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 .
This Office Action is in response to Applicant’s amendments and remarks in response to a Nonfinal Rejection filed July 15, 2025.
The previous objection of claim 1 is withdrawn due to Applicant’s amendments.
The previous 112(b) rejection of claims 1-5 are withdrawn due to Applicant’s amendments.
In response to applicant' s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application' s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
The previous double patenting rejections over 17/788994 and 18/686594 is maintained.
Claims 1-5 are currently pending.
This Action is FINAL.
Claim Analysis
Summary of Claim 1:
A chloroprene-based block copolymer latex, comprising a chloroprene-based block copolymer, wherein:
the chloroprene-based block copolymer contains 5 to 30% by mass of a polymer block (A) and 70 to 95% by mass of a chloroprene-based polymer block (B); the polymer block (A) is derived from a monomer;
a polymer obtained by polymerization of the monomer alone and having a number average molecular weight of 10,000 to 30,000 has a glass transition temperature of 80°C or higher can be obtained;
a number average molecular weight of the polymer block (A) is 10,000 or more,
the chloroprene-based polymer block (B) includes a chloroprene monomer unit; and
when the chloroprene-based block copolymer latex is molded by immersion molding to obtain a film and then the film is heat-treated at 130°C for 30 minutes, a tensile strength at break measured in accordance with JIS K6251 of the film is 17 MPa or more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ozoe et al. (JP 2010001458 as listed on IDS dated June 24, 2022) as evidenced by Hatae et al. (US 20140296437).
The examiner will refer to the English translation of Ozoe et al. provided by the applicant.
Regarding claim 1, Ozoe et al. disclose in Example 2, a latex was formed from a chloroprene block copolymer comprising a polymethacrylic acid block and chloroprene diblock copolymer [0094-0099]. Ozoe et al. further disclose the composition has a methacrylic acid content of 22.0 wt%, equivalent to 78 wt% of chloroprene, thereby reading on polymer block A and lying within the claimed ranges of block (A) and block (B).
Ozoe et al. is silent on the glass transition temperature of the monomer of polymer block (A) as recited in the instant claim.
However, as written any polymer under certain reaction conditions will have a glass transition within the claimed range. For instance, Hatae et al. teach a methacrylic acid monomer capable of radical polymerization forms a homopolymer that has a glass transition temperature of 228°C ([0073-0074], [0081-0082]), thereby lying within the claimed range. Therefore, one of ordinary skill in the art would have considered the glass transition temperature of the polymer formed from the monomer of polymer block (A) to be expected.
Ozoe et al. is silent on the number average molecular weight of polymer block (A) in Example 2.
However, Ozoe et al. more generally teach the number average molecular weight of polymer block (A) ranges from 500 to 500,000 [0051], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to use the broad range of the number average molecular weight of polymer block (A) as taught by Ozoe et al.
Ozoe et al. is silent on the tensile strength of the latex as recited in the instant claim.
However, the tensile strength is dependent on the structure of the block copolymer. Ozoe et al. teach a substantially identical block copolymer as recited in the instant claim. Therefore, one of ordinary skill in the art would have considered the tensile strength of the chloroprene-based block copolymer latex of Ozoe et al. to be expected.
Regarding claim 2, Example 2 of Ozoe et al. does not teach the amount of block (A) and block (B) with respect to 100% by mass of the chloroprene based block copolymer as recited in the instant claim.
However, Ozoe et al. generally teach the amount of hydrophilic polymer block in the block copolymer is preferably between 1 to 50 wt% of the block copolymer [0025], thereby lying within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Ozoe et al.
Regarding claim 3, Example 2 of Ozoe et al. does not teach a particle size as recited in the instant claim.
However, Ozoe et al. does generally teach the chloroprene latex particles are about 0.1µm [0007], equivalent to 100 nm and thereby lying within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Ozoe et al.
Regarding claim 5, Ozoe et al. disclose the latex of the invention may be used for dipping gloves, rubber threads, and rubber coated fabrics [0068], thereby reading on the instant claim.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ozoe et al. (JP 2010001458 as listed on IDS dated June 24, 2022) in view of Ito et al. (US 6262969) in further view of Nishino et al. (WO 2018181801 as listed on IDS dated June 24, 2022).
The examiner will refer to the English translation of Nishino et al. provided by the applicant.
The latex disclosed in claim 1 is incorporated herein by reference.
Ozoe et al. disclose a chloroprene block in Example 2 as discussed in the rejection for claim 1.
Ozoe et al. does not teach a chloroprene-based polymer block (B) has a polyfunctional monomer and a chloroprene monomer unit as recited in the instant claim.
Nishino et al. teach a block copolymer of a chloroprene polymer comprising a functional group represent by chemical formula (1) or (2) shown below:
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Nishino et al. further teach formulas of the block copolymer include A-B-X (a), among others, wherein A is a block of an aromatic vinyl compound, B represents a block of chloroprene, and X represents a functional group represent by (1) or (2) [0023], thereby reading on the block (B) as recited in the instant claim. Nishino et al. offer the motivation that the functional group becomes a cross-linking point and improves the heat resistant strength of an adhesive composition [0021]. Ozoe et al. is also concerned with the heat resistant strength in certain applications [0038]. Therefore, it would have been obvious to one of ordinary skill in the art to replace the chloroprene-based block of Ozoe et al. with the chloroprene block with the polyfunctional monomer of Nishino et al. with reasonable expectation that the heat resistant strength would improve.
Response to Arguments
Applicant’s arguments, see pages 5-8, filed July 15, 2025, with respect to the rejection(s) of claim(s) 1-5 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in Ozoe et al. (JP 2010001458 as listed on IDS dated June 24, 2022) under 35 U.S.C. 103.
Applicant states “Ozoe does not disclose that the number average molecular weight of the polymer block (A) must be 10,000 or more”.
The examiner replies that while Ozoe et al. do not teach the number average molecular weight of the polymer block (A) in Example 2, Ozoe et al. more generally teach the number average molecular weight of polymer block (A) ranges from 500 to 500,000 [0051], thereby overlapping the claimed range.
Applicant states “the latex of Ozoe is a latex containing an amphiphilic polymer intended to provide a CR latex-based adhesive, and it is not possible to obtain a film therefrom by immersion molding.”
The examiner responds that Ozoe et al. still teach a substantially identical block copolymer as recited in the instant claim. Therefore, one of ordinary skill in the art would have considered the tensile strength of the chloroprene-based block copolymer latex of Ozoe et al. to be expected.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 4 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. (17/788994) in view of Ozoe et al. (JP 2010001458 as listed on IDS dated June 24, 2022). Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to a chloroprene based block copolymer containing 5-30% by mass of a polymer block (A) and 70-95% by mass of a chloroprene-based polymer block (B), wherein polymer (A) is derived from a monomer, when the monomer is polymerized alone, a polymer with a glass transition temperature of 80°C or higher can be obtained, and the chloroprene-based polymer block (B) includes a chloroprene monomer unit and a polyfunctional monomer unit.
The claims differ in that claim 1 of ‘994 does not recite a number average molecular weight of polymer block (A). However, Ozoe et al. teach a latex formed from a chloroprene block copolymer comprising a polymethacrylic acid block and chloroprene diblock copolymer the number average molecular weight of polymer block (A) ranges from 500 to 500,000 [0051], thereby overlapping the claimed range. Therefore, it would have been obvious to use the number average molecular weight as taught by Ozoe et al. given that both are related to chloroprene block copolymer latexes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 4 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. (18686594) in view of Ozoe et al. (JP 2010001458 as listed on IDS dated June 24, 2022). Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to a chloroprene based block copolymer containing 30% by mass of a polymer block (A) and 70% by mass of a chloroprene-based polymer block (B), wherein polymer (A) is derived from a monomer, when the monomer is polymerized alone, a polymer with a glass transition temperature of 80°C or higher can be obtained, and the chloroprene-based polymer block (B) includes a chloroprene monomer unit and a polyfunctional monomer unit.
The claims differ in that claim 1 of ‘594 does not recite a number average molecular weight of polymer block (A). However, Ozoe et al. teach a latex formed from a chloroprene block copolymer comprising a polymethacrylic acid block and chloroprene diblock copolymer the number average molecular weight of polymer block (A) ranges from 500 to 500,000 [0051], thereby overlapping the claimed range. Therefore, it would have been obvious to use the number average molecular weight as taught by Ozoe et al. given that both are related to chloroprene block copolymer latexes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763