DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 1/15/26. Particularly, claim 1 now requires one of a block copolymer to be required. Further, the amount of non-hydrogenated SIS is further limited. Therefore, the following action is made final.
Claims 1-2, 4, 7, 11-12, 19, 24-27 are rejected.
Claims 3, 6, 8, 13, 15, 17, 21, 23 and 28 are objected to.
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 .
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4, 7, 11-12, 19, 24-25 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-117744 (herein Atsushi) as evidenced by US 2018/0215910 (herein Krishna), US 2017/0014312 (herein Suzuki), US 2020/0251082 (herein Smith), US 2013/0101927 (herein Taneichi) and US 2009/0026934 (herein Fujita).
In setting forth the instant rejection, a machine translation of Atsushi has been relied upon.
Note that 102 rejections can have multiple references (in the instant case the evidentiary references) in certain situations such as showing that a characteristic of a material of the primary reference is inherent. See MPEP 2131.01(III).
As to claims 1-2, 4, 7, 11, 19, and 24, Atsushi discloses a thermoplastic elastomer composition (see abstract, paragraph 4 and examples). Specific attention is drawn to examples in table 1, which are within the claimed range:
Example 6
Example 7
Hydrogenated SIS
Hybrar 7311
48 wt%
Hydrogenated SIS
Hybrar 7125
48 wt%
Non-hydrogenated SIS
Hybrar 5127
15 wt%
15 wt%
Polypropylene
11 wt%
11 wt%
Tackifier P-100
26 wt%
26 wt%
Note that wt% is deduced from parts and total parts. The values are deduced to two significant digits to correspond to the claims that limit the ranges to two significant digits.
Hybrar 5127, which is a styrene isoprene block copolymer SIS that has a tan delta peak of 20 oC (see paragraph 6 of Krishna for evidence). Hybrar 5127 has a weight average molecular weight of about 120,000 g/mol. See paragraph 100 of Suzuki for evidence. Also note that Hybrar 5127 is the same non-hydrogenated SIS having a tan delta and molecular weight within the claimed range utilized in the examples of the instant application.
The tackifier is P-100. See paragraph 23. P-100 has a softening point of 100 oC. See paragraph 105 of Fujita for evidence.
Hybrar 7311 is vinyl isoprene (soft block) SIS. See paragraph 23. Hybrar 7311 has a Mw of 130,00 g/mol. See paragraph 214 of Smith for evidence. Hybrar 7311 has a tan delta of -17 oC. See paragraph 130 of Taneichi for evidence.
Thus, the difference between the claims and Atsushi is that the examples of Atsushi have a non-hydrogenated SIS (Hybrar 5127) of 15 wt%, which is just outside the claimed range of 20 to 75 wt%. However, paragraph 7 states that the non-hydrogenated (mistranslated as non-additive and not hydrogenated) is added to improve compression set and is added in amounts up to 40 wt% (thus 0 to 40 wt%). Also see abstract.
Therefore, it clear that the broader disclosure 1) teaches amounts that substantially overlap the claimed range and 2) motivates one to increase the amount of non-hydrogenated SIS (e.g. from 15 to 20 wt% and within the claimed range) in order to further improve the compression set. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Further, it would have been obvious at the time of the inventio to have further increase the amount of non-hydrogenated SIS to further improve compression set. See paragraph 7 of Atsushi.
As to claim 12, since the Hybrar 5127 has a Tg of 20 oC, the composition must also have a Tg of 20 oC.
As to claim 25, process oil (plasticizer) may be used in 5 wt% or less. See paragraph 16.
As to claim 27, the SIS is crosslinked. See paragraph 5, 9 and examples.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-117744 (herein Atsushi) as evidenced by US 2018/0215910 (herein Krishna), US 2017/0014312 (herein Suzuki), US 2020/0251082 (herein Smith), US 2013/0101927 (herein Taneichi) and US 2009/0026934 (herein Fujita).
The discussion with respect to Atsushi et al. set-forth above is incorporated herein by reference.
As to claim 26, filler may be added as necessary. See paragraph 14-15. While not directly disclosing the range, paragraph 5 sets limits for the SIS and hydrogenated SIS as 70 to 90 and 0 to 40. The tackifier is taught as 20 to 70 parts per 100 parts SIS and hydrogenated SIS. See paragraph 10. Further, butyl rubber is taught as 5 to 60 parts per 100 parts SIS and hydrogenated SIS. See paragraph 11. Thus, the filler can only be present in amounts up to about 13.5 wt% (deduced from the minimum amounts) or 30 wt% (when just considering the SIS).
This range of 0 to 13.5 wt% falls within and he range of 0 to 30 wt% substantially overlaps the claimed range of 0 to 15 wt%. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Allowable Subject Matter
Claims 3, 6, 8, 13, 15, 17, 21, 23 and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
As to the amendments and arguments with respect to rejections utilizing Kimura and Taneichi as primary references, the rejections have been withdrawn.
With respect to the arguments over Atsushi, Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the examples of Atsushi no longer anticipate the claims. In response, note the obviousness rejections above, wherein the broader disclosure (see abstract, paragraph 7 and claim 1) teaches the use of non-hydrogenated ISS up to 40 wt% in order to improve the compression set.
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 MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764