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 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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
Claim Rejections - 35 USC § 103
Claim(s) 23 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coignoul (WO 01/02263 A1) in view of Morishita (US 2019/0284362 A1) as evidenced by Allen (U.S. Pat. No. 5,130,340).
Regarding Claims 23 and 24, Coignoul teaches foamable compositions comprising linear styrene-(ethylene/propylene) diblock copolymer (“SEP”) with a styrene content of 28 wt% (“Kraton G1701”) and additional styrene-(ethylene/butylene)-styrene triblock copolymer (reading on “ethylene copolymer”) (Pages 14-16). The block copolymers are hydrogenated to a degree of 80% or more (Page 7, Lines 2-5). One of ordinary skill would readily infer linear styrene-(ethylene/propylene) diblock copolymer to be a hydrogenated styrene-isoprene diblock copolymer. Kraton G1701 has a molecular weight of roughly 164,000 as evidenced by Allen (Table 1).
Coignoul teaches the vinyl content of the conjugated diene block is preferably at least 55 mol% (Page 6, Lines 24-31). As taught by Morishita, in the context of isoprene polymerization, both 1,2-addition and 3,4-addition corresponds to vinyl content (¶ 59). Thus, Cougnoul differs from the subject matter claimed in that it is not indicated what proportion of the vinyl content corresponds to 3,4-addition. In this regard, Morishita also teaches it was known the content of 3,4- and 1,2- additions directly impacts the final characteristics of the composition, particularly with respect to flexibility, transparency, and glass transition temperature (¶ 56). Thus, Morishita indicates the vinyl content / 3,4-addition content to be known result effective variables subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal 3,4-vinyl contents within the scope of the present claims so as to produce desirable characteristics within the resulting foam compositions.
Claim(s) 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allen (U.S. Pat. No. 5,130,340) in view of Morishita (US 2019/0284362 A1).
Regarding Claim 23, Allen teaches foamable compositions comprising comprising linear styrene-(ethylene/propylene) diblock copolymer (“SEP”) with a styrene content of roughly 26 wt% (“Kraton G1701”) and molecular weight of 164,000 (Table 1; Examples 5 and 6). One of ordinary skill would readily infer linear styrene-(ethylene/propylene) diblock copolymer to be a hydrogenated styrene-isoprene diblock copolymer. Allen teaches degrees of hydrogenation such that diene block B have a residual unsaturation of less than 20%, preferably less than 10% of the original value (Col. 4, Line 67 to Col. 5, Line 2), equivalent to hydrogenations of greater than 80 mol%, preferably greater than 90 mol% respectively.
Allen teaches preferred vinyl contents ranging from 35-55% (Col. 5, Lines 54-57). As taught by Morishita, in the content of isoprene polymerization, both 1,2-addition and 3,4-addition corresponds to vinyl content (¶ 59). Thus, Allen differs from the subject matter claimed in that it is not indicated what proportion of the vinyl content corresponds to 3,4-addition. In this regard, Morishita also teaches it was known the content of 3,4- and 1,2- additions directly impacts the final characteristics of the composition, particularly with respect to flexibility, transparency, and glass transition temperature (¶ 56). Thus, Morishita indicates the vinyl content / 3,4-addition content to be known result effective variables subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal 3,4-vinyl contents within the scope of the present claims so as to produce desirable characteristics within the resulting foam compositions.
Claim(s) 1, 7-14, 23, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morishita (US 2019/0284362 A1).
Regarding Claims 1, 7, and 23, Morishita teaches foamable compositions comprising hydrogenated styrene-diene block copolymer, peroxide crosslinking agent, and foaming agent (Abstract; Examples 14 and 15; ¶ 214-217, 222-223, Table 6). Example 14 contains hydrogenated styrene-isoprene-styrene triblock copolymer with a styrene content of 21 wt%, hydrogenation rate of 89 mol%, and weight average molecular weight of 103,000, peroxide free radical initiator, and foaming agent (Tables 5 and 6). The particular embodiment of Morishita differs from the subject matter claimed in that a hydrogenated styrene-isoprene block copolymer is not used. In this regard, Morishita teaches the block copolymer used can be any number of linear configurations, including diblock A-B and triblock A-B-A (¶ 78). It would have been obvious to one of ordinary skill in the art to utilize a diblock architecture in lieu of a triblock architecture, thereby predictably affording workable foamable compositions of excellent damping/sound insulation characteristics in accordance with the teachings of Morishita (Abstract; ¶ 78).
Morishita teaches a combined 1,2- and 3,4- vinyl content of 20 mol% or more (¶ 56). Morishita teaches the substituent constant of side chains (related to the ratio between 1,2- and 3,4- additions) can range widely from 0.25 to 1.1 (¶ 64) such as 0.47 from a 1,4- to 3,4- molar ratio of 40/60 (¶ 66). Thus, Morishita at the very least is seen to imply 3,4- additions of 20 mol% x 0.6 = 12 mol% of more as being within the scope of invention. Such a range overlaps that claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Morishita suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Morishita. See MPEP 2123.
Regarding Claims 8 and 9, Morishita teaches bis(t-butyldioxyisopropylbenzene) and azodicarbonamide as peroxide and foaming agent respectively (¶ 191-192).
Regarding Claim 10, Morishita teaches the further incorporation of crosslinking aid (¶ 113-114), construed as crosslinking co-agent.
Regarding Claims 11-14 and 24, Morishita teaches the further incorporation of olefin-based polymer in a olefin-based polymer:block copolymer weight ratio spanning 1/99 to 99/1 (¶ 99-106). The olefin-based polymer can be ethylene-vinyl acetate with a vinyl acetate content of preferably 15-35 wt% (¶ 100). The described weight ratio overlaps that claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Morishita suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Morishita. See MPEP 2123. Morishita teaches the further incorporation of crosslinking aid (¶ 113-114), construed as crosslinking co-agent.
Double Patenting
Claims 1, 7-14, 23, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 10, 12-19, 30, and 31 of copending Application No. 17/826,661. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claims 1 and 30 of copending ‘661 are drawn to the same compositions as of instantly claims 1 and 23 with the exception that the first block is “conjugated diene monomer unit” generically as opposed to isoprene. In this regard, claim 2 of the copending application indicates the block can be a block of an isoprene unit. Claim 10 recites a 3,4-vinyl content of 5-60 mol%, which overlaps the instantly claimed range. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and ‘661 suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of ‘661. See MPEP 2123. All remaining limitations are found within the ‘661 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7-14, 23, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of copending Application No. 18/937,416. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, the 416 claims are also directed toward hydrogenated linear di-block styrene-diene foam compositions. The blocks can be styrene and isoprene (Claim 4). While the formula of ‘416 is of (A-B)-OH, the structure falls within the scope of the genus of diblock copolymers claimed. Claim 12 recites a 3,4-vinyl content of 5-60 mol%, which overlaps the instantly claimed range. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and ‘416 suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of ‘661. See MPEP 2123. All remaining limitations are found within the ‘416 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant argues Coignoul indicates a vinyl content of at least 55 mol%, which exceeds the range claimed. This is not found persuasive as 1) the range is only “preferred”, which indicates values outside the range are also within the scope of invention and 2) the range seemingly pertains to the total content (1,2 and 3,4 addition) as opposed to solely 3,4-addition. The claimed vinyl bond content range is seen to be obvious to reasons set forth above.
Applicant argues Allen indicates a vinyl content of 35-55 mol%. This is not found persuasive as 1) the range is only “preferred”, which indicates values outside the range are also within the scope of invention and 2) the range seemingly pertains to the total content (1,2 and 3,4 addition) as opposed to solely 3,4-addition. Even arguendo if this weren’t the case, the 35-55 range of Allen clearly overlaps the range claimed. The claimed vinyl bond content range is seen to be obvious to reasons set forth above.
Applicant generally argues the foamable compositions claimed are for footwear whereas Morishita describes other purposes. This is not found persuasive. The claims are directed toward foamable compositions and not to the resulting foam articles. The teachings of Morishita meet all limitations claimed.
Applicant generally argues a di-block copolymer is different from a “multi-block copolymer”. This is not found persuasive as Morishita explicitly teaches di-block copolymers can be used. Therefore, the use of diblock copolymers would have been obvious in view of Morishita. While Applicant urges the examples of Morishita all use “multi-block copolymers”, a reference is not solely limited to inventive examples, they are relevant for all they contain. MPEP 2123.
Applicant argues most shoe soles on the market are made from styrene block copolymer materials and very few commercial products of diblock copolymers are commercially available. In response, the examiner finds commercial availability of little relevance with respect to whether or not the claimed subject matter is obvious in view of the prior art. Morishita unambiguously states diblock copolymers can be used. Therefore, the use of diblock copolymers in such foaming compositions is seen to be obvious in view of the prior art. It is also noted diblock copolymers are already commercially available and are known to be useful for footwear products. See Kraton (attached).
Applicant argues unexpected results, namely the diblock copolymers can be compounded well. This is not found persuasive. Firstly, the claims at issue are directed toward foamable compositions and not methods of compounding. Therefore, it is unclear what relevance the referred to data has with respect to the subject matter claimed. Secondly, the prior art already indicates diblock copolymers can be successfully compounded. See for instance Example 6 of Allen. Applicant’s observations are not seen to hold significance to the extent that they can be regarded as unexpected. At the very least, the data of record does not draw a comparison with the closest prior art (see Kraton G 1701 of Allen / Coignoul).
Applicant also alleges the resulting foams unexpectedly have advantageous anti-slip characteristics. This is not found persuasive as the claims at issue are directed toward foamable compositions and not to the resulting foamed articles. It is unclear what relevance the referred to data has with respect to the subject matter claimed. Also, EEPS-1 and EEPS-2 are within the scope of the claims (the claims do not require blocks consisting of styrene and isoprene and the language “being a polymer block of” within the claims is not defined as meaning “consisting of”) and yet fail to achieve the results Applicant alleges is unexpected. There is insufficient evidence of record the diblock copolymers of the claims are critical. Moreover, the claims at issue are not commensurate in scope with the evidence offered in support of unexpected results. The data pertains to cured foams from peroxide/blowing agent, but claims 23 and 24 do not require these elements. Claim 1 does not require any particular degree of curing (e.g. curing agent amount) or foaming (blowing agent amount). Further, diblock copolymers with only 25-37 wt% styrene, 80-99% hydrogenation, and 9 mol% 3,4-vinyl bond content are probed, whereas the scope of the claim extends above and beyond such ranges. There insufficient evidence that the results alleged to be unexpected occurs throughout the scope of the claim and one of ordinary skill would be unable to ascertain a trend within the data to reasonably extend the probative value thereof to encompass the ranges claimed.
Applicant generally argues the claims are different from those identified within the double patenting rejections. It is maintained the subject matter claimed is not patentably distinct from the copending claims for reasons set forth above.
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.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759