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 .
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.
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.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hoya (U.S. 20110319548).
For clarity of the record, US 20110319548 is the US version of EP2415832
In the Examples, See Table 1 and Table 2, Hoya teaches compositions which comprises PEBR-1, PP-1 and SEBS copolymers with paraffinic softener exemplified (¶[0141])
The SEBS component C meets the limitation of A styrene elastomer of Claim 1.
The PP-1 meets the limitation of (B-1) crystalline polypropylene of Claim 1. (See ¶[0110] which teaches it is a crystalline polyolefin)
The PEBR-1 component A meets the limitation of B-2 amorphous polypropylene.
Note that amorphous materials do not have melting point, however, the broadest reasonable interpretation in light of the specification is that the amorphous polypropylene can have a melting point, which indicates some degree of crystallinity, and still be considered amorphous. (See page 30 ¶[0075] of the as-filed specification). As the melting temp of PEBR-1 is 55.4 oC which is within the preferred range in the as-filed specification of melting points for the amorphous polypropylene, PEBR-1 meets the limitation of (B-2) of Claim 1.
The exemplified paraffinic softener does not read over the silicone lubricant of Claim 1.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Hoya by substituting the paraffinic oil with the silicone oil taught by Hoya for the softening component of the invention because Hoya specifically teaches this in ¶[0085] as functionally equivalent, as in serving the same function in the invention, to paraffinic oil.
This meets the silicone lubricant limitation of Claim 1.
Hoya is applied as above under §102.
With respect to the amount of B2 recited by Claim 1 and the amounts of Claim 4. The amount of B-2 relative to B-1 + B-2 (Claim 1 - amorphous compared to total polypropylene) and the amount of (A) relative to (B-1) and (B-2) (Claim 4 – styrene compared to total polypropylene). The exemplified amounts of styrene elastomer and polypropylenes do not meet the limitations of Claim 1 nor Claim 4.
In ¶[0088], Hoya teaches:
5% to 95 wt% of C (the styrene (A) of the claims)
0 to 70 wt% of B (PP-1 or the crystalline (B-1) of the claims)
95 to 5 wt% of A (PEBR-1 or the amorphous (B-2) of the claims)
The 1.0 to 1.3 limitation of Claim 4 is 50 / 50 (styrene / polypropylene) or more. For instance, the 60 / 40 (styrene / total polypropylene) exemplified by Hoya is an example of the upper limit of Hoya based on the exemplified amounts of Hoya with respect to the teachings of ¶[0088]. For Claim 1, the claim is to 10 to 30 wt% of amorphous polypropylene with respect to 100 % of polypropylene component. There exemplified amounts are generally very heavy in amorphous polypropylene component and light on the crystalline component. For instance, Example 2 is 90 wt% of amorphous polypropylene with respect 100 % (54 + 6) polypropylene. This is within the ranges of these components individually with respect to Hoya’s teaches as is the reverse (54 crystalline and 6 amorphous).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Hoya with the ranges of ¶[0088] because Hoya teaches these ranges.
In particular, as Hoya teaches a range of SEBS from 20 to 80 wt% including 40 and 60 wt% SEBS with the balance being the propylenes, one of ordinary skill in the art would have been motivated to use a 50 /50 styrene / propylene mixture as this is a point in the series between the exemplified 40 and 60 wt% amounts. This would have led one of ordinary skill in the art to the 1.0 ratio according to Clam 4 which reads over the range of Claim 4.
Further, one of ordinary skill in the art would have been motivated to reverse the PEBR-1 and PP-1 amounts exemplified by Hoya in Table 2 because there are no examples in which the crystalline polypropylene is in excess to the amorphous polypropylene even though ¶[0088] teaches that can be possible. Therefore, based on the exemplified numbers, this motivation would have led ordinary skill the art to multiple compositions with “flipped” amorphous and crystalline polypropylene amounts including Example 2 which would result in 54 crystalline and 6 amorphous and 10 wt% of amorphous relative to the total amount of polypropylenes. This reads over the range of Claim 1.
Regarding the fusion bonding limitation and the material property limitations of Claims 2, 5, and 7, Hoya is silent on these limitations, however, every one of Applicant’s examples meets the limitations of these claims with compositions which have the components of Claim 1. Further, even the comparative examples which do not have a component B-2 have the material properties of Claim 5 and Claim 7. Therefore, as Hoya’s examples have all the individual components of Claim 1, one of ordinary skill in the art is reasonably suggested, when tested accordingly, the compositions of Hoya must meet the limitation of Claim 1 (fusion bonding), Claim 2, Claim 5, and Claim 7 for the above reasons.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
PEBR-1 has a MRF of 7 g/10 min at 2.16 kg (2.16 kg = 21.2 N) and 230 oC See Table 1 and ¶[0109] which meets the limitations of Claim 6.
Regarding Claim 8 and Claim 9, Hoya teaches sealing members made from the compositions and automobile interior materials. Claims 8 and 9 recite joint members for automobiles which do not have any other imposed structural limitations. Therefore, these limitations are considered future intended uses of the above sealing and automobile interior materials and there is nothing or record that reasonably suggests these above articles cannot function a joint members or corner members. Even a block of material meets the limitations of these claims as there is no structure imparted by the preambles as this time.
In general as a §103s is made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
With respect to the §103 over the use of silicone rather than paraffinic lubricant, there is no evidence to suggest there is anything unexpected due to lubricant choice as there is no data present that reasonably compares the effect of lubricants on thermoplastic compositions as claimed and as taught by Hoya.
With respect to the §103 over the amounts recited in Claim 1 and Claim 4, Applicant’s demonstrations only detail the effect of using an amorphous polypropylene in compositions which have a styrene elastomer (such as SEBS) and a crystalline polypropylene. Applicant presents no data on the effect of varying either the amount of styrene copolymer nor the amount of amorphous polypropylene with respect to the total of amorphous polypropylene and crystalline polypropylene. Therefore, there is no evidence to suggest variation of the amounts as claimed is allegedly unexpected.
Finally, Hoya has a styrene elastomer, crystalline polypropylene and amorphous polypropylene and Applicant’s data points to the inclusion of an amorphous polypropylene giving allegedly unexpected results. As the amorphous polypropylene is already present in the compositions of Hoya, Applicant’s allegedly unexpected results concerning material properties are reasonably suggested to naturally flow from the teaching of Hoya. In other words, they are expected at this time.
Response to Arguments
Applicant’s claim amendments and remarks filed June 19, 2026 have been fully considered but are not sufficient to move the application to allowance. Applicant has incorporated the limitations of previous Claim 3 into the Claim 1 and added a never previously presented fusion bonding limitation to Claim 1. These amendments have necessitated the previous grounds of rejection based on Hoya under §102/§103 be reapplied under §103 with the previous rejection of Claim 3 under §103. This modification of the ground of rejection has been necessitated by Applicant’s amendment.
Applicant’s remarks filed June 19, 2026 have been fully considered but are not persuasive.
Applicant argues the fusion bonding limitation is not taught by Hoya and is also, therefore, not taught as a result effective variable whose optimization would have been routine. This argument is not persuasive. The rejection of record does not reject the fusion bonding limitation of Claim 1 as a result effective variable whose optimization would have been routine.
Applicant argues they have additional data that demonstrates the fusion bonding property is no inherent over the compositional range of the components recited by Claim 1 taught by Hoya. This argument is not persuasive because it amounts to speculation of the part of Applicant’s representative as there is no requirement that the proffered data be “true and correct” in remarks made by Applicant. The proper manner to file additional data to support such arguments to inherency as Applicant appears to be attempting to do is through submission of a Rule 132 declaration that details the new data and how it was arrived at along with the technical details required in making Rule 132 declarations in general. MPEP §716.01(a) Applicant has not provided a Rule 132 declaration with any of these details. Further, Applicant is reminded submission of a Rule 132 declaration after final action is only considered timely if Applicant provides a good and sufficient reason why the declaration or other evidence necessary was not earlier presented. (37 CFR 1.132(A)) In other words, a good and sufficient reason said Rule 132 declaration was not submitted in the final response on June 19, 2026 as Applicant appears to have the data they desire to demonstrate to the Office the fusion bonding property is not inherent. Applicant is correct in that a demonstration of data showing the amounts of amorphous vs crystalline do not necessarily yield the fusion bonding property of the claims under consideration would be sufficient to overcome the current §103 rejection of record.
Applicant is also reminded that Claims 11-20 are not in condition for rejoinder at this time if the composition of Claim 1 is ever found to be allowable in the future as these claims do not have the particulars of the composition of Claim 1. These claims were withdrawn without traverse.
For the above reasons, the Applicant remarks are not persuasive and the rejections are maintained.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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