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 with traverse of Group 1, Claims 1-10, 13-15, filed on 1/20/2026 is acknowledged. The traversal is on the ground that there is subject matter common to all claims. The argument is not persuasive because the compositions are not identical among those groups. Based on applicants’ argument if the triblock polymer can be common subject matter, then carbon atom can be common subject matter as well.
Therefore, the restriction requirement based on the lack of unity analysis is still deemed proper and is made final. Accordingly, claims 11-12,16-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/20/2026.
Claim Objections
Claim 2 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 2 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 2 is a substantial duplicate of claim 1 and does not further limit claim 1.
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.
Claims 1-8, 10, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horikawa et al (US 2013/0184402).
Claims 1-5, 8, 10, 13-14: Horikawa discloses a block copolymer B-A-B, wherein B represents a block sequence including monomer units of a non-conjugated olefin inclusive of ethylene and A represents a random sequence including monomer units of the conjugated 1,3-diene compound and the non-conjugated olefin (0048, claims). The conjugated 1,3-diene is 1,3-butadiene or isoprene, the non-conjugated olefin is ethylene.
Horikawa exemplifies the end block polyethylene block has a crystallization temperature ˃ 100°C (Fig 2). Inasmuch as the crystallization temperature of a material is generally below the melting point, the polyethylene blocks in Horikawa has a melting point ˃ 100°C. The polyethylene block has a number-average molecular weight (Mn) of 1,000 or more and 10,000 or less [0013, 0187]. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Horikawa does not teach the ethylene content in block A.
However, Horikawa discloses that the random sequence allows the ethylene with high heat resistance to be introduced into the copolymer without causing macrophase separation of the copolymer [0040]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the ethylene content through routine experimentation to balance between macrophase compatibility with heat resistance property, because the content is a result effective variable where insufficient amount may result in poor heat resistance performance, whereas excessive amounts lead to macrophase separation. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 6: Horikawa discloses using 1,3-diene with a cis-1,4 bond content of at least 30% in the interest of maintaining a low glass transition, which improves wear resistance [0044]. Additionally, the teachings from Horikawa have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 7: Horikawa teaches the block copolymer has a weight average molecular weight (Mw) of 10,000 to 10,000,000 with a Mw/Mn distribution preferably 5 or less [0043], wherein the polyethylene block preferably has a Mn molecular weight of “less than 10,000” [0013]. Therefore the Mn of the center block would overlap the claimed range.
Allowable Subject Matter
Claims 9, 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763