DETAILED ACTION
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 amendment of claims 1-6 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 1/5/2026. Thus, the following action is properly made final.
Claim Objections
Claim 1 objected to because of the following informalities: line 5, “in the liquid” should be “in the liquid butadiene-styrene polymer”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-6 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the content of 1,2 structure is 60-80wt%, the content of a butadiene unit is 70-85wt%, and the weight ratio of the cyclized 1,2-structural unit to the 1,2-structural unit in the liquid is 0.5-0.7:1. If the content of 1,2 structure is 80wt%, and the weight ratio is 0.5:1, then the content of a cyclized 1,2 structure is 40wt%, then the total is 120wt% which is not only greater than the content of butadiene but also greater than the content of the whole composition. Clarification is required. For purposes of expediting prosecution, it is interpreted as the claimed 1,2 structure 60-80wt% includes 1,2 structure and cyclized 1,2 structure, and the weight ratio is between cyclized 1,2-structure and the combination of 1,2 structure and cyclized 1,2 structure. This interpretation also applies to dependent claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2 recite the broad recitation, and the claims also recite a narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites “the content of the cyclized 1,2 structural unit is 30-55 or 40-50 wt% based on the total amount of 1,2 structural unit,” which overlaps the range of claim 1 and does not further limit claim 1.
Claim Rejections - 35 USC § 102
Claim(s) 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cabioch et al (US 2004/0147696).
Cabioch teaches a butadiene-styrene copolymer having a number average molecular weight of 6000, the polymer with Mn of 6000 is liquid. The copolymer has at least 84 wt% of butadiene and 16 wt% of styrene [example 8]. In the butadiene moiety, the mass content of vinyl linkages is 43wt% and the mass content of vinylcyclopentane units is 40%, the total of these two is 83wt% based on butadiene moiety or 70wt% based on the copolymer. The mass content of vinylcyclopentane units is 48% based on the combination of 1,2 structure and cyclized 1,2 structure. The copolymer is a random copolymer and has a Tg of -12°C.
Claim Rejections - 35 USC § 103
Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cabioch et al (US 2004/0147696).
Claims 1-2, 5-6: Cabioch teaches a butadiene-styrene copolymer having a number average molecular weight of 6000, the polymer with Mn of 6000 is liquid. The copolymer has at least 84 wt% of butadiene and 16 wt% of styrene [example 8]. In the butadiene moiety, the mass content of vinyl linkages is 43wt% and the mass content of vinylcyclopentane units is 40%, the total of these two is 83wt% based on butadiene moiety or 70wt% based on the copolymer. The copolymer is a random copolymer and has a Tg of -12°C. The mass ratio of vinylcyclopentane units to the combination of 1,2 structure and cyclized 1,2 structure is 0.48:1. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim 1-2, 5-6: alternatively, Cabioch teaches a butadiene-styrene copolymer having a number average molecular weight of 6000, the polymer with Mn of 6000 is liquid. The copolymer has at least 84 wt% of butadiene and 16 wt% of styrene [example 8]. In the butadiene moiety, the mass content of vinyl linkages is 43wt% and the mass content of vinylcyclopentane units is 40%, the total of these two is 83wt% based on butadiene moiety or 70wt% based on the copolymer. The copolymer is a random copolymer and has a Tg of -12°C.
Cabioch does not teach the mass ratio of vinylcyclopentane units to the combination of 1,2 structure and cyclized 1,2 structure is 0.5-0.7:1.
However, Cabioch further teaches the mass content of cyclic vinyl units is greater than or equal to 40% [0053]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize in the liquid butadiene-styrene copolymer of Cabioch, the mass ratio of vinylcyclopentane units to the combination of 1,2 structure and cyclized 1,2 structure would overlap the claimed range. Case law holds that 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).
Claim 3: Cabioch teaches a butadiene-styrene polymer having a polydispersity index of less than 3 [0038]. Case law holds that 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).
Claim 4: Cabioch is silent with respect to the dynamic viscosity of the polymer. However, the teachings from Cabioch have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive.
First of all, applicant should clarify the scope of the term “1,2-structural unit”. In remarks page 9 paragraph 2, applicant agrees it includes vinyl cyclopentane and vinyl linkages for claim 1, but in third paragraph, it refers to vinyl linkages only. Actually, the second interpretation is consistent with the definition in the specification.
In response to applicant's argument regarding the unexpected results, the data have been fully considered, however, they are insufficient to establish unexpected results given that 1) example 6 has a weight ratio of 0.58 which is within the claimed range but it has low peel strength and high expansion coefficient; Example 10 has a weight ratio of 0.61 which is within the claimed range but it has low peel strength. 2) the data is not compared to the closest prior art; 3) the data is not reasonably commensurate in scope with the scope of claims. The inventive data only contains a weight ratio of 0.58-0.66 as compared to the claimed 0.5-0.7, the inventive data only applies to polymer with Mn of 2543-6268, Mw/Mn of 1.03-1.08, 20wt% of styrene, 67-72 wt% of 1,2 structural unit, 41-48 wt% of cyclized unit. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983).
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763