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 .
Response to Amendment
2. The amendment filed by Applicant on May 8, 2026 has been fully considered. The previous rejections not cited below are withdrawn. The previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. 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).
4. The rejection is adequately set forth on pages 3-6 of an Office action mailed on February 13, 2026 and is incorporated here by reference.
5. 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.
6. The rejection is adequately set forth on pages 7-10 of an Office action mailed on February 13, 2026 and is incorporated here by reference.
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.
7. 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).
8. The rejection is adequately set forth on pages 10-13 of an Office action mailed on February 13, 2026 and is incorporated here by reference.
9. 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).
10. The rejection is adequately set forth on pages 13-17 of an Office action mailed on February 13, 2026 and is incorporated here by reference.
11. 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).
12. The rejection is adequately set forth on pages 17-18 of an Office action mailed on February 13, 2026 and is incorporated here by reference.
Response to Arguments
13. Applicant's arguments filed on May 8, 2026 have been fully considered.
14. With respect to Applicant’s arguments regarding the rejections of Claims 1-2, 4-6, 10-15 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), it is noted that:
1) the above rejection is made 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.
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.
2) Instant claim 1 refers to a block copolymer, wherein the polymer block (B) comprises butadiene and a second conjugated diene besides butadiene, wherein the block copolymer has a Tg of -57⁰C or lower.
Jogo et al discloses the block copolymer wherein the block (b) containing structural units of isoprene and 1,3-butadiene; that is, the isoprene reads on the “second conjugated diene” of instant claim 1.
Further, Jogo et al explicitly teaches Tg of the hydrogenated block copolymer preferably being -60⁰C ([0038]).
That is, even though Jogo et al does not exemplifies the block copolymer having Tg of
-60⁰C, or -57⁰C, a) Jogo et al explicitly teaches Tg of -60⁰C as preferable and b) under 35 USC 103 a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
3) The examples presented in Table 1 of Jogo et al and Table 2 of instant specification are not comparable, since the block (B) in all inventive examples comprises β-farnesene, which β-farnesene will intrinsically and necessarily alter Tg of the overall hydrogenated block copolymer. In the examples of Jogo et al, isoprene was used as the “second conjugated diene”. Instant claim 1 is silent with respect to the block (B) comprising β-farnesene.
15. With respect to Applicant’s arguments regarding the rejections of Claims 1-6, 10-15 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); Claims 1-7, 10-15 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) and Claims 1-2, 4-6, 10-15 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), it is noted that:
1) Sasaki et al, Senda et al and Hakamaya et al are the secondary references, each of which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973). That is, the secondary references do not need to teach Tg of the hydrogenated block copolymer.
2) Regarding Applicant’s argument on page 15 that
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it is not clear how Jogo et al does not teach the properties specified in condition (2), if condition (2) recites the block copolymer having a glass transition temperature of -57⁰C or lower, and Jogo et al explicitly teaches the block copolymer having Tg of preferably
-60⁰C ([0038]).
16. With respect to Applicant’s arguments regarding the rejection of Claims 1-12, 14-15 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, it is noted that:
1) the above rejection is made 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’931.
2) Sasaki’931 discloses a block copolymer hydrogenated at a hydrogenation rate of more than 85%mol ([0027]) comprising:
a) 5-45%wt 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]).
3) 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.
4) With respect to Applicant’s argument on page 17:
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it is noted that Production example 5 of Sasaki’931 is not the same or similar to that of Comparative example 3 of instant specification. Even though the block (B) in both examples comprise combination of butadiene and β-farnesene, the content of the styrene-based block (A) in the Comparative example 3 of instant specification is 30%mass, wherein the content of the styrene-based block in the Production example 3 of Sasaki’931 is 15%wt; that is, the content of the styrene block (A) in the Comparative example 3 is 2 times more than that in the Production example 5 of Sasaki’931.
It is further noted that the claimed Tg value belongs to the overall block copolymer, i.e. including both the styrene-based block (A) and the conjugated diene-based block (B), and thereby the content of the styrene-based block (A) will intrinsically and necessarily alter the Tg of the overall block copolymer. This is also evident from comparing the inventive and comparative examples of Table 2 of instant specification:
all inventive examples 1-6 show the amount of styrene-based block of 18%wt, providing Tg of the overall block copolymer of -60⁰C to -64⁰C. On the other hand, Comparative examples 1-3 with the higher content of the styrene-based block (20-30%wt), show lower Tg values of the overall block copolymer (-56⁰C to -54⁰C) (see Table 2 of instant specification).
Conclusion
THIS ACTION IS MADE FINAL. 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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