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 .
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.
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 16-20 and 22-29 are rejected under 35 U.S.C. 103 as being unpatentable over Knoeppel (U.S. 20120289656).
Knoeppel teaches two phase heterogeneous polystyrene compositions which comprise a polystyrene (exemplified) matrix in an amount of more than 70 wt% and a 3 to 20 wt% elastomeric component that comprises polybutadiene and/or a styrene-butadiene block copolymer. (See abstract and ¶[0019] and Table 4 which has 12 wt% of a Styrene-Butadiene block copolymer).
In ¶[0021], Knoeppel teaches the styrene butadiene block copolymer can be a diblock or triblock copolymer but does not exemplified a triblock version (i.e. SBS)
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Knoeppel, such as the compositions of Table 4, using a SBS triblock copolymer for the elastomeric copolymer because Knoeppel teaches this in ¶[0021].
This reads over the SBS elected for the two phase SBS/PS heterogeneous system of Claim 16.
The polystyrene reads over the PS as Pm (or GPPS – general purpose styrene) of Claim 16, the amount of PS of Claim 17, the Tg of polystyrene is known to be ~100 oC which reads over the polymer (P) Tg of Claim 19 and Claim 20, GPPS of Claim 22 and the amounts of at least 70 wt% reads over Claim 24’s at least 50 wt% PS.
The particle size of the elastomeric component (i.e. the SBS) is claimed by Knoeppel to be 0.5 to 1.5 microns which is 500 nm to 1.5 microns and read over the particle size of Claim 16. While the range is not specifically taught as weight average, when tested accordingly one of ordinary skill in the art is reasonably suggested the particle size taught by Knoeppel must be in the recited range when measured with weight average molecular weight because the numerical range of Knoeppel is completely within the range recited.
The SBS as the dispersed phase reads over the Pp phase of Claim 16 along with the specific polymers of Claim 16, Claim 23, the amounts of Claim 24.
Mineral oil in an amount of 0.1 to 5 wt% is specifically exemplified and mentioned as an specific embodiment. (¶[0023] and Example 4, 1.4 wt%) This reads over the further ingredient and amount of Claim 16, Claim 17, and Claim 18.
Knoeppel in ¶[0023] teaches a variety of stabilizers including anti-oxidants and UV stabilizers that may be used in the compositions of Knoeppel but does not exemplify stabilizers in the compositions.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Knoeppel as discussed above by adding anti-oxidants and/or UV stabilizers (i.e. two different stabilizers) including with the specific mineral oil taught because Knoeppel teaches addition of these additives in ¶[0023]. While Knoeppel does not explicitly teach the amount of UV stabilizers and anti-oxidants to be used, one of ordinary skill in the art would have been motivated to choose 0.1 to 5 wt% as the amount because Knoeppel teaches this amount of a similar additive (mineral oil) in ¶[0023].
This reads over Claim 25, Claim 26, Claim 27, Claim 28 and Claim 29.
With respect to the conditions (a)-(d) as recited, Knoeppel does not teach or suggest any of these conditions. However, as the polymers are SBS and PS and Applicant’s as-filed specification example suggest the amount of SBS and PS sufficient to give discontinuous, phase separated particles (SBS) in the matrix (PS) is achieved by these conditions, one of ordinary skill in the art is reasonably suggested these conditions must be present in the composition of Knoeppel based on the above features they have in common. This reads over the conditions and lack of continuous structure of Claim 16.
As the limitations of a)-d) are all to thermoplastic polymer (A) and are all met, one of ordinary skill in the art is reasonably suggested the polystyrene of Knoeppel is a thermoplastic polymer (P) having reduced migration barrier properties for stabilizers according Claim 16.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
Response to Arguments
Applicant’s claim amendment and remarks filed April 14, 2026 have been fully considered but are not sufficient to move the application to allowance. Applicant has placed the limitations of Claim 21 into Claim 16 and limited Claim 16 to two phase heterogenous systems. Rejections of record based on Matheson have been withdrawn as it is a single-phase system. The rejections based on Knoeppel have been updated to reflect Applicant’s incorporation of previous Claim 21 into Claim 16. This modification of the grounds of rejection has been necessitated by Applicant’s amendment.
Applicant’s remarks filed April 14, 2026 have been fully considered but are not persuasive.
Applicant argues Knoeppel does not teach or suggest the presently claimed PS/SBS or SBC copolymers. This argument is not persuasive.
Knoeppel specifically exemplifies HIPS (which is discrete particles of SBC (styrene block copolymers in PS – a diblock copolymer) (See Figure 1) and also, specifically teaches SBS (or triblock copolymer) as a possible SBC in ¶[0021]. The claims themselves are limited to both these copolymers. Therefore, to argue as Applicant does, there is no motivation to use SBS in Knoeppel is not supported by the evidence of record nor does Applicant argue the rationale used by the Examiner to motivate using SBS in Knoeppel. Therefore, this argument is not persuasive.
Applicant further argues throughout the response that Knoeppel does not teach or suggest the migration properties reduction of the claims explicitly. This argument is not persuasive. There is no requirement that Knoeppel specifically teaches the benefits Applicant has found for the composition. Further, Applicant has failed to argue that Knoeppel’s compositions do not possess these properties themselves and just fails to explicit put them forth as the rejection of record has put forth. Additionally, Applicant makes many remarks to chemical bond between styrene and the rubber particles and some transition between co-continuous morphology and discreate particles as claimed, however, there are no limitations with respect to how the claimed composition is made. Finally, Knoeppel already has particulate (discrete – 2 phase) morphology as claimed already in the invention of Knoeppel. Applicant’s remarks suggest this morphology is reasonable for the claimed migration properties. Therefore, as Knoeppel already has this two-phase morphology, the migration properties Applicant has found are reasonably suggested to naturally flow from the prior art. This also undermines Applicant’s arguments to their comparative examples as Knoeppel teaches 70 wt% or more of the PS and 20 to 3 wt% of the SBC/SBS component. These is no transition in morphology in Knoeppel. Applicant’s comparative examples are not applicable in this argument because Knoeppel is closer prior art than Applicant’s comparative examples.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004).
Applicant appears to be arguing unexpected results (i.e. benefits) in their claimed composition. Arguments to “technical effect” are not part of U.S. practice. The “technical effect” is either present or unexpected. These arguments are not persuasive.
If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
With respect to the fairly comparing requirement, as discussed above Knoeppel is closer prior art than Applicant’s example because Knoeppel already has a discrete 2 phase morphology that Applicant argues gives the reduction in migration properties as claimed.
With respect to the commensurate in scope requirement, the claims are not commensurate in scope with the showing of allegedly unexpected results. There is no indication as to how any SBC will behave, only SBS block copolymers exemplified are demonstrated. It is also unclear what Applicant’s results are demonstrating. The conditions a)-d) appear to be properties of the polymers used themselves and not the results of the table. Therefore, it is unclear if the required nexus between the claimed invention and the demonstration of allegedly unexpected results is present.
With respect to the truly unexpected requirement, as Applicant argues the “technical effect” is do to the particle (discrete) morphology and Knoeppel has this morphology already (in other words, there is no practicing Knoeppel such that there is a change from co-continuous to discrete two phase morphology), Applicant’s results appear expected simply not disclosed.
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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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.
/Christopher M Rodd/Primary Examiner, Art Unit 1766
Prosecution Insights