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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6-7 and 17-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification does not support the limitation “0.4% by mass or more”. While paragraph [0058] does disclose “0.4% by mass or more”, it also teaches an upper limit of “20% by mass or less”… “from the viewpoint of easily obtaining excellent breaking elongation and the viewpoint of easily maintaining flexibility suitably”. The original specification teaches against more than 20% by mass.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 6-7, 18 and 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ohnishi et al. (2015/0057399).
Regarding claims 6-7, 18 and 19: Ohnishi et al. teach a chloroprene polymer composition comprising 75 mass% of a chloroprene polymer with a solid content of 55 mass% and 25 mass% of an alkali salt of rosin acid composed mainly of abietic acid with a solid content of 50 mass% [0073; Examples 1 and 2]. The instant specification teaches that the ratio is dependent upon the amount of the conjugate resin acid component (abietic) in the composition [0069].
Given the amount of rosin acid in the examples of Ohnishi et al., it is the position of the Office that Ohnishi et al. teach the claimed ratio and the amount of abietic acid of claims 6 and 7. 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.
Furthermore, the extract is not specified in claim 6, and therefore the extract method can be optimized to obtain the desired ratio.
Claim(s) 6-7 and 17-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Musch et al. (2002/0120045).
Regarding claims 6-7, 18 and 19: Musch et al. teach a chloroprene polymer composition and the claimed amount (2.6 parts by weight) of unmodified resin acid based on tall oil [Example 2]. Musch et al. teach the components of unmodified resin acid based on tall oil [0025].
Given the amount of rosin in the examples of Musch et al., it is the position of the Office that Musch et al. teach the claimed ratio and the claimed acid component of claims 6-7. 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.
Furthermore, the extract is not specified in claim 6, and therefore the extract method can be optimized to obtain the desired ratio.
Regarding claim 17: Musch et al. teach 93 mass% of chloroprene monomer [Examples; 0039].
Claim(s) 6-7 and 18-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Abernathy et al. (2,493,798).
Abernathy et al. teach a composition comprising 100 parts polychloroprene and 4, 7.92, or 8.40 parts by weight of wood rosin [Examples; Table 1]. Given the amount of rosin in the examples of Abernathy et al., it is the position of the Office that Abernaty et al. teach the claimed ratio. 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.
Furthermore, the extract is not specified in claim 6, and therefore the extract method can be optimized to obtain the desired ratio.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohnishi et al. (2015/0057399 as applied to claim 6 above.
Ohnishi et al. tach a content of chloroprene monomer unit of 98 mass% [0049].
The amount of 98 mass% is very close to the claimed amount of less than 98 mass%, such as 97 mass%.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Claim(s) 6-7 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (JP 2006-143826A).
Matsumoto et al. teach a chloroprene polymer composition comprising a chloroprene polymer produced from a chloroprene (2-chloro-1,3-butadiene) monomer content of 90 mass%, and 3.4 parts by weight of a rosin that provides 0.3 wt% of abietic acid to the composition [Example 7]. Matsumoto et al. teach that the rosin is present 0.5 to 10 parts by weight based on 100 parts by weight of the chloroprene polymer [0021].
The range of rosin in Matsumoto et al. provides an overlapping abietic acid weight percentage to the claimed ranges.
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.
Since the amount of abietic acid is the same as claimed, it is the position of the Office that Matsumto et al. teach the claimed ratio. 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.
Furthermore, the extract is not specified in claim 6, and therefore the extract method can be optimized to obtain the desired ratio.
Relevant Prior Art
Musch et al. (2002/0120045) teach the composition of the acid components in common and commercially available rosin [0025-0026].
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
The Applicant admits that Ohnishi et al. teach that the rosin is mainly composed of abietic acid, and then ignores that teaching to impose the disclosure of Musch et al., which contradicts the disclosure of Ohnishi et al.
The Applicant has made the argument that Ohnishi et al. and Musch et al. respectively do not specifically disclose the claimed ratio of the peak area of conjugate resin acid components. This is not persuasive because, given the amount of rosin acid in the examples of Ohnishi et al., it is the position of the Office that Ohnishi et al. teach the claimed ratio and the amount of abietic acid of claims 6 and 7. 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. Furthermore, the extract is not specified in claim 6, and therefore the extract method can be optimized to obtain the desired ratio.
The Applicant has alleged unexpected results of excellent breaking elongation and flexibility. This is not persuasive because unexpected results cannot be used to overcome an anticipation rejection.
The Applicant discusses Musch et al. but does not demonstrate that Musch et al. fails to teach the claimed ranges.
The Applicant has alleged that Abernathy et al. teach greater than 50 mass% of conjugate resin acid components. Claim 6 limits the 50% of a peak in an undefined gas chromatography method. It does not limit the total amount of the claimed conjugate resin acid components in the rosin of Abernathy et al.
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.
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