DETAILED ACTION
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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains legal phraseology. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 24-27 are objected to because of the following informalities: a period must be added to the end of claims 24-27. 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 23-42 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. The claims claim a “composition of stereoblock copolymers.” However, only a single stereoblock copolymer is present in the body of the claims. It is indefinite whether the claims require more than one stereoblock copolymer.
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 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(s) 23, 24 and 27-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sommazzi et al. (WO 2018/220538) in view of Ricci et al. (WO 2019/142108).
Regarding claims 23, 24 and 27: Sommazzi et al. teach a polyisoprene-polybutadiene stereoblock copolymer for use in footwear or tires (page 1); wherein the polybutadiene comprises 64% to 80% of syndiotactic 1,2 units content (page 7; Examples), and the polyisoprene comprises 1,4-cis/3,4 polyisoprene units (Examples).
The syndiotactic 1,2 units content of Sommazzi et al. overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Sommazzi et al. fail to teach that the polyisoprene has an alternating structure.
However, Ricci et al. teach that a polyisoprene with an alternating cis-1,4-alt-3,4 structure is advantageously used in the tire and footwear industry (pages 3-4 and 15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an alternating cis-1,4-alt-3,4 structure as taught by Ricci et al. in the polyisoprene of Sommazzi et al. to advantageously produce a copolymer for the tire or footwear industry.
Regarding claim 28: Sommazzi et al. teach the claimed molar amount (Table 1).
Regarding claim 29: Sommazzi et al. teach the claimed polydispersity index (Table 10).
Regarding claim 30: Since the polyisoprene block is the same as claimed it will possess the claimed Tg. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 31: Sommazzi et al. teach an amorphous block (Examples).
Regarding claims 32 and 36: Since the polybutadiene of Sommazzi et al. is the same as claimed, possesses the claimed melting point and crystallization temperature, it will possess the claimed Tg. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 33: Sommazzi et al. teach the claimed meting point (Table 1).
Regarding claim 34: Sommazzi et al. teach the claimed crystallization temperature (Table 1).
Regarding claim 35: Sommazzi et al. teach the claimed content of syndiotactic triads (Table 1).
Regarding claims 37-39: For the current rejection, variable m=0 for claim 23.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763