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 2/14/2024 is made of record. Claims 4-5 are amended; and claims 6-7 are added. Accordingly, claims 1-7 are currently pending in the application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4 of copending Application No. 18/023,832 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to crosslinkable acrylic rubber (elastomer) compositions with present claims including acrylic rubber genus containing a carbamic acid ester group and a carboxyl group and a crosslinking accelerator; with both present and copending claims including the acrylic rubber species comprising 90 to 99.8% by weight of an alkyl (meth)acrylate and/or alkoxyalkyl (meth)acrylate monomer, 0.1 to 5 wt% of an α,β-unsaturated carboxylic acid monomer, and 0.1 to 5 wt% of (meth)acrylate monomer represented by general formula:
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wherein R1 is hydrogen atom or a methyl group, and R2 is a divalent aliphatic hydrocarbon group having 1 to 10 carbon atoms; and (b) a crosslinking accelerator.
Copending claims are silent with respect to species of alkyl (meth)acrylate monomer, α,β-unsaturated carboxylic acid monomer, crosslinking accelerator; and phenothiazine-based antioxidant.
However, regarding species of alkyl (meth)acrylate monomer, α,β-unsaturated carboxylic acid monomer, and crosslinking accelerator, Applicants attention is drawn to MPEP § 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches in example 1 n acrylic rubber formed from a monomer mixture comprising ethyl acrylate and mono n-butyl fumarate (paragraph 0073). Examples of crosslinking accelerator include 1,3-diphenyl guanidine and 1,3-di-o-tolylguanidine (paragraph 0053-0054). Therefore, in light of the teachings in general disclosure of copending application it would have been obvious to one skilled in art to include the acrylic rubber in example of copending application, and guanidine as crosslinking accelerator to prepare the crosslinkable acrylic rubber composition of present claims.
Regarding phenothiazine-based antioxidant; Ogawa et al in the same field of endeavor teach acrylic rubber composition which can give a crosslinked ruber product which is high in heat resistance, in particular which can suppress a drop in elongation and other physical properties even if exposed long term to high temperature conditions (paragraph 0012). This is achieved by blending into acrylic rubber an antiaging agent (paragraph 0013). See Table 2, wherein in example 1-1, the carboxyl group-containing acrylic rubber A is combined with antiaging agent (compound 1). The compound 1 is represented by formula:
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(paragraph 0214). Therefore, in light of the teachings in Ogawa et al, it would have been obvious to one skilled in art to include the antiaging compound, of Ogawa et al, into the crosslinkable acrylic rubber composition, of present claims, for above mentioned advantages.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claims 5 (lines 2-3) and 7 (lines 2-3) are objected to because of the following informalities: Claims 5 and 7 recite “α,β-unsaturated carboxylic acid monomer is a dibasic acid α,β-unsaturated carboxylic acid monomer monoalkyl ester”. The recitation of “acid” twice is redundant and for clarity, applicant is advised to rephrase it as “α,β-unsaturated carboxylic acid monomer is monoalkyl ester of α,β-unsaturated dicarboxylic acid monomer”.
Appropriate correction and/or clarification are required.
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 2-7 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.
Claim 2 recites “copolymerized in comonomer ratio” (line 8). Ratios are mathematical expressions in the form of A:B, which is in contrast to the wt% of monomers recited earlier in claim 2. Additionally, reference to comonomer would indicate to one skilled in art that it is in addition to at least one monomer which is different from the comonomer. It is also not clear which of these monomers are comonomers Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claims 4-5 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 2.
Claim 3 recites “copolymerized in comonomer ratio” (line 5-6, and 9). Ratios are mathematical expressions in the form of A:B, which is in contrast to the wt% of monomers recited earlier in claim 3. Additionally, reference to comonomer would indicate to one skilled in art that it is in addition to at least one monomer which is different from the comonomer. It is also not clear which of these monomers are comonomers Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claims 6-7 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 3.
Claim 3 recites the limitation "the general formula [III]" in line 5. There is insufficient antecedent basis for this limitation in the claim. Examiner interprets the carbamic acid ester group as the genus in claim 1 in view of its dependence on claim 1 and not the species of general formula III of claim 2..
Claims 6-7 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 3.
Claim 3 recites “weight ratio of each component is 90 to 10 wt% and 10 to 90 wt%” (lines 10-11). Ratios are mathematical expressions in the form of A:B, which is in contrast to the wt% of components (i.e. a mixture of 2 acrylic rubbers) which are not ratios. Additionally, there is a reference to “component (A)” in line 2 which is a mixture of two acrylic rubbers. It is not clear what “each component” represents, since there is only one component (A) in claim 3. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claims 6-7 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 3.
Claim 4 recites “alkyl (meth)acrylate is ethyl acrylate or monomer mixture comprising the same” (lines 2-3). It is not clear if “monomer mixture” includes monomers other than the “alkyl (meth)acrylate”. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claim 6 recites “alkyl (meth)acrylate is ethyl acrylate or monomer mixture comprising the same” (line 2). It is not clear if the “monomer mixture” includes monomers other than the “alkyl (meth)acrylate”. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Allowable Subject Matter
Claims 3 and 6-7 would be allowable if rewritten to overcome the objections (claim 7) and rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph (claims 3 and 6-7), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Relevant Art
The prior art made of record and not relied upon is considered pertinent toapplicant's disclosure: Specifically, Ogawa et al (US 2012/0302674 A1) teach acrylic rubber composition comprising acrylic rubber, a compound represented by general formula:
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and a crosslinking agent (abstract); Sakamoto et al (US 2012/0302675 A1) teach rubber composition comprising acrylic elastomer made by Zeon and compound of formula:
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(paragraphs 0153 and 0174); Sakamoto et al (US 2015/0087754 A1) teach rubber composition comprising acrylic elastomer made by Zeon and compound of formula
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(paragraphs 0150 and 0171); Saito (US 2023/0322988 A1) teaches an acrylic elastomer copolymer that is a copolymer of an alkyl (meth)acrylate and/or alkoxyalkyl (meth)acrylate monomer, an α,β-unsaturated carboxylic acid monomer and a (meth)acrylate monomer having a carbamic acid ester group represented by general formula:
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(abstract); Ogawa et al (US 8,609,753 B2) teach acrylic rubber composition comprising acrylic rubber, a compound represented by general formula:
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and a crosslinking agent (abstract); Sakamoto et al (US 8,937,121 B2) teach rubber composition comprising acrylic elastomer made by Zeon and compound of formula:
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(col. 23, lines 10-15 and col. 18, lines 45-62); Moritani (EP 2053089 B1) teaches acrylic rubber composition comprising acrylic rubber polymer prepared by polymerizing principal monomer components including alkoxyalkyl acrylate, butyl acrylate and a crosslinking site monomer with a carboxyl functional group (paragraph 0024). A crosslinking accelerator may be added. Examples of crosslinking accelerators include guanidine compounds (paragraph 0047) such as 1,3-diphenylguanidine (paragraph 0048); Kobayashi et al (US 2005/0165191 A1) teach rubber composition comprising acrylic rubber. The acrylic ester-based copolymer rubber comprises a structural unit derived from at least one monomer selected from the group consisting of an acrylic acid alkyl ester and an acrylic acid alkoxyalkyl ester (abstract). The acrylic ester-based copolymer rubber compositions include vulcanization accelerator (Table 3); Lizuka (US 2011/0301300 A1) teach a copolymer rubber comprising α,β-ethylenically unsaturated dicarboxylic acid monoester monomer units and (meth)acrylic acid alkoxyalkyl ester monomer units (abstract). The copolymer rubber may include another copolymerizable monomer such as α,β-ethylenically unsaturated monocarboxylic acid monomer (paragraph 0028) such as (meth)acrylic acid (paragraph 0030); Matsumara (JP 2009-036960 A, a copy of machine translation into English is provided with office action mailed 9/11/2025) teaches an acrylic copolymer formed from monomer of formula 1-1:
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and methyl methacrylate (paragraph 0044 and 0219). Other copolymerizable components include (meth)acrylic acid (paragraph 0051-0052).
In summary, none of the cited art either teach a crosslinkable acrylic rubber composition comprising acrylic rubber containing carbamic acid ester group and a carboxyl group in combination with a phenothiazine-based antioxidant of general formula I:
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, and a crosslinking accelerator or qualify as prior art.
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.
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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