DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 3-5 and 7-8 are objected to because of the following informalities:
As to Claim 3: The applicants are advised to add the phrase “the group consisting of” after the claimed phrase “selected from” to be consistent with proper Markush group language in accordance with MPEP section 2173.05 (h).
As to Claim 4: The applicants are advised to add the phrase “further comprising” before the claimed phrase “20 to 80 parts by mass of a filler”.
As to Claim 5: The applicants are advised to add the phrase “further comprising” before the claimed phrase “5 parts by mass or more”.
As to Claim 7: The applicants are advised to replace the claimed phrase “of the rubber composition of Claim 1” with the new phrase “comprising the rubber composition of Claim 1”.
As to Claim 8: The applicants are advised to replace the claimed phrase “using the vulcanizate of Claim 7” with the new phrase “comprising the vulcanizate of Claim 7”.
Appropriate corrections are required.
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.
3. Claims 1-3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 9-10 of co-pending U.S. Application No. 18/686,516 (hereinafter referred to as “US Appl. ‘516”; corresponding to US PG PUB 2025/0333586) in view of Tung et al. (US 5,361,818).
The claims of US Appl. ‘516 and the present application are directed to rubber compositions comprising a chloroprene-based rubber having a content of an unsaturated nitrile monomer unit of less than 25 % by mass, wherein the unsaturated nitrile monomer is acrylonitrile. The claims of US Appl. ‘516 and the present application also recite that a vulcanizate of the rubber composition, and a vulcanized molded objection using the vulcanizate.
However, the claims of US Appl. ‘516 do not specifically mention the addition of an epoxy compound having a particular weight average molecular weight and its particular amount as required by the claims of the present application. The claims of US Appl. ‘516 also not specify the epoxy resin as including alicyclic epoxy compound or comprising a copolymer of epichlorohydrin and bisphenol as required by present claim 3.
Nevertheless, Tung et al. the use of polyepoxides including those having alicyclic structures and epoxy resins comprising epichlorohydrin and bisphenol and having an average molecular weight of, for example, 380, which is encompassed by the presently claimed weight average molecular weight of more than 100 and less than 900, in rubber compositions for preparing rubber vulcanizates and obtaining desired performance (Col. 1 lines 5-35 and Col. 3, line 55-Col. 5, line 60).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the particular epoxy compounds having the presently claimed molecular weight, including those having alicyclic structures and copolymer of epichlorohydrin and bisphenol, as taught by Tung et al., in the rubber composition of US Appl. ‘516, with a reasonable expectation of successfully using the same for rubber vulcanizates and obtaining desired performances.
As to present claim 6: Since the claims of US Appl. ‘516 and Tung et al. suggest vulcanizate identical or substantially identical to those presently claimed by molding the rubber composition for the reasons set forth above, it would also naturally follow that the vulcanizate suggested by US Appl. ‘516 and Tung et al. would also have the presently claimed particular hardness property. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
This is a provisional nonstatutory double patenting rejection.
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.
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.
4. Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of JP2000-3448991 (hereinafter referred to as “JP ‘899”) in view of Tung et al. (US 5,361,818).
The claims are directed to a rubber composition comprising a chloroprene-based rubber having a content of an unsaturated nitrile monomer unit of less than 25% by mass and a particular amount of an epoxy compound having a particular weight average molecular weight.
Absent any definition from the present specification, the claimed “less than 25% by mass” is broadly inclusive of zero amount of the unsaturated nitrile monomer unit.
As to Claims 1-4 and 7-8: JP ‘899 discloses a rubber composition (Paragraph [0004]), comprising a chloroprene rubber (Paragraphs [0005]-[0006]) and 0.1-15 parts by weight of an epoxy resin (Paragraph [0015]), which overlaps with the claimed 0.1-25 parts by mass of an epoxy compound. JP ‘899 also discloses that the chloroprene rubber may be obtained by polymerizing monomers including optionally, acrylonitrile (corresponding to the claimed unsaturated nitrile monomer) (Paragraph [0006]). Since the presence of acrylonitrile is optional and may be absent in the chloroprene rubber as taught by JP ‘899, this meets the claimed chloroprene-based rubber having a content of an unsaturated nitrile rubber of less than 25% by mass which is inclusive of zero amount of unsaturated nitrile monomer content including acrylonitrile. JP ‘899 further discloses the addition of fillers in an amount of 20-80 parts by weight per 100 parts by weight (Paragraph [0021]) as required by claim 4. Moreover, JP ‘899 discloses a vulcanizate obtained by molding the rubber composition and a vulcanized molded object using the vulcanizate (Paragraph [0025]-[0026] and [0030]).
However, JP ‘899 does not specify the molecular weight of its epoxy resin (epoxy compound) as required by the claims of the present application. It also does not specify the epoxy resin as including alicyclic epoxy compound or comprising a copolymer of epichlorohydrin and bisphenol as required by claim 3.
Nevertheless, Tung et al. the use of polyepoxides including those having alicyclic structures and epoxy resins comprising epichlorohydrin and bisphenol and having an average molecular weight of, for example, 380, which is encompassed by the claimed weight average molecular weight of more than 100 and less than 900, in rubber compositions for preparing rubber vulcanizates and obtaining desired performance (Col. 1 lines 5-35 and Col. 3, line 55-Col. 5, line 60).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the particular epoxy compounds having the claimed molecular weight, including those having alicyclic structures and copolymer of epichlorohydrin and bisphenol, as taught by Tung et al., in the rubber composition of JP ‘899, with a reasonable expectation of successfully using the same for rubber vulcanizates and obtaining desired performances.
As to Claim 6: Since JP ‘899 and Tung et al. suggest vulcanizate identical or substantially identical to those claimed by molding the rubber composition for the reasons set forth above, it would also naturally follow that the vulcanizate suggested by JP ‘899 and Tung et al. would also have the claimed particular hardness property. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
5. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over English Translation of JP2000-344899 (hereinafter referred to as “JP ‘899”) in view of Tung et al. (US 5,361,818) as applied to claims 1-4 and 6-8 above, and further in view of Masaki (US 2007/0155902).
The disclosures with respect to JP ‘899 and Tung et al. in paragraph 4 are incorporated here by reference. While JP ‘899 broadly discloses the addition of any additives to their rubber composition (Paragraph [0020]), they do not specify such additives as including a curing agent and its particular amount as required by present claim 5.
Nevertheless, Masaki discloses employing 0.1-10 parts by weight of curing agents (which overlaps with the claimed 5 parts by mass or more of curing agent) in a rubber composition for vulcanizates to provide the same with desired wear resistant properties (Paragraphs [0024] and [0046]-[0047]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed amount of curing agent taught by Masaki in the rubber composition suggested by JP ‘899 and Tung et al., with a reasonable expectation of successfully using the same for preparing vulcanizates and providing the same with advantageous wear resistant properties.
Correspondence
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 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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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 02/27/2024.
Prosecution Insights