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 .
Election/Restriction
Claims 12-22 have been withdrawn without traverse from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 1-9 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.
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, claim 1, from which the balance of the claims depend, recites the broad recitation wherein the molded bale of the rubber-like block polymer has a water content of 1.5% by mass or less (which includes zero), and the claim also recites wherein the molded bale of the rubber-like block polymer has a water content of 0.05 to 1.5% by mass, which is the 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 Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kitao et al. (EP 3912831).
In ¶’s 47-53, Kitao et al. teach a molded composition comprising an aromatic vinyl-diene block copolymer B and indicates that:
a specific example of the aromatic vinyl-diene block copolymer B is a block copolymer of styrene and butadiene and/or isoprene (preferably butadiene);
a styrene-butadiene block copolymer is preferable;
a diblock copolymer of styrene-butadiene is also exemplified;
the aromatic vinyl amount of the aromatic vinyl-diene block copolymer B is more preferably 15-50% by mass (See ¶ 52);
with up to 40% ethylene in the block copolymer (See ¶ 57); and
50% and above hydrogenation (modification) of the block copolymer; (¶ 62)
wherein the weight average molecular weight (Mw) of the aromatic vinylidene block copolymer is particularly preferably 100,000 or higher, and preferably 1 million or lower (See ¶ 59); thus, as the aromatic vinyl block amounts to 15-50% by mass of the aromatic vinyl-diene block copolymer, the aromatic vinyl block in the aromatic vinyl-diene block copolymer would represent a weight average molecular weight of over 10,000, based on the percentage of the aromatic vinyl-diene block copolymer;
the iodine value of the aromatic vinyl-diene block copolymer B is preferably 3 or higher, and preferably 150 or lower (See ¶ 65); and
the main chain and/or terminal of the aromatic vinyl-diene block copolymer B (preferably a styrene-butadiene block copolymer) may be modified by a functional group, and an amino group etc., are given as examples of the functional group (See ¶ 45).
Kitao et al. indicates that styrene, butadiene, TMEDA, and n-butyllithium were used to perform a polymerization reaction, hydrogenation was then performed, and a reaction solution was dropped into water and stirred so as to remove a solvent by steam stripping, thereby obtaining hydrogenated styrene-butadiene rubber (styrene amount: 34% by mass, vinyl butadiene amount: 0% by mass, cis or trans-butadiene amount: 5% by mass, ethylene amount: 61 % by mass, Mw: 250,000, hydrogenation rate of butadiene units: 93% by mass) (See ¶ 170).
While Kitao et al. do not expressly disclose the residual solvent and water content of the molded composition, it is reasonable that the molded composition of Kitao et al. would possess the presently claimed properties since the composition of Kitao et al. is essentially the same as the claimed composition and Kitao et al. teaches the removal of solvent by steam stripping. Further, Applicant’s disclosure does not contain any active steps that would result in these properties that are not disclosed in the prior art. The USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Response to Arguments
Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive because of the new grounds of rejection.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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