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 .
Examination Note on Special Status
This application is participating in the Patent Prosecution Highway (PPH) pilot program, following a request and petition under 37 C.F.R. 1.102(a), filed 25 September 2024, which were granted on 08 October 2024.
Applicant is reminded that applications examined as part of the PPH program have additional requirements and are subject to special examination procedures.
Response to Amendment
This office action is responsive to the amendment filed on 03 March 2026. As directed by the amendment: claims 21-30 have been added. Claim 16 was cancelled by a previous amendment. Thus, claims 1-15 & 17-30 are presently pending in this application.
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.
Claim 22 is 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.
Claim 22 recites “wherein the silanol condensation catalyst is a metal carboxylate of tin including only one or more selected from the group consisting of dioctyltin dilaurate, alkylnaphthylsulfonic acid, and ethylhexyl phosphate”, which renders the claim indefinite.
In particular, while dioctyltin dilaurate is a recognized metal carboxylate of tin, the other two listed compositions, alkylnaphthylsulfonic acid and ethylhexyl phosphate, are not understood to be metal carboxylates of tin and, indeed, do not necessarily include tin (though metal salts, including tin salts, of such sulfonic and phosphoric compounds may exist; e.g., see US 2002/0035213 A1 to Blank et al.).
This error is likely a misinterpretation of applicant’s specification. Paragraph 82 (lines 1-5) of the US publication of this application (US 2025/0109808 A1) reads:
“The silanol condensation catalyst is preferably a metal organic acid salt, sulfonic acid, or a phosphoric acid ester, and more preferably a metal carboxylate of tin such as dioctyltin dilaurate, alkylnaphthylsulfonic acid, and ethylhexyl phosphate.”
Applicant (or applicant’s representative) likely interpreted “more preferably a metal carboxylate of tin such as dioctyltin dilaurate, alkylnaphthylsulfonic acid, and ethylhexyl phosphate” as meaning that “a metal carboxylate of tin” was preferred, with each of the three subsequent compounds being examples of such. However, as understood, the paragraph was likely intended to be interpreted such that (A) “a metal carboxylate of tin such as dioctyltin dilaurate”, (B) “alkylnaphthylsulfonic acid”, and (C) “ethylhexyl phosphate” are preferred examples of the previous recited (A) metal organic acid salt, (B) sulfonic acid, and (C) phosphoric acid ester, respectively.
This is further supported by paragraphs 74, 75 & 81 of the US publication:
Para. 74 recites: “Examples of the silanol condensation catalyst include, but not limited to, a metal organic acid salt, … an organic acid, and an inorganic acid ester”.
Para. 75 recites “Examples of the metal organic acid salt include, but not limited to, dibutyltin dilaurate…”;
Para. 81 recites: “Examples of the organic acid include, but not limited to … sulfonic acid such as alkylnaphthylsulfonic acid. Examples of the inorganic acid ester include, but not limited to, a phosphoric acid ester”.
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.
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.
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 1-5, 8, 11, 19 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa et al. (US 5,910,544; cited in applicant’s IDS filed 1/23/2025, hereafter Ozawa) in view of Bickert et al. (US 6,235,848; hereafter Bickert).
Examination note: claims 5 & 11 recite substantially the same limitations except that claim 5 depends from claim 1 while claim 11 depends from claim 4. For brevity, the rejections of claims 5 & 11 are combined below.
Regarding claim 1, Ozawa discloses (figs. 2a & b) a hose (20) for refrigerant transportation (e.g., see col. 1, lines 11-12: “hoses for the transport of a refrigerant”), the hose comprising:
an outer layer (28; “outer cover”);
a reinforcing layer (26; “fiber reinforcing layer”); and
an inner layer (22; “inner tube 22”).
Ozawa further discloses (throughout; e.g., fig. 1(a)) various resin compositions which may be used to form the inner layer and/or the outer layer of the hose (col. 17, lines 29-34 & 41-43) but further suggests that “in the hose of the present invention, various types of materials used for known hoses may all be used for the tubes (or layers) not using the thermoplastic elastomer of the present invention” (col. 17, lines 62-65).
Regarding the limitations of the outer layer being composed of a resin composition containing elastomer having a polyisobutylene backbone and crosslinked resin, a content of the elastomer having a polyisobutylene backbone in the resin composition being 30 mass% or more and 90 mass% or less with respect to a mass of the resin composition, and a content of the crosslinked resin in the resin composition being 10 mass% or more and 70 mass% or less with respect to the mass of the resin composition, the resin compositions disclosed by Ozawa (which may be used for either of the inner or outer layers) generally comprise a thermoplastic elastomer composition comprising an elastomer component (12 in fig. 1a; which may be dynamically crosslinked, col. 4, lines 24-34) and a thermoplastic resin component (10 in fig. 1a).
For the elastomer component of the composition, Ozawa discloses (e.g., col. 24, lines 8-19) a number of possible elastomers including several elastomers having a polyisobutylene backbone including chlorinated butyl rubber (Cl-IIR), brominated butyl rubber (Br-IIR), and brominated isobutylene and p-methylstyrene copolymer (Br-IPMS).
Ozawa provides particularly extensive disclosure about the usage of brominated (halogenated) isobutylene and p-methylstyrene copolymer rubber, which is otherwise notated as X-IPMS. See, e.g., col. 12 & col. 13, generally. In col. 13, lines 16-18, Ozawa suggests that such a suitable X-IPMS material “is commercially sold by Exxon Chemical under the brand name EXXPRO”. Ozawa also discloses that the brominated butyl rubber may be commercially available Exxon Bromobutyl 2244 (e.g., see table in col. 52).
Examination Note: applicant’s specification identifies brominated isobutylene and p-methylstyrene copolymer and, in particular, a grade of “EXXPRO” from ExxonMobil, as an example of a suitable “butyl rubber” (pg. 16, lines 16-17). Applicant’s specification also identifies a grade of “Exxon Bromobutyl” as an example of a suitable brominated butyl rubber (pg. 16, lines 13-14).
With respect to the resin of the composition, Ozawa discloses (e.g., col. 19, line 45 – col. 20, line 10) that the composition may comprise, in combination with the elastomer, a thermoplastic resin such as a polyolefin (including polyethylene [e.g., HDPE, UHMWPE] or polypropylene [PP]) or a polyamide (e.g., nylon 6, nylon 12, etc.), among others.
Regarding the limitations wherein a content of the elastomer having a polyisobutylene backbone in the resin composition is 30 mass% or more and 90 mass% or less with respect to a mass of the resin composition, and wherein a content of the [crosslinked] resin in the resin composition is 10 mass% or more and 70 mass% or less with respect to the mass of the resin composition, Ozawa discloses (col. 20, lines 11-22) that the elastomer may be provided in a range from 10-85%, preferably from 15-85% of the composition, while the thermoplastic resin may be provided from 15-90%, preferable from 15-85% of the composition. (Note: Ozawa uses weight% rather than mass%, however, as would be understood by a person of ordinary skill in the art, as long as the invention is being practiced in an environment with gravity, as on Earth, the weight% and the mass% are substantially equivalent).
Ozawa explains that decreasing the proportion of elastomer may undesirably reduce flexibility of the resulting composition, while decreasing the proportion of thermoplastic resin may undesirably reduce the barrier properties of the composition (see also col. 23, lines 7-15).
Ozawa later provides specific examples of resin compositions comprising a content of elastomer having a polyisobutylene backbone (e.g., IIR, Cl-IIR, X-IPMS) of 30% or more and 90% or less and a content of thermoplastic resin of 10% or more and 70% or less (e.g., see Table I-1: most examples show a 50-50 composition, and Ex. I-3 shows an 85% elastomer, 15% resin composition).
Thus, in view of the above, Ozawa reasonably discloses the outer layer being composed of a resin composition containing elastomer having a polyisobutylene backbone (e.g., X-IPMS, or IIR, or Cl-IIR) and resin (e.g., a polyolefin such as polypropylene), a content of the elastomer having a polyisobutylene backbone in the resin composition being 30 mass% or more and 90 mass% or less with respect to a mass of the resin composition (e.g., 50% or 85%, or otherwise within the range of 15-85% which significantly overlaps the claimed range), and a content of the resin in the resin composition being 10 mass% or more and 70 mass% or less with respect to the mass of the resin composition (e.g., 15% or 50%, or otherwise within the range of 15-85%, which significantly overlaps the claimed range).
Ozawa does not explicitly disclose the additional limitation wherein the resin in the resin composition is a crosslinked resin.
Bickert teaches a resin composition containing (a) a “thermoplastic” and (b) a silane modified poly-α-olefin crosslinkable resin (see abstract).
Bickert suggests that the “thermoplastic” component (a) may be, e.g., a rubber (col. 3, lines 9-12) and lists “butyl rubber” among the preferable rubbers (col. 3, lines 51-55).
Bickert suggests that the “silane modified poly-α-olefin crosslinkable resin” component (b) may be a silane-modified polypropylene (e.g., “atactic polypropylene)(col. 3, line 61 – col. 4, line 3).
Bickert explains that the crosslinked resin in the resin composition can be crosslinked via exposure to water vapor, steam, hot water, etc., wherein said crosslinking can be carried out on the resulting shaped article (col. 4, line 59 – col. 5, line 4).
Bickert teaches that crosslinking the resin results in a material with a higher heat deflection temperature, improved tensile strength, and stabilized phase morphology (col. 5, lines 5-9).
Bickert also suggests (col. 5, lines 45-62) that the crosslinked resin (b) may form “a three dimensional network” (i.e., a matrix), which can reduce creep, elastic recovery, and impact strength of the resulting material, particularly when the components (a) and (b) are in separate phases.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa such that the resin component of the resin composition of the outer layer is a crosslinked resin (e.g., silane-modified polypropylene), in view of the teachings of Bickert, to provide the resin composition of the resulting outer layer with a higher heat deflection temperature, improved tensile strength, creep, elastic recovery, and impact strength, stabilized phase morphology, and reduced creep, as suggested by Bickert.
Regarding the remaining limitations of a water vapor permeability of the resin composition being 2.0 g.mm/(m2 • 24h) or less, and a ratio TB100/TB25 of a strength at break TB100 of the resin composition at 100°C to a strength at break TB25 of the resin composition at 25°C being from 0.2 to 1.0, these are understood to be material properties of the resin composition used to form the outer layer, and the combination of Ozawa and Bickert above renders obvious the claimed outer layer resin composition containing an elastomer having a polyisobutylene backbone (e.g., a butyl rubber or modified butyl rubber) and crosslinked resin (e.g., silane-modified polypropylene), a content of the elastomer having a polyisobutylene backbone in the resin composition being 30 mass% or more and 90 mass% or less with respect to a mass of the resin composition (e.g., 50% or 85%, or otherwise within 15-85% which overlaps the claimed range), and a content of the crosslinked resin in the resin composition being 10 mass% or more and 70 mass% or less with respect to the mass of the resin composition (e.g., 15% or 50%, or otherwise within 15-85%, which overlaps the claimed range).
As set forth in MPEP § 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See also MPEP § 2112(I-V).
As described above, the claimed resin composition for the outer layer as set forth in claim 1 is rendered obvious by the combination of Ozawa and Bickert. Moreover, even beyond the broad genus of the resin composition including the broadly recited “elastomer having a polyisobutylene backbone” and “crosslinked resin” components set forth in claim 1, Ozawa and Bickert also render obvious particular species of the elastomer and crosslinked resin as disclosed in applicant’s specification and/or as set forth in further dependent claims (e.g., the crosslinked resin being a silane-modified polyolefin and, in particular, a silane-modified polypropylene, as in claims 2-4; the elastomer having a polyisobutylene backbone being a dynamically crosslinked butyl rubber or modified butyl rubber as in claims 5 & 11; Ozawa particularly disclosing that the elastomer may be a brominated isobutylene-p-methylstyrene copolymer rubber under the brand name EXXPRO, as also disclosed in applicant’s specification).
Since the claimed resin composition is the same as those disclosed or rendered obvious by the prior art, the properties disclosed and/or claimed, such as the water vapor permeability and the TB100/TB25 strength-at-break ratio, are considered to be necessarily present.
Similarly, as set forth in MPEP § 2112.01(I), for product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. “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”. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
See also MPEP § 2114(I).
As set forth above, a hose for refrigerant transportation comprising the structure set forth in claim 1 and the corresponding resin composition for the outer layer as set forth in claim 1 are both rendered obvious by the combination of Ozawa and Bickert. Since the structure and resin composition of such a refrigerant-transporting hose is disclosed or otherwise obvious, a prima facia case of obviousness has been established, even if the references do not explicitly disclose the specific properties claimed.
As a result, all of the limitations of claim 1 are met, or are otherwise rendered obvious.
Regarding claims 2-4, the hose of Ozawa, as modified above, reads on the additional limitations wherein the crosslinked resin is crosslinked silane-modified resin obtained by modifying thermoplastic resin with a silane compound (claim 2), wherein the crosslinked resin is crosslinked silane-modified polyolefin obtained by modifying polyolefin with a silane compound (claim 3), and wherein the crosslinked resin is crosslinked silane-modified polypropylene obtained by modifying polypropylene with a silane compound (claim 4).
In particular, as set forth for claim 1 above, Bickert teaches that such a crosslinked resin may be a crosslinked silane-modified polypropylene (a type of polyolefin) obtained by modifying (i.e., grafting) polypropylene (e.g., “atactic polypropylene”; col. 3, line 61) with a silane compound (e.g., vinyltrimethoxysilane [VTMO], vinyltriethoxysilane, etc.; see col. 4, lines 38-45).
Regarding claims 5 & 11, the hose of Ozawa, as modified above, reads on the additional limitations wherein the elastomer having a polyisobutylene backbone is butyl rubber or modified butyl rubber (e.g., a chlorinated butyl rubber [Cl-IIR], a brominated butyl rubber [Br-IIR] such as Exxon Bromobutyl 2244, or X-IMPS, such as that sold under the name EXXPRO; see cols. 12-13, col. 24, lines 8-19, table in col. 52, etc.), and the elastomer having a polyisobutylene backbone is dynamically crosslinked (e.g., see col. 4, lines 24-34; col. 15, lines 51-54; col. 16, lines 2-4; col. 16, lines 40-47; col. 24, lines 29-36, etc.).
Regarding claim 8, Ozawa discloses the additional limitation wherein the reinforcing layer (26) contains a polyester fiber, a polyamide fiber, an aramid fiber, a PBO fiber, a vinylon fiber, or a rayon fiber.
In particular, Ozawa discloses “the fiber reinforcing layer 26 may be a normally used braid layer formed by reinforcing yarn, a cord type (spiral type), net type, or film type reinforcing layer. The reinforcing yarn used may be a natural fiber or synthetic fiber. More specifically, a vinylon, aliphatic polyamide, aromatic polyamide, nylon, rayon, polyamide, polyester, or other yarn may be used. In particular, rayon and polyester are more preferred” (col. 17, line 66 – col. 18, line 6; see also col. 21, line 61 – col. 22, line 3).
Regarding claim 19, Ozawa discloses the additional limitation wherein a thickness of the reinforcing layer (26) is less than a thickness of each of the inner layer (22) and the outer layer (28) (see fig. 2b).
Examination Note: claim 19 originally required the reinforcing layer to have a thickness “greater than” a thickness of each of the inner layer and outer layer. In applicant’s previous remarks filed 27 May 2025, while attempting to distinguish then-new claim 19 from Ozawa, applicant stated “The only relevant disclosure of Ozawa is an illustration that the reinforcing layer thickness has a significantly smaller thickness than the inner and outer layer thicknesses”. That claim was subsequently rejected in the previous action in view of additional teachings of Huang et al. (US 2019/0056046 A1). Now, to overcome that rejection, applicant has amended claim 19 to read “less than” rather than “greater than”. However, this corresponds to the original arrangement already shown by Ozawa, as acknowledged in applicant’s 27 May 2025 remarks.
Regarding claim 20, with respect to the limitations wherein the resin composition further comprises a silanol condensation catalyst, Bickert further teaches that crosslinking may be accelerated by use of an accelerator (i.e., a catalyst), for example, “dibutyltin dilaurate”, added to the molding material (col. 5, lines 19-29).
Note: applicant’s own specification identifies “dibutyltin dilaurate” as silanol condensation catalyst and, in particular, a metal organic acid type [see paras. 27-28 of applicant’s original specification: “Examples of the silanol condensation catalyst include, but not limited to, a metal organic acid salt…”, “Examples of the metal organic acid salt include, but not limited to, dibutyltin dilaurate…”].
With respect to the further limitation wherein a content of the silanol condensation catalyst is from 0.0001 to 0.5 parts by mass with respect to 100 parts by mass of the crosslinked resin, Bickert further teaches that the content of the silanol condensation catalyst (“crosslinking accelerator”) added is preferably an amount which results in the crosslinked resin having a content of 0.0001 to 1% (Note I: percent [%] means parts per hundred; Note II: Bickert uses weight% rather than mass%, however, as would be understood by a person of ordinary skill in the art, as long as the invention is being practiced in an environment with gravity, as on Earth, the weight% and the mass% are substantially equivalent in this context).
In other words, Bickert teaches that a content of the silanol condensation catalyst is from 0.0001 to 1 parts [by mass/weight] with respect to 100 parts [by mass/weight] of the crosslinked resin, which encompasses or otherwise substantially overlaps the claimed ranged of from 0.0001 to 0.5 parts catalyst per 100 parts crosslinked resin.
As set forth in MPEP § 2144.05(I): “[i]n 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).”;"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Furthermore, it is noted that applicant’s specification does not appear to set forth any evidence of criticality or unexpected results particularly attributable to the use of the somewhat narrower claimed range. Rather, the specification clearly states that the content of the silanol condensation catalyst is not limited to the stated range and such a range is merely a preference (see para. 30 of applicant’s original specification: “The content of the silanol condensation catalyst is not particularly limited but is preferably from 0.0001 to 0.5 parts by mass…”).
Finally, as set forth in MPEP § 2144.05(II)(A): generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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)”.
In view of the above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify hose of Ozawa (as otherwise modified above) such that the resin composition further comprises a silanol condensation catalyst (e.g., dibutyltin dilaurate), in view of the teachings of Bickert, to accelerate the crosslinking process, and to provide the silanol condensation catalyst in any reasonable quantity which results in a content of the condensation catalyst in the crosslinked resin of from 0.0001 to 1% (as suggested by Bickert) as may be desired for a particular application, including quantities which result in a content of the condensation catalyst being from 0.0001 to 0.5 parts by mass with respect to 100 parts by mass of the crosslinked resin, especially considering that it in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, and further considering that it has been held that "[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).
Claims 6, 7, 9, 10 & 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa in view of Bickert as applied to claims 1 & 11 above (as appropriate), and further in view of Jackson et al. (US 2010/0227966 A1; hereafter Jackson).
Examination note: claims 6 & 7 recite substantially the same limitations as claims 12 & 13, respectively, except that they depend from different preceding claims. Claims 9 & 15 also recite similar subject matter except that claim 15 recites more specific materials. For brevity, the rejections of corresponding claims are combined below, with any differences noted therein.
Regarding claims 6 & 12, Ozawa further discloses that the resin composition may contain an anti-aging agent (e.g., an antioxidant / heat stabilizer, etc.; see col. 13, line 66 – col. 14, line 6; col. 15, lines 36-41; col. 21, lines 41-50; col. 24, lines 20-27, etc.).
Bickert also teaches that such a resin composition may comprise an anti-aging agent (i.e., a stabilizer) and, in particular, teaches the use of IRGANOX® 1076 (col. 7, lines 31-32).
Note: IRGANOX® 1076 is a commercially available hindered-phenol antioxidant stabilizer. In applicant’s own disclosure, a similar “IRGANOX 1010” is suggested as a hindered-phenol based an anti-aging agent.
Ozawa and Bickert do not explicitly disclose that the resin composition contains 1 mass% or more and 4 mass% or less of the anti-aging agent with respect to the mass of the resin composition.
Jackson teaches (e.g., see abstract) a moisture-crosslinkable silane-modified polyolefin resin composition, particularly polyethylene and polypropylene based resins (see para 1) which may be usable for coatings or insulating materials for, e.g., high temperature pipelines, tubing, etc. It is noted that Jackson also suggests that, in addition to the polyolefin components, the resin composition may contain a “compatibilizer”, which may be “butyl rubber” (para. 42).
Jackson teaches that such a resin composition may comprise an anti-aging agent (e.g., antioxidants; e.g., para. 15 & 41). Jackson elaborates (para. 45): “The antioxidant stabiliser may be chosen from any suitable antioxidant or blend of antioxidants designed to prevent degradation of the composition during melt processing and subsequent heat aging of the final product. Examples of suitable antioxidants and heat stabilisers include those classes of chemicals known as hindered phenols, hindered amines, phosphites, bisphenols, benzimidazoles, phenylenediamines, and, dihydroquinolines. These may be added in amounts of about 0.1 to 5% by weight of the composition, depending upon the aging properties required and the type and quantity of optional destabilizing ingredients in the composition, for example halogenated flame retardants or mineral fillers.”
In table 1 on page 6, Jackson provides examples having either 2.66 or 2.9 parts by weight relative to 100 parts by weight of the resins (e.g., 2.5% or 2.7% by weight, factoring in other components of the resin composition).
It is noted that the range suggested by Jackson of between 0.1% and 5% by weight (i.e., by mass) encompasses the claimed range of 1 mass% or more and 4 mass% or less.
As set forth in MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa, as otherwise modified above, by providing the resin composition with the anti-aging agent (e.g., an antioxidant stabilizer, such as a hindered phenol antioxidant) in an amount of 1 mass% or more and 4 mass% or less of the anti-aging agent with respect to the mass of the resin composition (e.g., ~2.5% or ~2.7%, or otherwise within the disclosed range of 0.1% to 5% which encompasses the claimed range), in view of the teachings of Jackson, to prevent degradation of the composition during melt processing and any subsequent heat aging of the final product.
See also MPEP § 2144.05(II)(A), "[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).
As above, Jackson teaches that the amount of anti-aging agent in the composition may vary within the range of about 0.1% to 5% by weight of the composition “depending on the aging properties requires, and the type and quantity of optional destabilizing ingredients in the composition” (para. 45). Thus, if not already seen as such, it would have been obvious to a person having ordinary skill the art before the effective filing date of the claimed invention to provide an amount of anti-aging agent in the resin composition from 1 mass% or more to 4 mass% or less, in view of the teachings of Jackson, as a matter of routine experimentation within the broader disclosed range of 0.1% to 5%, based upon the required aging properties and the type and quantity of any destabilizing ingredients in the composition for a particular application (as further suggested by Jackson).
As a result, all of the limitations of claims 6 & 12 are met, or are otherwise rendered obvious.
Regarding claims 7 & 13, Ozawa discloses the additional limitations wherein
the inner layer (22) is composed of a thermoplastic resin composition (e.g., as shown in fig. 1a; as previously noted, Ozawa discloses that such thermoplastic resin compositions may be used for the inner and/or outer layers of such a hose: col. 17, lines 29-34 & 41-43),
the thermoplastic resin composition has an islands-in-the-sea structure (see fig. 1a) in which elastomer (12) is present as a domain in a matrix containing the thermoplastic resin (10).
Ozawa further discloses that the thermoplastic resin may be a polyamide (e.g., a nylon; see abstract: “a polyamide thermoplastic resin”; col. 10, lines 13-35, etc.). Ozawa discloses that the thermoplastic resin can be one polyamide (e.g., nylon 6, nylon 66, nylon 11, nylon 12, etc..) or may be a blend of two, three, four, five or more such polyamides (col. 10, line 39 – col. 11, line 41). As best understood, in these instances where the thermoplastic resin component is provided only as one or more polyamide resins, the thermoplastic resin contains approximately 100 mass% of polyamide with respect to the mass of the thermoplastic resin. In each of the examples in Table I-1, the thermoplastic resin component (i.e., component A) of each composition appears to be entirely constituted by one or more polyamides (N6, N612, N12). Even if accounting for reasonable amounts of various routine additives (which does not appear to have been intended for this claim), the thermoplastic resin would still be understood to contain 50 mass% or more and 100 mass% or less of polyamide with respect to the mass of the thermoplastic resin.
As previously detailed in the grounds of rejection for claim 1, Ozawa further discloses that the elastomer may be (i.e., may contain) the elastomer having a polyisobutylene backbone (e.g., X-IPMS, Cl-IIR, Br-IIR, IIR, etc.).
Regarding the limitation wherein a content of the elastomer is 30 mass% or more and 80 mass% or less with respect to the mass of the thermoplastic resin composition, as also previously noted, Ozawa discloses (col. 20, lines 11-22) that the elastomer may be provided in a range from 10-85%, preferably from 15-85% of the composition. (Note: Ozawa uses weight% rather than mass%, however, as would be understood by a person of ordinary skill in the art, as long as the invention is being practiced in an environment with gravity, as on Earth, the weight% and the mass% are substantially equivalent).
Ozawa explains that decreasing the proportion of elastomer may undesirably reduce flexibility of the resulting composition, while decreasing the proportion of thermoplastic resin may undesirably reduce the barrier properties of the composition (see also col. 23, lines 7-15).
Ozawa later provides specific examples of resin compositions comprising a content of elastomer having a polyisobutylene backbone (e.g., IIR, Cl-IIR, X-IPMS) of 30% or more and 80% or less and a content of thermoplastic resin of 10% or more and 70% or less (e.g., see Table I-1: most examples show a 50-50 composition).
Ozawa also discloses that the thermoplastic resin composition may further contain an anti-aging agent (i.e., an antioxidant stabilizer) and a processing aid (see col. 13, line 66 – col. 14, line 6; col. 15, lines 36-41; col. 21, lines 41-50; col. 24, lines 20-27, etc.).
Ozawa does not appear to explicitly disclose the anti-agent agent being a phenylenediamine-based or quinoline-based anti-aging agent.
As cited in the grounds of rejection for claims 6 & 12 above, Jackson teaches that a resin composition may comprise an anti-aging agent (e.g., antioxidants; e.g., para. 15 & 41), and elaborates (para. 45): “The antioxidant stabiliser may be chosen from any suitable antioxidant or blend of antioxidants designed to prevent degradation of the composition during melt processing and subsequent heat aging of the final product. Examples of suitable antioxidants and heat stabilisers include those classes of chemicals known as hindered phenols, hindered amines, phosphites, bisphenols, benzimidazoles, phenylenediamines, and, dihydroquinolines.” Thus, Jackson reasonably teaches that phenylenediamine-based and quinoline-based (i.e., dihydroquinoline-based) anti-aging agents are known and are suitable for use as an antioxidant / heat stabilizer for resin compositions.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa, as otherwise modified above, such that the anti-aging agent of the thermoplastic resin composition of the inner layer is a phenylenediamine-based or quinoline-based anti-aging agent, in view of the teachings of Jackson, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
As a result, all of the limitations of claims 7 & 13 are met, or are otherwise rendered obvious.
Regarding claim 14, Ozawa discloses the additional limitation wherein the reinforcing layer (26) contains a polyester fiber, a polyamide fiber, an aramid fiber, a PBO fiber, a vinylon fiber, or a rayon fiber.
In particular, Ozawa discloses “the fiber reinforcing layer 26 may be a normally used braid layer formed by reinforcing yarn, a cord type (spiral type), net type, or film type reinforcing layer. The reinforcing yarn used may be a natural fiber or synthetic fiber. More specifically, a vinylon, aliphatic polyamide, aromatic polyamide, nylon, rayon, polyamide, polyester, or other yarn may be used. In particular, rayon and polyester are more preferred” (col. 17, line 66 – col. 18, line 6; see also col. 21, line 61 – col. 22, line 3).
Regarding claims 9 & 15, the above combination of Ozawa, Bickert, and Jackson also renders obvious a method for producing the hose for refrigerant transportation according to (i.e., claim 1 and claim 14), the method comprising:
melt-kneading the elastomer [for claim 9: the elastomer having the polyisobutylene backbone; for claim 15: the butyl rubber or modified butyl rubber] and a crosslinkable resin to prepare the resin composition for the outer layer [for claim 15, the crosslinkable resin being a crosslinkable silane-modified polypropylene]; and
adding a silanol condensation catalyst to the resin composition for the outer layer during hose extrusion molding to obtain a mixture of the resin composition for the outer layer and the silanol condensation catalyst, content of the silanol condensation catalyst being from 0.0001 to 0.5 parts by mass with respect to 100 parts by mass of the crosslinkable resin [the crosslinkable silane-modified polypropylene]; and
extrusion molding the mixture of the resin composition for the outer layer and the silanol condensation catalyst to form the outer layer;
wherein, as a result of the method, the crosslinkable resin [crosslinkable silane-modified polypropylene] becomes the crosslinked resin [crosslinked silane-modified polypropylene], as explained below.
Regarding the first step of melt-kneading the elastomer having the polyisobutylene backbone [the butyl rubber or the modified butyl rubber] and a crosslinkable resin [crosslinkable silane-modified polypropylene] to prepare the resin composition for the outer layer, Ozawa discloses a step of preparing a resin composition which may be used for the outer layer by melt-kneading the elastomer (which may be a butyl rubber or modified butyl rubber, as previously described) and the thermoplastic resin component (which may be a polyolefin, such as a polypropylene, as previously described) so as to disperse the elastomer in a matrix of the thermoplastic resin component and to dynamically crosslink / vulcanize the elastomer (see, e.g., col. 20, lines 23-50).
As set forth for claim 1, Bickert teaches that such a thermoplastic (e.g., polypropylene) resin (b) may be a crosslinkable via silane-modification (see abstract), that such a crosslinkable resin (b) may be melt-mixed with another material (a) (which may be a butyl rubber) such that the crosslinkable resin (b) forms three-dimensional network (i.e., a matrix; see, e.g., col. 5, lines 45-67), and suggests that mixing of resin compounds may be performed by kneaders or extruders (col. 6, lines 66-67).
Thus, as can be seen, when the thermoplastic resin of the resin for the outer layer composition of Ozawa is modified in view of Bickert as set forth in the grounds of rejection for at least claim 1 above such that the resin is a crosslinkable silane-modified polypropylene resin, the corresponding step of melt-kneading the elastomer having the polyisobutylene backbone [e.g., butyl rubber or modified butyl rubber] and a resin to prepare the resin composition for the outer layer of Ozawa would read on the step of melt-kneading the elastomer having the polyisobutylene backbone [the butyl rubber or the modified butyl rubber] and a crosslinkable resin to prepare the resin composition for the outer layer, [the crosslinkable resin being a crosslinkable silane-modified polypropylene].
Regarding the steps of adding a silanol condensation catalyst to the resin composition for the outer layer during hose extrusion molding to obtain a mixture of the resin composition for the outer layer and the silanol condensation catalyst, content of the silanol condensation catalyst being from 0.0001 to 0.5 parts by mass with respect to 100 parts by mass of the crosslinkable silane-modified polypropylene; and extrusion molding the mixture of the resin composition for the outer layer and the silanol condensation catalyst to form the outer layer; wherein, as a result of the method, the crosslinkable resin [crosslinkable silane-modified polypropylene] becomes the crosslinked resin [the crosslinked silane-modified polypropylene], Ozawa further teaches that the outer layer may be formed by extrusion molding the composition for the outer layer (e.g., see col. 18, lines 10-19; col. 22, lines 25-36; etc.).
Bickert teaches that final crosslinking can be performed on the shaped article (col. 4, line 59 – col. 5, line 1) and further teaches that crosslinking may be accelerated by use of an accelerator (i.e., a catalyst), for example, “dibutyltin dilaurate”, added to the molding material, and suggests that this catalyst can either be added prior to melting (in the form of a “dry blend”) or after melting (col. 5, lines 19-29).
Note: applicant’s own specification identifies “dibutyltin dilaurate” as silanol condensation catalyst and, in particular, a metal organic acid type [see paras. 27-28 of applicant’s original specification: “Examples of the silanol condensation catalyst include, but not limited to, a metal organic acid salt…”, “Examples of the metal organic acid salt include, but not limited to, dibutyltin dilaurate…”].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of making the hose of Ozawa (as otherwise modified above) by adding a silanol condensation catalyst to the resin composition for the outer layer during hose extrusion molding (i.e., after melting the original composition) to obtain a mixture of the resin composition for the outer layer and the silanol condensation catalyst, whereby the subsequent extrusion molding step comprises extrusion molding the mixture of the resin composition for the outer layer and the silanol condensation catalyst to form the outer layer, in view of the teachings of Bickert, to accelerate the later crosslinking process of the crosslinkable resin in the resin composition for the outer layer after forming the hose (i.e., as otherwise suggested by Bickert).
With respect to the limitation wherein a content of the silanol condensation catalyst is from 0.0001 to 0.5 parts by mass with respect to 100 parts by mass of the crosslinkable resin [crosslinkable silane-modified polypropylene], Bickert further teaches that the content of the silanol condensation catalyst (“crosslinking accelerator”) added is preferably an amount which results in the crosslinkable resin having a content of 0.0001 to 1% (Note I: percent [%] means parts per hundred; Note II: Bickert uses weight% rather than mass%, however, as would be understood by a person of ordinary skill in the art, as long as the invention is being practiced in an environment with gravity, as on Earth, the weight% and the mass% are substantially equivalent in this context).
In other words, Bickert teaches that a content of the silanol condensation catalyst is from 0.0001 to 1 parts [by mass/weight] with respect to 100 parts [by mass/weight] of the crosslinkable resin, which encompasses or otherwise substantially overlaps the claimed ranged of from 0.0001 to 0.5 parts catalyst per 100 parts crosslinkable resin.
As set forth in MPEP § 2144.05(I): “[i]n 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).”;"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Furthermore, it is noted that applicant’s specification does not appear to set forth any evidence of criticality or unexpected results particularly attributable to the use of the somewhat narrower claimed range. Rather, the specification clearly states that the content of the silanol condensation catalyst is not limited to the stated range and such a range is merely a preference (see para. 30 of applicant’s original specification: “The content of the silanol condensation catalyst is not particularly limited but is preferably from 0.0001 to 0.5 parts by mass…”).
Additionally, as set forth in MPEP § 2144.05(II)(A): generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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)”.
In view of the above, when modifying the method of Ozawa in view of Bickert as above to include a step of adding a silanol condensation catalyst to the resin composition for the outer layer during hose extrusion molding, it would have been further obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the silanol condensation catalyst in any reasonable quantity which results in a content of the condensation catalyst in the crosslinked resin of from 0.0001 to 1% (as suggested by Bickert) as may be desired for a particular application, including quantities which result in a content of the condensation catalyst being from 0.0001 to 0.5 parts by mass with respect to 100 parts by mass of the crosslinked resin [the crosslinkable silane-modified polypropylene], especially considering that it in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, and further considering that it has been held that "[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).
To promote compact prosecution, it is noted that Jackson also explicitly states that a crosslinkable silane-modified polyolefin resin may be melt-processed with a silanol condensation catalyst to produce a shaped article (para. 39) and identifies a number of silanol condensation catalysts, including the aforementioned dibutyltin dilaurate (para. 40).
Jackson also explicitly teaches a method of forming crosslinkable articles (e.g., tubing) from a silane-modified resin composition, comprising:
Preparing a composition of the silane-modified polyolefin resin and pelletizing the composition (i.e., without the silane condensation catalyst; para. 45);
blending the (previously prepared) silane-modified polyolefin resin with the silane condensation catalyst and antioxidant stabilizer and melt-processing (e.g., extruding / molding) the composition to which the silanol condensation catalyst has been added to form the article (paras. 50 & 51); and
crosslinking the crosslinkable resin by exposing the article to moisture (para. 52).
Thus, if not already seen as such in view of Ozawa and Bickert alone, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method for producing a hose of Ozawa, as otherwise modified above, such that the method comprises melt-kneading the elastomer having a polyisobutylene backbone [butyl rubber or modified butyl rubber] and a crosslinkable resin [crosslinkable silane-modified polypropylene] to prepare the resin composition for the outer layer by, i.e., preparing the base resin composition for the hose outer layer, without the silanol condensation catalyst; and
adding a silanol condensation catalyst to the resin composition for the outer layer during hose extrusion molding to obtain a mixture of the resin composition for the outer layer and the silanol condensation catalyst (i.e., adding the silanol condensation catalyst to a mix melted for supply to the extruder); and
extrusion molding the mixture of the resin composition for the outer layer and the silanol condensation catalyst (i.e., extrusion molding a composition comprising the previously prepared base resin mixture to which the silanol condensation catalyst and other optional ingredients, such as the antioxidant stabilizer, have been added) to form the outer layer, in view of the teachings of Jackson, as the use of a known technique (i.e., adding a silanol condensation catalyst to a previously prepared silane-modified composition in the mixture for final melt processing, as in Jackson) to improve a similar method (i.e., the method of making a hose having a crosslinkable resin outer layer, as in the combination of Ozawa and Bickert) in the same way (e.g., adding the silanol condensation catalyst in the final mix prior to extrusion may enable the silane-modified base resin to be prepared in advance and stored in a pelletized and uncrosslinked state, simplifying the final extrusion process by avoiding the need to silane-graft the resin at the time of production).
As would be understood by a person having ordinary skill in the art, performing the method(s) as set forth above would result in the crosslinkable resin [crosslinkable silane-modified polypropylene] becoming the crosslinked resin [the crosslinked silane-modified polypropylene].
As a result, all of the limitations of claims 9 & 15 are met or are otherwise rendered obvious.
Examination Note: while not relied upon here, to further promote compact prosecution, attention is drawn to GB 1,234,034 & US 3,646,155, which teach methods of making articles from crosslinkable silane-modified compositions incorporating a silanol condensation catalyst.
GB 1,234,034 explains: “If the cross-linkable organic polymer is to be stored for a significant period of time before use premature cross-linking of the polymer may be avoided by storage of the polymer under dry conditions and by delaying the incorporation of the siloxane condensation catalyst” (pg. 4, lines 10-16). US 3,646,155 similarly explains: “In general… we prefer to incorporate the silanol condensation catalyst into the product…only when it is desired to initiate cross-linking of the polyolefin, for example, just prior to shaping the polyolefin into the finished article” (col. 4, lines 35-39).
Thus, it is well-known in the art to add the silanol condensation catalyst during the final shaping process (e.g., mixing the catalyst with a previously prepared silane-modified resin composition just before feeding the mix to the extruder, etc.).
Regarding claim 10, the method of Ozawa, as modified above, reads on the additional limitation wherein the crosslinkable resin is silane-modified resin obtained by modifying thermoplastic resin with a silane compound.
As set forth for at least claim 1 above, Bickert teaches that such a crosslinked resin may be a crosslinked silane-modified polypropylene (a type of polyolefin) obtained by modifying (i.e., grafting) polypropylene (e.g., “atactic polypropylene”; col. 3, line 61) with a silane compound (e.g., vinyltrimethoxysilane [VTMO], vinyltriethoxysilane, etc.; see col. 4, lines 38-45).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ozawa in view of Bickert as applied to claim 1 above or, in the alternative, as unpatentable over Ozawa and Bickert as above and further in view of Kitami et al. (US 5,362,530; hereafter Kitami).
Regarding claim 17, Ozawa discloses the additional limitation wherein the inner layer (22) is composed of an inner layer resin composition containing an inner layer elastomer and an inner layer resin.
As noted for claim 1 above, Ozawa further discloses (throughout; e.g., fig. 1(a)) various resin compositions which may be used to form the inner layer and/or the outer layer of the hose (col. 17, lines 29-34 & 41-43) but further suggests that “in the hose of the present invention, various types of materials used for known hoses may all be used for the tubes (or layers) not using the thermoplastic elastomer of the present invention” (col. 17, lines 62-65).
As noted for previous claims, Ozawa further discloses that the elastomer for such compositions may be, e.g., X-IPMS, Cl-IIR, Br-IIR, or IIR, among others (see also col. 27, line 48 – col. 28, line 9).
With respect to the resin, Ozawa discloses (e.g., col. 19, line 45 – col. 20, line 10) that such compositions may comprise, in combination with the elastomer, a thermoplastic resin such as a polyolefin (including polyethylene [e.g., HDPE, UHMWPE] or polypropylene [PP]) or a polyamide (e.g., nylon 6, nylon 12, etc.), among others.
Regarding the limitation wherein each of the inner layer elastomer and the inner layer resin is different than the elastomer and the crosslinked resin of the resin composition of the outer layer, Ozawa discloses a large number of resins and elastomers which may be suitably used for the inner and/or for the outer layer.
In several instances, Ozawa also reasonably suggests that the thermoplastic elastomer (i.e., the elastomer comprising the resin and elastomer) for the inner and outer layers may be different: see, e.g., col. 26, lines 47-54 & 55-64: an inner tube is formed by extruding a thermoplastic elastomer composition and, after applying a reinforcing layer, “another thermoplastic elastomer of the present invention or another general type is similarly extruded…to form the outer cover”.
See also col. 21, lines 51-59: “The thermoplastic elastomer composition of the present invention may be used for the inner tube and/or outer cover of a hose…. Either of the inner tube and outer covers may be comprised by a general thermoplastic resin, thermoplastic elastomer, etc.….”.
See also tables V-3 & V-4: in Table V-3, a first thermoplastic elastomer composition A comprises EPDM (an elastomer) and PP (a resin) while a second thermoplastic elastomer composition B comprises ACM (an elastomer) and COPE (a resin); in table V-4, example V-6 is shown to use composition B for the inner layer and composition A for the outer layer.
Thus, a person having ordinary skill in the art, when reading Ozawa, would reasonably understand that each of the inner layer elastomer and the inner layer resin may be different than the elastomer and the crosslinked resin of the resin composition of the outer layer.
However, to further promote compact prosecution, the following additional teaching is provided.
As set forth for at least claim 1 above, Ozawa discloses that the resin composition for the outer layer may comprise, e.g., a butyl-type elastomer (e.g., X-IPMS, or IIR, or Cl-IIR) and a polyolefin-type resin (e.g., a polyolefin such as polypropylene).
As set forth for at least claim 7 above, Ozawa further discloses that a thermoplastic resin (which may be used for the inner layer) may be a polyamide (e.g., a nylon; see abstract: “a polyamide thermoplastic resin”; col. 10, lines 13-35, etc.).
Kitami teaches (throughout) a hose for refrigerant transportation (see col. 1, lines 1-13) comprising at least an outer layer (“outer cover”), a reinforcing layer, and an inner layer (“inner core or tube”; see col. 3, lines 44-48), wherein the outer layer comprises a resin composition containing an elastomer (col. 4, lines 29-38: “one or more rubbers selected from …EPDM rubber and butyl-based rubbers…”) and a polyolefin resin (e.g., polypropylene; col. 4, lines 53-59), wherein the inner layer comprises a different elastomer (e.g., an acrylic rubber, such as ACM; col. 3, lines 53-59 & col. 4, lines 3-11) and a polyamide resin (e.g., nylons; see col. 3, line 65 – col.4, line 2).
Kitami explains that the combination used for the inner layer is “tough at low temperature”, “impermeable to freon gases” and “resistant to chemicals such as oils” (col. 4, lines 12-22), while the combination used for the outer layer is “highly moisture-proof…weather-resistant and fully retentive of physical qualities at elevated temperature” (col. 5, lines 12-26).
In view of the above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa such that each of the inner layer elastomer and the inner layer resin is different than the elastomer and the crosslinked resin of the resin composition of the outer layer, in view of the teachings of Kitami, in order to provide the inner and outer layers with material properties corresponding to the environments in which they will be employed (e.g., providing the outer layer with a polyolefin resin and butyl-class elastomer to provide moisture/weather/heat resistance on the exterior of the hose; while providing the inner layer with a polyamide resin and, for example, an acrylic-type elastomer to provide permeation/chemical/cold resistance on the interior of the hose), especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ozawa in view of Bickert as applied to claim 1 above or, in the alternative, as unpatentable over Ozawa and Bickert as above and further in view of Kitami and Burrowes et al. (US 2012/0090720 A1; hereafter Burrowes).
Regarding claim 18, with respect to the limitations wherein a thickness of the inner layer is 0.8 mm and a thickness of the outer layer is 0.6 mm or 1.6 mm, as set forth in MPEP § 2144.05(II)(A), it has been generally held that where the difference between the prior art and a claimed invention involves only a change in form, proportions, or degree, such a difference is unpatentable, even though such changes may produce better results than prior inventions [Smith v. Nichols, 88 U.S. 112, 118-19 (1874); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)].
In the instant case, the only difference between the invention of claim 18 relative to the prior art, if any, appears to be such differences of form or proportion (i.e., the form / proportions of the inner and outer layer).
See also MPEP § 2144.04(IV)(B): it has been generally held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
It is further noted that applicant’s specification does not appear to set forth any evidence of criticality or unexpected results arising from the use of the particular sizes / proportions set forth in claim 18. As set forth in MPEP § 716.02(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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). However, in table 3 of applicant’s specification, all of the examples, both suitable and unsuitable, have an inner layer of 0.8 mm and an outer layer of 0.6mm or 1.6mm.
Moreover, Ozawa discloses in at least one instance (Ex II-15 in table II-7) an arrangement wherein the inner and outer layer each have a thickness of 1 mm, which may be considered close to the claimed value of “0.8 mm” for the inner layer and “0.6mm or 1.6mm” for the outer layer (it is noted that 1.0mm falls between the claimed values of 0.6mm and 1.6mm for the outer layer). As set forth in MPEP § 2144.05(I), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
However, to promote compact prosecution, the following additional teaching is provided.
Kitami teaches (throughout) a hose for refrigerant transportation (see col. 1, lines 1-13) comprising at least an outer layer (“outer cover”), a reinforcing layer, and an inner layer (“inner core or tube”; see col. 3, lines 44-48), wherein the outer layer comprises a resin composition containing an elastomer (col. 4, lines 29-38: “one or more rubbers selected from …EPDM rubber and butyl-based rubbers…”) and a polyolefin resin (e.g., polypropylene; col. 4, lines 53-59), wherein the inner layer comprises a different elastomer (e.g., an acrylic rubber, such as ACM; col. 3, lines 53-59 & col. 4, lines 3-11) and a polyamide resin (e.g., nylons; see col. 3, line 65 – col.4, line 2).
Kitami explains that “The bending strength of a hose is closely associated with its core thickness. Above 2.0 mm would lead to too great bending strength. Gas permeability is also dominated by the core thickness. Below 0.5 mm would render the resultant hose relatively permeable to CFC 12 but sufficiently resistant to HFC 134a” (col. 11, lines 26-31).
Fig. 1 of Kitami shows the relationship between inner (core) layer thickness and bending strength, while fig. 2 shows the relationship between the inner (core) layer thickness and gas permeability for two selected refrigerants. In each figure, the thicknesses shown range from 0.2 mm up to 2.0 mm.
Kitami also suggests that when an innermost wall has a thickness “smaller than 1.5mm…preferably less than 0.8mm, the inventive hoses are sufficiently flexible regardless of the materials of the outer wall and of the cover” (col. 13, lines 11-14).
Kitami further notes that the thickness of the outer layer can also be varied (e.g., 1.0 mm or 2.0 mm are used as examples), which affects the flexibility and gas permeability, but to an “acceptable” degree (col. 11, lines 46-49).
As set forth in MPEP § 2144.05(II)(A): generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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)”.
Furthermore, as set forth in MPEP § 2144.05(I), 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 this case, the claimed value of 0.8 mm for the inner layer thickness falls within the prior art range of between 0.5mm and 2.0mm taught by Kitami.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa (as otherwise modified above) such that the inner layer has any reasonable thickness between 0.5mm and 2.0mm, including a thickness of 0.8mm, in view of the teachings of Kitami, as a matter of routine engineering design to appropriately balance between bending stiffness (flexibility) and gas permeability, as may be required for a particular application (i.e., as suggested by Kitami), especially considering that it has been held that, where 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.
Burrowes teaches (figs. 1 & 3) a hose (10), which may be used for various purposes including refrigerant transportation (e.g., see para. 1, lines 1-6; para. 12, line 3: “air conditioning refrigerant”, etc.) comprising at least an outer layer (30; “elastomeric cover”), a reinforcing layer (14; para. 14, lines 9-12: “the friction layer 14…also known in the art as a reinforcing layer”), and an inner layer (12; “elastomeric tubular inner core layer”).
Burrowes teaches that “the thickness of the elastomeric cover 30 obviously depends upon the desired properties of the hose and the elastomer that is used. Generally speaking, the thickness of the elastomer cover will range from about 0.5 mm to about 4.0 mm, with a range of from 1.0 mm to… 2.5 mm being preferred” (para. 25, lines 12-17).
Later, Burrowes also explains that “[t]he thickness of outer layer 30 is suitably chosen for a specific application. For example, and without limitation, outer layer 30 may have a thickness in the range from about 1.2 mm to about 1.5 mm.” (para. 30).
As set forth in MPEP § 2144.05(I), 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 this case, the claimed values of 0.6 mm or 1.6 mm for the outer layer thickness each fall within the prior art range of between about 0.5mm to about 4.0mm as taught by Burrowes.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa (as otherwise modified above) such that the outer layer has any reasonable thickness between 0.5 mm and 4.0 mm, including thicknesses of 0.6 mm or 1.6 mm, in view of the teachings of Burrowes (or otherwise in view of the combined teachings of Burrowes and Kitami), as a matter of routine engineering design to achieve a desired balance of properties for a particular application (e.g., a balance of flexibility and permeability as otherwise taught by Kitami), especially considering that it has been held that, where 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.
Claims 21 & 22 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa in view of Bickert and Jackson as applied to claim 9 above, and further in view of Gopalan et al. (US 2018/0163901 A1; cited in previous PTO-892 on 26 Feb 2025; hereafter Gopalan).
Regarding claim 21, with respect to the additional limitation wherein the silanol condensation catalyst is a sulfonic acid or a phosphoric acid ester, as previously noted for claim 9 above, Bickert teaches that a silanol condensation catalyst may be used to accelerate the later crosslinking process. While Bickert suggests that the catalyst is “usually an organotin compound, such as, for example, dibutyltin dilaurate”, the disclosure is not specifically limited thereto (col. 5, lines 19-29). Jackson similarly teaches the use of silanol condensation catalysts, including dibutyltin dilaurate, but explains that “any material which will catalyse the silane condensation reaction can be used” (para. 40).
Bickert and Jackson do not explicitly disclose the silanol condensation catalyst to be sulfonic acid or phosphoric acid ester, however, these are otherwise taught by Gopalan.
Gopalan is directed to resin compositions for a hose comprising a silane-crosslinked polyolefin elastomer, and teaches numerous examples of compositions suitable for use as a silane condensation catalyst, including sulfonic acid (para. 86, line 12-18: “…the condensation catalyst 190 can include a mixture of sulfonic acid….”; see also para. 69: examples include p-toluenesufonic acid, benzenesulfonic acid, dodecylbenzenesulfonic acid) and phosphoric acid ester (see para. 69, e.g., “monoalkylphosphoric acid, dialkylphosphoric acid”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa, as otherwise modified above, such that the silanol condensation catalyst is a sulfonic acid or a phosphoric acid ester, in view of the teachings of Gopalan, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 22, with respect to the limitation wherein the silanol condensation catalyst is a metal carboxylate of tin including only one or more selected from the group consisting of dioctyltin dilaurate, alkylnaphthylsulfonic acid, and ethylhexyl phosphate, as set forth in the grounds of rejection under 35 U.S.C. 112(b) in this action, among these, only dioctyltin dilaurate is understood to necessarily be a metal carboxylate of tin.
As previously noted for claim 9 above, Bickert teaches that a silanol condensation catalyst may be used to accelerate the later crosslinking process, and suggests that the catalyst is “usually an organotin compound, such as, for example, dibutyltin dilaurate”, the disclosure is not specifically limited thereto (col. 5, lines 19-29). Jackson similarly teaches the use of silanol condensation catalysts, including “carboxylates of lead, cobalt, iron, nickel, zinc, and tin”, including, for example, “dibutyltin dilaurate” and “dioctyltin maleate”, but explains that “any material which will catalyse the silane condensation reaction can be used” (para. 40).
Bickert and Jackson do not explicitly disclose the silanol condensation catalyst to include only one or more selected from the group consisting of dioctyltin dilaurate, alkylnaphthylsulfonic acid, and ethylhexyl phosphate.
Gopalan is directed to resin compositions for a hose comprising a silane-crosslinked polyolefin elastomer, and teaches numerous examples of compositions suitable for use as a silane condensation catalyst, including “carboxylates of lead, cobalt, iron, nickel, zinc, and tin”, for example, “dioctyltin dilaurate” (para. 69). Gopalan further teaches (e.g., paragraphs 71, 88, 98, 108) that “when a latent condensation catalyst is required to delay silane graft condensation until it is exposed to higher temperatures and/or moisture levels, the latent condensation can include, for example, dioctyltin dilaurate (DOTL), monobutyltin oxide (MBTO), or a combination thereof”.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa, as otherwise modified above, such that the silanol condensation catalyst is dioctyltin dilaurate (i.e., a metal carboxylate of tin including only one or more selected from the group consisting of dioctyltin dilaurate, alkylnaphthylsulfonic acid, and ethylhexyl phosphate), in view of the teachings of Gopalan, to enable condensation of the silane graft to be delayed until the composition is exposed to higher temperature and/or moisture levels (as suggested by Gopalan), especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Note: to promote compact prosecution, it is noted that the use of alkylnaphthylsulfonic acids and ethylhexyl phosphates as condensation catalysts is otherwise known in the art: Gopalan already suggests the use of sulfonic acids and mono- and dialkylphosphoric acids; Blank et al. (US 2002/0035213 A1) teaches the use of alkylnaphthylsulfonic acids; WO 2014135261 A1 to Pichl et al. teaches the use of ethylhexyl phosphates.
Claims 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa in view of Bickert as applied to claim 1 above, and further in view of Tomoi (WO 2020/137712 A1; corresponding to US 2022/0073740 A1, previously cited in IDS received 23 Jan 2025).
Note I: WO 2020/137712 A1 lists the same applicant as the instant application (though names a different inventor). However, WO 2020/137712 A1 was published on 02 July 2020, more than one year before the filing date of the earliest application to which the instant application patent or application claims benefit or priority. As a result, the reference is available as prior art under 35 U.S.C. 102(a)(1), and is not subject to the 35 U.S.C. 102(b)(1) exceptions.
Note II: the disclosure of WO 2020/137712 A1 was originally published in a foreign language. A translation has been provided with this action however, for convenience, references to the written description below will refer instead to the corresponding portions of US 2022/0073740 A1, which is the later-published US publication of the national stage entry of the same PCT application (PCT/JP2019/049476).
Regarding claim 23, with respect to the limitation wherein the inner layer contains a viscosity stabilizer, the viscosity stabilizer comprising a divalent metal oxide, an ammonium salt, or a carboxylate, Ozawa discloses that the inner layer (22) may be composed of a thermoplastic resin composition (e.g., as shown in fig. 1a; col. 17, lines 29-34 & 41-43) with an islands-in-the-sea structure (see fig. 1a) in which an elastomer (12) is present as a domain in a matrix containing the thermoplastic resin (10).
Ozawa further discloses that “the elastomer component or thermoplastic resin component of the…composition according to the present invention may, if necessary, have suitably blended therein, in addition to the above essential components…, various additives usually used in the field of rubber and hoses, for example, fillers, carbon black, anhydrous silicates, and other reinforcing agents, plasticizers, softeners, antioxidants, processing aids, pigments, etc. to an extent not impairing the desired physical properties” (col. 21, lines 41-50).
In certain embodiments, Ozawa discloses the addition of zinc oxide to the composition (a divalent metal oxide; as a rubber vulcanizer), but not specifically as a viscosity stabilizer. To promote compact prosecution, the following additional teachings are provided.
Tomoi is directed to a resin composition for a refrigerant transporting hose, comprising a thermoplastic resin matrix and an elastomer distributed as domains within the thermoplastic resin matrix, wherein at least the thermoplastic resin matrix comprises a viscosity stabilizer (see abstract).
Tomoi explains that providing a viscosity stabilizer to the matrix suppresses a viscosity increase during extrusion molding, reducing the generation of resident particles (para. 67).
Tomoi states: “Examples of the viscosity stabilizer include divalent metal oxides, ammonium salts, and carboxylic acid salts” (para. 68). Examples of such divalent metal oxides, ammonium salts, and carboxylic acid salts are further recited in paragraphs 69-71, respectively.
(Note: the list of exemplary “carboxylic acids salts” in para. 71 is identical to the list of “carboxylates” in para. 114 of the US publication of the instant application).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Ozawa such that the inner layer contains a viscosity stabilizer (i.e., provided to the matrix resin), the viscosity stabilizer comprising a divalent metal oxide, an ammonium salt, or a carboxylate, in view of the teachings of Tomoi, to suppress a viscosity increase during extrusion molding, reducing the generation of resident particles (as taught by Tomoi).
Regarding claims 24 & 25, the hose of Ozawa, as modified above, reads on or otherwise renders obvious the additional limitation wherein the viscosity stabilizer comprises the divalent metal oxide and the divalent metal oxide comprises zinc oxide, magnesium oxide, copper oxide, calcium oxide, or iron oxide (claim 24) and, in particular, wherein the divalent metal oxide is zinc oxide (claim 25).
As noted for claim 23 above, Tomoi teaches that the viscosity stabilizer may comprise a divalent metal oxide (para. 68) and specifically lists zinc oxide (para. 69). Furthermore, Tomoi explicitly states that “the viscosity stabilizer is most preferably zinc oxide” (para. 72).
Regarding claim 26, the hose of Ozawa, as modified above, reads on or otherwise renders obvious the additional limitation wherein the viscosity stabilizer comprises the ammonium salt and the ammonium salt comprises ammonium carbonate, ammonium bicarbonate, ammonium chloride, ammonium bromide, ammonium sulfate, ammonium nitrate, ammonium acetate, or alkylammonium.
As noted for claim 23 above, Tomoi teaches that the viscosity stabilizer may comprise an ammonium salt (para. 68) and specifically lists ammonium carbonate, ammonium hydrogen carbonate [i.e., ammonium bicarbonate], ammonium chloride, ammonium bromide, ammonium sulfate, ammonium nitrate, ammonium acetate, and alkylammonium (para. 70).
Regarding claim 27, the hose of Ozawa, as modified above, reads on or otherwise renders obvious the additional limitation wherein the viscosity stabilizer comprises the carboxylate and the carboxylate comprises sodium acetate, potassium acetate, zinc acetate, copper acetate, sodium oxalate, ammonium oxalate, calcium oxalate, or iron oxalate.
As noted for claim 23, Tomoi teaches that the viscosity stabilizer may comprise “carboxylic acid salts” and lists sodium acetate, potassium acetate, zinc acetate, copper acetate, sodium oxalate, ammonium oxalate, calcium oxalate, and iron oxalate (para. 71).
Regarding claims 28 & 29, the hose of Ozawa, as modified above, reads on or otherwise renders obvious the additional limitation wherein a content of the viscosity stabilizer is from 0.1 to 30 mass % with respect to a mass of the thermoplastic resin composition.
In particular, Tomoi teaches that “the content of the viscosity stabilizer in the matrix is preferably 0.5 to 30% by weight, more preferably 1 to 25% by weight, still more preferably 5 to 20% by weight” (para. 73; see also published claim 2), each of which lies within the claimed range.
Regarding claim 29, the hose of Ozawa, as modified above, reads on or otherwise renders obvious the additional limitation wherein a content of the viscosity stabilizer is from 0.5 to 5 mass % with respect to a mass of the thermoplastic resin composition.
In particular, Tomoi teaches that “the content of the viscosity stabilizer in the matrix is preferably 0.5 to 30% by weight, more preferably 1 to 25% by weight, still more preferably 5 to 20% by weight” (para. 73; see also published claim 2).
The first range (0.5 to 30%) and second range (1 to 25%) respectively encompass and overlap the claimed range (0.5 to 5%), while even the narrowest range (5 to 20%) overlaps the claimed range at their respective endpoints (i.e. 5%).
As set forth in MPEP § 2144.05(I), 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 also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Furthermore, a prima facie case of obviousness exists even where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
To promote compact prosecution, it is noted that Tomoi explains that “in cases where the content of the viscosity stabilizer in the matrix is too low, there is a concern that an increase in the viscosity of the thermoplastic resin composition may not be suppressed, while in cases where the content is too high, there is a concern that the resin ratio in the matrix may be low, leading to poor extrusion processability” (para. 73).
As set forth in MPEP § 2144.05(II)(A), "[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).
It is also noted that applicant’s specification does not appear to set forth any evidence of criticality of the claimed range to achieving an unexpected result. Rather, the claimed range appears to be merely a preference (see para. 116 of the published US application).
Thus, if not already seen as such, it would have been obvious to a person having ordinary skill the art before the effective filing date of the claimed invention to provide a content of the viscosity stabilizer of from 0.5 to 5 mass % with respect to a mass of the thermoplastic resin composition, in view of the teachings of Tomoi, as a matter of routine experimentation within the broader disclosed ranges (e.g., from 0.5 to 30%), to provide a desired balance between suppression of viscosity increase and processibility during extrusion, for a particular application (as suggested by Tomoi).
Regarding claim 30, the hose of Ozawa, as modified above, reads on or otherwise renders obvious the additional limitations wherein the inner layer is composed of a thermoplastic resin composition, the thermoplastic resin composition has an islands-in-the-sea structure in which elastomer is present as a domain in a matrix containing the thermoplastic resin, and 50 mass % or more of the viscosity stabilizer is contained in the matrix.
As explained for claim 23 above, Ozawa already discloses that the inner layer (22) may be composed of a thermoplastic resin composition (e.g., as shown in fig. 1a; col. 17, lines 29-34 & 41-43) with an islands-in-the-sea structure (see fig. 1a) in which an elastomer (12) is present as a domain in a matrix containing the thermoplastic resin (10); and the resin composition of Tomoi is also taught to be a thermoplastic resin composition having an islands-in-the-sea structure in which elastomer is present as a domain in a matrix containing the thermoplastic resin (see abstract; para. 52” “the thermoplastic resin composition… has the so-called sea-island structure…”), with the viscosity stabilizer contained in the matrix.
Regarding the limitation wherein “50 mass% or more of the viscosity stabilizer is contained in the matrix”, Tomoi teaches that the viscosity stabilizer may be first added to the thermoplastic resin and kneaded before the elastomer is added, whereby “most part [i.e., more than 50%, as understood] of the viscosity stabilizer remains in the thermoplastic resin phase (matrix) without being transferred to the rubber phase (domain). Thus…a thermoplastic resin composition in which the matrix contains the viscosity stabilizer can be prepared.” (para. 102).
Tomoi further teaches that, when using a “masterbatch” technique, the viscosity stabilizer can be added to the masterbatch, whereby “most part of the viscosity stabilizer remains in the thermoplastic resin phase (matrix) without being transferred to the rubber phase (domain)” (para. 113).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, when modifying the hose of Ozawa in view of Tomoi as above such that the inner layer comprises a viscosity stabilizer, to provide the viscosity stabilizer in a manner such that most of the viscosity stabilizer (i.e., 50 mass% or more) is contained in the matrix (i.e., by adding the viscosity stabilizer to the masterbatch, or otherwise by incorporating the viscosity stabilizer into the thermoplastic resin before adding the elastomer), as specifically suggested by Tomoi, especially considering that Tomoi describes the viscosity stabilizer content in the matrix (rather than the content in the elastomer) as being the results-effective value.
Response to Arguments
Applicant's arguments filed 03 March 2026 have been fully considered but they are not persuasive.
Applicant argues that “the Ozawa process describes mixing at the melting temperature of component A, then adding crosslinker to crosslink component B. The practical implications are that crosslinking the thermoplastic resin continuous phase would be contrary to what Ozawa is trying to achieve, because it would tend to: destroy melt-processability (the result would be a thermoset-like network rather than a melt-reprocessable matrix), and it would interfere with the intended morphology (rubber particles crosslinked within a thermoplastic matrix), which is central to "thermoplastic elastomer" behavior described and claimed by Ozawa.”
These arguments are not found to be persuasive for several reasons.
First, as taught by Bickert, the use of a silane-modified polyolefin resin in the composition provides for a crosslinkable (but not initially crosslinked) molding material. Prior to actually crosslinking the resin, the resin composition remains processable by conventional melt-processing methods including injection molding and extrusion (see, e.g., col. 7, lines 1-3). Bickert explains that final crosslinking may be delayed and carried out on the finished article, though it is also possible, by initiating cross-linking in the melt or granule phases, to provide ”more highly viscous molding materials suitable for extrusion” (col. 4, line 67 – col. 5, line 4).
To promote compact prosecution, attention is drawn to Gopalan et al. (US 2018/0163901 A1), which teaches that certain silanol condensation catalysts (like dioctlytin dilaurate) may be considered “latent”, whereby uncured hoses may be kept at ambient conditions for up to a week, which may be particularly useful when manufacturing large volumes of hoses.
With respect to the “intended morphology” (rubber particles crosslinked within a thermoplastic matrix), applicant’s argument that the use of a crosslinkable resin as in Bickert would interfere with the intended morphology is not supported by the actual references.
Bickert explicitly teaches that the resin composition may include the silane-modified polyolefin [i.e. component (b)] and one or more other polymer materials [i.e., component (a)], which may be “a rubber” (col. 3, lines 9-12), for example, a butyl rubber (col. 3, line 51-60); and further suggests that, in a preferred embodiment, “the crosslinked component (b) forms a three-dimensional network”, “In the formation of this network structure, it may be advantageous in some cases if the component (b) is not distributed in molecular disperse form in the mixture with the component (a) but forms a separate phase” (i.e., domains within the matrix); “A network phase can be produced on mixing in the melt when the viscosity ratio of the two phases and their volume ratio bear a specific relation to one another and a suitable shear rate is chosen according to means known to a person skilled in the art.” (col. 5, lines 45-67).
Bickert even suggests that the use of a crosslinkable thermoplastic resin would actually have a stabilizing effect on the phase morphology, with strong adhesion at the boundaries, so that “no disadvantageous changes in properties occur on further processing by a thermoplastic method” (col. 2, lines 1-6; col. 5, lines 5-9).
Regarding reprocessability, it is first noted that, at least when the crosslinking is performed only on the final article (as suggested by Bickert), any un-crosslinked intermediate (“green”) products or scrap would remain melt-processable and so could reasonably be re-processed if desired.
Regarding a potential loss of re-processability after crosslinking of the final product, as set forth in MPEP § 2143.01(V), “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”[Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016); quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed. Cir. 2006) (citation omitted)].
In the instant case, while crosslinking the matrix of the final product would potentially reduce recyclability of the hose, this does not necessarily obviate the motivation to combine. A person having ordinary skill in the art would have been reasonably capable of weighing the expected disadvantages of crosslinking (e.g., reduced recyclability) against the expected advantages (e.g., improved heat resistance, tensile strength, stabilized phase morphology, etc.) for a particular application.
With respect to the other “benefits” of Ozawa cited by applicant, i.e., a reduction in weight and the avoidance of a vulcanization process for the elastomer component, it does not appear that the use of a silane-modified crosslinkable polyolefin as taught by Bickert would be expected to meaningfully impact either of these perceived benefits: the elastomer could still be dynamically cured as originally disclosed by Ozawa (avoiding a separate conventional vulcanization step) and it is unclear why applicant believes this modification would result in an increased weight. If anything, the increased tensile strength of the crosslinked polyolefin might permit the use of even thinner / lighter layers. Even so, as previously noted, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.
As a result, applicant’s arguments that crosslinking the Ozawa resin as taught by Bickert would “destroy and eliminate these benefits” are not found to be persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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