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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-5, 9 and 11-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not support the limitation reciting “10-60 parts by weight of a conventional styrene-ethylene-ethylene- propylene-styrene copolymer.” Additionally, the examiner find no support for “40-90 parts by weight of a high styrene content styrene-ethylene- ethylene-propylene-styrene copolymer.” Specifically, there is no support for the recited parts per weight for both the high styrene content and conventional styrene content copolymers.
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.
Claims 11-12 are 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 11 recites the limitation "a compression set in the range of about 7 to about 13." There is insufficient antecedent basis for this limitation in the claim. Additionally, the claim is entirely unclear because there is no unit of measure, time or temperature associated with the recited values.
Claim 12 recites the viscosity in the range of about 22 to about 27.” The claim is entirely unclear because there is no unit of measure associated with the recited value.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-5, 9 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above, and further in view of Kilian et al. (attached NPL).
As to claims 1 and 9, Chen discloses a thermoplastic gelatinous elastomer composition comprising: a mixture of two or more poly(styrene-ethylene-ethylene-propylene-styrene)(SEEPS) block copolymers, wherein a 40-90 parts per weight (para 75-76, 146, 191, 221) of a conventional SEEPS (cSEEPS) block copolymers has a styrene content of about 30 wt% (para 268-274), 10-60 parts by weight (para 75-76, 146, 191, 221) of a high styrene content SEEPS (hSEEPS) having a styrene content of greater than 35 wt% e.g. 37.6 wt%) and a 200-300 parts by weigth (para 20) of a plasticizing oil that is a mineral oil (abstract, see para 5-38 85, 144, 171, 268-274, 163-177 and claims 8, 9), wherein the cSEEPS is SEPTONTM 4033 and SEPTONTM 4055 (para 269-270).
Chen does not expressly disclose the thermoplastic elastomer gel has a Shore OO Hardness from 35-52. However, Kilian discloses a Septon J3341 is lightweight, has a good compression set while maintain high strength and excellent tear strength (sectin 3.2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Chen such that the hSEEPS is Septon J3341 as taught by Kilian above as such achieves the advantages discussed above.
Since the elastomer gel of Chen as modified by Kilian has composition as recited by applicant, the physical properties will be the same. When a prior art product is the same or substantially the same as applicant’s claimed product, it must have the same physical properties. MPEP 2112-2112.01. Thus, the elastomer gel of Chen as modified by Kilian above has a Shore OO Hardness of 35-52.
As to claim 2, para 85 and 139 of Chen discloses a 89:11 hSEEPS:cSEEPS ratio.
Applicant’s claim says about 90:10 - “a prima facie case of obviousness exists 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).” MPEP 2144.05 I. Additionally, the para 85, 139, 144 and 169 of Chen disclose that the ratios can vary broadly. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select a hSEEPS:cSEEPS ratio of about 90:10 as such is a design choice that has a reasonable expectation of success.
If it is not taken that Chen expressly discloses the ratios recited in claims 3-6, the following rejection is set forth:
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select any of the hSEEPS:cSEEPS ratios recited in claims 3-6 as such is a design choice that has a reasonable expectation of success as Chen teaches the ratios can be varied broadly as detailed above.
As to claim 3, at least para 85, 139 and 144 discloses a hSEEPS:cSEEPS ratio of about 80:20.
As to claim 4, at least para 85, 139-140 and 144 discloses a hSEEPS:cSEEPS ratio of about 70:30.
As to claim 5, at least para 87, 140 and 144 discloses a hSEEPS:cSEEPS ratio of about 60:40.
As to claims 11-12, Chen in combination with Kilian discloses applicant’s claimed product at the claimed wt% and ratio as detailed above. When a prior art product is the same or substantially the same as applicant’s claimed product, it must have the same physical properties. MPEP 2112-2112.01. Therefore, elastomer of Chen as modified by the Kilian above must have the same compression set and viscosity as claimed by applicant in claims 11 and 12, respectively.
As to claim 13, at least para 17 and 31 disclose an adhesion promoter and/or bonding; para 178 discloses a stabilizer.
Response to Arguments
Applicant's arguments filed 8/8/24 have been fully considered but they are not persuasive. Applicant’s asserts that Chen fails to disclose the new limitations of the claims. The examiner asserts that Chen very clearly discloses the added the limitations as detailed in the body of the rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mueller et al. (US 2013/0005900) and Boyd et al. (US 2006/0123664), directed to an elastomer gel with a Shore OO Hardness of 35-52.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached on 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
Prosecution Insights