DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/3/2025. In particular, new claims 33-34, not previously presented and therefore not previously considered, are added. Claim 32 is cancelled.
It is noted that the newly introduced limitations were not present at the time of the preceding action. For this reason, it is proper to make the present action FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 30 is rejected under 35 U.S.C. 102(a)(1)as being anticipated by JP 2017-088748. The rejection set forth in paragraphs 8-12 of the Office Action mailed on 6/4/2025 is incorporated herein by reference in its entirety.
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.
Claims 1-17, 19-31, and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (US 2011/0275731).
The rejection set forth in paragraphs 14-23 of the Office Action mailed on 6/4/2025 is incorporated herein by reference in its entirety. At least paragraph 22 of the Office Action mailed on 6/4/2025 addresses newly presented claims 33-34.
Claims 1-17, 19-29, 31, and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-088748 and further in view of Shimizu et al. (US 2011/0275731). The rejection set forth in paragraphs 24-38 of the Office Action mailed on 6/4/2025 is incorporated herein by reference in its entirety.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (US 2011/0275731) and further in view of JP 2013-010833. The rejection set forth in paragraphs 39-42 of the Office Action mailed on 6/4/2025 is incorporated herein by reference in its entirety.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-088748 in view of Shimizu et al. (US 2011/0275731) and further in view of JP 2013-010833. The rejection set forth in paragraphs 43-46 of the Office Action mailed on 6/4/2025 is incorporated herein by reference in its entirety.
Claims 1-31 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Baghdadi (US 2018/0094129) and further in view of Shimizu et al. (US 2011/0275731). The rejection set forth in paragraphs 47-57 of the Office Action mailed on 6/4/2025 is incorporated herein by reference in its entirety.
Response to Arguments
Applicant's arguments filed 9/3/2025 have been fully considered but they are not persuasive.
Applicant argues that paragraph 13 of JP ‘748 only teaches the constituent blocks and does not specify the particular block types or the number of blocks. This is not persuasive. Paragraph 13 establishes a diblock copolymer of styrene block and conjugated diene block and is hydrogenated because paragraph 13 states “a hydrogenated block copolymer A’ consisting of a styrene hydrocarbon polymer block a and a conjugated diene compound polymer block b”. “Consisting of” indicates that other blocks and monomers are excluded.
Applicant argues that paragraph 16 of JP ‘748 only discloses the content of polymer block a, but not the amount of styrene unit specifically. Paragraph 16 shows the styrene block has 5-80 mass% ‘polymer block a’ which is the styrene block (paragraph 13). Thus, as block a is the styrene block, the amount of block a is the amount of styrene. It is unclear how the Applicants would interpret this other than the amount of the styrene block, which is polymer block a, is the amount disclosed in the reference.
Applicant argues that JP ‘748 does not disclose the actual amount of styrene unit, hydrogenation rate, or Mw of the diblock specifically. This is not persuasive. As discussed above, paragraphs 13-17 of the applied reference specifically teaches the amount of styrene block and the hydrogenation rate. JP ‘748 states that copolymer A comprises copolymer A’ (paragraph 13) and that the Mw of copolymer A is preferably 100,000-170,000 (paragraph 22). As copolymer A comprises copolymer A’, the Mw of A comprises the Mw of A’. In other words, the Mw of A describes the Mw of A’ because JP ‘748 teaches A comprises A’.
Applicant directs attention to Table 1 stating that component A is mainly SEBS, SEPS. This is not relevant to the rejection as the claims do not exclude SEBS or SEPS.
Applicant states that the actual amount of styrene unit and hydrogenation rate are not taught. However, this contradicts the explicit teachings in paragraphs 13-17. Paragraph 17 says hydrogenation rate is 80% or more. Applicant argues that the unit of the hydrogenated rate is not clearly defined in the prior art and that the unit could be mol% or wt%. This is not persuasive as hydrogenation rate is based on the decrease in the unsaturated bonds as shown by the top of pg. 29 of the instant specification. Note, JP ‘748 uses the H-NMR to determine the hydrogenation rate (paragraph 17) and thus is necessarily mol%.
Applicant argues that JP ‘748 does not teach the diblock copolymer having the amount of styrene, degree of hydrogenation or Mw. This is not persuasive for the reasons discussed above, which are incorporated herein.
Applicant argues that the vinyl aromatic based copolymer of Shimizu is too broad, and thus one of ordinary skill in the art would not be able to directly infer the claimed hydrogenated styrenic diblock copolymer from the broad scope of Shimizu.
This is not persuasive. Shimizu explicitly recites a block copolymer where styrene is preferred (paragraph 61) and butadiene is preferred (¶ 65). Shimizu explicitly state the degree of hydrogenation is 60% or more (¶60, 71) and that the amount of styrene is 5-80 mass %(¶62). Shimizu is not limited to the number of blocks in the examples, but requires a vinyl aromatic monomer unit (I) and a conjugated diene monomer unit (II). Shimizu teaches an embodiment where there is a segment of the aromatic monomer and a block segment of the conjugated diene monomer (¶ 91) which is two blocks. Thus, Shimizu teaches diblock polymers.
The prior art is not limited by the examples and is relevant for all that it teaches. See MPEP 2123.
Applicant includes a discussion of the differences between a diblock copolymer and a multiblock copolymer noting that diblock copolymers are not considered thermoplastic elastomers. However, it is noted that Shimizu does not require a thermoplastic elastomer block copolymer, and thus the discussion is not persuasive.
Applicant’s argument that the prior art is overly broad is not persuasive because the prior art teaches the claimed limitations and does not require triblock copolymers.
Applicant argues that the combination of JP ‘748 and Shimizu is not appropriate because the main resin types in the compositions are different and the proportions of the copolymers do not overlap so no motivation can be found apart from hindsight.
This is not persuasive.
It is not a requirement that the features of two references be identical in order for them to be combinable. If this were a requirement, combinations of references would be impossible.
Additionally, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The combination of the references does not take into account only knowledge gleaned only from the applicant's disclosure, but relies on the teachings within the references themselves, and thus, the combination is proper. The reasons to combine these references were presented in the previous rejection of record, which are incorporated into this action by reference.
Applicant argues different operating conditions where JP 748 melt kneads at 180-230ºC while Shimizu melt kneads at 120ºC. However, neither Shimizu nor JP 748 are limited to the specific melt kneading temperatures argued by Applicants and even if they were, it is once again noted that the teachings of the references need not be identical in order for the references to be combined. If this were a requirement, combinations of references would be impossible. Furthermore, the claims are not directed to a process, so the discussion of a melt-kneading temperature is irrelevant. Regardless, one of ordinary skill in the art is capable of determining operating conditions for the references through routine procedures.
Applicant argues JP ‘748 and Shimizu are directed to different problems to be solved and not in the same field. This is not persuasive. There is no requirement that the prior art seek to solve the same problem. The instant specification states: “The present disclosure relates to a crosslinkable and foamable composition and foam obtained by crosslinking and foaming the aforesaid crosslinkable and foamable composition,” which is the field of endeavor of the instant invention. JP ‘748 forms a foamable composition (¶ 1) and can include crosslinking agents (¶ 75) and is therefore crosslinkable. Shimizu teaches a crosslinkable and foamable composition (¶ 1). Thus, both JP ‘748 and Shimizu are in the same field of endeavor as the instant specification and are from the same field as each other.
Applicant argues the diblock copolymer yields unexpected results. It is noted that any allegation of unexpected results must satisfy MPEP 716.02, which requires that the data be commensurate in scope with the claimed invention (MPEP 716.02(d)).
The data includes the diblock copolymers SEB-1 through SEB-6, (S/EB)-EB-1, (S/EB)-EB-2, SEP-1, EEPS-1 and the triblock copolymers SEBS-1, SEBS-2, SEPS-1.
The SEB diblock copolymers have amounts of styrene of 20, 24.7, 29.8 wt%, hydrogenation of 80, 80.8, 83.4, 86, 87 mol%, and Mw of 59,000, 60,000, 75,000, 112,000. The (S/EB)-EB, SEP, and EEPS diblock copolymers have a styrene amount of 19.7, 25, 28.5, 37, 37.1 wt%, hydrogenation of 78, 78.1, 80, 84 mol%, and Mw of 75,000, 76,000, 118,000, 121,000, 128,000.
Thus, the data describes a styrene content of about 19.7-37.1 wt%, a degree of hydrogenation of 78-87 mol%, and a Mw of 59,000-128,000. This data is not commensurate for the scope of 10-60 wt% styrene, 50-100 mol% hydrogenation, and Mw of 30,000-200,000. The claims include large genuses of “free radical initiator” and “foaming agent” which are not represented by the species present in the examples.
Furthermore, JP ‘748 states that the diblock copolymers can reduce the melt viscosity without adding a softener (¶ 12) indicating improved processability, meaning this is not an unexpected result, but actually expected given the teachings of the prior art. This means the data fails to meet 716.02(b). Applicants have not established that the results are actually unexpected and significant and given that JP ‘748 teaches use of diblock copolymers for reducing melt viscosity without adding a softener, this is evidence that such an effect was not, in fact, unexpected.
With regards to crosslinkability, it is noted that the instant specification compares SEBS-2 with SEB-5 at Table 2b (pg. 44). SEBS-2 has a degree of hydrogenation of 83.5% with a styrene content of 24 wt%, and Mw of 57,000. SEB-5 has a styrene content of 24.7 wt%, degree of hydrogenation of 80.8 mol% and Mw of 60,000. SEB-5 contains more conjugated diene units (because it has a lower degree of hydrogenation) and does not have a third block. Thus, it would be expected that SEB-5 has a higher degree of crosslinking. The presence of a third styrene block would be expected to sterically interfere with any crosslinking reactions occurring on the conjugated diene block in the copolymer. Thus, this is not an unexpected result, nor has Applicant provided any factually supported objective evidence in support of such a contention.
Applicant argues that there is a balance between tear and compression set achieved with the claimed invention comparing SEB-1 to SEBS-1. However, SEBS-1 does not represent the closest prior art because JP ‘748 teaches diblock copolymers used to produce foamed and crosslinked products. This means the data also fails to compare the instant invention with the closest prior art, which is not the comparative example of the instant invention argued by Applicant but is actually the foamed and crosslinked composition of JP ‘748. Thus, as the data does not compare the instant invention to the closest prior art, which is required to persuasively shown unexpected results and/or criticality (See MPEP 716.02 (e)), the data is does not persuasively show unexpected results of the instantly claimed invention.
For the reasons provided above, Applicant’s arguments filed on 9/3/2025 are not persuasive.
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 K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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, Randy Gulakowski can be reached at (571) 272-1302. 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.
/K. BOYLE/Primary Examiner, Art Unit 1766