DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 25, 2025 has been entered.
Response to Amendment
3. The amendment filed by Applicant on July 25, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
4. Claims 1-4, 6-12, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 6,803,398) in view of Tanaka (US 5,349,005) and Abdou-Sabet et al (US 4,311,628), as evidenced by Typical Engineering Properties of Polypropylene flyer, 2014, and further as evidenced by, or alternatively in further view of Licocene PP7502 flyer, 2014 and Diem et al (US 2009/0126603).
5. Ito et al discloses an olefin-based thermoplastic elastomer composition comprising:
A) 20-90 pbw of a polypropylene resin, such as propylene homopolymer or ethylene-propylene block copolymer (col. 2, lines 25-30) having MFR of 0.1-5 g/10 min, preferably 0.5-3 g/10 min (col. 1, lines 42-47) (corresponding to component B of instant claim 1);
C) 10-80 pbw (based on weight of A+C=100 pbw) of an olefin-based copolymer rubber, specifically ethylene-alpha olefin-ethylidene norbornene (col. 3, lines 45-47) copolymer, wherein the alpha olefin included propylene or butene-1 (col. 3, lines 41-43) having Mooney viscosity (100⁰C) of 30-250, preferably 30-150 (col. 3, lines 25-53; col. 1, lines 47-51) (corresponding to component A of instant claims);
wherein the sum of A) and C) being 100 pbw (col. 1, lines 41-42; col. 3, lines 55-57); further
D) 10-300 pbw of a polyolefin-based resin (col. 1, lines 50-53), specifically propylene homopolymer or ethylene-propylene copolymer, having MFR of 0.3-30 g/10min (col. 6, lines 40-55) (corresponding to component C of instant claims);
F) 10-300 pbw of a softening agent (col. 8, lines 5-12, as to instant claims 3, 9),
Wherein the elastomer composition is subjected to cross-linking (col. 5, lines 5-9);
the composition is having MFR (230⁰C, 10 kg) of 10-300 g/10 min, or 20-200 g/10 min (col. 4, lines 37-40, as to instant claims 4, 10-12) and
the composition is having excellent oil resistance (col. 1, lines 10-13).
The composition is used for making mechanical, electronic parts and extruded articles (col. 9, lines 35-40; col. 14, lines 17-19, as to instant claim 7).
6. Based on the teachings of Ito et al, it would have been obvious to a one of ordinary skill in the art to choose and use the ethylene-propylene-ethylidene norbornene as the component C) and used in amount of 80 pbw and the polypropylene homopolymer component A) in amount of 20 pbw, so that the sum A)+C) will be 100 pbw, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
7. Since Ito et al discloses that both components A) and D) can be propylene homopolymers, therefore, it would have been obvious to a one of ordinary skill in the art to choose and use propylene homopolymers as the components A) and D), since it would have been obvious to choose material based on its suitability.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
8. Though Ito et al does not explicitly recite the propylene homopolymers, i.e. components A) and D), having Tm in the range of 130-180⁰C, as evidenced by Typical Engineering Properties of Polypropylene flyer, 2014, propylene homopolymers are having Tm in the range of 160-165⁰C and propylene copolymers are having Tm in the range of 135-159⁰C (see p. 1 of flyer). Therefore, based on the evidenced provides by said flyer, the propylene homopolymers and copolymers used as components A) and D) in the composition of Ito et al will intrinsically and necessarily have, or would be reasonably expected to have Tm in the range of 135-165⁰C as well, and in any case in the range of 130-180⁰C as claimed in instant claim 1. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
9. Further, since Ito et al teaches that the component D), i.e. propylene homopolymer, can have MFR of 0.3-30 g/10 min, i.e. including the range of 7-13 g/10 min, therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the propylene homopolymer having MFR in the range of 7-13 g/10 min as the component D), since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
10. Though Ito et al recites the ethylene-propylene -ethylidene norbornene copolymer (component C)) having Mooney viscosity at 100⁰C of 30-250 or 150 (col. 3, lines 25-53; col. 1, lines 47-51), but does not recite Mooney viscosity at 125⁰C, since Mooney viscosity of the polymer decreases with increase of temperature, therefore, the component C) of Ito et al having Mooney viscosity at 100⁰C of 30-250 or 150 will intrinsically and necessarily have Mooney viscosity at 125⁰C lower than the range of 30-250, but in any case having values overlapping with the range of 100-200, and lower than 200 as well. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
11. All ranges in the composition of Ito et al are overlapping with the corresponding ranges of those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is 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); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
12. Ito et al does not recite the composition further comprising low molecular weight polyolefin having Mn of 3,000-8,000, does not recite the composition being cross-linked by phenol resin cross-linking agent and does not recite the articles being injection molded articles.
13. However,
1) Tanaka discloses an olefin thermoplastic elastomer composition comprising:
A’) 100 pbw of an ethylene-propylene-ethylidene norbornene copolymer rubber (col. 3, lines 20-23) having Mooney viscosity (125⁰C) in combination with a softening agent of 40 or more (col. 3, lines 35-40);
B’) 10-500 pbw of a crystalline ethylene-propylene block copolymer having MFR of 10-50 (col. 3, lines 42-50);
C’) 3-300 pbw of a softening agent (col. 2, lines 38-50);
D’) phenol resin to vulcanize the ethylene-alpha olefin-non-conjugated diene copolymer (col. 4, lines 30-45); and further
E’) 5-100 pbw a low molecular weight propylene homopolymer having Mn of 2,000-20,000 to improve fluidity, so that moldings can be easily obtained from the composition (col. 2, lines 40-56; col. 6, lines 1-7),
Wherein the composition is having well-balanced injection moldability, compression set and oil resistance (col. 1, lines 5-12).
The exemplified compositions are having Shore A hardness of 49-65 and compression set of 20-22% (Table A1-2).
Thus, Tanaka explicitly teaches the propylene-based resins used in the thermoplastic elastomer composition being crystalline and further shows that the use of phenolic resin as cross-linking agent leads to the composition having compression set of 20-22%.
The composition is used for making injection molded articles (col. 7, lines 1-8, as to instant claims 7-8).
2) Abdou-Sabet et al discloses thermoplastic elastomer compositions comprising a blend of EPDM rubber, including ethylene-propylene-5-ethylidene norbornene terpolymer (col. 5, lines 52-64), and polyolefin resins, cured with phenolic curatives (Abstract), wherein Abdou-Sabet et al explicitly teaches that the thermoplastic compositions cured with phenolic curative are tough, strong and have improved properties compared to blends of similar composition but in which rubber is cured with sulfur or peroxide curatives (col. 1, lines 40-47). Thus, the compositions of examples
2-5 of Table IV, cured with phenolic curative SP-1056, show compression set in the range of 24-31%, which is significantly lower than the compression set of the examples 6-9 cured with curatives other than phenolic (see Table IV).
Thus, Abdou-Sabet et al explicitly teaches that curing thermoplastic elastomer compositions based on a major amount of EPDM and a minor amount of polyolefin resins with phenolic curatives leads to cured compositions having lower compression set, than those cured with other curatives.
14. Since both Ito et al and Tanaka are related to an olefin thermoplastic elastomer compositions comprising a combination of ethylene-propylene-ethylidene norbornene copolymer rubber, polypropylene thermoplastic resins, softening oil, having excellent oil resistance, used for making molded articles, and thereby belong to the same filed of endeavor, wherein Tanaka explicitly teaches the use of crystalline thermoplastic polypropylene, phenolic resin as the cross-linking agent and further the use low molecular weight polyolefin having Mn in the range of 2,000-20,000 to improve fluidity, wherein the use of phenolic resin as the cross-linking agent leads to producing the composition having a relatively low compression set of 20-22%, and that moldings can be easily obtained from the composition, and wherein Abdou-Sabet et al explicitly teaches that curing thermoplastic elastomer compositions based on a major amount of EPDM and a minor amount of polyolefin resins with phenolic curatives leads to cured compositions having lower compression set, than those cured with other curatives, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ito et al, Tanaka and Abdou-Sabet et al, and to include, or obvious to try to use the crystalline polypropylene resins and a low molecular weight propylene homopolymer having Mn of 2,000-20,000 as taught by Tanaka as the components C), A), D) and include the additional component E’) in the composition of Ito et al, respectively, so to improve fluidity, so that moldings can be easily obtained from the composition, and further to use, or obvious to try to use the phenol-based resin as the cross-linking agent to cross-link the composition, since crosslinking with phenolic resins produce composition with high Shore hardness and relatively low compression set of 20-22%, as shown by Tanaka and Abdou-Sabet et al, given the cured composition with relatively lower compression set is desired, and use the composition for making injection molding articles, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. All ranges in the composition of Ito et al in view of Tanaka and Abdou-Sabet et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is 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); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
16. Since the composition of Ito et al in view of Tanaka and Abdou-Sabet et al is substantially the same as that claimed in instant invention, i.e. comprises the same components as claimed in instant invention in the relative amounts having ranges overlapping with those as those claimed in instant invention, and cured with phenolic curative, therefore, the composition of Ito et al in view of Tanaka and Abdou-Sabet et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including MFR, Shore A hardness and compression set, having values the same as those claimed in instant invention, or overlapping with those as claimed in instant invention, as well (as to instant claims 4, 6, 1-12, 20). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
17. Further, it would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of the components A), C), D), F) and E’), and the properties, such as MFR, of each of the components A), C) and D), so to produce a composition having a desired level of fluidity, and thereby desired MFR, and Shore A hardness of the composition as well, depending on the specific end-use of said composition.
"[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).
18. Given the composition of Ito et al in view of Tanaka and Abdou-Sabet et al comprises:
Component A) (polypropylene having MFR of 0.5-3 g/10 min) in amount of 20 pbw;
Component C) (EPDM rubber) in amount of 80 pbw;
thereby the total amount of A)+C) is 100 pbw; further
Component D) (polypropylene having MFR of 0.3-30 g/10 min, or 10 g/10 min) in amount of 10 pbw;
Component E’) (low molecular weight propylene homopolymer) in amount of 5 pbw,
therefore,
recalculating said amounts based on 100 pbw of the component C), the amounts of other components will be:
Component A) – 25 pbw (corresponding to component (B) of instant claim 1);
Component D) – 12.5 pbw (corresponding to component (C) of instant claim 1);
Component E’) – 6.25 pbw (corresponding to component (D) of instant claim 1).
19. As to instant claim 2, Tanaka discloses the composition comprising a low molecular weight (LMW) propylene homopolymer having Mn of 2,000-20,000 to improve fluidity. Though Tanaka does not explicitly recite the LMW propylene homopolymer having heat of fusion of 20 J/g or more,
1) as evidenced by Licocene PP7502 flyer, LMW propylene homopolymers used as waxes are having high melting point and high crystallinity (see the flyer);
2) as evidenced by Diem et al, the commercial polypropylene waxes, such as Licocene PP 7502 ([0120]), are having Mn of 500-20,000 g/mol, or 800-10,000 g/mol ([0028]), enthalpy of fusion of 70-280 J/g ([0023]) and melting point of 80-165⁰C ([0022], [0017]), i.e. having high crystallinity,
therefore, the LMW propylene homopolymer used by Tanaka would be reasonably expected be highly crystalline and to have heat of fusion of 20 J/g or more as well.
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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. In the alternative, since i) Ito et al in view of Tanaka and Abdou-Sabet et al disclose the composition comprising a low molecular weight (LMW) propylene homopolymer having Mn of 2,000-20,000 to improve fluidity, ii) the commercial polypropylene homopolymer wax Licocene PP 7502 is having low molecular weight Mn of less than 20,000, including the range of 800-10,000, as required by Ito et al in view of Tanaka and Abdou-Sabet et al, but is further specified as being crystalline and acting as an outstanding dispersing agent (see the Licocene PP 7502 flyer and Diem et al), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Licocene PP 7502 flyer, Diem et al and Ito et al in view of Tanaka and Abdou-Sabet et al, and to use, or obvious to try to use the commercial polypropylene wax Licocene PP7502 as the LMW polypropylene homopolymer component E’) in the composition of Ito et al in view of Tanaka and Abdou-Sabet et al, so to improve fluidity of the composition and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
21. With respect to the Declaration under 37 CFR 1.132 filed by Applicant on July 25, 2025, it is noted that:
1) instant claim 1 is silent with respect to any properties of the composition, specifically compression set;
2) the examples of US 6,803,398 (Ito et al) are based on using peroxide cross-linking agent for cross-linking the composition and thereby provide cured compositions with relatively higher compression set;
3) the composition of Ito et al in view of Tanaka and Abdou-Sabet et al is based on phenolic resin as the cross-linking agent, and thereby the phenolic resin-crosslinked composition of Ito et al in view of Tanaka and Abdou-Sabet et al would be reasonably expected to have the values of compression set as claimed and disclosed in instant invention, especially since Tanaka and Abdou-Sabet et al show that crosslinking the thermoplastic elastomer compositions with phenolic resins leads to producing the cross-linked products having relatively low compression set of 20-22% (see Table A1-2 of Tanaka and Table IV of Abdou-Sabet et al).
4) It is further noted that all inventive and comparative compositions of instant invention are cross-linked with phenolic resin and thereby all have relatively low values of compression set within the range of 18-25%, well within the claimed range of 10-40%.
22. Claims 1-4, 6-12, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 6,803,398) in view of Tanaka (US 5,349,005) and Abdou-Sabet et al (US 4,311,628), as evidenced by Typical Engineering Properties of Polypropylene flyer, 2014, as evidenced by, or alternatively in further view of Licocene PP7502 flyer, 2014 and Diem et al (US 2009/0126603), in further view of Asami (US 2010/0105790).
23. The discussion with respect to Ito et al (US 6,803,398) in view of Tanaka (US 5,349,005) and Abdou-Sabet et al (US 4,311,628), as evidenced by Typical Engineering Properties of Polypropylene flyer, 2014, as evidenced by, or alternatively in further view of Licocene PP7502 flyer, 2014 and Diem et al (US 2009/0126603), set forth in paragraphs 4-21 above, is incorporated here by reference.
24. Though Ito et al does not explicitly recite the propylene homopolymers and/or propylene copolymers used as the components A) and D) having Tm in the range of 130-180⁰C,
Asami discloses a thermoplastic elastomer composition for making injection molded articles ([0023]), comprising:
a) 95%wt of ethylene/alpha olefin/5-ethylidene-2-norbornene terpolymer (Abstract, [0048], [0047]);
b) crystalline polypropylene comprising:
b1) a crystalline propylene/alpha olefin copolymer having MFR of 0.05-50 g/10 min ([0050], [0054], [0055]) in combination with
b2) a propylene homopolymer having MFR of 0.05-50 g/10 min ([0056]-[0057]) and
c) a softener (Abstract),
d) a phenolic resin as a cross-linking agent ([0078]),
wherein specifically exemplified crystalline polypropylene including propylene copolymers and propylene homopolymers are having Tm of 140⁰C and 160⁰C ([0138], [0143], [0144]).
Thus, Asami explicitly teaches that propylene homo- and copolymers used in combination with ethylene/alpha olefin/5-ethylidene-2-norbornene terpolymers to form thermoplastic elastomer compositions and molded articles, are having Tm of 140⁰C and 160⁰C, i.e. in the range of 130-180⁰C as well.
25. Since both Ito et al and Asami are related to thermoplastic elastomer compositions comprising ethylene/alpha olefin/nonconjugated diene terpolymers, crystalline propylene (co)polymers and softeners, used for making molded articles, and thus belong to the same field of endeavor, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ito et al in view of Tanaka and Abdou-Sabet et al and Asami, and to use, or obvious to try to use the propylene homopolymers and/or propylene copolymers having Tm of 140-160⁰C, as the components A) and D) in the composition of Ito et al in view of Tanaka and Abdou-Sabet et al, as taught by Asami, since such crystalline propylene (co)polymers are taught in the art as being used in ethylene/alpha olefin/nonconjugated diene terpolymer-based thermoplastic elastomer compositions and molded articles inhibited from sink mark (Abstract, [0037]), and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
26. Since the composition of Ito et al in view of Tanaka, Abdou-Sabet et al and Asami is substantially the same as that claimed in instant invention, i.e. comprises the same components as claimed in instant invention in the relative amounts having ranges overlapping with those as those claimed in instant invention, and cross-linked with phenolic resin, therefore, the composition of Ito et al in view of Tanaka, Abdou-Sabet et al and Asami will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including MFR, Shore A hardness and compression set, having values the same as those claimed in instant invention, or overlapping with those as claimed in instant invention, as well (as to instant claims 4, 6, 20). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
27. Applicant's arguments filed on July 25, 2025 and the Declaration under 37 CFR 1.132 filed on July 25, 2025 have been fully considered, but they are moot in light of the new grounds of rejections and discussion set forth above.
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764