DETAILED ACTION
Response to Amendment
This office action is in response to the Amendment filed on 1/20/2026. Claims 13 and 15 were canceled. Claims 1, 5, 8, 10-12, 14, 16-20 and 22-24 are currently pending in the application.
The rejections of the claims set forth in the Office Action dated October 20, 2025 are MAINTAINED for the reasons set forth below. To ensure Applicant’s amendments are fully addressed, the rejections are set forth in full.
Claim Analysis
Summary of Claim 1:
A thermoplastic gel prepared from a composition comprising:
12 to 16 wt.% of a styrene triblock copolymer, wherein the styrene triblock copolymer is selected from the group consisting of a poly(styrene-ethylene/butylene-styrene), a poly(styrene- ethylene/propylene-styrene), and a poly(styrene-ethylene/ethylene-propylene-styrene);
10 to 16 wt.% of a styrene diblock copolymer, wherein the styrene diblock copolymer is a poly(styrene-ethylene/propylene); and
65 to 75 wt.% of an oil extender, wherein the oil extender is a mineral oil,
wherein the composition comprises from about 25wt.% to about 30 wt.% of a combination of the styrene triblock copolymer and the styrene diblock copolymer, and
a weight ratio of the styrene triblock copolymer to the styrene diblock copolymer is from 1:1.2 to 1.2:1;
and the thermoplastic gel has an oil bleed out of less than 10% after 1500 hours at 60°C and 120 kPa.
Duplicate Claim
Applicant is advised that should claim 1 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
In view of the instant specification, paragraph [0042], the term “about” is meant to encompass variations of 10% of the specified amount.
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 5, 8, 10-12, 14, 16-20 and 22-24 s are rejected under 35 U.S.C. 103 as being unpatentable over Overdulve et al. (US PG Pub 2016/0347914 A1 as listed on the IDS dated 8/12/2021).
Regarding claims 1, 5 and 16-20, Overdulve et al. disclose a thermoplastic gel comprising 5-20 wt.% of triblock copolymer including and 3-12 wt.% of diblock copolymer, 50-80% of softener oil (example 15, [0157]), which overlaps the instantly claimed amounts of the components (12-16 wt.% of styrene triblock, 10-16 wt.% of styrene diblock copolymers and 65 -75 wt.% oil extender), the claimed ratios (1:1.2 to 1.2:1 of claim 1 and about 1:1 of claim 5) and claimed total % of the combination of triblock and diblock (about 25 wt.% to about 30 wt.% , which implies 22.5 wt.% to 33 wt.%), as the triblock could be at 12 wt.% or 12.5 wt.% and the diblock at 12 wt.% for a total amount of 24wt.% or 24.5wt.% and a ratio of 1:1 and 1.04. Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges taught by Overdulve et al.
Overdulve et al. teach styrenic block copolymer comprising styrene-ethylene/butylene-styrene (“SEBS/SEB”), styrene-ethylene/propylene-styrene (“SEPS/SEP”) copolymer, polystyrene-poly (ethylene-propylene) diblock copolymer (SEP), the polystyrene -poly (ethylene-butylene)-polystyrene triblock copolymer (SEBS) ([0073], [0075]), as required by the instant claim. Moreover, Overdulve et al. teach synthetic hydrocarbon or white mineral oil among others as the oil extender ([0097-0102], [0158]), as required by the instant claims 1 and 16-20.
Furthermore, Overdulve et al. disclose the thermoplastic gel composition has less than 10% oil bleed-out after being under 120 KPa for 60 days (1440 hours) at 70°C [0007], as well as after a testing period of at least 26 days at 120 KPa and 70 °C (Example 15, [0159]), which implies a long- term stability of the gel composition. While the testing conditions in Overdulve et al. differ in terms of temperature (70°C vs 60°C), it is noted that Applicant has shown the ratio and total amounts of triblock and diblock copolymers determines bleed resistance. Given that Overdulve et al. teach overlapping triblock/diblock ratios and total amounts, it is inherently expected that the oil bleed out of Overdulve et al. would also fall within the claimed range.
Regarding claim 8, it is noted that the content of oil bleed out mainly depends on the composition of the thermoplastic gel. Since the composition of the thermoplastic gel of Overdulve et al. is substantially identical to the claimed invention, the content of oil bleed out of the thermoplastic gel of Overdulve et al. is expected to be the same as required by the instant claim 8.
Regarding claim 10, Overdulve et al. teach further a thermoplastic gel composition comprising 40-88 wt.% of synthetic hydrocarbon base fluid ([0150], Table 2) and 50-80 wt.% of softener oil (Table 7, [0157), which overlaps with the claimed amount (61 wt.%-75 wt.%), thereby a prima facie case of obviousness being established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997).
Regarding claim 11 and 12, Overdulve et al. teach thermoplastic gel compositions comprising 5-20 wt.% of SEBS triblock copolymer and 3.0-12 wt.% of SEP diblock copolymer ([0157], Table 7, [0072]), which overlaps with the claimed amount (about 12 wt.% to about 17 wt.% of the styrene triblock copolymer and about 10 wt.% to about 15 wt.% of the styrene diblock copolymer), thereby a prima facie case of obviousness being established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997).
Regarding claim 14, Overdulve et al. teach the thermoplastic gel composition comprises at least one additive selected from the group consisting of mineral fillers, anti-tack agents, stabilizers and pigments ([0007], [0056], [0103-0120]). Overdulve et al. further teach 0.1 to 75 wt.% of the at least one additive ([0069], [0070]), as demonstrated by example 15, wherein the total of additives is between 0- about 50 wt.% ( [0157], Table 7), as required by the instant claim.
Regarding claim 22, Overdulve et al. teach a method of making the thermoplastic gel comprising: mixing a base composition consisting of a thermoplastic rubber (styrene triblock copolymer and styrene diblock copolymer), a softener oil (oil extender), and at least one additive selected from the group consisting of a mineral filler, an anti-tack agent, and mixtures thereof, wherein the base composition and at least one additive define an overall composition, and providing heat to form the thermoplastic gel (claim 42, [0057]), thereby reading on the claimed method.
Regarding claim 23, Overdulve et al. teach the thermoplastic gel comprising a styrenic triblock, a styrenic diblock, an oil extender as discussed for the rejection of claim 1. Overdulve et al. further teach the use of a mineral filler such as talc in amounts ranging from 0.1 wt.% to 50 wt.% of the overall composition, wherein the mineral filler improves moldability, reduce tackiness and enhances thermal conductivity, while maintaining or improving sealing characteristic (low oil bleed out) (claims 5 and 6, [0107)], which demonstrates that talc functions as a process aid. Although Overdulve et al. do not explicitly state that talc is added to the triblock copolymer before mixing with the other component , it does disclose that talc is present in the thermoplastic gel composition. Once the components are mixed, the triblock copolymer necessarily comprises at least some portion of the talc present in the overall composition, which overlaps with the claimed range of process aid (0.1-3 wt.%) , thereby a prima facie case of obviousness being established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997).
Regarding claim 24, Overdulve et al. teach a thermoplastic gel that exhibits tensile strength in a range 0.24-1 MPa (example 15 [0158]), which overlaps with the claimed range (0.3-1 MPa) , thereby a prima facie case of obviousness being established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997).
Response to Arguments
Applicant' s arguments, see p.6-8, filed 1/20/2026 with respect to the rejection of the claims over Overdulve et al. have been fully considered but are not persuasive.
Applicant’s states “Applicant believes amended claim 1 is non-obvious over Overdulve due to criticality of the ranges and because the claimed total wt. ratio of triblock+diblock are not specifically disclosed in Overdulve. The gel of amended claim 1 exhibits substantially improved oil bleed out characteristics”.
In response, It is acknowledged that Overdulve et al. are silent on the specific total amount of styrene triblock copolymer and styrene diblock copolymer and a specific ratio of styrene triblock to styrene diblock. However, attention is drawn to the rejection as set forth above, wherein Overdulve does disclose at example 15, a gel composition comprising 5-20 triblock copolymer, 3-12 wt.% of diblock copolymer and 50-80 wt.% of softener oil ([0157],Table 7 ), wherein the combination of the styrene triblock copolymer and the styrene diblock copolymer of Overdulve is from 20 wt.% to 32 wt.% ; wherein the ratio of styrene triblock copolymer to the styrene diblock copolymer in Overdulve is from 1.0 to 1.6 (considering the amounts that overlap with the claimed ranges: 12-16 wt.% of styrene triblock copolymer and 10-12 wt.% of styrene diblock copolymer), which overlaps the instantly claimed ranges.
Examiner acknowledges that the comparative B (14.7% triblock SEPS copolymer/6.1% of SEP diblock copolymer) overlaps with the ranges taught at Table 7 of Overdulve, however it is noted that these ranges taught by Table 7 also overlap with the instantly claimed ranges in 12-16 wt. % for triblock copolymer and 10-12 wt.% for the diblock copolymer.
Further, Examiner acknowledges that the Applicant has demonstrated superior results based on specific total amounts and ratios of a SEBS/SEP (example 1), SEPS/SEP (for comparative B and example 2), with values within the claimed ranges (Example 1 and Example 2) and outside the claimed ranges (Comparative B). However, Amended claim 1 recites poly(styrene-ethylene/butylene-styrene, SEBS), a poly(styrene- ethylene/propylene-styrene, SEPS), and a poly(styrene-ethylene/ethylene-propylene-styrene, SEEPS). Therefore, the Applicants needs to demonstrate or made a statement in a declaration that comparable results would be expected for the other SEEPS that was not tested.
Applicant is relying on data points that are for one specific composition with varying ratios (ratio of 1.077 at example 1, ratio of 1 at example 2 and ratio of 2.4 at comparative example B). These experiments would not support that the ratio would provide unexpected results for all possible compositions as encompassed by instant claim 1 (i.e. Experiments including lower limit of the claimed ratio 1:1.2 (0.83) and below the lower limit of the claimed ratio). As such, the unexpected results presented are not commensurate in scope with the claimed invention. It is for these reasons that Applicant's arguments are not found to be persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763