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 .
The amendment filed 12/12/2025 has been entered. Claims 5-7 have been canceled. Claims 1-4 and 8-12 are pending in the application. Claims 3-4 and 12 have been withdrawn from consideration. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 and 8-11 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 has been amended to essentially incorporate all of the limitations of canceled claims 5-7 and to further include a limitation with respect to “the amount of vinyl bonds in the conjugated diene compound-derived structural units in the polymer blocks (b2)” (emphasis added), however, given the order in which the limitations are incorporated into amended claim 1 and that claim 1 (as originally recited and as amended) states on lines 3-4 that the composition comprises “1 to 100 parts by mass of a multibranched block copolymer or a hydrogenated product thereof (B) wherein the multibranched block copolymer contains a polymer block (b1) including aromatic vinyl compound-derived structural units, and a polymer block (b2) including conjugated diene compound-derived structural units” (emphasis added), it is unclear as to whether the claimed invention as amended now requires the 1 to 100 parts by mass of the multibranched block copolymer to only be a hydrogenated product in light of the added limitations at lines 29-44 and not “a multibranched block copolymer or a hydrogenated product thereof” as recited at lines 3-4, or whether the limitations with respect to the hydrogenated block copolymer that were incorporated from the canceled claims are only required when the multibranched block copolymer is the “hydrogenated product thereof”.
More specifically, amended claim 1 now further recites on lines 22-44:
“wherein the conjugated diene compound-derived structural units in the multibranched block copolymer or the hydrogenated product thereof (B) comprise isoprene-derived units;
wherein the amount of vinyl bonds in the conjugated diene compound-derived structural units in the polymer blocks (b2) is 4 mol% to 20 mol%;
wherein the multibranched block copolymer or the hydrogenated product thereof (B) has a number average molecular weight of 700,000 or more as measured by gel permeation chromatography relative to standard polystyrenes;
wherein the multibranched block copolymer or the hydrogenated product thereof (B) is at least one hydrogenated multibranched block copolymer (B2) selected from the group consisting of:
hydrogenated star block copolymers (B-1-2) obtained from star block copolymer including 3 or more chains (bα) each containing a polymer block (b1) including aromatic vinyl compound-derived structural units, and a polymer block (b2) including conjugated diene compound-derived structural units, and one nucleus (bβ) derived from a coupling agent, and
hydrogenated graft block copolymers (B-2-2)…and
the hydrogenated multibranched block copolymer is such that the multibranched block copolymer is hydrogenated at a hydrogenation ratio of 80 mol% or more of carbon-carbon double bonds in the conjugated diene compound-derived structural units present in the multibranched block copolymer” (emphasis added).
Thus, the claim recites at lines 3-4 that the copolymer may be a (non-hydrogenated) copolymer or a hydrogenated product thereof (e.g., is X or Y) but then recites that the copolymer “is at least one hydrogenated” copolymer (e.g., is Y) on lines 29-30 of the same claim, thereby appearing to contradict the alternative expression at lines 3-4, and although the added limitations on lines 29-44 of amended claim 1 were previously recited in now-canceled dependent claim 7 which further limited the invention as previously recited in original claim 1 (e.g., the X or Y of claim 1 is Y in the dependent claim), the incorporation of these limitations into the one claim renders the claim indefinite, e.g., the recitations to the non-hydrogenated multibranched block copolymer alternative and the use of “or” with respect to the hydrogenated product thereof create ambiguity if the invention as amended now requires the block copolymer to be a hydrogenated block copolymer only.
Additionally, given that the block copolymers (B-1-2) and (B-2-2) are recited as hydrogenated star and graft block copolymers, respectively, obtained from star/graft block copolymers including 3 or more chains each containing “a polymer block (b1) including aromatic vinyl compound-derived structural units, and a polymer block (b2) including conjugated diene compound-derived structural units” (emphasis added), it is unclear whether the isoprene-derived units and number average molecular weight limitations with respect to “the multibranched block copolymer or the hydrogenated product thereof (B)” (emphasis added) and the amount of vinyl bonds “in the polymer blocks (b2)” (emphasis added) recited before the “multibranched block copolymer or the hydrogenated product thereof (B) is at least one hydrogenated multibranched block copolymer (B2)” limitation are meant to also correspond to the hydrogenated block copolymer (B2). Further, given the use of “polymer blocks (b2)” (emphasis added) in plural form with respect to the amount of vinyl bonds in the conjugated diene compound-derived structural units in the polymer blocks (b2) as recited on lines 24-25, while every other occurrence of (b2) recites “polymer block (b2)” in singular form, it is unclear as to what is meant to be encompassed by the claimed “wherein the amount of vinyl bonds in the conjugated diene compound-derived structural units in the polymer blocks (b2) is 4 mol% to 20 mol%” limitation due to the lack of clear antecedent basis.
Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Rejections - 35 USC § 103
Claims 1-2 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata (JPH05-170844A, please refer to the machine translation for the below cited sections), for generally the reasons recited in the prior office action and restated below with additional discussion regarding the amended claim limitations as recited in the amendment filed 12/12/2025.
As discussed in the prior office action, Shibata teaches a resin composition comprising: (I) 99 to 1 parts by weight of a hydrogenated diene block copolymer having a block structure as instantly claimed, and (II) 1 to 99 parts by weight of a thermoplastic resin, such as polybutylene terephthalate (as in instant claim 2), with I+II = 100 parts by weight (reading upon the parts by mass content as in instant claim 1; Abstract, Paragraphs 0004-0009, 0013-0014, 0017); wherein the number average molecular weight of the block copolymer (I) is 40,000-700,000 (thereby overlapping and hence rendering obvious the claimed number average molecular weight range at the 700,000 endpoint, Paragraph 0004). More specifically, Shibata teaches that the hydrogenated diene block copolymer (I) may have a branched structure of (C-B-A)lX, wherein l is an integer of 2 or greater and X is a coupling agent residue (i.e. a nucleus, thereby reading upon the claimed “star block copolymers or hydrogenated products thereof (B-1)” and more particularly “hydrogenated star block copolymers (B-1-2)” of amended claim 1), and wherein the A block contains 80% by weight or more of a vinyl aromatic compound, the B block is a conjugated diene block segment containing 80% by weight or more of a conjugated diene compound (reading upon the claimed “polymer block (b2) including conjugated diene compound-derived structural units”), and the C block is a polybutadiene block segment (also reading upon “a polymer block (b2) including conjugated diene compound-derived structural units” as in instant claim 1), with the hydrogenated block copolymer (I) having 80% or more of the double bond residues hydrogenated (as in instant claim 8; Entire document, particularly Paragraphs 0003-0007 and 0011). Shibata teaches that the other monomer of the A block may be a conjugated diene, such as isoprene (also reading upon the claimed “the conjugated diene compound-derived structural units in the multibranched block copolymer or the hydrogenated product thereof (B) comprise isoprene-derived units;” emphasis added, given that the claimed isoprene-derived units and/or “the conjugated diene compound-derived structural units” of said limitation are not limited to the polymer block (b2) but to the overall block copolymer or hydrogenated product thereof (B), and thus may be present in other blocks or portions of the “block copolymer or hydrogenated product thereof (B)” of amended claim 1), and particularly preferably 1,3-butadiene, with the A block present in the block copolymer (I) in a content of 10 to 35% by weight; while the B block is present in the block copolymer (I) in a content of 35 to 80% by weight and has a high vinyl bond content exceeding 70% by weight, and the C block is present in a content of 5 to 40% by weight with a low vinyl bond content of 30% by weight or less, preferably 20% by weight or less (Paragraphs 0004-0010 and 0044); wherein the vinyl bond content of the conjugated diene compound in blocks B and C can be adjusted by using a Lewis base such as an ether or an amine together with an organic solvent (Paragraph 0012), with one inventive example comprising a B block having a 70% vinyl content in combination with a C block having 13% vinyl content (see H-4 in Table 1 and Inventive Example 16 in Table 4).
Hence, given that the isoprene-derived units of the instantly claimed invention are not required to be in the same polymer block as the block having 4-20 mol% of vinyl bonds, the Examiner takes the position that the low vinyl content block C of Shibata reads upon the claimed amount of vinyl bonds in the conjugated diene compound-derived units in the polymer blocks (b2) given that block C of Shibata is a block including conjugated diene compound-derived structural units and the overall hydrogenated block copolymer of Shibata may comprises isoprene-derived units in block(s) A and/or B. Alternatively, blocks B and C of Shibata taken together may be equated to the claimed polymer block (b2) given that both blocks B and C include conjugated diene compound-derived structural units wherein block B may comprises 80wt% of conjugated diene compound-derived units such as isoprene-derived units and block C consists of butadiene-derived units (i.e., conjugated diene compound-derived units); and given the weight percent ranges for blocks B and C and the vinyl bond content of each as taught by Shibata as noted above, Shibata provides a clear teaching and/or suggestion of a vinyl content in the conjugated diene compound-derived structural units in the polymer blocks (b2) (e.g., B and C together) reading upon the claimed 4 mol% to 20 mol% as instantly claimed.
Hence, given the absence of any clear showing of criticality and/or unexpected results with respect to the claimed invention over the teachings of Shibata, the Examiner maintains her position that the claimed invention as recited in instant claims 1-2 and 8 would have been obvious over the teachings of Shibata given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 9, Shibata teaches that the coupling agent which provides residue X reading upon the claimed “nucleus” may be selected from the coupling agents recited in Paragraph 0014 including divinylbenzene, and hence, the claimed invention as recited in instant claim 9 would have been obvious over the teachings of Shibata given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 10, Shibata teaches that the composition may further comprise fillers such as glass fibers, mica, calcium carbonate, or other inorganic fillers as recited in Paragraph 0022, and although Shibata does not specifically teach a content for said fillers, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum content of a particular filler to utilize based upon the type of filler and end use of the resin composition wherein filler contents as instantly claimed are typical in the art such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 10 would have been obvious over the teachings of Shibata given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
With respect to instant claim 11, Shibata teaches that the composition can be used to produce various molded articles by injection molding, vacuum molding, etc., such as sporting goods, soft bumper materials, automotive interior materials, and housing skins for electrical and electronic devices (e.g. a “shaped article”; Paragraph 0024), and hence, the claimed invention as recited in instant claim 11 would have been obvious over the teachings of Shibata.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive and/or moot with respect to the obviousness rejection over Shibata as applied to the amended claims given the additional remarks above with respect to the added claim limitation directed to “the amount of vinyl bonds in the conjugated diene compound-derived structural units in the polymer blocks (b2)” being 4 mol% to 20 mol%.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s amendments and arguments filed 12/12/2025.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787