DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 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.
2. Claims 1-15 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.
3. Claim 1 refers the glass transition temperature, and claim 15 refers to “the second conjugated diene compound” but there is no antecedent basis for those limitation. On the other hand, instant claim 12 refers to “a glass transition temperature”. Therefore, it is not clear if the term “glass transition temperature” of claim 12 is the same or different from that claimed in claim 1.
Claims 2-15 refer to “hydrogenated product of a block copolymer”; however, it is not clear if block copolymer of claims 2-15 is the same or different from that of claim 1.
Claims 6-7, 9 refer to “butadiene”, and claim 9 refers to “beta-farnesene”; but there is no preposition “the” or “said” in from of those; therefore, it is not clear if said terms used for the second or more times are the same or different from that used previously.
Claim 13 refers to “the vinyl bonding amount”; however, there is no antecedent basis for that limitation.
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.
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.
4. Claims 1-2, 4-6, 10-15 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 Jogo et al (US 2013/0324656).
5. Jogo et al discloses a hydrogenated block copolymer A) that is obtained by hydrogenating of:
- 10-34%mass ([0031], as to instant claim 2) of a block (a) containing a structural unit from an aromatic vinyl compound comprising 50%mass or more, specifically styrene ([0018]) and
- a block (b) containing structural units of isoprene and 1,3-butadiene (Abstract); wherein the mass ratio of the structural unit of isoprene to the structural unit of 1,3-butadiene is 49.9/50.1 to 40.1/59.9 ([0013], as to instant claim 6),
Wherein the glass transition temperature of the hydrogenated block copolymer includes the value -60⁰C ([0038], as to instant claims 1, 12).
Wherein 96-100% of carbon-carbon double bond in the polymer block (b) are hydrogenated ([0026], as to instant claim 4);
The weight average molecular weight of the hydrogenated block copolymer is 50,000-500,000 ([0035], as to instant claim 5).
6. Further, Jogo et al teaches that the bonding forms in case of isoprene and butadiene maybe 1,2-bond (vinyl bond), 3,4-bond (vinyl bond) and 1,4-bond, and wherein the content of 1,4-bond is 85% or more, or 90-95% ([0023]). Given the content of 1,4-bond is 85-95%, therefore, the content of vinyl bond (1,2-bond and 3,4-bond) will be 5-15% (as to instant claim 13).
7. As to instant claim14, Jogo et al further discloses a composition comprising 50-80 pbw of the hydrogenated block copolymer A) and further 5-30 pbw ([0013]) a thermoplastic resin B) comprising a polyethylene, a polypropylene, an acrylic resin, or a polycarbonate ([0056]).
8. As to instant claim 15, Jogo et al discloses a method for producing the hydrogenated block copolymer comprising anionic polymerization of an aromatic vinyl compound, and isoprene and butadiene, to produce the block copolymer, followed by hydrogenation ([0042]-[0049]).
9. In the alternative, all ranges in the hydrogenated block copolymer and the composition of Jogo et al are overlapping with the corresponding ranges of those as claimed in instant invention, and it would have been obvious to a one of ordinary skill in the art to form the hydrogenated block copolymer having block (a) in amount of less than 25%wt, hydrogenation ratio of as high as 100%, having Tg of -60⁰C and vinyl bond content in the range of 5-15% as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
10. Though Jogo et al does not explicitly recite some of the properties of the hydrogenated block copolymer, such as a shear storage modulus and a peak top temperature at a loss of tangent of -50⁰C or lower, measured according to conditions as claimed in instant invention, since the hydrogenated block copolymer of Jogo et al is essentially the same as that claimed in instant invention, therefore, it would inherently have, or alternatively would be reasonably expected to have the properties, including a shear storage modulus and a peak top temperature at a loss of tangent of -50⁰C or lower, measured according to conditions as claimed in instant invention, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions/block copolymers, if not taught, may be very well met by the compositions/block copolymers of Jogo et al, since the compositions/block copolymers of Jogo et al are essentially the same and made in essentially the same manner as applicants’ compositions/block copolymers, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
11. Claims 1-12, 14-15 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 Sasaki et al (US 2018/0134931, Sasaki’931), as evidenced by Agilent Technologies flyer, 2015.
12. Sasaki’931 discloses a block copolymer hydrogenated at a hydrogenation rate of more than 85%mol ([0027], as to instant claim 4) comprising:
a) 5-45%wt (as to instant claim 2) of a polymer block (a) comprising structural units from aromatic vinyl compound with top peak molecular weight Mp of 4,000-100,000 ([0019]); and
b) 55-95%wt a polymer block (b) comprising:
b1) 1-100%mass of β-farnesene unit ([0021], as to instant claims 8-9) and
b2) 0-99%mass, or 15-55%mass ([0024], as to instant claims 6-7) of a conjugated diene unit other than farnesene, most preferably butadiene (Abstract, [0017], [0022]) with total content of structural units b1) and b2) of 80%mass or more, or 100%mol ([0026], as to instant claims 8-9), with peak top molecular weight Mp of the block copolymer of 50,000-400,000 ([0037]).
13. As to instant claim 15, the method for producing the block copolymer comprises a solution polymerization of an aromatic vinyl compound, farnesene and conjugated diene, i.e. butadiene, followed by hydrogenation of the produced block copolymer ([0044]-[0045], [0056]).
14. Further disclosed a composition comprising the hydrogenated block copolymer with polyphenylene ether resin in amount of 5-60 pbw per 100 pbw of the hydrogenated block copolymer ([0060], [0065], as to instant claim 15).
15. Though Sasaki’931 discloses the molecular weight of the block (a) and the overall block copolymer in terms of the peak top molecular weight Mp, and not weight average molecular weight Mw, as evidenced by Agilent Technologies flyer, the Mp and Mw are related through polydispersity, as discussed below:
PNG
media_image1.png
291
662
media_image1.png
Greyscale
Since the polydispersity of the block copolymer of Sasaki’931 is about 1 (see Table 1, [0039]), therefore, the values of Mp and Mw for such narrowly distributed polymers will be about the same, and the molecular weight Mw of the block (a) and the Mw of overall block copolymer will inherently have about the same as values as those cited for Mp (as to instant claims 3, 5). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
16. In the alternative, all ranges in the hydrogenated block copolymer and the composition of Sasaki’931 are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
17. Since the hydrogenated block copolymer of Sasaki’931 is essentially the same as that claimed in instant invention, therefore, it would inherently have, or alternatively would be reasonably expected to have the properties, including a glass transition temperature, a shear storage modulus and a peak top temperature at a loss of tangent of -50⁰C or lower, measured according to conditions as claimed in instant invention that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1, 10-12). The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions/ block copolymers , if not taught, may be very well met by the compositions/block copolymers of Sasaki’931, since the compositions/ block copolymers of Sasaki’931 are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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.
18. Claims 1-6, 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jogo et al (US 2013/0324656) in view of Sasaki et al (US 2010/0105837, Sasaki’837).
19. The discussion with respect to Jogo et al (US 2013/0324656) set forth in paragraphs 4-10 above, is incorporated here by reference.
20. Jogo et al does not teach the weight average molecular weight of the polymer block (a).
21. However, Sasaki’837 discloses hydrogenated block copolymer and a composition comprising said hydrogenated block copolymer, the block copolymer comprising:
- a block X containing a vinyl aromatic compound and
- a block Y containing a conjugated diene comprising units of butadiene and isoprene ([0029]-[0031], [0083]), wherein the content of vinyl aromatic compound is 10-50%wt, the weight average of the block X is 5,000-50,000 (as to instant claims 2-3), and
Wherein the peak temperature of tan delta of the block Y is -64⁰C or lower ([0138], as to instant claim 11).
22. Since both Sasaki’837 and Jogo et al are related to hydrogenated block copolymers based on a vinyl aromatic compound-based block and a conjugated diene, specifically (butadiene and isoprene)-based block, and thereby belong to the same field of endeavor, wherein Sasaki’837 specifies the used vinyl aromatic compound-based block having Mw of 5,000-50,000, leading to producing the hydrogenated block copolymer having the peak temperature of tan delta of -64⁰C or lower, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sasaki’837 and Jogo et al, and to either produce the hydrogenated block copolymer of Jogo et al having the vinyl aromatic compound-based block having Mw of 5,000-50,000, or to use the vinyl aromatic compound-based block having Mw of 5,000-50,000 of Sasaki’837 as the block (a) in the block copolymer A) of Jogo et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
23. Since the hydrogenated block copolymer of Jogo et al in view of Sasaki’837 is substantially the same as that claimed in instant invention, therefore, it would intrinsically and necessarily have, or would be reasonably expected to have the properties, including a glass transition temperature, a shear storage modulus and a peak top temperature at a loss of tangent of -50⁰C or lower, measured according to conditions as claimed in instant invention that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
24. Claims 1-7, 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jogo et al (US 2013/0324656) in view of Senda et al (US 2019/0218389).
25. The discussion with respect to Jogo et al (US 2013/0324656) set forth in paragraphs 4-10 above, is incorporated here by reference.
26. Jogo et al does not teach the weight average molecular weight of the polymer block (a).
27. However, Senda et al discloses a hydrogenated block copolymer, which is a hydrogenation product of a block copolymer including:
- 1-30%mass of a polymer block (A) containing more than 70%mol of structural unit derived from an aromatic vinyl compound and having a weight average molecular weight of 3,000-60,000, or 4,000-50,000 ([0062], as to instant claim 2-3);
- a polymer block (B) containing 30%mol or more of structural unit derived from a conjugated diene comprising a combination of butadiene and isoprene at a mass ratio of 10/90-90/10 ([0070], as to instant claims 6-7).
Wherein the polymer block (B) has a hydrogenation rate of 80-100%mol (Abstract, [0017], as to instant claim 4).
28. Since both Senda et al and Jogo et al are related to hydrogenated block copolymers based on a vinyl aromatic compound-based block and a conjugated diene, specifically (butadiene and isoprene)-based block, and thereby belong to the same field of endeavor, wherein Senda et al specifies the used vinyl aromatic compound-based block having Mw of 4,000-50,000, and the weight ratio between butadiene and isoprene I the conjugated diene-based block of 10/90 to 90/10, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Senda et al and Jogo et al, and to either produce the hydrogenated block copolymer of Jogo et al having the vinyl aromatic compound-based block having Mw of 4,000-50,000, and the conjugated diene-based block with the weight ratio between butadiene and isoprene of 10/90 to 90/10, or to use the vinyl aromatic compound-based block having Mw of 4,000-50,000 of Senda et al as the block (a) and the conjugated diene-based block with the weight ratio between butadiene and isoprene of 10/90 to 90/10 as the block (b) in the block copolymer A) of Jogo et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
29. Since the hydrogenated block copolymer of Jogo et al in view of Senda et al is substantially the same as that claimed in instant invention, therefore, it would intrinsically and necessarily have, or would be reasonably expected to have the properties, including a glass transition temperature, a shear storage modulus and a peak top temperature at a loss of tangent of -50⁰C or lower, measured according to conditions as claimed in instant invention that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
30. Claims 1-2, 4-6, 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jogo et al (US 2013/0324656), as evidenced by, or alternatively in view of Hakamaya et al (US 6,451,964).
31. The discussion with respect to Jogo et al (US 2013/0324656) set forth in paragraphs 4-10 above, is incorporated here by reference.
32. Though Jogo et al does not explicitly show the content of vinyl bonds in molar percentage, given i) the percentages related to polymers are taught in the art as either in weight/mass percentages or molar percentages; ii) the weight/mass percentages in Jogo et al are explicitly cited, e.g. [0031]; therefore, it would have been reasonably expected that the percentages related to the bond content in paragraph [0023] are given in molar percentages, especially since, as evidenced by Hakamaya et al, vinyl bond content are provided in %mol (see col. 8, lines 45-49).
Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
33. In the alternative, since both Jogo et al and Hakamaya et al are related to hydrogenated block copolymers comprising a vinyl aromatic units-based block and a conjugated diene-based block comprising both butadiene and isoprene units (Abstract of Hakamaya et al), and thereby belong to the same field of endeavor, wherein Hakamaya et al teaches that the conjugated diene-based block comprising both butadiene and isoprene units is having vinyl bond content of as low as 8%mol (see col. 8, lines 45-50), therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the conjugated diene-based block having vinyl bond content of as low as 8%mol of Hakamaya et al as the polymer block (b) in the block copolymer of Jogo et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, 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.
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.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764