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 .
Response to Arguments
In response to the Office Action (dated 24 July 2025), the Applicant submits the following:
Independent base claim 1 has been substantially amended. Support for most of the amendment(s) is found in the instant Specification (p. 31, [0072]). New matter has been entered
Dependent base claims 4 – 8 have also been substantially amended, both in terms of subject matter and claim dependency.
Unelected dependent claims have also been substantially amended.
Applicant states the amended instant claim 1 differs from Sergio in that Sergio uses a polar modifier and does not teach or suggest the amended reaction kinetics limitations (Remarks, p. 2).
Examiner notes the above, however, Sergio discusses processes in which a polar additive is used (col. 6, line 46 – col. 7, line 49). The argument pertaining to the aforementioned reaction kinetics is considered moot as the limitations established on said reaction kinetics is rejected herein for indefiniteness.
Applicant discloses various claim dependency changes & requests that claims 9-42 be rejoined and examined (Remarks, p. 3).
The propriety of the restriction requirement will be reconsidered when all the claims directed to the elected invention are in condition for allowance. See MPEP § 821.04.
This rejection is FINAL.
Election/Restriction
Claim 7 is withdrawn from consideration as being directed to a non-elected species, namely species (ii), which was not elected in Applicant’s reply (dated 5 June 2025). Applicant elected species (i) – a copolymer comprising CD, UVA & SVA, as opposed to species (ii) – a mixture/blend of copolymers comprising CD, UVA & SVA. The fact that claim 7 does not abide by subject matter previously elected is further supported by the express disclosure that claim 7 results in a mixture (claim 7, lines 1-4).
Thus, claim 7 does not align with inventive subject matter previously elected by the Applicant and is therefore withdrawn from consideration. See MPEP § 821.03.
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.
Claims 1-4, 6 & 8 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.
Regarding claim 1, the independent base claim 1 has been substantially amended. Support for most of the amendments has been found in the Specification. New matter is also present in the amendments, shown below:
“…wherein the SVA content in the MDC composition is from 0.5 to 10 wt.% based on a total monomer mixture content in the MDC composition…” (Claim 1, lines 17-18).
New matter is identified in the bolded claimed weight range. The closest range in the Specification is disclosed at 5-10 wt.% (p. 13, [0040]). As the independent base claim 1 now requires the SVA content in the MDC composition in the range of 0.5-10 wt.% while the Specification discloses 5-10 wt.%, claim 1 is rejected for the introduction of new matter. See MPEP § 2163.06 & § 608.04.
Regarding claims 2-4 & 6-8, said claims all depend from independent claim 1 and inherit all the limitations established therein. Similarly, said claims also inherit the failure to abide by the written description requirement as required under 35 U.S.C. §112(a) and are therefore similarly rejected. See MPEP § 2163.06 & § 608.04.
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.
Claims 1-4, 6 & 8 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Regarding claim 1, claim 1 establishes new limitations, two of which create ambiguity, shown below:
“…than would be obtained in the presence of a polar modifier or by otherwise altering reaction kinetics…” (Claim 1, lines 11-12)
“…than would be expected by calculated relative monomer reactivity ratios in the absence of a polar modifier and without otherwise altering reaction kinetics…” (Claim 1, lines 14-16).
Ambiguity arise from the two instances boldened above. No point of reference has been established to determine whether reaction kinetics have been modified. One of ordinary skill in the art would be unable to determine the full metes and bounds of the independent base Claim 1 because it is unclear what conditions are required for determining a calculated SVA content.
Thus, the phrase(s) do not definitively establish the full metes and bounds of the claim limitations, and is therefore indefinite.
Regarding claims 2-4, 6 & 8, said claims all depend from independent claim 1 and inherit all the limitations established therein. Similarly, said claims also inherit the failure to abide by the requirements under 35 U.S.C. § 112(b) and are therefore similarly rejected.
Regarding claim 8, claim 8 is further rejected, as the amended claim details subscript ‘n’ but establishes the limitation of ‘n’ being an “…integer from 2 to about 30” (Claim 8, lines 4 & 5).
Ambiguity arises from the descriptor “about” as the instant specification does not provide an elaboration on “about” or adequately define it in such a way that said claim 8 may be examined (i.e., is 30 the endpoint of the established range or does ‘about’ allow for ‘n’ to go as high as 31 or higher?).
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.
Claims 1 – 4 are rejected under 35 U.S.C. § 103 as being obvious over Sergio et al. (US 8,981,008 B2).
Regarding claims 1, 2 & 4, Sergio teaches tapered triblock copolymers with controlled vinyl distribution (Abstract), said copolymers created via polymerizing conjugated dienes and aromatic monomers. The conjugated dienes, such as butadiene &/or isoprene, may be copolymerized with (unsubstituted) monovinyl aromatics and substituted monovinyl aromatics (col. 1, lines 24-29).
Sergio details the tapered triblock copolymer of the invention (col. 3, lines 22-54) corresponding to the formula B-(B/A)-A, wherein:
- B is a conjugated diene copolymer of at least: one conjugated diene & one monovinyl aromatic.
- (B/A) is distributed monovinyl copolymer of at least: one conjugated diene & one monovinyl aromatic.
- A is a block polymer of at least one monovinyl aromatic.
Conjugated dienes, monovinyl aromatics & substituted monovinyl aromatics suitable for use in this capacity are provided (col. 12, lines 49-63), expressly disclosing combinations of conjugated dienes &/or monovinyl aromatics are also suitable in this capacity. As such, given the examples of compounds suitable in their respective role/function, an embodiment of the formula B-(B/A)-A, may viably be:
- B is a conjugated diene copolymer of:
--1,3 butadiene or isoprene and p-methyl styrene or t-butyl styrene
---This effectively teaches B as [CD/SVA].
- (B/A) is distributed monovinyl copolymer of:
--1,3 butadiene or isoprene and p-methyl styrene or t-butyl styrene and styrene
---Exercising disclosure that aromatic combinations are also suitable in this capacity, this effectively teaches (B/A) as [CD/SVA/UVA].
- A is a block polymer of:
-- Styrene and p-methyl styrene or t-butyl styrene
--- Exercising disclosure that aromatic combinations are also suitable in this capacity, this effectively teaches A as [UVA/SVA].
Sergio discloses in one embodiment the A block as a polystyrene homopolymer (col. 23, lines 32-33). In view of this disclosure, and in tandem with disclosure that aromatic combinations are also suitable in this capacity, Sergio effectively teaches the A block may viably be a polymer of:
-- Styrene and a p-methyl styrene homopolymer (col. 12, lines 56-60).
--- This exercise effectively teaches A as [UVA/SVA-SVA].
The substitutions in p-methyl styrene and t-butyl styrene will incorporate in-chain and end-chain reaction sites. These disclosures read on all limitations established by dependent claims 2 & 4. Sergio provides disclosures teaching & reading on the reaction dynamics in absence of a polar modifier limitations (col. 7, lines 26-49 and col. 9, lines 22-50).
Sergio provides disclosures teaching the limitations pertaining to the reaction dynamics in absence of a polar modifier (col. 7, lines 26-49 and col. 9, lines 22-50).
Sergio discloses the general configuration of the inventive triblock copolymer [B-(B/A)-A]n-X, wherein X is a residual moiety from a coupling agent & where n is an integer from about 2 to about 30 (col. 35, lines 57-61).
Therefore, Sergio teaches a tapered copolymer comprising conjugated diene, unsubstituted vinyl aromatic and substituted vinyl aromatic, said copolymer having the form [CD/SVA]-[CD/SVA/UVA]-[UVA/SVA-SVA], as detailed above. Thus, Sergio provides disclosures and teachings reading on limitations established by claims 1, 2 & 4.
Regarding claim 3, considering Sergio’s tapered triblock copolymer of the formula B-(B/A)-A as described in (col. 38, claim 1):
The B block is 70 – 90 wt.% CD and contains at least 10 wt.% of the total amount of the monovinyl aromatic monomer in the tapered triblock copolymer.
The (B/A) block is 45-66 wt.% CD
The A block is 17-31 wt.% of the tapered triblock copolymer and comprises at least one monovinyl aromatic monomer, & has no requirement of any CD content.
Thus, Sergio effectively describes a copolymer of conjugated dienes and vinyl aromatic monomers, of the form B-(B/A)-A, which tapers from mostly conjugated dienes & a minority of monovinyl aromatic monomers (block B) to zero conjugated dienes and all monovinyl aromatic monomers (block A). Suitable monovinyl aromatic monomers include p-methyl styrene or t-butyl styrene (col. 12, lines 56-59).
Therefore, Sergio teaches a copolymer of a conjugated diene and a substituted vinyl aromatic, further characterized by a tapered distribution of said CD & SVA monomers, from a high & low concentration of CD & SVA, respectively, at block B, to a low & high concentration of CD & SVA, respectively, at block A. As this tapering behavior is supported by the middle (B/A) block having at most 66 wt.% CD (4 wt.% less than the minimum amount of block B), the tapering pattern abides by all 3 blocks B, (B/A) & A, Sergio provides disclosures reading on the instant claim 3.
It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 8 is rejected under 35 U.S.C. § 103 as being obvious over Sergio et al. (US 8,981,008 B2; hereinafter Sergio’008) in view of Sergio et al. (US 2017/0210841 A1; hereinafter Segio’841).
Regarding claim 8, Sergio’008 remains as applied above. Sergio’008 discloses copolymerization of conjugated diene and monovinyl aromatic monomers in the absence of a polar modifier will result in a tapered diblock copolymer (col. 7, lines 26-30), however does not expressly teach the structure as required by the claim.
In the same field of endeavor, Sergio’841 teaches counter tapered diblock copolymers – applicable for use in asphaltic compositions (i.e., road paving), adhesives, and sealants. Said copolymers are of the form A-[A/B], comprising conjugated dienes and monovinyl aromatic compounds (Abstract). Sergio’841 discloses the general configuration of the form (A-[A/B])n-X wherein X is a residue of a coupling agent & n is an integer from 2 to about 30 (p. 30, claim 4).
Sergio’841 details the A-[A/B] diblock copolymer comprises at least one conjugated diene and at least one monovinyl aromatic monomer (p. 2, [0013]). Examples of embodiments wherein the monovinyl aromatic monomers and conjugated diene monomers are styrene and butadiene or isoprene are provided, disclosing one embodiment as (S-[B/S]m)n-X wherein m is an integer, X is a residue of a coupling agent & n is an integer from 2 to about 30 (p. 7, [0060]). Suitable conjugated dienes for this purpose are butadiene, isoprene or combinations thereof (p. 8, [0069]). Suitable monovinyl aromatic monomers for this purpose are styrene, p-methylstyrene, t-butyl styrene or combinations thereof (p. 8, [0070]).
In the instance where the integer m is 1, disclosures and teachings from Sergio’841 teach the general structure of (S-[B/S]m)n-X may have the form (S-[B/S])n-X, where n is an integer from 2 to about 30 and X is a residual moiety from a coupling agent. Exercising the fact that the monovinyl aromatic monomer (S) may be styrene or p-methylstyrene or a combination of both, (S-[B/S])n-X thus becomes (styrene-[butadiene/p-methylstyrene])n-X. Converting the aforementioned compounds to their designated abbreviations as detailed in the instant application, this embodiment becomes [UVA-(CD-SVA)]n-X, resulting in the structure as required by the claim.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the above disclosures from Sergio’841 into the teachings provided by Sergio’008, as Sergio’008 discloses copolymerization of conjugated diene and monovinyl aromatic monomers in the absence of a polar modifier will result in a tapered diblock copolymer and Sergio’841 discloses the applicable uses of the inventive diblock copolymer in fields and applications aligning with those detailed in Sergio’008.
Modification of Sergio’008 in view of Sergio’841 as detailed above results in the general structure as required by the claim.
Allowable Subject Matter
Claim 6 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and in a manner that overcomes the rejections under 35 U.S.C. 112(a) and 112(b) above.
Claim 6, dependent upon the independent base claim 1, is drawn to a modified diene copolymer (MDC) composition comprising the following structure:
UVA-[CD/SVA]-[CD/SVA/UVA]-[UVA/SVA-SVA] – (p. 3, Claim 6, lines 1-5).
Wherein the above structure is obtained by polymerizing a UVA monomer prior to copolymerizing the CD, SVA and UVA monomers, wherein said copolymerization results in the structure below:
[CD/SVA]-[CD/SVA/UVA]-[UVA/SVA-SVA] – (p. 1, Claim 1, lines 1-6).
The closest prior art is attributed to Sergio et al. (US 8,981,008 B2; hereinafter Sergio’008) and Sergio et al. (US 2017/0210841 A1; hereinafter Segio’841).
Sergio’008 teaches tapered triblock copolymers may be obtained by coupling, partial coupling, or with a multifunctional initiator. Examples of various embodiments of the invention are provided, however, none of the generic embodiments disclosed read on the structure as required by the claim. Further, although Sergio’008 teaches the use of a coupling agent &/or a multifunctional initiator, Sergio’008 fails to teach a UVA (i.e., styrene) as said coupling agent or multifunctional initiator (col. 10, lines 7-43).
Sergio’841 teaches tapered copolymers may be prepared via anionic polymerization and modified to cater to their intended applications. Sergio’841 also teaches coupling and polymerization with multifunctional imitators to directly synthesize polymers (p. 1, [0008]). Like Sergio’008, embodiments are provided (p. 7, [0060]), however, none of said embodiments read on the structure as required by the claim.
A thorough search of the prior art neither revealed nor identified any other reference or combination of references, including the closest prior art of Sergio’008 et al. (US 8,981,008 B2) & Sergio’841 et al. (US 2017/0210841 A1), which would anticipate, fairly teach, suggest or otherwise motivate one of ordinary skill in the art to arrive at the claimed invention. The teachings of Sergio’008 & Sergio’841 are inadequate & insufficient (independently or in view of one another) for one of ordinary skill in the art to anticipate or render obvious the composition that is claimed in the instant application.
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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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, Robert Jones can be reached at (571)270-7733. 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.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights