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 Group I, claims 1-10 in the reply filed on 11/19/2025 is acknowledged. Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11/9/2025.
Claim Objections
Claim 1 objected to because of the following informalities: “in a side chain” should be “in the side chain” due to inherent antecedent basis. Appropriate correction is required.
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 1-10 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “beta-farnesene” is used by the claim to mean “a compound having three carbon-carbon double bonds,” while the accepted meaning is
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which has four double bonds. The term is indefinite because the specification does not clearly redefine the term.
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 Rejections - 35 USC § 102
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.
Claim(s) 1-8, 10 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, 10: 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.
Claim 5: Kanbara teaches the crosslinking agent can be sulfur or peroxide [0078].
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanbara et al (US 2017/0327681) in view of Kadowaki et al (JPS62295979).
In setting forth this rejection a machine translation of JPS62295979 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation USPGPub.
Kanbara teaches the limitations of claim 1, as discussed above. Kanbara further teaches the composition comprising a crosslinking aid, a multifunctional unsaturated compound, such as ethylene dimethacrylate, trimethylol propane trimethacrylate etc. [0095].
Kanbara does not teach a crosslinking aid like claimed.
However, Kadowaki discloses a curable composition and teaches trimethylol propane trimethacrylate and acryloyl terminated polybutadiene oligomer are interchangeable in a curable composition (page 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize an acryloyl terminated polybutadiene oligomer as a crosslinking aid in the composition of Kanbara because they are interchangeable in a curable composition.
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Primary Examiner, Art Unit 1763