DETAILED ACTION
Summary
This is a non-final office action for application 18/033,920. The response to the restriction/election requirement dated 25 March 2026 is acknowledged.
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/Restrictions
Applicant’s election without traverse of Group I, Claims 1-12 in the reply filed on 25 March 2026 is acknowledged.
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 25 March 2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: the label “a” is not specifically mentioned in the specification paragraph discussing the figure (see cur spec: [0107]).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 2-3 and 5 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.
Claims 2-3 and 5 each recite “the hydrogenated block copolymers (I)” in the plural. These claims all depend upon Claim 1 which recites “a hydrogenated block copolymer (I)” in the singular. It is not clear whether Claims 2-3 and 5 now each require multiple copolymers, or if they simply now allow for multiple copolymers. The dependent claims also make unclear whether multiple copolymers are now permitted in Claim 1 and if so, whether the vinyl bond limitation recited in Claim 1 applies to one of the copolymers, each of the copolymers, or if the calculation is averaged over all of the copolymers present. Please clarify so that skilled users can know whether they are within the scope of the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is 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 5 recites that the vinyl bond amount in polymer block (B) is 50-100% by mole. Claim 5 depends upon, and therefore includes, Claim 1. Claim 1 already recites that the average vinyl bond amounts of polymer block (B) is 50% by mole or more. Note that the vinyl bond content cannot exceed 100% based on method disclosed in the instant specification for determining this property (cur spec: [0087]). Therefore, the addition of the 100% upper bound has no effect and Claim 5 fails to further limit Claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1 and 4-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HORIUCHI (US-20170137618-A1).
Regarding Claim 1, HORIUCHI teaches a resin composition comprising a polyolefin resin and a hydrogenated block copolymer containing a vinyl aromatic block A and a conjugated diene block B (Abstract). HORIUCHI teaches that the polyolefin resin is a polypropylene resin ([0136]) and exemplifies a polypropylene copolymer and homopolymer ([0269], [0270], Table 1). HORIUCHI teaches that the vinyl bond content of its conjugated diene block is preferably 65-90 mol% ([0097]) and exemplifies vinyl bond contents between 51-77 mol% (Table 1).
HORIUCHI does not teach a D hardness for its blended composition but HORIUCHI teaches examples that are very close to the instant examples. In Example 3 (Table 3), HORIUCHI teaches 40 parts PP1 ethylene-propylene random copolymer that is 97.5 wt% propylene and has a MFR of 8 g/10 min ([0269]) and 60 parts A-1 block copolymer which has 18% styrene and 76% vinyl bond content and is 99% hydrogenated (Table 1), while instant example 4 (cur spec: Table 4) teaches 40 parts PP1 which is a 95% propylene copolymer having a melt flow rate of 7 g/10 min (cur spec: [0099]) and 60 parts TPE 3 which is a block copolymer with 18 wt% styrene, 75% vinyl bond content and 99% hydrogenation (Table 3). One would inherently expect that the exemplary composition taught by HORIUCHI would have the same D hardness as the instant examples as the compositions are so close.
Regarding Claim 4, HORIUCHI teaches the invention of Claim 1. HORIUCHI teaches the melt flow rate of its hydrogenated block copolymer (230°C, 2.16 kg) is preferably 10-30 g/10 min which satisfies the requirement that the melt flow rate is 0.1 g/10 min or more. HORIUCHI exemplifies a melt flow rate of 15 g/10 min in the (A-1) block copolymer discussed in the Claim 1 rejection.
Regarding Claim 5, HORIUCHI teaches the invention of Claim 1 where HORIUCHI teaches that the vinyl bond content of its conjugated diene block is preferably 65-90 mol% ([0097]) and exemplifies vinyl bond contents between 51-77 mol% (Table 1).
Regarding Claim 6, HORIUCHI teaches the invention of Claim 1. HORIUCHI teaches that the degree of hydrogenation of double bonds based on its conjugated diene monomer unit in the hydrogenated block copolymer is 90 mol% or more (Abstract, [0018]) which overlaps the recited amount of 50-99.9 mol%. HORIUCHI exemplifies 98-99 mol% (Table 1) which is within the recited range.
Regarding Claim 7, HORIUCHI teaches the invention of Claim 1. HORIUCHI does not measure the peak top intensity of tan δ under the recited conditions, but HORIUCHI teaches exemplary compositions that are very close to the instant examples. See Claim 1 rejection for the comparison of HORIUCHI Example 3 and instant Example 4. Note that instant Example 4 has a peak tan δ intensity of 0.31 (cur spec: Table 4) which is well above the recited limit of 0.2 and instant Example 9 which uses TPE5 which does not contain any of the alicyclic (X) units has a peak top intensity of 0.416 (cur spec: Table 4) which is also within the recited range. One would inherently expect that the exemplary compositions taught by HORIUCHI would also have a peak tan δ intensity of greater than 0.2 because its compositions are so close to those disclosed in the instant examples.
Regarding Claim 8, HORIUCHI teaches the invention of Claim 1 where HORIUCHI teaches that that its block (A) is a vinyl aromatic block (Abstract). HORIUCHI exemplifies styrene in its (A) block (Table 1).
Regarding Claim 9, HORIUCHI teaches the invention of Claim 1. HORIUCHI generally teaches that its copolymer contains a conjugated diene block (B) and an vinyl aromatic block (A) (Abstract). HORIUCHI teaches that its vinyl aromatic block (A) is from 12-25 mass% (Abstract) which satisfies the requirement that the (A) block is 25 mass% or less. HORIUCHI exemplifies 13-18 wt% styrene (Table 1).
Regarding Claim 10, HORIUCHI teaches the invention of Claim 1. HORIUCHI generally teaches conjugated dienes for its (B) block including butadiene and isoprene ([0060]). HORIUCHI exemplifies butadiene ([0255], [0261], [0264], [0266]).
Regarding Claim 11, HORIUCHI teaches the invention of Claim 1. HORIUCHI generally teaches that the weight average molecular weight of its hydrogenated block copolymer is preferably 40,000 to 200,000 ([0080]) which satisfies the requirement that the weight average molecular weight for this component is 250,000 or less. HORIUCHI exemplifies weight average molecular weights of 97k-176k (Table 1).
Regarding Claim 12, HORIUCHI teaches the invention of Claim 1. HORIUCHI generally teaches that its hydrogenated block copolymer resin and polyolefin-based resin are present in a mass ratio of 95:5 to 5:95 which encompasses the 90/10 to 40/60 mass ratio recited by the claim. In the Example 3 (Table 3) discussed in the Claim 1 rejection, HORIUCHI teaches 60 parts hydrogenated block copolymer and 40 parts polypropylene (Table 3) which results in a 60/40 ratio that is within the recited range.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SENDA (WO-2019103048-A1) as evidenced by HOU (US-20170136602-A1).
The SENDA (WO-2019103048-A1) reference, used for its 31 May 2019 publication date, is in the Japanese language. Family member US-20200283617-A1, included in the IDS dated 2 February 2026, is used for translation and paragraph numbering.
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 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 (Table 5), its H-TPE-1 block copolymer blended with polypropylene with a Shore A hardness of 95. SENDA teaches that its H-TPE-1 is a block copolymer of styrene (A) and isoprene/butadiene (B) with a 95% hydrogenation rate and a 76% vinyl bond amount (Table 3). 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. See MPEP 2131.01-III. for this use of a secondary evidentiary reference in 102 rejections. 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 less than 70 and satisfies the claim.
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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 12 are rejected under 35 U.S.C. 103 as being unpatentable over SENDA (WO-2019103048-A1) as evidenced by HOU (US-20170136602-A1).
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.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764