DETAILED ACTION
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 species of a composition of claim 1 in the reply filed on 7/14/2026 is acknowledged. Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/14/2026.
Response to Amendment
The amendment of claims 1, 4 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 4/27/2026. Thus, the following action is properly made final.
Claim Objections
Claim 1 objected to because of the following informalities: “in a side chain” should be “in the side chains” due to inherent antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-8 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 pre-AIA the applicant regards as the invention.
Claim 4 recites a melt viscosity which heavily depends on measuring temperature and shear rate/frequency. Without citing a shear rate, the claimed viscosity is meaningless from scientific point of view because the claimed range can always be obtained by adjusting shear rate. For purposes of expediting prosecution, any value would read on the claimed range.
Claim 1 recites number of moles of double bond which is defined in the specification by a formula related to vinyl content. However, the specification discloses the vinyl content is related to conjugated diene units bonded through 1,13-bond and 3,13 -bond. What are 1,13-bond and 3,13 -bond? The specification discloses “the vinyl content is calculated, using .sup.1H-NMR, from an area ratio of a peak derived from a structural unit derived from a conjugated diene bonded by the 1,2-bond, the 3,4-bond (case other than β-farnesene), and the 3,13-bond (case of β-farnesene) to a peak derived from a structural unit derived from a conjugated diene bonded by the 1,4-bond (case other than β-farnesene) and the 1,13-bond (case of β-farnesene).” It indicates the vinyl content is a ratio between a structure derived from 3,13 bond to a structure derived from 1,13 bond, such a ratio could be a number greater than 1, however, vinyl content should be a value less than 1. Clarification is required. For purposes of expediting prosecution, the limitation is interpreted by its literal meaning.
Claim 1 recites “does not include components corresponding to…polymer (A), a solid rubber…” What does it mean? The specification exemplifies the polymer F being another polymer (A). A solid rubber is not required in claim 1, therefore the solid rubber from Kanbara can be interpreted as another solid rubber and therefore read on the claimed polymer (F).
Claim Rejections - 35 USC § 102
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanbara et al (US 2017/0327681).
Claims 1-4, 6-8: Kanbara teaches a composition comprising a beta-farnesene homopolymer, a crosslinking agent, a filler, a solid rubber which reads on another polymer, a foaming agent (table 3, examples 3-4, 0097). The polyfarnesene has Mw of 37,000, Mw/Mn of 1.2, Mn of 30833 which equals to 151 degree of polymerization. For polyfarnesene, 1,4-bond results in 2 double bonds in the side chain, other structures have 3 double bonds in the side chain. Therefore, the above polyfarnesene has at least 302 mols of double bonds in the side chain per mole of the polymer.
The specification exemplifies the polymer F being another polymer (A). A solid rubber is not required in claim 1, therefore the solid rubber from Kanbara can be interpreted as another solid rubber and therefore read on the claimed polymer (F).
Claim 5: Kanbara teaches the crosslinking agent can be sulfur or peroxide [0078].
Claim Rejections - 35 USC § 103
Claims 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanbara et al (US 2017/0327681).
Claims 1-4, 6-8: Kanbara teaches a composition comprising a beta-farnesene homopolymer, a crosslinking agent, a filler, a solid rubber which reads on another polymer, a foaming agent (table 3, examples 3-4, 0097). The polyfarnesene has Mw of 37,000, Mw/Mn of 1.2, Mn of 30833 which equals to 151 degree of polymerization. For polyfarnesene, 1,4-bond results in 2 double bonds in the side chain, other structures have 3 double bonds in the side chain. Therefore, the above polyfarnesene has at least 302 mols of double bonds in the side chain per mole of the polymer. The farnesene homopolymer can be modified [0059].
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize a composition comprising both the beta-farnesene homopolymer and the modified polymer, because it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 5: Kanbara teaches the crosslinking agent can be sulfur or peroxide [0078].
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
In response to applicant's argument regarding claim objection, applicant needs to explain how a single side chain of farnesene polymer can have more than 100 double bonds, and how the vinyl content is related to a single side chain.
In response to applicant's argument regarding 112(b) rejection of claim 4, it is noted that the instrument used does not specify temperature and shear rate.
In response to applicant's argument regarding unexpected results, it is noted that unexpected results should be demonstrated by experimental data, be compared to the closest prior art, be really unexpected, and be commensurate in scope with the scope of claims.
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 extension fee 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 date of this final action.
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Primary Examiner, Art Unit 1763
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