DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment dated 12/19/24, claims 16-20, 27-42 are currently pending in the application.
Applicant’s election without traverse of Group II invention, encompassing claims 34-42, in the reply filed on 6/2/26 is acknowledged.
Claims 16-20, 27-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objection
Claim 34 is objected to because of the following:
Independent claim 34 of the elected invention depends on withdrawn claim 16. Applicant is advised to amend the claim to incorporate the limitations of claim 16 for completion.
Appropriate correction is required.
Claim Rejections - 35 USC § 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 34, 38 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krutzer et al (US 2016/0108154 A1).
Regarding claims 34, Krutzer teaches dipped goods, such as gloves and condoms, formed from a composition comprising a synthetic isoprene latex, e.g., polyisoprene latex and poly(styrene-b-isoprene-styrene) latex, and an accelerator system comprising a sulfur donor and a dithiocarbamate (Ab., [0010], [0017], [0019], [0022], [0029]-[0030], ref. claims).
Kurtzer teaches forming a glove from a composition comprising a latex, a sulfur donor and a dithiocarbamate, and forming a dipped article (glove) thereof by a method comprising dipping a former into the latex composition, removing the heating the coated former, heating the glove and former in an oven prior to leaching an crosslinking in an oven to form the glove [0032]-0035]. A glove formed from the composition of Example 8 comprising a SIS latex, a thiuram compound, a dithiocarbamate compound has a tensile modulus at 500% elongation of 1.60 MPa ([0037]-[0038], TABLE 2). It is noted that tensile modulus of a film is an intensive property and is independent of the film thickness.
Krutzer is silent on a prevulcanized latex compound having the claimed relaxed modulus. However, claim 34 recites the limitation “article prepared according to the method of claim 16” and is a product-by-process claim. Product-by-process claims are not limited to the manipulations of the recited steps but only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I).
In light of above, presently cited claims are anticipated by the reference.
Claims 34-41 are rejected under 35 U.S.C. 103 as being unpatentable over
Kodemura et al. (US 2021/0388199 A1).
Kodemura teaches a latex of a styrene-based block copolymer having an insoluble content in toluene of 30 to 95 wt.% for use in dip molded articles, e.g., gloves and condoms, wherein said block copolymer amount insoluble content can be obtained by performing cross-linking, i.e., pre-crosslinking (Ab., [0060]-[0062], [0067]-[0069], [0096]-[0097]). Additionally, disclosed crosslinking agents include sulfur donors and dithiocarbamic acid zinc salts as crosslinking accelerators, e.g., [0080]-[0082].
Disclosed method for forming films includes immersing a mold in the latex of the styrene-based block copolymer; pulling the mold and drying it, crosslinking and removing the product from the mold [0086]-[0095].
Disclosed Examples 1-4 rely on a latex of styrene-isoprene-styrene block copolymer having an insoluble content in toluene of 30 to 95 wt.%. A dip molded article of Example 2 is formed by carrying out crosslinking from pre-crosslinking styrene-isoprene-styrene block copolymer, and has a tensile strength of 30 MPa, an elongation (at failure) of 1100% and a tear strength of 34 N/m2 (TABLE 1).
Kodemura is silent on an elastomeric article formed from prevulcanized compounded latex having the claimed relaxed modulus and formed from a rubber latex, a sulfur donor and a dithiocarbamate as claimed.
At the outset, it is noted 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching on Kodemura on styrene-based block copolymer having an insoluble content in toluene of 30 to 95 wt.% for forming dip molded articles, that a styrene-based block copolymer having such an insoluble content can be obtained by performing cross-linking, and the teaching on suitable crosslinking agents and accelerators for crosslinking a styrene-based block copolymer, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to crosslink a styrene-isoprene-styrene block copolymer with a sulfur donor and dithiocarbamate to provide for copolymer having insoluble content of 30 to 95 wt.%, i.e., a providing for a pre-crosslinked polymer.
Additionally, although Kodemura is silent on the relaxed modulus the prevulcanized compounded latex, incorporating the discussion on product-by-process claims from paragraph 7 above, a skilled artisan would have found it obvious to prepare a elastomeric article by dip molding process, and reasonably expect the same to have the claimed properties on the basis that materials and their properties are inseparable, absent evidence to the contrary.
Claims 34-41 are rejected under 35 U.S.C. 103 as being unpatentable over
Kodemura et al. (US 2021/0388199 A1) in view of McGlothlin et al. (US 6,569,375 B1).
This is an alternative to the rejections above based on Kodemura reference alone.
Incorporating the discussion on Kodemura from paragraph 9 above, Kodemoura teaches that the styrene-isoprene block copolymer having the toluene insoluble content of 30 to 95 wt % can be obtained by performing cross-linking, that in the cross-linking reaction, a known polymerization initiator can be used and that a radical polymerization initiator is preferably used ([0063], Examples).
Kodemura is silent on an elastomeric article formed from a prevulcanized compounded latex composition having claimed relaxed modulus and formed from a rubber latex, a sulfur donor and a dithiocarbamate as claimed.
As stated in paragraph 11 above, 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 a related field of endeavor, the secondary reference to McGlothlin, drawn to vulcanization of dip molded articles, teaches synthetic lattices therefor, and that prevulcanization can be done by peroxide prevulcanization or sulfur prevulcanization, i.e., equivalence of the two methods (Ab., col. 6, lines 31-35, col. 9, lines 36-50). Disclosed sulfur-based vulcanization systems include sulfur-containing compounds and zinc alkyl dithiocarbamates (col. 7, line 64-col. 8, line 7).
Given the teaching in McGlothlin on a peroxide prevulcanization and a sulfur prevulcanization to be equally suitable for conducting prevulcanization, the teaching in Kodemura on providing suitable block polymers, that the prescribed toluene insoluble content in the block polymer can be obtained by cross-linking and the teaching on dip molded articles thereof, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to perform a sulfur prevulcanization to provide for Kodemura’s a styrene-isoprene block copolymer having a insoluble content 30-95%. It is prima facie obvious to substitute equivalents known for the same purpose, so long as the equivalency is recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
The cited references are silent on the relaxed modulus of prevulcanized compounded latex. Incorporating the discussion on product-by-process claims from paragraph 7 above, skilled artisan would have found it obvious to form a dip molded article formed from a block copolymer having an insoluble content of 30-95% and formed by sulfur vulcanization (using claimed sulfur donor and a dithiocarbamate), for e.g., as in Example 2 of Kodemura, and reasonably the article to have the claimed properties on the basis that material and their properties are inseparable, absent evidence to the contrary.
Claims 34-36, 42 are rejected under 35 U.S.C. 103 as being unpatentable over
Simpson et al. (US2020/0062879 A1).
Simpson teaches a polymer latex composition comprising a polymer of a diene monomer and a nitrile monomer (Ab), allowing said latex to mature in the presence of at least one thiocarbonyl-functional compound and optionally compounding the matured latex polymer with one or more crosslinking agent, and use of such latex compositions for forming rubber articles, e.g., gloves and condoms (Ab., [0001], [0033]-[0044], [0143]).
Disclosed method for making the rubber article comprises providing a curable latex composition, immersing a mold treated in a coagulant bath in the curable polymer latex composition, removing the mold, heat treating the latex coated mold obtained and removing the formed article from the mold ([0189]-[0192], ref. claim 28).
According to Simpson, maturing means a process causing a chemical modification of the raw polymer latex by exposure to the thiocarbonyl-functional compound(s) at defined conditions for a certain duration, i.e., at 35oC to 100oC for a duration of at least 3 min to no more than 40 hours [0089]-[0092].
Disclosed thiocarbonyl-functional compounds comprise one or two -C=S- groups, e.g., dithiocarbamates [0094], [0101], and thiurams ([0107]-[0110] ref. claims 6-10), i.e., suggests equivalence thereof. Disclosed genus of thiurams include, for e.g., tetramethylthiuram disulfide (TMTD), dipentamethylenethiuram tetrasulfide and dipentamethylenethiuram hexasulfide. It is noted that per instant disclosure, at least one sulfur donor may be a thiruram and can include one or both of dipentamethylenethiuram tetrasulfide and dipentamethylenethiuram hexasulfide (page 3). Thus, Simpson teaches sulfur donors of the instant invention and dithiocarbamates as suitable thiocarbonyl-functional compounds.
The latex films of inventive Examples (Tables 1, 2) include those formed a acrylonitrile-butadiene-acrylic acid polymer, and thiurams, e.g. tetramethylthiuram disulfide (TMTD), and have a tensile strength that meets the claimed lower limit.
Simpson is silent on an elastomeric article formed from prevulcanized compounded latex having claimed relaxed modulus and comprising a rubber latex, a sulfur donor and a dithiocarbamate as claimed.
As stated in paragraph 11 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists.
Given the teaching in Simpson on thiurams and dithiocarbonates as equally suitable for thiocarbonyl-functional compounds, and the teaching on maturing of polymer latex in the presence of at least one thiocarbonyl-functional compound and conditions therefor, for forming dipped molded articles, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to mature a latex with a combination of a thiuram and dithiocarbonate under the prescribed conditions. It is prima facie obvious to combine equivalent materials when the equivalence is recognized by the prior art. See MPEP 2144.06.
Additionally, although Simpson is silent on an article formed from a prevulcanized compounded latex having the claimed relaxed modulus, incorporating the discussion from paragraph 7 above on product-by-process claims, a skilled artisan would have found it obvious to form a dip molded article formed from a matured latex formed using a combination of thiocarbonyl-functional compounds, for e.g., a thiuram and dithiocarbonate, and reasonably expect the article to have the claimed tensile strength on the basis that material and their properties are inseparable, absent evidence to the contrary.
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 34-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 12528936 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘936 claim 1 is drawn to a elastomeric article formed from a prevulcanized compounded latex comprising components of the claimed invention having the claimed relaxed modulus, as formed by a method encompassing claimed steps, wherein said article is a condom having properties as recited in instant claims 37-40. Thus, the articles of instant claims 34, 35, 37-41 are encompassed by that of patent claim 1. Likewise, the article of instant claim 42 is encompassed by patent claim 2.
Additionally, while the claimed lower limit of 30 Mpa for the tensile strength differs from that of patent claim 1 (of greater than 28 Mpa), it is of overlapping scope. As stated in paragraph 11 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists
Claims 34-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. US 12,509,572 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US '572 patent claims are drawn to a method of preparing an elastomeric article by preparing a SIS polymer latex, prevulcanizing to relaxed modulus of 0.50-0.61 MPa, dipping the prevulcanized composition onto a former, and curing to form an elastomeric article (patent claim 1), wherein said prevulcanized composition is prepared form a compounded polymer latex composition comprising compounding the SIS polymer latex with at least one sulfur donor and at least one dithiocarbamate (patent claim 12), and the elastomeric article has one or more of a tensile strength of about 25 MPa or greater when measured in accordance with ASTM D412; a tensile modulus at 500% elongation of less than 2.5 MPa when measured in accordance with ASTM D412; a tear strength of at least 1.5 N/mm when measured in accordance with ASTM D624-000; a Young's modulus (E') that is less than 1 MPa at a frequency of 1 Hz and that is greater than 1 MPa at a frequency of 21.5 Hz; and an elongation at break of about 1100% or greater (patent claim 14).
Although US '572 claims a method, the method silent as claimed in one single embodiment, it would have been obvious to one of ordinary skill in the art to form an elastomeric article of the presently claimed invention from the patent claims. As stated in paragraph 11 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
