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 .
Claim Objections
Claims 1-10 are objected to because of the following informalities:
Regarding claim 1, in line 5, “Wherein” does not need to be capitalized.
Regarding claim 8, in line 2, “the speed” should be “a speed.”
Regarding claims 2-7, 9, and 10, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
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 1-10 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 1, the claim recites "comprising the following components in weight percentages" in lines 1 and 2, but then recites each of the four components as a number of parts rather than as a percentage. It is unclear whether the recited amounts are percentages by weight or parts by weight. For the purpose of further examination, this limitation will be interpreted as parts by weight, consistent with ¶5 and ¶22 of the instant PG-PUB, which recite the same four components and the same four amounts in parts by weight.
Claim 1 recites the limitation "the polyisobutylene is mainly composed of polyisobutylene with a molecular weight of 30,000-50,000 and polyisobutylene with a molecular weight of 80,000-100,000 mixed together" in lines 5 to 7. The phrase "mainly composed of' is neither open nor closed and it is undefined in the instant specification. It is unclear what additional polyisobutylene, or what amount of any additional polyisobutylene, may be present in the composition. For the purpose of further examination, this phrase will be interpreted as "comprising," which is its broadest reasonable interpretation.
Regarding claim 2, the claim recites "the composite of silicon oxide and polyamide wax is mainly composed of vapor-phase silicon dioxide and polyamide wax micro-powder" in lines 2 and 3. For the purpose of further examination, the phrase "mainly composed of'' will be interpreted as "comprising," for the reason set forth above with respect to claim l.
Regarding claim 6, the claim recites "hindered phenol binary anti-aging agent" in line 2. This is not a recognized term of art, and the term "binary" is unclear because it is not apparent whether it refers to the number of phenolic hydroxyl groups present in a single compound or to a combination of two separate anti-aging agents. The instant specification states that the "hindered phenol binary anti-aging agent refers to phenolic compounds containing at least two phenolic hydroxyl groups, such as but not limited to IRGANOX 1010 and IRGAFOS 168" (¶25 of the instant PG-PUB). However, IRGAFOS 168 is inconsistent with the definition given and this adds to the uncertainty of the limitation. Irgafos 168 is tris(2,4-di-tert-butylphenyl) phosphite, a phosphite antioxidant that contains no phenolic hydroxyl group, and is therefore not a phenolic compound containing at least two phenolic hydroxyl groups. For the purpose of further examination, the limitation of claim 6 will be interpreted in accordance with the definition given in the specification rather than in accordance with the inconsistent example, that is, as a phenolic compound containing at least two phenolic hydroxyl groups.
Regarding claim 7, the claim recites "mixing the polyisobutylene, inorganic filler, composite of silicon oxide and polyamide wax, and anti-aging agent" in lines 3 and 4. Claim 1, from which claim 7 depends, permits the anti-aging agent to be present in an amount of 0 parts, that is, to be absent from the composition altogether. It is therefore unclear whether the antiaging agent is a required component of the method of claim 7. For the purpose of further examination, claim 7 will be interpreted as requiring the anti-aging agent to be present, because the recited step affirmatively calls for mixing it.
Claim 7 recites the limitation "the mixture" in lines 4 and 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as referring to the composition formed by performing the mixing step of claim 7.
Regarding claim 8, the claim recites "revolution mixing is included, with the speed of 0.3m/s-0.5m/s" in lines 2 and 3. A speed expressed in meters per second is a linear speed, and the claim does not identify the element whose linear speed is being recited. For the purpose of further examination, this limitation will be interpreted as the linear speed of the stirring element as that element revolves about the central axis of the mixing vessel. This interpretation is consistent with ¶30 and ¶35 of the instant PG-PUB, which recite a “rotational mixing speed of 0.3 m/s-0.5 m/s” and “the revolution velocity of the stirring rod,” respectively.
Claim 8 recites the limitation "the dispersion" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted to refer to the composition formed after the mixture has been processed at different speeds through the mixer.
Regarding claim 9, the claim recites "the dispersion speed after multiple dispersing steps at different dispersing speed is 30m/s-50m/s" in lines 1 and 2. There is insufficient antecedent basis for "the dispersion speed" in the claim, and it is further unclear whether the recited range applies to each of the multiple dispersing steps or only to the last of those steps. For the purpose of further examination, this limitation will be interpreted as requiring that the speed of each of the multiple dispersing steps fall within the range of 30 m/s to 50 m/s, consistent with ¶17 of the instant PG-PUB, which recites that "during the multiple dispersal steps, the dispersion speed is 30 m/s-50 m/s."
Claim 9 recites "preferably, the final dispersion is conducted in a vacuum environment" in line 3. The use of the word "preferably" renders the claim indefinite because it is unclear whether the limitation which follows it is part of the claimed invention. See MPEP §2173.05(d). For the purpose of further examination, the limitation which follows will be interpreted as not being part of the claim, because the vacuum environment is recited nowhere else in the claim and the word "preferably" indicates that it is an optional condition rather than a required one.
Regarding claim 10, this claim is directed to the use of a viscoelastic anti-corrosion adhesive as an anti-corrosion sealing material in pipelines and irregular steel structures in the petroleum and natural gas industry and chemical enterprises. However, this claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q).
Regarding claims 3-5, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because it is directed to the use of a composition and not a process, machine, manufacture or composition of matter.
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.
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, 2, 4-6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nooren (US 7,887,925) (hereinafter “Nooren ‘925”) in view of Dong et al. (CN 110872477), Hangzhou Luyang Technology Co., Ltd. (CN 112210317) (hereinafter “Luyang Technology”), and Nooren (US 2010/0051199) (hereinafter “Nooren ‘199”). For convenience, the citations below for Dong et al. and for Luyang Technology are taken from English language machine translations included herewith.
Regarding claims 1, 5, and 10, Nooren '925 teaches a composition for the protection of a shaped article against corrosion comprising (a) a polyisobutene having a glass transition temperature of less than -20 °C and a surface tension of less than 40 mN/m at a temperature above that glass transition temperature, (b) a filler material, and (c) an anti-oxidant composition comprising a primary anti-oxidant selected from the group consisting of sterically hindered phenol compounds (Col. 3, lines 12-25). The shaped article is envisaged to encompass oil lines, oil pipes, gas lines, gas pipes, man hole covers, underground tanks, welding joints, flanges, crane hooks, thermit weldings in divisible shafts below the ground level, and T-joints (Col. 1, lines 23-28), which corresponds to the anti-corrosion sealing material for pipelines and irregular steel structures in the petroleum and natural gas industry and chemical enterprises of claim 10. The filler material comprises an inorganic material such as chalk, boron sulphate, aluminum oxide, silicon dioxide, limestone, ground quartz, glass, talc, slate or bentonite (Col. 5, lines 57-61). In a particular embodiment, the filler material consists essentially of calcium carbonate, wherein a very suitable commercially available material being Omyalite 95T (Col. 6, lines 6-9), which meets the carbonate of claim 5. The composition comprises about 40% by weight to about 80% by weight of the filler material, preferably about 50% by weight to about 70% by weight, calculated on the total weight of the composition (Col. 6, lines 10-13), which overlaps the 55-65 parts of inorganic filler of claim 1.
In Example 2, Nooren '925 teaches a composition containing 38.6% by weight Oppanol B10N (a polyisobutene supplied by BASF having an Mn of 24,000 and an Mv of 40,000), 60.3% by weight Omyalite 95T (calcium carbonate, an inorganic filler), 0.06% by weight pigment, and 1.0% by weight 2,6-di-t-butyl-4-methylphenol (an anti-aging agent) (Col. 13, lines 1-4 and 12-15). These four components total 99.96% by weight so that on a 100 part by weight basis the composition contains 38.6 parts of polyisobutylene, 60.3 parts of inorganic filler, and 1.0 part of anti-aging agent (calculated by Examiner).
Nooren '925 does not teach that the polyisobutene is mainly composed of a polyisobutylene having a molecular weight of 30,000-50,000 and a polyisobutylene having a molecular weight of 80,000-100,000 mixed together, or that the molecular weight of the polyisobutylene after mixing is 50,000-80,000. However, Dong et al. teaches a butyl pressure-sensitive adhesive for the anticorrosion of pipelines (Page 1, lines 15-16) prepared from 20-30 parts of butyl rubber, 10-15 parts of polyisobutylene with a molecular weight of 90,000, 10-15 parts of polyisobutylene with a molecular weight of 50,000, 5-10 parts of polyethylene, 15-25 parts of tackifying resin, 20-40 parts of inorganic filler, 0.5-1.5 parts of antioxidant, and 0.04-0.15 part of vulcanizing agent (Page 1, lines 46-49). The polyisobutylene having a molecular weight of 50,000 falls within the claimed range of 30,000-50,000, and the polyisobutylene having a molecular weight of 90,000 falls within the claimed range of 80,000-100,000. Across the recited amounts of 10-15 parts of each grade, the molecular weight of the mixed polyisobutylene ranges from 66,000 to 74,000 (calculated by Examiner; (10*90,000) + (15*50,000) + 25 = 66,000 and (15*90,000) + 10*50,000) + 25 = 74,000), which falls entirely within the claimed range of 50,000-80,000.
Nooren '925 itself teaches that mixtures of different polyisobutenes may be used (Col. 5, lines 3-5), and that the most preferred polyisobutenes have a viscosity average molecular weight in the range of 10,000 to 100,000, more preferably in the range of 15,000 to 80,000 (Col. 5, lines 49-53), which encompasses both of the claimed molecular weight ranges and overlaps the claimed range for the mixture. Nooren '199 likewise teaches that the adhesive composition comprises a single polyisobutene or a blend of different polyisobutenes (¶18).
Nooren '925, Dong et al. and Nooren '199 are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polyisobutylene-containing anti-corrosion adhesives and sealing compositions for pipelines and other metal articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to provide the polyisobutene, as taught by Nooren '925, as a mixture of a polyisobutylene having a molecular weight of 90,000 and a polyisobutylene having a molecular weight of 50,000, as taught by Dong et al., and would have been motivated to do so because Dong et al. teaches that adding polyisobutylene with molecular weights of 90,000 and 50,000 gives the adhesive good heat resistance, water vapor barrier performance, and anti-corrosion performance, and allows it to stably exist at 70 °C without flowing (Page 2, lines 46-50).
Nooren '925 further does not teach 1-2 parts of a composite of silicon oxide and polyamide wax, as recited in claim 1. However, Luyang Technology teaches a modified thixotropic agent for a sealant composition, the thixotropic agent including an inorganic thixotropic agent which is fumed silica or organic clay (Page 1, lines 50-51), and further including an organic thixotropic agent which is a modified polyamide wax (Page 2, lines 6-7). Luyang Technology teaches expressly why both are used together: when only an inorganic thixotropic agent is added, the sealant relies on hydrogen bonding at the surface of the thixotropic agent, its viscosity at low shear speed or in a static state is very small, and although tailing can be prevented the sealant is easy to sag; when only an organic thixotropic agent is added, the sealant relies on entanglement of macromolecular chains, its viscosity at low shear speed or in a static state is very large, and although sagging can be prevented the sealant is prone to tailing; and when two thixotropic agents with different characteristics are added and used at the same time, the viscosity of the sealant can be adjusted and sagging and tailing can be avoided at the same time (Page 2, lines 57-60 and Page 3, lines 1-7).
Although the worked examples of Luyang Technology employ the organic clay alternative, fumed silica is expressly disclosed as the inorganic thixotropic agent.
Nooren '199 teaches that the polyisobutene adhesive composition used for the corrosion protection of extended tubular articles may also comprise a filler material, which is preferably an active reinforcing filler, preferably a fumed silica such as AEROSIL available from Degussa, the adhesive composition comprising about 1 to about 10 percent by weight of that filler material based on the total weight of the adhesive composition (¶53). That range overlaps the 1-2 parts of the composite of silicon oxide and polyamide wax recited in claim 1. 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). See MPEP 2144.05.
Nooren '925 and Luyang Technology are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of filled sealing and anti-corrosion compositions, and because Luyang Technology is reasonably pertinent to the particular problem with which the inventor was concerned, namely preventing a filled composition from sagging or flowing during use. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from about 1 to about 10% by weight of a composite of fumed silica and modified polyamide wax, as taught by Luyang Technology and Nooren ‘199, to the anti-corrosion composition, as taught by Nooren '925, and would have been motivated to do so because Luyang Technology teaches that using two thixotropic agents with different characteristics at the same time permits the viscosity of the composition to be adjusted and avoids sagging and tailing at the same time (Page 3, lines 5-7), and because Nooren '199 teaches that a fumed silica filler permits the adhesive composition to keep its translucency, thereby enabling visible inspection of the surface of the article after application of the adhesive composition (¶53).
Regarding claim 2, Luyang Technology teaches that the inorganic thixotropic agent is fumed silica (Page 1, lines 50-51 ), and that the modified polyamide wax is prepared by grinding the polyamide wax finely to obtain a powder (Page 2, lines 16-19), which meets the polyamide wax micro-powder of claim 2. The instant specification defines the "silicon oxide" as silicon dioxide, preferably silicon dioxide obtained by the vapor-phase method, which is briefly referred to as "vapor-phase silicon dioxide," and defines the "polyamide wax micro powder" as powder obtained by pulverizing the polyamide wax solid directly or by cooling and solidifying the molten liquid wax (¶22 of the instant PG-PUB). Biecker et al. (US 9,822,234) teaches that precipitated silicas are obtained wet-chemically by precipitation, while fumed silicas are obtained by continuous flame hydrolysis (Col. 18, lines 43-45), evidencing that a fumed silica is a silicon dioxide obtained by a vapor-phase method and therefore meets the vapor-phase silicon dioxide of claim 2.
Luyang Technology further teaches that, based on the total weight of the composition, the content of the inorganic thixotropic agent is 2-15% by weight and the content of the organic thixotropic agent is 5-12% by weight (Page 2, lines 29-32), giving a mass ratio of the inorganic thixotropic agent to the organic thixotropic agent of from 0.17:1 to 3:1 (calculated by Examiner; 2/12 = 0.17 and 15/5 = 3). Claim 2 recites a mass ratio of vapor-phase silicon dioxide to polyamide wax micro-powder of 0.1-1.5:0.5-2.0, which is a ratio of from 0.05:1 to 3:1 (calculated by Examiner; 0.1/2.0 = 0.05 and 1.5/0.5 = 3). The ranges overlap, and a prima facie case of obviousness therefore exists for the reasons and under the authority set forth above.
Regarding claim 4, Dong et al. teaches 10-15 parts of the polyisobutylene having a molecular weight of 90,000 and 10-15 parts of the polyisobutylene having a molecular weight of 50,000 (Page 1, lines 46-47). Across those recited amounts, the mass ratio of the polyisobutylene having a molecular weight of 50,000 to the polyisobutylene having a molecular weight of 90,000 ranges from 13.3:20 to 30:20 (calculated by Examiner; (10/15)*20 = 13.3 and (15/10)*20 = 30), which overlaps the 3-17 :20 recited in claim 4. A prima facie case of obviousness therefore exists for the reasons and under the authority set forth above. The Office points out that the ratio of the preferred embodiment of Dong et al., namely 10 parts of the 90,000 molecular weight polyisobutylene and 15 parts of the 50,000 molecular weight polyisobutylene (Page 2, lines 12-13), lies outside the claimed range, and the rejection accordingly relies on the broader ranges recited by Dong et al. for all that they would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments, under Merck & Co. v. Biocraft Laboratories and MPEP 2123 as set forth above.
Regarding claim 6, Nooren '925 does not teach that the anti-aging agent is a hindered phenol binary anti-aging agent, the composition of Example 2 employing 2,6-di-t-butyl-4-methylpheno1. However, Dong et al. teaches that the antioxidant of its pipeline anticorrosion adhesive is tetrakis[beta-(3,5-di-tert-butyl-4-hydroxyphenyl)propanoic acid] pentaerythritol ester (Page 2, lines 6-7), present at 0.5 to 1.5 parts by weight (Page 1, line 48), which amount also falls within the 0-2 parts of an anti-aging agent recited in claim 1. As set forth above, this limitation is interpreted as a phenolic compound containing at least two phenolic hydroxyl groups in accordance with the definition provided at ¶25 of the instant PG-PUB. The compound taught by Dong et al. contains four 3,5-di-tert-butyl-4-hydroxyphenyl moieties and therefore four phenolic hydroxyl groups, and meets the provided definition. Nooren '925 further teaches that the sterically hindered phenol compounds of its anti-oxidant composition are most preferably selected from the group consisting of lrganox 1330, Irganox 1010, Irganox 1098, Irganox 1076, Irganox 245, lrganox 259, Irganox 1035, lrganox 3114 and Irganox 3125, and even more preferably from the group consisting of Irganox 1330 and lrganox 1010 (Col. 7, lines 40-46), each used at 1.0% by weight of the total composition (Col. 14, Table 3), and expressly excludes 2,6-di-t-butyl-4-methylphenol from its primary anti-oxidant (Col. 3, lines 23-25).
At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to employ the tetrakis[beta-(3,5-di-tert-butyl-4-hydroxyphenyl)propanoic acid] pentaerythritol ester antioxidant, as taught by Dong et al., as the anti-oxidant of the composition, as taught by Nooren '925, and would have been motivated to do so because Dong et al. teaches that adding the antioxidant improves the anti-aging performance of the adhesive and extends its service life (Page 2, lines 55-57).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nooren (US 7,887,925) (hereinafter “Nooren ‘925”) in view of Dong et al. (CN 110872477), Hangzhou Luyang Technology Co., Ltd. (CN 112210317) (hereinafter “Luyang Technology”), and Nooren (US 2010/0051199) (hereinafter “Nooren ‘199”) as applied to claim 2 above, and further in view of Biecker et al. (US 9,822,234).
Regarding claim 3, Nooren '925, Dong et al., Luyang Technology, and Nooren '199 teach the viscoelastic anti-corrosion adhesive of claim 2 as set forth above. Nooren '925 does not teach that the mass ratio of vapor-phase silicon dioxide to polyamide wax micro-powder is 1:1. However, Biecker et al. teaches a thixotropy-increasing additive (A) obtainable by reaction of a reaction product of at least two polymerized fatty acids and at least one polyamine having at least two primary amino groups with at least one polyalkylenepolyamine (Col. 1, line 69 to Col. 2, line 10), used in combination with at least one thixotropic agent (B), the thixotropic agent (B) being particularly preferably an amorphous silica, more particularly a fumed silica (Col. 18, lines 46-48). Biecker et al. teaches that the thixotropy-increasing additive (A) is present preferably in an amount in a range from 10 to 100% by weight, based in each case on the total weight of the thixotropic agent (B) (Col. 18, lines 14-19). At the disclosed endpoint of 100 wt.%, the mass ratio of the fumed silica to the amide condensation product is 1:1 (calculated by Examiner; 100/100 = 1). Nooren '925 and Biecker et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of filled polymer compositions containing silica thixotropic agents, and because Biecker et al. is reasonably pertinent to the particular problem with which the inventor was concerned, namely controlling the flow of a filled composition through the use of a thixotropic system.
At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to employ the fumed silica and the amide-based thixotropy-increasing additive in a mass ratio of 1:1, as taught by Biecker et al., in the composite of silicon oxide and polyamide wax of the composition, as taught by Nooren '925, would have been motivated to do so because Biecker et al. teaches that the presence of the condensation product (A) leads to a strengthening of the silica network built up by the thixotropic agent (B), so that an increase in the thixotropic effect induced by the thixotropic agent (B) is achieved (Col. 2, lines 31-39).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nooren (US 7,887,925) (hereinafter “Nooren ‘925”) in view of Dong et al. (CN 110872477), Hangzhou Luyang Technology Co., Ltd. (CN 112210317) (hereinafter “Luyang Technology”), and Nooren (US 2010/0051199) (hereinafter “Nooren ‘199”) as applied to claim 1 above, and further in view of Lavery et al. (WO 2010/070355) and Zhang et al. (CN 104152102). For convenience, the citations below for Zhang et al. are taken from an English language machine translation included herewith.
Regarding claim 7, Nooren '925, Dong et al., Luyang Technology, and Nooren '199 teach the viscoelastic anti-corrosion adhesive of claim I as set forth above. Nooren '925 does not teach a preparation method comprising mixing the components, then heating to 90-110 °C, followed by dispersing the mixture at different speeds multiple times, and finally cooling to 60-70 °C for extrusion molding. However, Lavery et al. teaches that a bulk sealant is produced on a Z-blade, or sigma blade, mixer, and that a heated jacket, either steam heated or oil heated, is required to aid dispersion of the high molecular weight rubber, for example butyl rubber, polyisobutylene, ethylene propylene or polyolefin, together with inorganic mineral filler, for example calcium carbonate, stearate coated calcium carbonate or talc, together with additives, for example antioxidants, pigments and wetting agents (Page 10). Lavery et al. further teaches that the mixing process is followed by an extrusion process to provide the sealant in a conveniently useable form, in which, after the sealant has cooled to room temperature, the product is loaded into a single or twin-screw extruder and the strip is forced through a die onto release paper, the extrusion temperature typically being between 50 and 70 °C (Page 11). That extrusion temperature overlaps the 60-70 °C recited in claim 7.
Zhang et al. teaches a method of preparing a sealant in which the material is heated to 100-120 °C during preparation of the base material (Page 2, lines 54-59), which overlaps the 90-110 °C recited in claim 7, and in which the mixture is thereafter dispersed at different speeds multiple times in a planetary mixer: the base material, pre-mixed carbon black, polydimethylsiloxane and 108 oil are stirred at 20-30 rad/min for 10-20 min, then stirred at 35-45 rad/min for 15-25 min after evacuation to 0.06-0.10 MPa, then stirred at 35-45 rad/min for 10-20 min after white carbon black is added and the tank is evacuated again, and then stirred at 35-45 rad/min for 10-20 min after the tackifier and catalyst are added and the tank is evacuated to -0.06 to -0.10 MPa, before discharge (Page 3, lines 2-9).
Nooren '925, Lavery et al. and Zhang et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of the preparation of filled polymeric sealing and anti-corrosion compositions by mixing and dispersing an inorganic filler into a viscous polymer. [AltContent: ]At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to prepare the composition, as taught by Nooren '925, by hot mixing the polyisobutylene, the inorganic filler, the composite of silicon oxide and polyamide wax and the anti-aging agent, and then, after cooling, extruding the mixture through a die, as taught by Lavery et al., and would have been motivated to do so because Lavery et al. teaches that the extrusion process provides the sealant in a conveniently useable form and in the specified cross-section (Page 11). A person of ordinary skill in the art would further have found it obvious to heat the mixture to 100-120 °C and to disperse it at different speeds multiple times, as taught by Zhang et al., and would have been motivated to do so because Zhang et al. teaches that where a planetary mixer mixes the materials without heating, the filler is not well dispersed in the polymer and the resulting product is not uniform enough (Page 1, lines 56-60).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nooren (US 7,887,925) (hereinafter “Nooren ‘925”) in view of Dong et al. (CN 110872477), Hangzhou Luyang Technology Co., Ltd. (CN 112210317) (hereinafter “Luyang Technology”), Nooren (US 2010/0051199) (hereinafter “Nooren ‘199”), Lavery et al. (WO 2010/070355), and Zhang et al. (CN 104152102), as applied to claim 7 above, and further in view of Muller (US 4,697,929).
Regarding claim 8, the listed references teach the composition of claim 7 as set forth above. Nooren ‘925 does not teach that before or simultaneously with the dispersion, revolution mixing is included, with a speed of 0.3 m/s to 0.5 m/s. However, Muller teaches a double planetary mixer in which two rectangularly shaped stirrer blades revolve about the tank on a central axis while each blade simultaneously revolves on its own axis, the mixer being used for a wide range of liquid and solid mixing applications including plastisols, bulk molding compounds, ceramics, caulking compounds and composites, and often being used in vacuum applications, planetary blade speeds ranging approximately between 10 rpm and 100 rpm (Col. 1, lines 38-53). Muller further teaches an epicyclic mixer system in which a first planetary shaft carries a stirrer and a second planetary shaft carries a high speed disperser, the orbit drive shaft and the central drive shaft being driven by separate drivers which have their power transmitted through separate drive systems so that each shaft can be rotated at a selected speed different from the other (Col. 6, lines 57-68), and in which the stirrer and the disperser mix the compounds in the tank by planetary rotational movements about their own axes and by simultaneous orbital motion around the tank about a central axis (Col. 7, lines 37-41). Muller therefore teaches revolution mixing simultaneously with the dispersion, as recited in claim 8. Muller teaches that rotational agitator tip speeds range approximately between 150 FPM and 450 FPM for an agitator, which corresponds to 0.76 m/s to 2.29 m/s (calculated by Examiner; (150 ft/min*0.3048 m/ft) + 60 s/min = 0.76 m/s and (450 ft/min*0.3048 m/ft) + 60 s/min = 2.29 m/s) (Col. 1, lines 28-32).
Muller does not teach that the speed of the revolution mixing is 0.3 m/s to 0.5 m/s. However, Muller does teach that the advantage of the mixing system is that it is able to mix components of widely different viscosities more efficiently by using within the same mixing tank [AltContent: ][AltContent: ]more than one selected effective mixing device, the best device for mixing high viscosity materials being a medium speed paddle and the best device for mixing low viscosity materials being a high speed blade (Col. 2, lines 58-65), and that the dual drive system permits the slow or medium speed shaft and the high speed shaft to be controlled or varied independently (Col. 2, lines 53-57). Therefore, the speed of the revolution mixing is a result-effective variable. It is well known in the art to optimize result effective variables, such as mixing speed. MPEP § 2144.05. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955). MPEP 2144.05 II.A.
Nooren '925 and Muller are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of mixing and dispersing solids into viscous polymeric compositions, and because Muller is reasonably pertinent to the particular problem with which the inventor was concerned, namely dispersing an inorganic filler and a thixotropic agent uniformly into a high viscosity polymer. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to carry out the mixing and dispersing of the composition, as taught by Nooren '925, in the double planetary mixer with revolution mixing occurring simultaneously with the dispersion, as taught by Muller, and to optimize the speed of the revolution mixing to 0.3 m/s to 0.5 m/s, and would have been motivated to do so in order to mix components of widely different viscosities more efficiently within the same mixing tank (Col. 2, lines 58-62).
Regarding claim 9, the listed references teach the composition of claim 7 as set forth above. Nooren ‘925 does not teach that the dispersion speed after multiple dispersing steps at different dispersing speed is 30 m/s to 50 m/s. Additionally, as set forth in the rejection under 35 U.S.C. 112(b) above, the limitation "preferably, the final dispersion is conducted in a vacuum environment" is interpreted as not being part of the claim. Zhang et al. teaches dispersing the mixture at different dispersing speeds, namely at 20-30 rad/min and thereafter at 35-45 rad/min (Page 3, lines 2-9). Muller teaches that rotational agitator tip speeds range approximately between 2500 FPM and 5000 FPM for a disperser, which corresponds to 12.7 m/s to 25.4 m/s (calculated by Examiner; (2500 ft/min*0.3048 m/ft) + 60 s/min = 12.7 m/s and (5000*0.3048) + 60 = 25.4 m/s) (Col. 1, lines 28-31).
Muller does not teach that the dispersion speed is 30 m/s to 50 m/s. For the reasons set forth above with respect to claim 8, the dispersion speed is a result-effective variable, and it would have been obvious to optimize the dispersion speed to 30 m/s to 50 m/s through routine[AltContent: ][AltContent: ] experimentation. In re Aller, 220 F.2d 454,456, 105 USPQ 233,235 (CCPA 1955). MPEP 2144.05 II.A.
The Office points out that, were the vacuum limitation of claim 9 to be treated as part of the claim, it would likewise be met, because Muller teaches that the double planetary mixer is often used in vacuum applications (Col. 1, lines 50-51) and Zhang et al. teaches that the final dispersion is conducted under a vacuum of -0.06 to -0.10 MPa immediately before discharge (Page 3, lines 7-9).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
Prosecution Insights