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
Claims 16-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Groups II-V, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/02/2025. The traversal is on the ground(s) that the Iizuka reference does not disclose the newly amended claim limitations of claim 10 that were added after the Restriction Requirement. Applicant further argues unexpected results for the omission of resorcinol, formaldehyde, their precondensates or releasing substances, and argues that Iizuka does not teach or suggest the combination of these features or even hint at how to achieve these features. This is not found persuasive because the technical features are known in the prior art as evidenced by the prior art rejection below. The examiner notes that although Applicant amended the claims, such amendment does not alter the fact that the originally-identified groups remain patentably distinct under unity of invention analysis as the restriction was based on whether the special technical feature shared between the groups makes a contribution over the prior art. As Applicant has extensively amended the claims, the examiner refers to the prior art cited in the detailed rejection below. Moreover, any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(II). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 715.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). Applicant’s arguments have not established criticality or unexpected results as required above.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 10 is objected to because of the following informalities: the phrase “member and” in line 6 should be written as –member, and— for grammatical clarity. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: the examiner suggests renumbering “(y1)” and “(y2)” for clarity as they were previously used in claim 12 and they are not the same exact limitations. Appropriate correction is 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 10-15 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.
Regarding claim 10, the phrase “the dry weight” in line 14 lacks sufficient antecedent basis.
Claims 11-15 are indefinite by dependence on claim 10.
Regarding claim 14, the phrase "preferably" and the respective subsequent limitations in lines 4-5 and 7-8 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, the examiner assumes they are not required limitations.
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.
Claim(s) 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Acar et al. (EP 3702521) (of record).
Regarding claims 10-11, Acar discloses a process for producing a vulcanizable composite material, comprising the steps of: a) producing or providing a textile strength member ([0001]), b) treating the textile strength member with an aqueous dispersion for adhesive activation of the textile strength member and to obtain an adhesion-activated textile strength member ([0001], [0043]-[0046]), and c) arranging the adhesion-activated textile strength member on the surface of a base material comprising a crosslinkable rubberization mixture to obtain the vulcanizable composite material ([0048]-[0055]), wherein the aqueous dispersion is essentially free of free resorcinol and resorcinol precondensates ([0001], [0006], [0034]), and is free of free formaldehyde and formaldehyde-releasing substances ([0001], [0006], [0034]), and comprises (x1) at least one rubber latex ([0001], [0010]-[0013]), and (x2) at least one blocked (i.e., protected) isocyanate ([0001], [0014]-[0016]), and wherein the crosslinkable rubberization mixture is processible by vulcanization to give a crosslinked rubberization mixture ([0049], [0056]).
Acar further discloses that the at least one protected isocyanate in a proportion by mass based on the dry weight of the aqueous dispersion of 0.1% to 4.5% ([0001], [0008]), which overlaps with the claimed range of 0.1% to 10%. Acar further discloses the at least one rubber latex is in a proportion by mass based on the dry weight of the aqueous dispersion of 4% to 50% ([0001], [0008]), which overlaps with the claimed range of 40% to 60%. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amounts of the at least one protected isocyanate in a proportion by mass based on the dry weight of the aqueous dispersion and the at least one rubber latex is in a proportion by mass based on the dry weight of the aqueous dispersion.
The limitation “which is at least partly transmissive to visible light at least in sections” is a recitation of intended use that does not require any additional steps that differentiate them from the steps disclosed by Acar. The recitation does not result in structural difference between the claimed invention and the prior art because Acar discloses the claimed process for producing a vulcanizable composite material comprising the claimed crosslinkable rubberization mixture for the same intended purpose as the claimed invention which is capable of being at least partly transmissive to visible light at least in sections. Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Applicant’s specification in paragraphs [0048]-[0051] discloses that the crosslinkable rubberization mixture may comprise “at least one diene rubber, where the diene rubber is preferably selected from the group consisting of halogenated copolymers of a C4 to C7 isoolefin and an alkylstyrene, natural polyisoprene (NR), synthetic polyisoprene (IR), butadiene rubber (BR), styrene-butadiene rubber (SBR), styrene-isoprene rubber, butyl rubber, nitrile rubber (NBR), chloroprene rubber, isoprene-butadiene rubber and ethylene-propylene rubber.” Acar discloses the rubberizing mixture preferably comprises at least one diene rubber, wherein the diene rubber may be any suitable diene rubber known to the person skilled in the art, wherein the rubberizing mixture preferably comprises at least one diene rubber selected from the group consisting of natural polyisoprene (NR), synthetic polyisoprene (IR), butadiene rubber (BR), styrene-butadiene rubber (SBR) and combinations thereof ([0051]). Because Acar discloses that the crosslinkable rubberization mixture may comprise the same types of rubbers as those disclosed by Applicant’s specification, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize, or alternatively find obvious, that the crosslinked rubberization mixture is at least capable of being at least partly transmissive to visible light at least in sections.
Regarding claims 12-13, Acar further discloses the aqueous dispersion comprises at least one compound containing an epoxy group in a proportion by mass based on the dry weight of the aqueous dispersion of up to 6%, and at least one polymer having carboxylic acid-functional groups in a proportion by mass based on the dry weight of the aqueous dispersion of up to 15% ([0001], [0008], [0023]-[0029]).
Regarding claim 14, Acar further discloses the aqueous dispersion comprises at least one filler in a proportion by mass based on the dry weight of the aqueous dispersion of 0.02% to 20% ([0001], [0008], [0017]-[0022]).
Regarding claim 15, Acar further discloses producing an unvulcanized vehicle tire blank comprising the vulcanizable composite material ([0048]).
Claim(s) 10-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (US 20120041113) and optionally Acar et al. (EP 3702521) (of record).
Regarding claims 10-11, Ikeda discloses a process for producing a vulcanizable composite material, comprising the steps of: a) producing or providing a textile strength member ([0010]-[0011]), b) treating the textile strength member with an aqueous dispersion for adhesive activation of the textile strength member and to obtain an adhesion-activated textile strength member ([0015]-[0017], [0038]), and c) arranging the adhesion-activated textile strength member on the surface of a base material comprising a crosslinkable rubberization mixture to obtain the vulcanizable composite material ([0001], [0010], [0015]-[0017], [0019]-[0020], [0036], [0039]), wherein the aqueous dispersion is essentially free of free resorcinol and resorcinol precondensates ([0010]-[0011], [0020]), and is free of free formaldehyde and formaldehyde-releasing substances ([0010]-[0011], [0020]), and comprises (x1) at least one rubber latex ([0012], [0022], [0025]), and (x2) at least one blocked (i.e., protected) isocyanate ([0012], [0022]-[0023]), and wherein the crosslinkable rubberization mixture is processible by vulcanization to give a crosslinked rubberization mixture ([0032]-[0034], [0039]).
Ikeda further discloses preferred mass ratios of various components, including the blocked isocyanate and rubber latex ([0023], [0029]-[0031]) (Tables 1-5). Varying the various ratio affects the flexibility, tensile strength, cohesive failure resistance, and adhesive strength of the adhesive composition ([0029]-[0030]). Moreover, varying the ratios affects heat curing, stability of heat processing, emulsion stability, and uniform application of the adhesive composition ([0031]). In other words, the amounts and proportions of the various components in the adhesive composition (i.e., aqueous dispersion) are considered to be result effective variables that will affect various properties and functionalities of the composition. Accordingly, while Ikeda does not explicitly disclose the value for the at least one protected isocyanate in a proportion by mass based on the dry weight of the aqueous dispersion or the at least one rubber latex is in a proportion by mass based on the dry weight of the aqueous dispersion, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said proportions. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the at least one protected isocyanate in a proportion by mass based on the dry weight of the aqueous dispersion and the at least one rubber latex is in a proportion by mass based on the dry weight of the aqueous dispersion in order to achieve desirable and advantageous effects of the properties discussed above (i.e., flexibility, strength, adhesiveness, etc.).
The limitation “which is at least partly transmissive to visible light at least in sections” is a recitation of intended use that does not require any additional steps that differentiate them from the steps disclosed by Ikeda. The recitation does not result in structural difference between the claimed invention and the prior art because Ikeda discloses the claimed process for producing a vulcanizable composite material comprising the claimed crosslinkable rubberization mixture for the same intended purpose as the claimed invention which is capable of being at least partly transmissive to visible light at least in sections. Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Applicant’s specification in paragraphs [0048]-[0051] discloses that the crosslinkable rubberization mixture may comprise “at least one diene rubber, where the diene rubber is preferably selected from the group consisting of halogenated copolymers of a C4 to C7 isoolefin and an alkylstyrene, natural polyisoprene (NR), synthetic polyisoprene (IR), butadiene rubber (BR), styrene-butadiene rubber (SBR), styrene-isoprene rubber, butyl rubber, nitrile rubber (NBR), chloroprene rubber, isoprene-butadiene rubber and ethylene-propylene rubber.” Ikeda discloses that the rubber is preferably those formed by adding compounding agents normally used in the rubber industry to rubber ingredients, wherein the rubber ingredients are not particularly restricted, and examples thereof include natural rubber as well as, polyisoprene rubber (IR), polybutadiene rubber (BR), styrene-butadiene copolymer rubber (SBR), acrylonitrile butadiene rubber (NBR), chloroprene rubber (CR), conjugated diene synthetic rubber such as butyl rubber (IIR), and further include ethylene-propylene copolymer rubber (EPM), ethylene-propylene-diene copolymer rubber (EPDM) and polysiloxane rubber, wherein these rubber ingredients may be used alone, or two or more of these may be used in combination ([0033]). Because Ikeda discloses that the crosslinkable rubberization mixture may comprise the same types of rubbers as those disclosed by Applicant’s specification, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize, or alternatively find obvious, that the crosslinked rubberization mixture is at least capable of being at least partly transmissive to visible light at least in sections.
Optionally, Acar discloses a process for producing a vulcanizable composite material, similar to Ikeda, as discussed above in the separate prior art rejection of claim 10. Acar further discloses that the at least one protected isocyanate in a proportion by mass based on the dry weight of the aqueous dispersion of 0.1%o to 4.5% ([0001], [0008]), which overlaps with the claimed range of 0.1%o to 10%. Acar further discloses the at least one rubber latex is in a proportion by mass based on the dry weight of the aqueous dispersion of 4% to 50% ([0001], [0008]), which overlaps with the claimed range of 40% to 60%. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amounts of the at least one protected isocyanate in a proportion by mass based on the dry weight of the aqueous dispersion and the at least one rubber latex is in a proportion by mass based on the dry weight of the aqueous dispersion. Acar discloses the aqueous dispersion composition as discussed above for coating a textile reinforcing material which provides a still further improved bonding between a strengthening member and an elastomeric compound, and which at the same time is easy to handle and allows the treated textile reinforcing materials to be stored over a long period of time, wherein the specific combination of components of the claimed aqueous dipping composition enables a multitude of chemical reactions by which the textile reinforcing material undergoes activation which leads to a further improved bonding between the textile reinforcing material and an elastomeric compound as compared to the dipping compositions of the prior art, wherein it has surprisingly been found that the storage stability of a textile reinforcing material treated with the claimed composition is improved as compared to the RF-free dipping compositions of the prior art, and wherein the aforementioned aqueous dipping composition is easy to handle and can be used for a broad variety of textile reinforcing materials ([0006]-[0009]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Ikeda in order to provide the aqueous dispersion comprises at least one compound containing an epoxy group in a proportion by mass based on the dry weight of the aqueous dispersion and/or at least one polymer having carboxylic acid-functional groups in a proportion by mass based on the dry weight of the aqueous dispersion in the aforementioned ranges as is generally known in the substantially similar art as taught by Acar, and for the advantages discussed above as taught by Acar.
Regarding claims 12-13, Ikeda further discloses the aqueous dispersion comprises: (y1) at least one compound containing an epoxy group ([0012]-[0013], [0022], [0024]), and/or (y2) at least one polymer having carboxylic acid-functional groups ([0025]).
As discussed above in claim 10, Ikeda further discloses preferred mass ratios of various components, including the at least one compound containing an epoxy group and the rubber latex comprising the carboxyl group ([0013], [0025], [0029]-[0031]) (Tables 1-5). Varying the various ratio affects the flexibility, tensile strength, cohesive failure resistance, and adhesive strength of the adhesive composition ([0029]-[0030]). Moreover, varying the ratios affects heat curing, stability of heat processing, emulsion stability, and uniform application of the adhesive composition ([0031]). In other words, the amounts and proportions of the various components in the adhesive composition (i.e., aqueous dispersion) are considered to be result effective variables that will affect various properties and functionalities of the composition. Accordingly, while Ikeda does not explicitly disclose the value for the at least one compound containing an epoxy group in a proportion by mass based on the dry weight of the aqueous dispersion or the at least one polymer having carboxylic acid-functional groups in a proportion by mass based on the dry weight of the aqueous dispersion, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said proportions. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the at least one compound containing an epoxy group in a proportion by mass based on the dry weight of the aqueous dispersion and the at least one polymer having carboxylic acid-functional groups in a proportion by mass based on the dry weight of the aqueous dispersion in order to achieve desirable and advantageous effects of the properties discussed above (i.e., flexibility, strength, adhesiveness, etc.).
Optionally, Acar further discloses the aqueous dispersion comprises at least one compound containing an epoxy group in a proportion by mass based on the dry weight of the aqueous dispersion of up to 6% and at least one polymer having carboxylic acid-functional groups in a proportion by mass based on the dry weight of the aqueous dispersion of up to 15% ([0001], [0008], [0023]-[0029]). The addition of such amount of epoxy group-containing compound further improves the adhesion of the textile reinforcing material to the elastomeric compound ([0024]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Ikeda in order to provide the aqueous dispersion comprises at least one compound containing an epoxy group in a proportion by mass based on the dry weight of the aqueous dispersion and/or at least one polymer having carboxylic acid-functional groups in a proportion by mass based on the dry weight of the aqueous dispersion in the aforementioned ranges as is generally known in the substantially similar art as taught by Acar, and for the advantages discussed above as taught by Acar.
Regarding claim 15, Ikeda further discloses producing an unvulcanized vehicle tire blank comprising the vulcanizable composite material ([0001], [0010], [0015]-[0017], [0019]-[0020], [0036], [0039]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (US 20120041113) and optionally Acar et al. (EP 3702521) (of record) as applied to claim 10 above, and further in view of Acar et al. (EP 3702521) (of record).
Regarding claim 14, Ikeda further discloses the crosslinkable rubberization mixture may comprise fillers ([0035]), but does not expressly recite the aqueous dispersion comprises one of the following components: (z1) at least one filler in a proportion by mass based on the dry weight of the aqueous dispersion of 0.02% to 20%, (z2) at least one polyisoprene rubber latex in a proportion by mass based on the dry weight of the aqueous dispersion of 1% to 20%, or (z3) at least one wax in a proportion by mass based on the dry weight of the aqueous dispersion of 0.3% to 30%.
Acar discloses a process for producing a vulcanizable composite material as discussed above. Acar further discloses the aqueous dispersion comprises at least one filler in a proportion by mass based on the dry weight of the aqueous dispersion of 0.02% to 20% ([0001], [0008], [0017]-[0022]), which overlaps with the claimed range of 0.02% to 20%. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of at least one filler in a proportion by mass based on the dry weight of the aqueous dispersion. Acar discloses the aqueous dispersion composition as discussed above for coating a textile reinforcing material which provides a still further improved bonding between a strengthening member and an elastomeric compound, and which at the same time is easy to handle and allows the treated textile reinforcing materials to be stored over a long period of time, wherein the specific combination of components of the claimed aqueous dipping composition enables a multitude of chemical reactions by which the textile reinforcing material undergoes activation which leads to a further improved bonding between the textile reinforcing material and an elastomeric compound as compared to the dipping compositions of the prior art, wherein it has surprisingly been found that the storage stability of a textile reinforcing material treated with the claimed composition is improved as compared to the RF-free dipping compositions of the prior art, and wherein the aforementioned aqueous dipping composition is easy to handle and can be used for a broad variety of textile reinforcing materials ([0006]-[0009]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Ikeda in order to provide the aqueous dispersion comprises at least one filler in a proportion by mass based on the dry weight of the aqueous dispersion in the aforementioned ranges as is generally known in the substantially similar art as taught by Acar, and for the advantages discussed above as taught by Acar.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH (née WHATLEY) can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749