation including that which would result in amount of vinyl bond in the hydrogenated conjugated diene-based polymer, of Brandau et al, to fall within the presently claimed range of 0.1% by mol or more and less than 10% by mol, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 5 and 6, in addition to 19a to 19e above, it is the Office’s position that one skilled in art would have a reasonable basis to expect the hydrogenated nitrile rubber, of Brandau et al, to exhibit Mooney stress relaxation at 1000C of 0.8 or less and the crosslinked rubber composition to satisfy the expression: 0.5 MPa < (storage elastic modulus at a strain of 0.1% at 500C) - (storage elastic modulus at a strain of 10% at 500C) < 10 MPa, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 12-17, it is the Office’s position that it is the intended use of the composition, of Brandau et al, as vibration isolation rubber of claim 12, conveyor belt of claim 13, shoe sole of claim 14, hose of claim 15, seal material of claim 16, and rubber roller of claim 17.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Brandau et al (US 2014/0114026 A1) in view of Yue et al (CN 112592461 A).
It is noted that CN 112592461 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Brandau e al in paragraph 19 above is incorporated here by reference.
Brandau et al are silent with respect to degree of modification of hydrogenated conjugated diene-based polymer.
However, Yue et al in the same field of endeavor teach modified hydrogenated butadiene-acrylonitrile rubber material with the characteristics of low temperature resistance and high damping. The obtained polymer has performance characteristics of both HNBR and PNB, not only maintains the basic performance of hydrogenated butadiene-acrylonitrile rubber, but can also utilize polynorbornene to absorb a large amount of plasticizing oil, thereby obtaining modified hydrogenated butadiene-acrylonitrile rubber with excellent low temperature resistance (abstract). See examples 4-8, wherein the norbornene percentage is more than 40% (paragraph 054). When the PNB content is 60% (example 6), damping performance of the material is significantly improved (paragraph 075). Therefore, in light of the teachings in Yue et al, it would have been obvious to one skilled in art prior to the filing of present application, to modify the hydrogenated nitrile rubber, of Brandau e al, with the norbonene, of Yue et al, in present claimed degree of modification, for above measured advantages.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Brandau et al (US 2014/0114026 A1) in view of Pazur et al (EP 1491583 A1).
The discussion with respect to Brandau e al in paragraph 19 above is incorporated here by reference.
Brandau et al are silent with respect to rubber polymer other than hydrogenated conjugated diene-based polymer and its amount.
However, Pazur et al in the same field of endeavor teach polymer blend comprising at least two different hydrogenated nitrile rubbers and at least one olefin-acrylate rubber (abstract). The blend may further comprise up to 25 phr of other polymers such as polyolefins, polybutadiene, polychloroprene, polyisoprene and styrene butadiene copolymers. Careful blending with said other polymers often reduces cost of the polymer blend without sacrificing too much of the desired final properties. The amount of other polymers will depend on the process condition to be applied during manufacture of shaped articles and the targeted final properties and is readily available by few preliminary experiments (paragraph 0040). Therefore, in light of the teachings in Pazur et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to include other rubber-like polymers, of Pazur et al, in the composition, of Brandau et al, for reducing cost of the final product.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Brandau et al (US 2014/0114026 A1) in view of Horiuchi et al (JP 2020-019947 A)
It is noted that JP 2020-019947 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Brandau e al in paragraph 19 above is incorporated here by reference. Additionally, aluminum content of 2 ppm or less includes 0 ppm and therefore, not required.
Brandau et al are silent with respect to titanium content
However, Brandau et al in the general disclosure teach that hydrogenation can be performed using titanium based catalyst (paragraph 0146). Additionally, Horiuchi et al in the same field of endeavor teach elastomer composition comprising hydrogenated polymer (abstract). See examples wherein hydrogenation is conducted in the presence of 70 ppm and 100 ppm of titanium (paragraphs 0155 and 0161) which reads on the amount of titanium content in present claim 8. Therefore, in light of the teachings in Horiuchi et al and given that Brandau contemplates using a titanium based catalyst in the hydrogenation of nitrile rubber, it would have been obvious to one skilled in art prior to the filing of present application to include any amount of titanium such as 70 to 100 ppm, in the process of preparing hydrogenated nitrile, of Brandau e al, absent evidence to the contrary. Additionally, it is the Office’s position that titanium amount is a result-effective variable (MPEP 2144.5) since the amount used clearly affects the degree of hydrogenation of nitrile rubber. Hence, the choice of a particular amount of titanium (such as the amount in present claims) is a matter of routine experimentation and would have been well within skill level of, and thus obvious to, one of ordinary skill in the art.
Specification
The abstract of the disclosure is objected to because abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. In the present instance, abstract includes more than 150 words. Correction and/or clarification are required. See MPEP § 608.01(b).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (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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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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