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 .
This Office action is in response to the amendment filed 11/24/2025. Claims 1-11 are currently pending in the application.
Election/Restrictions
Applicant's election with traverse of group I, drawn to claims 1-4, in the reply filed on 11/24/2025 is acknowledged.
The traversal is on the ground(s) that
Less than the entirety of feature a) of claim 1 is considered in the special technical feature analysis and feature b) of claim 1 is not considered in the special feature analysis.
All technical features of claim 1 are included in groups II, III and IV., since these claims incorporate by reference claim 1. Unity of invention has to be considered only in relation to the independent claims and not the dependent claims. By dependent claim is meant a claim which contains all features of one of more other claims and contains a reference to the other claim or claims and then states additional features claimed (PCT Rule 6.4).
Applicant traverses the restriction requirement of group IV (claims 7-8). Group I is elected and is drawn to a product and group IV is drawn to a method of preparing the product which is within the scope of just one of the categories.
Regarding group V, unity of invention shall be considered to be present in the context of intermediate and final products where two of the conditions are fulfilled: intermediate and the final products have the same essential structural elements and intermediate and final products are technically interrelated.
This is not found persuasive because
Examiner inadvertently omitted a reference to the structural feature of polymer B in the cited art of Scott et al (WO 2017/046009 A1) in paragraph 6, of office action mailed 7/24/2025. Specifically, cited art of Scott et al teach that polymer B comprises a chain of structural unit derived from one or more α,β-unsaturated monomers selected from styrene, substituted styrene … maleic anhydride and diene compounds and derivatives thereof (page 8, lines 24-32).
MPEP § 1850 also states the following: “claim referring to a claim of a different category is not a dependent claim. In the present case, groups II, III and IV do not belong to the same category as group I.
CFR 1.475(c) states “if an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention may not be present (i.e., there is lack of unity).
In the present case, basic chemical structures of the intermediate and final products are not the same and does not meet the condition (A)(1). Specifically, final product includes a second block polymer B.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-11 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 11/24/2025.
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 1-4 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 1 and 2 recite “propylene content is from 51 to 99 percent” (line 8) and “propylene content of from 55 to 95 percent” (line 2), respectively. It is not clear if percent of propylene is “weight” or “mole” percent. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. However, for Examination purposes, Examiner interprets the propylene content to be “weight” percent in light of the specification (see abstract).
Claims 2-4 are subsumed by this rejection either directly or indirectly on independent claim 1.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Scott et al (US 2018/0066097 A1).
Regarding claims 1 and 2, Scott et al disclose a block copolymer having the following structure:
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wherein R and R1 may be the same or different and each independently represents an alkyl or aryl group, X may be hydrogen or C1 to C20 alkyl group which may be branched or linear and wherein the aromatic ring substituent joined to polymer B is positioned meta or para to the aromatic ring substituent joined to polymer A and, wherein polymer A is a non-polar polymer and B is a polymer of a polar monomer (paragraph 0025) which reads on the diblock copolymer in present claim 1. Polymer A consists of a chain of ethylenic structural units, optionally copolymerized with 1-alkene comonomer higher than ethylene and polymer B is derived from one or more monomer selected from styrene, acrylates, methacrylates, vinyl esters, fumarate esters, maleic anhydride and diene compounds and derivatives thereof (paragraphs 0027-0028) which reads on polymer B in present claim 1. In one preferred embodiment, polymer A consists of ethylene-propylene copolymer (paragraph 0054) which reads on polymer A in present claim 1.
Scott et al fail to disclose in a single embodiment as in present claims, polymer A comprising 51 to 99 percent of propylene.
However, Scott et al teach that one or more 1-alkene monomers are used in conjunction with ethylene to form a polymer A preferably the total proportion of 1-alkene monomers is between 1 and 50 mol%, the remainder of polymer A being derived from ethylene (paragraph 0058). It is noted that ethylene and propylene have a molecular weight of 28.05 g/mol and 42.08 g/mol. Hence for a propylene (1-alkene monomer) content of 1 to 50 mol%, it is calculated to be 1.5 to 60 wt% (i.e., overlaps with propylene content in present claims 1 and 2). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Scott et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range, of 51 to 99 wt% (claim 1) and 55 to 60 wt% (claim 2), for propylene content to prepare the polymer A of diblock copolymer, absent evidence to the contrary.
Regarding claim 3, Scott et al teach that polymer B is derived from one or more monomer selected from acrylates, methacrylates, vinyl esters, fumarate esters, maleic anhydride and diene compounds and derivatives thereof (paragraph 0028).
Regarding claim 4, Scott et al teach the material containing two polymer segments are used as additives in polymer systems (paragraph 0001) and compositions comprising the polymer (paragraph 0008).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764