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.
Election/Restrictions
Applicant’s election without traverse of Group I Claims 1-9 in the reply filed on November 11, 2025 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 11, 2025.
Claim Rejections - 35 USC §§ 102/103
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.
Or
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 5-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious 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 anticipates or in the alternative meets the limitation of A styrene elastomer of Claim 1.
The PP-1 anticipates or in the alternative 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 anticipates or in the alternative 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 anticipates on in the alternative meets the limitation of (B-2) of Claim 1.
The exemplified paraffinic softener does not anticipate or read over the silicone lubricant of Claim 1.
In ¶[0085], Hoya specifically teaches the softening component can be a paraffinic oil or silicone oil and is used to adjust, amongst other things, the fluidity of the composition. (¶[0084]) This adjustment of fluidity teaching reasonably suggest the softeners act as lubricants.
Therefore, based on ¶[0085], one of ordinary skill in the art can at once envisage the compositions of Hoya being processed with the silicone oil specifically taught by Hoya as the softener rather than the exemplified paraffinic oil because Hoya specifically teaches a silicone oil for this same purpose.
Alternatively, 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 anticipates or in the alternative meets the silicone lubricant limitation of Claim 1.
Claims 2, 5, and 7 are material property limitations. 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 anticipate or in the alternative meet the limitation of 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 anticipates or in the alternative 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 anticipates or in the alternative meets the limitations of these claims as there is no structure imparted by the preambles as this time.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hoya (U.S. 20110319548).
Hoya is applied as above under §102.
Claim 3 and Claim 4 relate to the amount of B-2 relative to B-1 + B-2 (Claim 3 – amorphous comparted 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 3 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 3, 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 3.
In general as a §103s (including combined with §102) are 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)).
Note that evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP §2131.04.
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 3 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.
Conclusion
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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/Christopher M Rodd/Primary Examiner, Art Unit 1766