DETAILED ACTION
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/599,036.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim 1 of the reference application 17/599,036 (which has now been amended) is drawn to the same method of producing a polyolefin-polystyrene multi-block copolymer, by utilizing the same catalyst of Formula (1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 17/781,463 (which has now been granted) in view of Iwashita (US2005/0119380).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claims are drawn to a thermoplastic resin composition comprising the polyolefin-polystyrene multi-block copolymer which satisfy the requirements (a) to (d). Though 17/781,463 application claims are silent on the inclusion of a polypropylene resin. Secondary reference Iwashita encourages to utilize polypropylene resin since it provides excellent impact resistance, rigidity and moldability (para [0001]). One of ordinary skill in the art would have found it obvious to form a composition with polypropylene and a styrene-based olefin block copolymer of 17/781,463 to achieve mechanical properties benefits.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 12 and 13 of this application is patentably indistinct from claim 14 and 17 of Application No. 18/017,022 (reference application).
Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Claims 1-16 overcome the prior art rejections on record.
1] With regard to the rejections under the reference combination of Iwashita(US2005/0119380) and Kim et al. (Polymers 2017, 9(10), pp 481), the primary reference Iwashita discloses that (Iwashita para [0015]) the polypropylene component (A) can be selected to be a polypropylene homopolymer, and further notes that preferred olefinic copolymer rubber component (B) are styrene-ethylene/butylene-styrene block copolymer rubber(SEBS) or block copolymer rubbers of propylene and other α-olefin (Iwashita para [0019]). Iwashita however does not provide explicit details of the styrene or propylene (and olefin) based block copolymers. While the secondary reference Kim discloses polystyrene-polyolefin-polystyrene block copolymers (title) polystyrene multi-block copolymer, which meet the requirements 2(a) and 2(b). Kim utilizes the catalyst system (Kim Entry 5, Table 1) which is the same catalyst as used in the applicant’s comparative example 2 which leads to a block copolymer which does not conform with the claimed polymer requirements of 2(c) and 2(d). Thus, the combination of Iwashita and Kim do not establish a prima facie obviousness.
2] In light of applicant’s statement of common ownership, references Im et al (US 2022/0177634 A1) and Im et al (US 2023/0116142 A1) are removed as 102 (a)(2) art.
Response to Arguments
Applicant’s arguments, filed on 01/07/2026 have been considered, please see the responses below.
Applicant’s amended claim 10 overcomes the 112(b) rejection.
The specification objections are withdrawn and the amended abstract and para [0002] have been entered.
With respect to the rejection of claims 1-11 under 35 U.S.C. 103 over Iwashita (US2005/0119380) and Kim et al. (Polymers 2017, 9(10), pp 481), have been fully considered and are persuasive, since the secondary reference Kim fails to provide the polystyrene-polyolefin-polystyrene block copolymers which meet all the requirements of (2). Therefore, the prior art rejection over Iwashita and Kim has been withdrawn.
However, it is noted that reference Iwashita continues to provide the support for maintaining the double patenting rejection, as discussed above, since it teaches the required component (1) polypropylene, and provides the appropriate motivation to utilize polypropylene to achieve the mechanical property benefits.
Allowable Subject Matter
Claims 6-11 and 14-16 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.
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 Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
/S.M.D./
Examiner
Art Unit 1765