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 without traverse of Group I, Claims 1-2, 4-7 and 9-14 in the reply filed on 4/1/2026 is acknowledged. Claims 3 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
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.
Claim 2 is 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.
Claim 2 recites the limitation "the peak at 4.05 to 6.10 ppm is B" in line 6. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as "a peak at 4.05 to 6.10 ppm wherein an area of the peak at 4.05 6.10 is B".
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-2, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over JP2009191235 to Hiroyuki et al.
Regarding Claims 1 and 2, Hiroyuki teaches a chloroprene-based polymer [abstract] with a H-NMR signal at 3.80-6.50 ppm (corresponding to instant peak B of claim 2) and a H-NMR signal at 4.13 – 4.30 ppm (corresponding to C of claim 2) [0007] wherein this ratio is between 0.01/100 and 0.65/100 [0031] thereby reading on the C/B ratio is 0.10/100 or less of claim 2.
Hiroyuki is silent regarding an amount of alkali metal cation per unit mass in the chloroprene-based polymer latex is 0.05 to 0.25 mmol/g or that the chloroprene-based polymer latex is freeze-dried to obtain a solid content containing the chloroprene-based polymer, and an ethanol-toluene azeotropic mixture soluble content specified in JIS K 6229 is extracted by refluxing from the solid content to obtain an extract, and the obtained extract is acid treated with hydrochloric acid, an amount of rosin acid of in the solid content measured by gas chromatography is 1.4 to 4.2% by mass. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hiroyuki, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process e.g., obtaining a chloroprene-based polymer by heat-treating a polymer obtained by polymerizing 100 parts by mass of a chloroprene monomer in the presence of 0.5-7 parts metal salt of rosin acid [0007] (as compared to 1.2 to 3.0 parts rosin acid salt of instant application [0021]) and 0.5 parts potassium hydroxide [Example 1] (as compared to 0.1-1.1 parts potassium hydroxide of instant application [0022]) until the polymerization rate reaches 55% or more [Hiroyuki, 0007] while using a potassium persulfate catalyst at 40°C [Hiroyuki, Example 1]. Therefore, the claimed effects and physical properties - i.e. 0.05-0.25 mmol/g of alkali metal cation and amount of rosin acid of 1.4 to 4.2% - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim(s) 4 and 6, Hiroyuki teaches the chloroprene-based polymer of claim 1, wherein the latex is heated to perform a drying process [0032] thereby reading on obtained by drying the latex of claim 4 and a compound composition of claim 6.
Regarding Claim(s) 5, Hiroyuki teaches the chloroprene-based polymer of claim 1, wherein the chloroprene polymer composition can be dissolved in organic solvent to form an adhesive composition [0033].
Regarding Claim(s) 9, and 13, Hiroyuki teaches the chloroprene-based polymer of claim 2, wherein the latex is heated to perform a drying process [0032] thereby reading on obtained by drying the latex of claim 9 and a compound composition of claim 13.
Regarding Claim(s) 10, Hiroyuki teaches the chloroprene-based polymer of claim 2, wherein the chloroprene polymer latex is heated to perform a drying process [0032] and the chloroprene-based polymer can be dissolved in organic solvent to form an adhesive composition [0033].
Regarding Claim(s) 11, Hiroyuki teaches the chloroprene-based polymer of claim 4, wherein the chloroprene polymer latex is heated to perform a drying process [0032] and the chloroprene-based polymer can be dissolved in organic solvent to form an adhesive composition [0033].
Regarding Claim(s) 12 and 13, Hiroyuki teaches the chloroprene-based polymer of claim 9, wherein the chloroprene polymer latex is heated to perform a drying process [0032] and the chloroprene-based polymer composition can be dissolved in organic solvent to form an adhesive composition [0033].
Claim(s) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2009191235 to Hiroyuki in view of WO20200044899 to Yuhei et al. For the purposes of examination, citations for Yuhei are taken from the European equivalent of the document EP3783040.
Regarding Claim(s) 7, Hiroyuki teaches the chloroprene-based polymer of claim 6, as set forth above and incorporated herein by reference.
Hiroyuki does not particularly teach a vulcanized molded body comprising the chloroprene-based polymer of claim 6.
However, Yuhei discloses chloroprene-based polymers [abstract] that is vulcanized to make a vulcanized molded body [Yuhei, 0075]. Yuhei and Hiroyuki are analogous art as they are from the same field of endeavor, namely chloroprene-based polymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to make a vulcanized molded body as taught by Yuhei, using Yuhei’s chloroprene-based polymer.
The motivation would have been that vulcanized molded bodies are suitably used for a variety of products such as a transmission belt, a conveyor belt, a hose, a wiper, an immersion product, a seal, packing, an adhesive, a boot, and other items [Yuhei, 0081]
Regarding Claim(s) 14, Hiroyuki teaches the chloroprene-based polymer of claim 13, as set forth above and incorporated herein by reference.
Hiroyuki does not particularly teach a vulcanized molded body comprising the chloroprene-based polymer of claim 13.
However, Yuhei discloses chloroprene-based polymers [abstract] that is vulcanized to make a vulcanized molded body [Yuhei, 0075]. Yuhei and Hiroyuki are analogous art as they are from the same field of endeavor, namely chloroprene-based polymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to make a vulcanized molded body as taught by Yuhei, using Yuhei’s chloroprene-based polymer.
The motivation would have been that vulcanized molded bodies are suitably used for a variety of products such as a transmission belt, a conveyor belt, a hose, a wiper, an immersion product, a seal, packing, an adhesive, a boot, and other items [Yuhei, 0081].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-7, and 9-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 6-7 of copending Application No. 18274281. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of application No. 18274281 require a ratio of the area of beaks A/B and D/B.
However, application 18274281 teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a ratio of the area of beaks A/B and D/B - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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