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 .
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.
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.
Claims 1-4, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury et al, US2015/0322234.
Fleury discloses a rubber composition (for claim 1) comprising a polymer having epoxide groups and a crosslinking system comprising a polyacid and an imidazole compound (abstract, ¶0013). Said polymer having epoxide groups is preferably an epoxide-functional diene rubber (¶0052-0054), corresponding to the claimed diene rubber having epoxy groups (for claims 1, 8). Said polyacid and said imidazole correspond to the following formula (I) (abstract, ¶0094-0095) and formula (II) (abstract; ¶0105-0108, 0112), respectively.
(I)
PNG
media_image1.png
104
216
media_image1.png
Greyscale
(II)
PNG
media_image2.png
120
148
media_image2.png
Greyscale
As taught by Fleury, A is most preferably a divalent hydrocarbon group comprising 3 to 50 carbon atoms (for claim 1) (¶0095); the prior art polyacid therefore corresponds to the claimed dicarboxylic acid of claimed formula (1) (for claims 1, 8). As taught by Fleury, R1, R3, and R4 may all be hydrogen and R2 may be a C1 alkyl group (¶0106-0108, 0112). This corresponds to the compound 2-methylimidazole, which is the imidazole of claimed formula (2) when claimed variable R2 is methyl (for claim 1). The prior art imidazole compound therefore reads on the claimed imidazole of formula (2) (for claims 1, 8). The prior art rubber composition is crosslinked (for claim 8) (¶0126-0127) and used in the production of tires (for claim 9) (¶0130).
Regarding the amounts of dicarboxylic acid and imidazole: The prior art composition comprises 0.2 to 100 parts of the polyacid per 100 parts rubber (¶0022), overlapping the claimed range (for claim 2). Fleury exemplifies the use of 1.65 parts of the imidazole per 100 parts elastomer (for claims 3, 4) (see Table 1:C3 and C4).
Regarding the claimed N-substituted imidazole: As noted above, the prior art imidazole reads on the compound 2-methylimidazole. Further note that variable R1 in formula (II) above may be a hydrocarbon group (abstract), corresponding to the claimed N-substituted imidazole (for claim 6).
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…. [T]he idea of combining them flows logically from their having been individually taught in the prior art;” see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP § 2144.06(I)). Fleury renders obvious the use of both N-substituted imidazoles and 2-methylimidazole as part of the prior art crosslinking system. As both are taught for the same use, it therefore would have been obvious to use a combination of 2-methylimidazole and an N-substituted imidazole in the prior art crosslinking system barring a showing of evidence demonstrating unexpected results.
Fleury does not specifically exemplify the production of a composition comprising diene rubber having epoxy groups, a dicarboxylic acid, and an imidazole of formula (2).
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07). As discussed above, Fleury teaches a rubber composition comprising an epoxide-functional diene elastomer, a polyacid, and an imidazole which correspond to the claimed diene rubber having epoxy groups, a dicarboxylic acid of formula (1), and imidazole of formula (2), respectively. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a composition comprising the claimed components (for claims 1, 8).
Claim(s) 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable Fleury et al, US2015/0322234, as applied to claims 1 and 6 above, and further in view of Miyazaki et al, US2015/0329704.
As discussed earlier in this Action, Fleury renders obvious the production of a rubber composition used in the production of tires, wherein said rubber composition comprises an epoxide-functional diene rubber, a polyacid which corresponds to the claimed dicarboxylic acid of formula (1), an imidazole compound which corresponds to the claimed imidazole of formula (2), and an N-substituted imidazole (for claim 7).
Fleury is silent regarding the addition of a metal salt.
Miyazaki discloses the production of a rubber composition used in the production of tire treads (abstract, ¶0006), wherein said rubber composition is based on diene rubber(s) (¶0016). As taught by Miyazaki, it was known in the art to add a metal salt of a fatty acid, corresponding to the claimed metal salt (for claims 5, 7) to such compositions as a release agent in order to prevent raw rubber from adhering on the mold used to make the tire, thereby preventing contamination of the mold (¶0015, 0044, 0046).
Fleury and Miyazaki both disclose diene rubber-based compositions used in the production of tires. Further note that Fleury teaches that its composition may comprise other additives that are known in the art for compositions used for tire treads (¶0122). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Fleury by adding a metal salt of a fatty acid as a release agent, with the reasonable expectation of obtaining a final composition having reduced adherence to the mold and prevent contamination of the mold, as taught by Miyazaki.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 571-270-1831. 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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights