DETAILED ACTION
Summary
Applicant’s amendment dated 29 June 2026 is acknowledged. Claims 1 and 4-18 are pending. Claims 13-18 are withdrawn from consideration.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.
New grounds of rejection set forth below are necessitated by the amendment dated 29 June 2026. For this reason, this action is properly made final.
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 .
Claim Rejections - 35 USC § 112
Claims 1 and 4-12 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 recites the limitation that all of the hydrogenated block copolymers (I) in the resin are “hydrogenated block copolymers (I-1)”. There is insufficient antecedent basis for this limitation in the claim. The claim does not previous recite or define the (I-1) block copolymers. It is not clear how this limitation limits the hydrogenated block copolymers (I) as no definition of hydrogenated block copolymers (I-1) narrower than (I) is recited anywhere in the claim.
Claim Rejections - 35 USC § 103
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over SENDA (WO-2019103048-A1) in view of YARIMIZU (JP-2019131769-A) as evidenced by HOU (US-20170136602-A1).
Regarding Claim 1, SENDA teaches a block copolymer or a hydrogenate thereof containing a polymer block (A) and a polymer block (B) in which the polymer block (B) has a structural unit derived from a conjugate diene compound (Abstract). SENDA teaches that its vinyl bond amount is preferably 55-95 mole% ([0053]) which is within the recited range of 50 mol% or more. SENDA teaches an exemplary copolymer, H-TPE-1, as a block copolymer of styrene (A) and isoprene/butadiene (B) with a 95% hydrogenation rate and a 76% vinyl bond amount (Table 3). SENDA teaches that its block copolymer has good compatibility with other resin materials ([0103]) including olefin-based resins ([0105]) such as polypropylene ([0106]). SENDA exemplifies its block copolymer blended with polypropylene (Table 4, Table 5).
SENDA teaches in Example 23 a composition containing 90 parts polypropylene and 10 parts of its block copolymer H-TPE-1 having a Shore A hardness of 95 (Table 5). SENDA does not measure the D hardness. Here, HOU is used as an evidentiary reference to convert the A hardness measured by SENDA into the D hardness which is recited by the claim. HOU discloses that the 95 Shore A hardness taught by SENDA is the equivalent of a 46 Shore D hardness ([0034], Table 1) which is just outside of the 45 or less which is recited by the claim. SENDA generally teaches that its block copolymer component (I) is blended with its other constituent polymer in its resin (II) ([0114]), which can be an olefin-based resin such as polypropylene ([0106]), in a ratio of I/II of preferably 1/99 to 99/1, preferably 3/97 to 80/20, even more preferably 3/97 to 50/50 ([0114]). SENDA teaches block copolymers which have a small amount of styrene, preferably 30% or less, even more preferably less than 16% or particularly preferably less than 14% ([0030]), with styrene being the “hard” block of this type of block copolymer. SENDA exemplifies 12-30wt% of styrene in its block copolymers (Table 3) leaving the remaining 70-88wt% of the block copolymers as the conjugated diene blocks, the rubbery “soft” block of this type of block copolymer. Since these block copolymers contain so much of the rubbery “soft” conjugated diene blocks, it is presumed that they would have a softening effect on the composition relative to the thermoplastic polypropylene component. Because SENDA teaches compositions having only 10wt% block copolymer (Table 5) that are so close to the recited hardness (46 vs 45), then compositions within the general teachings of SENDA that are above the exemplary 10wt% block copolymer would have a lower hardness which would lower the hardness from 46 to 45 or below that would satisfy the claim. YARIMIZU provides motivation. SENDA teaches that its composition can be used in automotive parts including radiator hoses and air brake tubes ([0131]). YARIMIZU, in an invention of blend of a hydrogenated block copolymer and polypropylene for automotive components and tube and hose material (Abstract), teaches that its Shore A hardness is from 50-95 (Abstract), preferably 55-75 ([0042]). Here the evidence of HOU is used again to disclose that this Shore A hardness range taught by YARIMIZU corresponds to a Shore D range of 12-46, preferably 14-25. YARIMIZU exemplifies compositions with Shore A hardnesses of 53-93 and one composition Shore D hardness of 31 (Table 1) which satisfies the requirement that the Shore D is 45 or less. YARIMIZU teaches that when the Shore A hardness is more than 95, that the molded article is hard and has a reduced tactile feeling and is not suitable for automobile parts and hoses/tubes ([0042]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of SENDA and use larger amounts of the block copolymer component that is still within the general teachings of SENDA for the purpose of forming automotive parts and hoses/tubes that are not too hard, do not have reduced tactile feeling, and are suitable for automobile parts and hoses/tubes.
Regarding Claim 2, SENDA teaches the invention of Claim 1. SENDA teaches block copolymers which include the recited alicyclic skeleton (X) structure ([0017]). SENDA exemplifies block copolymers with more than 1 mol% (Table 3) including 14.9 mol% in the H-TPE-1 copolymer (Table 3) cited in the Claim 1 rejection.
Regarding Claim 3, SENDA teaches the invention of Claim 2 where the Example 23 cited in the Claim 1 rejection (Table 5) contains only the H-TPE-1 block copolymer which is 95% hydrogenated (Table 3).
Regarding Claim 4, SENDA teaches the invention of Claim 1. SENDA is silent on the melt flow rate of its block copolymer, but SENDA teaches exemplary block copolymers that are essentially the same as those exemplified in the instant specification (Compare: SENDA Table 3; Instant: Table 3) SENDA teaches the same alicyclic-unit-containing, A/B/A-structured block copolymers with the same styrene and Isoprene-Butadiene components, with same molecular weight, amount of styrene, hydrogenation level and vinyl bond amount. One would inherently expect the block copolymers to have melt flow rates which are within the scope of the current invention and would satisfy the requirement that the melt flow rate is 0.1 g/10 min or more.
Regarding Claim 5, SENDA teaches the invention of Claim 1 where SENDA generally teaches that its vinyl bond amount is preferably 55-95 mole% ([0053]) which is within the recited range. SENDA exemplifies vinyl contents in its block copolymers of 64-83 mol% (Table 3) including 76 mol% (Table 3) in the H-TPE-1 copolymer cited in the Claim 1 rejection.
Regarding Claim 6, SENDA teaches the invention of Claim 1 where SENDA generally teaches that its hydrogenation rate can be 50-99 mol% ([0067]) which is within the recited range. SENDA exemplifies hydrogenation rates of 86-95 mol% in its hydrogenated copolymers (Table 3) including 95 mol% in the H-TPE-1 copolymer cited in the Claim 1 rejection.
Regarding Claim 7, SENDA teaches the invention of Claim 1. SENDA generally teaches that its block copolymer has a peak top intensity of 1.0 or more ([0099]) when measured under the recited conditions ([0098]) which satisfies the recited requirement that the peak intensity is 0.2 or more. SENDA exemplifies a peak intensity of 2.25 in its H-TPE-1 example cited in Claim 1 and peak intensities of 1.43-2.31 in other copolymers (Table 3).
Regarding Claim 8, SENDA teaches the invention of Claim 1. SENDA generally teaches that its (A) block is preferably an aromatic vinyl compound ([0022]) and exemplifies styrene (Table 3).
Regarding Claim 9, SENDA teaches the invention of Claim 1. SENDA teaches that its (A) block is contained in an amount of preferably 50 mass% or less, even more preferably 16 mass% or less ([0030], Claim 13). The even more preferably range is within the recited range of 25 mass% or less. SENDA teaches several examples with a styrene in an amount of 12 mass% (Table 3) including H-TPE-1 cited in the Claim 1 rejection.
Regarding Claim 10, SENDA teaches the invention of Claim 1. SENDA further teaches and exemplifies that its block copolymers can include butadiene, isoprene or a mixture of the two ([0185], Table 3).
Regarding Claim 11, SENDA teaches the invention of Claim 1. SENDA generally teaches a weight average molecular weight of 15,000 to 800,000 ([0070]) which overlaps the recited requirement of 250,000 or less. SENDA exemplifies hydrogenated copolymers with a weight average molecular weight of 66,000 to 167,000 (Table 3) which is within the recited range.
Regarding Claim 12, SENDA teaches the invention of Claim 1 above. SENDA generally teaches that its block copolymer component (I) is blended with its other constituent polymer in its resin (II) ([0114]), which can be an olefin-based resin such as polypropylene ([0106]), in an ratio of I/II of preferably 1/99 to 99/1, preferably 3/97 to 80/20, even more preferably 3/97 to 50/50 ([0114]) which all either encompass or overlap the recited range of 90/10 to 40/60. SENDA exemplifies its block copolymer with polypropylene in a ratio of 10/90 (Table 5) which is outside the recited range, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of SENDA and use a ratio of its block copolymer to polypropylene that is within the range taught in its specification that is also within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Response to Arguments
Applicant's arguments filed 29 June 2026 have been fully considered but they are not persuasive.
The amendment to the specification distinguishes the (a) label present in the drawings from the indefinite article. The objections to the drawings have been withdrawn.
The amendment to Claim 1 reciting at least one hydrogenated block copolymer has resolved the indefiniteness associated with a plural amount of hydrogenated block copolymers being recited in the dependent claims. This specific rejection under 35 USC 112(b) has been withdrawn.
The amendment to Claim 5 specifying that each of the polymer blocks (B) has the recited property now further limits Claim 1. The rejection under 35 USC 112(b) has been withdrawn.
The amendment to Claim 1 recites that all the hydrogenated block copolymers (I) in the resin are hydrogenated block copolymers (I-1), but no definition of hydrogenated block copolymers (I-1) is recited anywhere in the claim. A rejection under 35 USC 112(b) has been added for Claim 1 and its dependent claims.
Applicant argues that following the amendment to Claim 1, SENDA does not exemplify a Shore D hardness within the recited range. In response, the rejections under 35 USC 102 have been withdrawn. New grounds for rejection under 35 USC 103 are set forth above because compositions within the general teachings of SENDA, which include more of the block copolymer, would have lower hardness which would put those compositions within the newly recited range. YARIMIZU provides motivation that compositions with a hardness above the recited range would have reduced tactile feeling, and not be suitable for automobile parts and hoses/tubes.
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.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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