DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-3, 5, 7-9, 11, 14-16 is/are pending.
Claim(s) 1-3, 5, 7-9, 11, 14-16 is/are rejected.
Claim(s) 4, 6, 10, 12-13 is/are cancelled by Applicant.
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 .
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.
Specification
The objections to the disclosure have been withdrawn in view of the Specification Amendment filed 11/26/2025.
The change to Example GB in the amended Table 14 in the Specification Amendment filed 11/26/2025 appears to correspond to “Example L” in Table 3 and 9 in the Provisional Application No. 62/926,533.
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(s) 1-3, 5, 7-9, 11, 14-16 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (I) a limited range of elastic film compositions; does not reasonably provide enablement for the entire recited compositional range of elastic film compositions as a whole. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make the claimed elastic films simultaneously exhibiting the recited: (a) melt index at 190 ºC; and (b) melt index at 230 ºC; (claims 1, 16) over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
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(B) The nature of the invention;
(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A), the claims are substantially broad -- for example, but not limited to:
• The majority of the claims allow for any type of styrenic block copolymer in the elastic film, while claim 2 does not contain any limitations on the physical properties (e.g., thermoplastic vs. thermosetting; non-elastomeric vs. elastomeric; etc.) of the styrene block copolymers;
• The claims do not contain any limitations on the type of oil in the elastic film;
• The claims do not contain any limitations on the melt index of the individual components in the elastic film;
• The claims do not contain any restrictions on the type(s) and amount(s) of other components (e.g., other styrene-based and/or non-styrene-based polymeric components; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) which can be present in the elastic film as a whole, as long as the styrenic block copolymer and oil are present in the recited minimum amounts; etc.
With respect to Wand factor (B), Applicant states that the inventive elastic films are suitable for calendaring onto fabric, wherein the elastic films are required to exhibit specific melt index values at 190 ºC and 230 ºC in order to exhibit clean peel from stainless steel rolls and clean transfer to fabric without cohesive failure.
With respect to Wand factors (C)-(E), the prior art does not specifically disclose or teach styrenic block copolymer-containing elastic films exhibiting the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16).
With respect to Wand factor (F)-(G), the disclosure as originally filed only discloses very limited ranges of: (I) elastic film compositions as a whole; which result in elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16) -- i.e., Examples AA-DA, AC, DC, FC, AD-AG in Table 14. Furthermore, the specification provides evidence that elastic film compositions which conform to the compositional requirements (i.e., the amount of styrenic block copolymer and oil) of present claims 1-2, 5 (i.e., Examples AD, B, E, EA-GA, BC, EC, GC, GB) do not exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16).
With respect to Wand factor (H), the working Examples and Comparative Examples in the Specification provide evidence that the (I) elastic film compositions as a whole can materially (and possibly unpredictably) affect the melt index values at (a) 190 ºC and (b) 230 ºC. For example, Inventive Example AC and Comparative Example BC contain identical amounts of the same styrenic block copolymers and oil, and minor differences (about 1-3 wt%) in other components (e.g., polystyrene, polyethylene, etc.), but Comparative Example BC exhibits a melt index at 230 ºC which is nearly five times greater (46.62 vs. 9.6) than Inventive Example AC. Similarly, Inventive Example FC and Comparative Example EC also contain identical amounts of the same styrenic block copolymers and oil, and minor differences (about 1-3 wt%) in other components (e.g., polystyrene, polyethylene, etc.), but Comparative Example BC exhibits a melt index at 230 ºC which is over nine times greater (46.5 vs. 5.1) than Inventive Example FC. Therefore, it is the Examiner’s position that undue experimentation would be required to produce elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC using elastic film compositions which are materially different from the elastic film compositions used in the inventive Examples -- for example, but not limited to:
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• the type(s) and amount(s) of styrene block copolymer -- The disclosure as originally filed only discloses producing elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC, using elastic film compositions containing:
(i) 54.46-63.36 wt% SEBS copolymer(s);
(ii) 21.00-31.68 wt% white oil; and
(iii) non-trivial amounts (e.g., about 9-12 wt% of at least one additional polymer(s) (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin; etc.);
wherein the above resin layer compositions constitute the substantial entirety (i.e., greater than about 95 wt%) of the elastic film as a whole.
The Examiner has reason to believe that the type(s) and amount(s) of styrene block copolymer(s) will materially affect the melt index values of the elastic film, since different styrene block copolymers will exhibit different melt index values, which in turn materially affect the overall melt index value of the elastic film.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16) without undue experimentation using:
• elastic film compositions which contain styrene block copolymers which are different from those utilized in the working Examples in the Specification (e.g., styrene-butadiene-styrene (SBS); styrene-isoprene-styrene (SIS); styrene block copolymers containing only two types of blocks; etc. with different melt index values);
and/or
• elastic film compositions which contain styrene block copolymers in amounts which are different from those utilized in the working Examples in the Specification (e.g., 25 wt% or 30 wt% or 40 wt% or 70 wt%, etc.;
for example, but not limited to:
• elastic film compositions comprising: 25 wt% SIBS copolymer; 20 wt% soybean oil; 55 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 25 wt% SBS copolymer; 35 wt% naphthenic or aromatic oil; 40 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 30 wt% SIS copolymer; 25 wt% mineral oil; 45 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 70 wt% styrene block copolymer functionalized with maleic anhydride or hydroxyl groups or acid groups or amino groups; 25 wt% partially hydrogenated peanut oil; 5 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 75 wt% SEEPS; 20 wt% naphthenic or aromatic oil; 5 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 75 wt% SEBS; 25 wt% white oil;
• elastic film compositions comprising: 65 wt% SEBS; 35 wt% white oil;
etc.;
particularly in view of the Comparative Examples in the specification that provide evidence that even minor changes in elastic film composition (including elastic film compositions which appear to fully conform to the compositional requirements of claims 1, 16) can fail to exhibit one or both of the recited melt index values (a)-(b).
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• the type and amount of oil -- The disclosure as originally filed only discloses producing elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC, using elastic film compositions containing:
(i) 54.46-63.36 wt% SEBS copolymer(s);
(ii) 21.00-31.68 wt% white oil; and
(iii) non-trivial amounts (e.g., about 9-12 wt% of at least one additional polymer(s) (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin; etc.);
wherein the above resin layer compositions constitute the substantial entirety (i.e., greater than about 95 wt%) of the elastic film as a whole.
The Examiner has reason to believe that the type and amount of oil will materially affect the melt index values of the elastic film, since the type of oil can affect the compatibility between the oil and other components (e.g., styrenic block copolymer; other polymers; etc.) which in turn materially affect the overall melt index value of the elastic film.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16) without undue experimentation using:
• elastic film compositions which contain oils which are different from those utilized in the working Examples in the Specification (e.g., vegetable oil, synthetic oil, aromatic oils, naphthenic oils, etc.);
and/or
• elastic film compositions which contain oils in amounts which are different from those utilized in the working Examples in the Specification (e.g., 20 wt% or 35 wt%, etc.);
for example, but not limited to:
• elastic film compositions comprising: 25 wt% SIBS copolymer; 20 wt% soybean oil; 55 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 25 wt% SBS copolymer; 35 wt% naphthenic or aromatic oil; 40 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 30 wt% SIS copolymer; 25 wt% mineral oil; 45 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 70 wt% styrene block copolymer functionalized with maleic anhydride or hydroxyl groups or acid groups or amino groups; 25 wt% partially hydrogenated peanut oil; 5 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 75 wt% SEEPS; 20 wt% naphthenic or aromatic oil; 5 wt% various other polymers (e.g., polyethylene, polypropylene, polyester, etc.) and/or additives (e.g., fillers such as silica, alumina, titanium dioxide, clay, calcium carbonate, etc.; flame retardants; impact-modifiers; hardness adjusters; plasticizers, etc.);
• elastic film compositions comprising: 75 wt% SEBS; 25 wt% white oil;
• elastic film compositions comprising: 65 wt% SEBS; 35 wt% white oil;
etc.;
particularly in view of the Comparative Examples in the specification that provide evidence that even minor changes in elastic film composition (including elastic film compositions which appear to fully conform to the compositional requirements of claims 1, 16) can fail to exhibit one or both of the recited melt index values (a)-(b).
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• the melt index values of the individual polymeric components in the elastic film -- The disclosure as originally filed only discloses producing elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC, using elastic film compositions containing:
(i) 54.46-63.36 wt% SEBS copolymer(s);
(ii) 21.00-31.68 wt% white oil; and
(iii) non-trivial amounts (e.g., about 9-12 wt% of at least one additional polymer(s) (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin; etc.);
wherein the above resin layer compositions constitute the substantial entirety (i.e., greater than about 95 wt%) of the elastic film as a whole.
The working Examples in the specification fail to provide any information of the individual melt index values of the SEBS copolymers and the melt index values the one or more additional polymers (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin) used in the Examples in the Specification.
The Examiner has reason to believe that the individual melt index values of the polymeric components in the elastic film composition will materially -- and possibly unpredictably -- affect the melt index values of the elastic film. For example, utilizing a combination of relatively high melt index polymeric components and relatively low melt index polymeric components could produce a composition having an overall melt index which is closer to the relatively low melt index components or closer to the relatively high melt index components, depending on the relative amounts of the various polymeric components components and possible molecular interactions between the various polymeric components (e.g., a relatively low melt index polymer component may have an unexpectedly large or unexpectedly small impact on the overall melt index of a composition).
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16) without undue experimentation using:
• elastic film compositions which contain one or more polymeric components with melt index values which are different from the melt index values of the polymeric components used in the working and comparative Examples (unspecified).
and/or
• elastic film compositions which contain one or more polymeric components with melt index values which are greater than 4 g/10 minutes at 190 ºC and/or greater than 35 g/10 minutes at 230 ºC;
for example, but not limited to:
• elastic film compositions comprising: 75 wt% SIS copolymer with a melt index of 40 g/10 min at 230 ºC; 20 wt% white oil;
• elastic film compositions comprising: 70 wt% SEBS copolymer with a melt index of 8 g/10 min at 190 ºC; 25 wt% white oil;
• elastic film compositions comprising: 25 wt% SEBS copolymer with a melt index of 6 g/10 min at 190 ºC and 35 g/10 min at 230 ºC; 30 wt% white oil; 30 wt% polyethylene-based elastomer with a melt index of 20 g/10 min at 190 ºC; 10 wt% polystyrene with a melt index of 8 g/10 min at 200 ºC;
etc.;
particularly in view of the Comparative Examples in the specification that provide evidence that even minor changes in elastic film composition (including elastic film compositions which appear to fully conform to the compositional requirements of claims 1, 16) can fail to exhibit one or both of the recited melt index values (a)-(b).
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• the composition of the elastic film as a whole -- The disclosure as originally filed only discloses producing elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC, using elastic film compositions containing:
(i) 54.46-63.36 wt% SEBS copolymer(s);
(ii) 21.00-31.68 wt% white oil; and
(iii) non-trivial amounts (e.g., about 9-12 wt% of at least one additional polymer(s) (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin; etc.);
wherein the above resin layer compositions constitute the substantial entirety (i.e., greater than about 95 wt%) of the elastic film as a whole.
However, the present claims use the open term “comprising” with respect to the composition of the elastic film as a whole, which allows for nearly any amount(s) of any material(s) (polymeric; non-polymeric organic; inorganic; etc.) as long as (i) styrene block copolymers and (ii) oil are present in the recited minimum amounts. The present claims allow for up to 55 wt% of other components.
However, all working Examples exhibiting the recited melt index values at (a) 190 ºC and (b) 230 ºC contain at least one additional polymeric component -- (iii) at least one additional hydrocarbon resin and/or polystyrene resin and/or polyethylene resin -- in amounts of about 9-12 wt%.
The Examiner has reason to believe that non-trivial amounts of additional polymers will materially affect the melt index values of the elastic film.
Furthermore, the Examiner has reason to believe the melt index values of the elastic film would be materially affected by presence of non-trivial amounts (up to 45 wt%) of other components (e.g., other polymers; other non-polymeric compounds or additives (e.g., fillers, pigments, etc.); etc.).
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16) without undue experimentation using:
• elastic film compositions which do not contain at least one additional polymer(s) (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin);
and/or
• elastic film compositions which contain at least one additional polymer(s) (i.e., hydrocarbon resin and/or polystyrene resin and/or polyethylene resin) in amounts different from those used in the working Examples (e.g., 1 wt% or 5 wt% or 15 wt% or 20 wt% or 30 wt%)
and/or
• elastic film compositions which contain non-trivial amounts (up to 55 wt%) of other components (e.g., other polymers; other non-polymeric compounds or additives (e.g., fillers, pigments, etc.); etc.);
particularly in view of the Comparative Examples in the specification that provide evidence that even minor changes in elastic film composition (including elastic film compositions which appear to fully conform to the compositional requirements of claims 1, 16) can fail to exhibit one or both of the recited melt index values (a)-(b).
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In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make the elastic films which exhibit the recited melt index values at (a) 190 ºC and (b) 230 ºC (claims 1, 16) without undue experimentation over the entire compositional scope of the present claims, particularly in view of: (i) the Comparative Examples which provide objective evidence that even minor changes (e.g., 1-3 wt%) in the elastic film composition (including elastic film compositions which fully conform to the compositional requirements of claims 1, 16) can result in a failure to exhibit one or both of the recited melt index values (a)-(b); (ii) the considerable breath of the present claims; and (iii) the absence of significant information (i.e., melt index values) of materials used in the working Examples.
Claim Rejections - 35 USC § 103 (AIA )
The rejections under 35 U.S.C. 103 based on OOISHI ET AL (US 2011/0318987) in the previous Office Action mailed 04/12/2024 have been withdrawn in view of the new grounds of rejection necessitated by the Claim Amendments filed 07/12/2024.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that “Claims 1-3, 5, 7-9, 11, and 14-16 stand rejected under 35 U.S.C. §112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as allegedly lacking enablement.” However, the basis for the present rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action is not a lack of enablement per se (i.e., the specification does enable one of ordinary skill in the art to make an elastic film material that exhibits the recited melt index values at 190 °C and 230 °C ). Instead, the basis for the present rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action is the insufficient scope of enablement provided by the disclosure as originally filed (i.e., that the disclosure as originally filed does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with the present claims without undue experimentation -- i.e., while the disclosure as originally filed is enabling for a limited range of elastic film compositions, the specification does not reasonably provide adequate enablement for the entire scope of the present claims (as represented by the entire compositional range of elastic film compositions as a whole which are encompassed by the present claims).
(B) Applicant argues that Applicant respectfully asserts that while some experimentation might be necessary to ascertain whether a compound falls inside or outside the present claims, this type of experimentation is both reasonable and typical in the art of polymer formulation, and would not be "undue" to one of skill in the art. See MPEP § 2164.01.”
However, regarding “scope of enablement” rejections, the issue is not whether one of ordinary skill in the art can, for a given compound, can determine if said compound “falls inside or outside the present claims”, but rather the issue is whether the specification provide adequate guidance (or direction for experimentation) that would enable one of ordinary skill to produce an elastic film material which exhibits the recited melt index values at 190 °C and 230 °C using compositions which fall within the scope of the present claims, but are non-trivially different from the types of compositions used in the working Examples.
The courts have repeatedly held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’" or that any experimentation must be "reasonable". See Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023); McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091, 2020 USPQ2d 10550 (Fed. Cir. 2020); Wyeth & Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 107 USPQ2d 1273 (Fed. Cir. 2013); Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., 928 F.3d 1340 (Fed. Cir. 2019); and Idenix Pharmaceuticals LLC v. Gilead Sciences Inc., 941 F.3d 1149, 2019 USPQ2d 415844 (Fed. Cir. 2019). See also In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). See MPEP 2164.08.
(C) Applicant argues that “The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without an undue amount of experimentation” and further argues that “Thus, one of skill in the art would find the claims fully enabled based upon the written disclosures of paragraphs [0002]-[0042], with further guidance from the ample Examples section showing formulations that fall both inside and outside the claimed parameters.”
However, the Specification in general (i.e., excluding the working and comparative Examples) does not provide adequate guidance regarding how to obtain elastic films with specific melt index values at 190 °C and 230 °C -- i.e., there is no discussion or guidance (general or specific) in the majority of the Specification as to: (i) what types and/or amounts of styrenic block copolymers; and/or (ii) what types and/or amounts of oil; and/or (iii) what types and/or amounts of other components; are necessary to obtain film compositions with specific melt index values at 190 °C and 230 °C. Similarly, the Specification in general (i.e., excluding the working and comparative Examples) does not provide adequate guidance as to how the various components of the elastic film (i.e., styrenic block copolymer; oil; optionally additives; other components) would affect the melt index of the elastic film composition, or how the various components should be selected to achieve a melt index value within the recited range, particularly in view of the Comparative Examples in the Specification, most of which utilize compositions which in fact fall within the scope of the present claims, but fail to exhibit one or both of the recited melt index values at 190 °C and 230 °C. Therefore, the Comparative Examples provide strong evidence that: (i) other additional modifying components in the recited elastic film compositions; and/or (ii) there are certain material selection considerations regarding the explicitly recited components (i.e., styrenic block copolymer; oil); which are necessary, but which are not represented in the present claims or adequately disclosed in the specification in order to produce elastic films which exhibit the recited melt index values at 190 °C and 230 °C
Therefore, the only clear guidance provided by the Specification regarding how to obtain elastic film composition with the recited melt index values at 190 °C and 230 °C comes from the working Examples in the Specification which utilize a relatively limited range of compositions compared to the relatively broad scope of the present claims, which only require two fairly broad types of components (i.e., “styrenic block copolymer” and “an oil”) in relatively broad content ranges (i.e., 25-75 wt% and 20-35 wt%, respectively).
Therefore, for the reasons discussed in detail in the present rejection, it is the Examiner’s position that the Specification does not reasonably provide adequate enablement for the entire scope of the present claims without undue experimentation. Applicant has not provided persuasive evidence to the contrary, particularly in view of: (1) the substantial broadness of the present claims; and (2) Applicant’s own Comparative Examples in the Specification, which: (i) provide clear evidence that even relatively minor changes to the elastic film composition, while falling within the scope of the present claims (with respect to the amounts of styrenic block copolymer and oil) , will produce elastic films which fail to exhibit one or both of the recited melt index values at 190 °C and 230 °C; and (ii) strongly suggest that certain undisclosed modifications and/or adjustments (e.g., particular selection criteria regarding the styrenic block copolymer and oil; and/or additional modifying components) are needed to produce elastic films which exhibit both of the recited melt index values at 190 °C and 230 °C.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
March 18, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787