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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-4 in the reply filed on 3/12/26 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because search burden is not a requirement in 371 PCT restriction practice.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Prior to presenting the art rejections below, the Office takes note of how the claims are interpreted. Claim 1 recites a composition comprising a copolymer of an aromatic vinyl unit and a conjugated diene unit. These are the positive recitations. The Office does not consider an aromatic vinyl unit patentably distinct from an aromatic vinyl compound because the instant specification does not provide special definitions for unit vs compound and the unit can be a compound and vice versa (via broadest reasonable interpretation). This is true for conjugated diene unit vs conjugated diene compound, as well. Further, the claim recites that the copolymer composition has a storage elastic modulus and loss tangent within certain ranges. Instant Table 1 discloses that the claimed ranges encompass the preferred materials of 1,3-butadiene and styrene. And something which is old does not become patentable upon the discovery of a new property (MPEP 2112 I). Therefore, the properties—and the manner in which they are measured—does not patentably distinguish the claimed composition from the same composition disclosed in the prior art.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sone (US 2013/0260241 A1).
Regarding claim 1, Sone discloses a composition comprising: a copolymer comprising 1,3-butadiene (paragraph 60) and styrene (paragraph 62). Something which is old does not become patentable upon the discovery of a new property (MPEP 2112 I). The manner in which the properties are measured does not change the intrinsic properties.
Regarding claim 2, the instant specification states that α is the hydrogenation ratio (paragraph 90). Sone discloses a hydrogenation ratio of .65 (paragraph 199).
Regarding claim 3, Sone discloses that the styrene content is 0-50% (paragraph 62).
Regarding claim 4, Sone discloses a functional group containing a nitrogen atom, an oxygen atom, a silicon atom, a germanium atom, a tin atom or a combination thereof (paragraph 20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IMRAN AKRAM/Primary Examiner, Art Unit 1725
Prosecution Insights