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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 3, 5 – 7, 9 – 12, 14 – 18 & 22 – 24 are rejected under 35 U.S.C. § 103 as being obvious over Sawaki et al. (US 2024/0010821 A1; which claims the foreign priority date of 11 November 2020 per JP 2020-187836) in view of Randall et al. (US 11,161,312 B2). Okabe (US 2020/0009913 A1) is cited herein as an evidentiary reference where appropriate.
Regarding claims 1, 14 & 18, Sawaki teaches resin compositions suitable for use in tires (p. 14, [0220]). The composition contains a styrene-based elastomer as the elastomer component, which may be styrene-butadiene, styrene-isoprene & the like (p. 3, [0041]-[0043]), reading on the block copolymer (I) of the instant claim 1. The composition may also contain olefin resins including polyethylene resins, polypropylene resins and copolymers thereof (p. 10, [0135]), reading on the polyolefin-based resin (III) of the instant claim 1.
The composition contains a plasticizer and may be a combination of two plasticizers. Said plasticizer may be an oil, an ester or a liquid resin (p. 13, [0200] & [0201]). Examples of said liquid resin include farnesene polymers (p. 14, [0215]), reading on the biomass-derived raw material of plasticizer (II-1) of the instant claim 1 (Specification, p. 1, [0002]).
Sawaki teaches the majority of the limitations established in the independent base claim 1, however, Sawaki fails to explicitly teach the resin’s biobased content of at least 45 wt.% as required by the independent base claim 1.
In the same field of endeavor, Randall teaches sealant compositions for tires which may be imbedded interior to or applied onto the tire (Abstract). Said composition comprises biorubber and has a non-petroleum content of at least 70 wt.% (Col. 1, lines 25-33). This means 70 wt.% of said composition will be biobased.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the biobased content of Randall’s tire sealant composition of at least 70% as a guide for the biobased content of Sawaki’s composition, as Randall expressly states benefits of compositions of such nature helps enable the tire withstand a puncture from sharp objects, thereby remaining operable longer (col. 1, lines 25-33).
In view of said benefits, it would be further obvious to employ the biobased content of at least 70% taught by Randall, as a guide for the polyethylene/polypropylene resin(s) and plasticizer(s) components in Sawaki’s invention, as this will further promote achieving the aforementioned benefits. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Sawaki in view of Randall as detailed above reads on all limitations established in claims 1, 14 & 18.
Regarding claims 2 & 5, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki provides examples of liquid resins for in the invention, including farnesene polymers & farnesene-styrene copolymers (p. 14, [0214], [0215]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 3, 9 & 10, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki provides further examples of liquid resins for use as “B” in the invention, including farnesene-isoprene copolymers and farnesene-styrene-isoprene copolymers. Said liquid resin examples may be used alone or in combinations of two or more (p. 14, [0214], [0215]). Sawaki teaches the mass ratio of A:B is in the range of 50: 50 – 98:2 (p. 10, [0137]). Therefore, styrene (i.e., aromatic vinyl compound) will be present in said block polymers in amounts of 2% - 50% by mass. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 6, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki teaches the ratio of “A” to “B” as ranging preferably from 50:50 – 98:2 (p. 10, [0136]). In context of “A” & “B”, styrene refers to “B” (p. , [0121], [0122]). Therefore, styrene (i.e., aromatic vinyl compound) will be present in said block polymer in amounts of 2% - 50% by mass. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 7, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki teaches a temperature-responsive resin is preferably a block copolymer formed from the aforementioned “A” & “B” components (p. 10, [0139]). The temperature-responsive resin has a preferable molecular weight in the range of 30,000 – 80,000 (p. 10, [0143). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 11, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki teaches a temperature-responsive resin is preferably a block copolymer formed from the aforementioned “A” & “B” components (p. 10, [0139]). The temperature-responsive resin has a preferable molecular weight in the range of 30,000 – 80,000 (p. 10, [0143). Thus, any embodiment of the invention (i.e., comprising just one copolymer or comprising two or more copolymers), will abide by the preferable weight range taught by Sawaki, reading on the limitation established by the claim. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 12, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki teaches the elastomer component of inventive examples is Nipol 1502 from Zeon Corporation. Nipol 1502 has a vinyl content of 18 mol.% (see Okabe, p. 4, [0037]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 15 – 17, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki discloses the plasticizers include oils and liquid resins (p. 13, [0201]). These plasticizers may be used alone or in combination with each other (p. 13, [0202]). Suitable plasticizing oils include paraffinic process oils, naphthenic oil and vegetable oil (p. 13, [0204]). Sawaki discloses the amount of plasticizers per 100 parts of the aforementioned styrene copolymer ranges from 1 – 100 parts (p. 13, [0203]). As said plasticizers may be used in combination (p. 13, [0204]), it would have been obvious to one of ordinary skill in the art to combine two plasticizers in any amounts such that they fall within the weight ranges as claimed. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 22 & 23, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki discloses hardness tests conducted with a type A durometer in accordance with JIS K 6253-3 (p. 16, [0264]), however, is silent on the properties as required by the claims. Nevertheless, Sawaki provides disclosures and teachings (as demonstrated herein) reading on all limitations of the independent base claim 1 except the express limitation of the resin having biobased content of 45 wt.% or greater. The modification of Sawaki in view of Randall (detailed herein) promotes a biobased content of 70 wt.% or greater, encompassing over half of the claimed range for said limitation.
Therefore, the properties detailed in the claims will inherently be present in Sawaki. Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01.
Regarding claim 24, maintaining the modification of Sawaki in view of Randall previously detailed, Sawaki claims a tire obtained by using the inventive composition of claim 1 (p. 19, Claim 12).
Claims 4, 8 & 19 – 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Sawaki et al. (US 2024/0010821 A1) in view of Randall et al. (US 11,161,312 B2) in further view of Sasaki et al. (US 9,834,666 B2).
Regarding claims 4 & 8, the modification of Sawaki in view of Randall remains as previously detailed above. Although, Sawaki teaches the amount of diene rubbers in the invention may be from 20% - 100% by mass (p. 3, [0045]), Sawaki does not teach the hydrogenation rate as required by the claim.
In the same field of endeavor, Sasaki teaches a resin composition comprising a polyolefin resin, a hydrogenated block copolymer derived from an aromatic vinyl compound, a farnesene-derived compound and a conjugated diene (Abstract). Sasaki teaches the production of a block copolymer (P) from the aromatic vinyl and the farnesene &/or the conjugated diene (col. 6, lines 51-59). Sasaki discloses the hydrogenation rate of carbon-carbon double bonds in polymer block (b) (i.e., derived from farnesene &/or conjugated diene) of block copolymer (P) to be 50-100 mol.%, with preference disclosed at 70-100 mol.% (col. 7, lines 57-64).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the hydrogenation rate of 70-100 mol.% for the polymer block derived from farnesene &/or conjugated diene taught by Sasaki, as a guide for the hydrogenation rate of the farnesene &/or conjugated diene in Sawaki, as the prior art recognizes this to be a beneficial hydrogenation rate in similar compositions with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Modification of Sawaki in view of Randall in further view of Sasaki as detailed above reads on all limitations established by the claims.
Regarding claims 19 – 21, maintaining the modification of Sawaki in view of Randall & Sasaki previously detailed, Sawaki discloses the amount of plasticizer(s) per 100 parts of the aforementioned styrene copolymer ranges from 1 – 100 parts (p. 13, [0203]). Liquid olefin resins are provided as polyethylene or polypropylene (p. 14, [0215]), reading on the polyolefin-based resin (III), however, Sawaki does not expressly teach the composition as required by the claims.
Sasaki details several example compositions comprising the hydrogenated copolymer block in amounts of 40% and polypropylene in amounts of 60% (cols. 17 & 17, Table 2). Similar compositions are shown with 60% LLDPE in place of said polypropylene (col. 19, Table 4). This suggests a ratio of 150 parts polyolefin with respect to 100 parts hydrogenated copolymer. Additional examples of the polyolefin-based resin suitable for use as polypropylene (preferred) or LLDPE are provided (col. 8, lines 7-24) and may be used alone or in combinations of two or more.
As Sawaki teaches a composition comprising 100 parts of the styrene copolymer, 1-100 parts of the plasticizer(s), it would have been obvious to employ the 40%/60% ratio of hydrogenated copolymer/polyolefin taught by Sasaki, as a guide for the compositions taught by Sawaki as Sasaki demonstrates this to be an optimal hydrogenated copolymer/polyolefin pairing.
In view of Sasaki’s disclosure that two polyolefin-based resins may be used, this modification thus results in a composition comprising:
-- 100 parts styrene elastomer (reading on block copolymer (I))
-- 1-100 parts plasticizer(s)
-- 75 parts polyethylene
-- 75 parts polypropylene
As the polyethylene & polypropylene components sum to 150 parts with respect to 100 parts styrene copolymer, this modification abides by the suggested ratio of 150 parts polyolefin to 100 parts hydrogenated copolymer. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Sawaki in view of Randall & Sasaki in this way reads on limitations established by claims 19 – 21.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Sawaki et al. (US 2024/0010821 A1) in view of Randall et al. (US 11,161,312 B2) in further view of Senda et al. (US 2024/0052084 A1; which claims the foreign priority date of 24 December 2020, per JP 2020-215818).
Regarding claim 13, the modification of Sawaki in view of Randall remains as previously detailed above. Sawaki discloses the plasticizers include oils and liquid resins (p. 13, [0201]). These plasticizers may be used alone or in combination with each other (p. 13, [0202]). Suitable plasticizing oils include paraffinic process oils, naphthenic oil and vegetable oil (p. 13, [0204]), however, neither Sawaki nor Randall teach additional such oils which would read on the hydrogenated plasticizer as required by the claim.
In the same field of endeavor, Senda teaches a hydrogenated block copolymer containing a structural unit derived from an aromatic vinyl compound and a structural unit derived from a conjugated diene (Abstract). Senda teaches paraffinic, naphthenic & vegetable oil as suitable softeners (i.e., plasticizers) in parallel with peanut oil, liquid polybutadiene, liquid polyisoprene and hydrogenated products thereof (p. 8, [0126]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ a hydrogenated product of the liquid polyisoprene or liquid polybutadiene as the softener/plasticizer taught by Senda for use as the plasticizer in Sawaki, as they are recited in parallel with the paraffinic, naphthenic & vegetable oil as suitable for use in this capacity.
Modification of Sawaki in view of Randall in further view of Senda as detailed above reads on all limitations established by the claim.
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, 3, 8, 9 & 19 – 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 3 & 13 – 15 of copending Application No. 18/274,623 (hereinafter ‘623). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claims 1 & 3, below is a table displaying the limitations established by the claims of the instant application in contrast to the claims of ‘623.
Claims 1 & 3 – Instant Application
Claim 1 – 18/274,623
1.) A resin composition comprising:
-- a block copolymer (I) comprising:
--- a polymer block (a1) comprising a structural unit derived from an aromatic vinyl compound, and
--- a polymer block (a2) comprising a structural unit derived from a conjugated diene compound;
-- a plasticizer (II); and
-- a biomass-derived polyolefin-based resin (III), wherein,
--- the plasticizer (II) comprises a plasticizer (II-1) containing a biomass-derived raw material, and wherein, the resin composition has a biobased content of 45% by mass or more
3.) The resin composition according to claim 1, wherein the block copolymer (I) is a mixture comprising:
-- a block copolymer (P) having
--- a polymer block (a1) comprising a structural unit derived from the aromatic vinyl compound and
--- a polymer block comprising a structural unit derived from farnesene as the polymer block (a2), and
-- a block copolymer (Q) comprising
--- a polymer block (a1) comprising a structural unit derived from the aromatic vinyl compound, and
--- a polymer block containing 30 mol % or more of a structural unit derived from isoprene as the polymer block (a2)
1.) A resin composition comprising:
-- a block copolymer (A) comprising
--- a polymer block (a1) comprising a structural unit derived from an aromatic vinyl compound, and
--- a polymer block (a2) comprising a structural unit derived from farnesene;
-- a block copolymer (B) comprising
--- a polymer block (b1) comprising a structural unit derived from an aromatic vinyl compound, and
--- a polymer block (b2) comprising 30 mol % or more of a structural unit derived from isoprene;
-- a plasticizer (C); and
-- a biomass-derived polyolefin-based resin (D); wherein the resin composition has a biobased content of 37% by mass or more
As shown in the table above, claim 3 of ‘623 contains all the limitations established by claims 1 & 3 of the instant application, and thus, are not patentably distinct.
Regarding claim 8, below is a table displaying the limitations established by the claims of the instant application in contrast to the claims of ‘623.
Claim 8 – Instant Application
Claim 2 – 18/274,623
8.) The resin composition according to claim 3, wherein, a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in the block copolymer (Q) is 70 mol % or more.
2.) The resin composition according to claim 1, wherein a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in the block copolymer (A) is 70 mol % or more.
As shown above, claim 2 of ‘623 is identical to claim 8 of the instant application and therefore said claims are not patentably distinct.
Regarding claim 9, below is a table displaying the limitations established by the claims of the instant application in contrast to the claims of ‘623.
Claim 9 – Instant Application
Claim 3 – 18/274,623
9.) The resin composition according to claim 3, wherein, the aromatic vinyl compound in the polymer block (a1) in the block copolymer (Q) is styrene.
2.) The resin composition according to claim 1, wherein the aromatic vinyl compound in the polymer block (a1) is styrene.
As shown above, claim 3 of ‘623 is identical to claim 9 of the instant application and therefore said claims are not patentably distinct.
Regarding claims 19 – 21, below is a table displaying the limitations established by the claims of the instant application in contrast to the claims of ‘623.
Claims 19, 20 & 21 – Instant Application
Claims 13, 14 & 15 – 18/274,623
19.) The resin composition according to claim 1, comprising:
-- 1 to 350 parts by mass of the plasticizer (II) and
-- 1 to 200 parts by mass of the biomass-derived polyolefin-based resin (III)
--- with respect to 100 parts by mass of the block copolymer (I).
20.) The resin composition according to claim 1, further comprising:
-- 1 to 100 parts by mass of a polyolefin-based resin (IV) other than the biomass-derived polyolefin-based resin (III)
--- with respect to 100 parts by mass of the block copolymer (I).
21.) The resin composition according to claim 20, wherein the polyolefin-based resin (IV) is polypropylene.
13.) The resin composition according to claim 1, comprising the block copolymer (A) and the block copolymer (B) at a mass ratio [(A)/(B)] of 99/1 to 1/99, and comprising:
-- 1 to 350 parts by mass of the plasticizer (C) and
-- 1 to 200 parts by mass of the biomass-derived polyolefin-based resin (D)
--- with respect to 100 parts by mass of the total content of the block copolymer (A) and the block copolymer (B).
14.) The resin composition according to claim 1, further comprising:
-- 1 to 100 parts by mass of a polyolefin-based resin (E) other than the biomass-derived polyolefin-based resin (D)
--- with respect to 100 parts by mass of the total content of the block copolymer (A) and the block copolymer (B).
15.) The resin composition according to claim 14, wherein the polyolefin-based resin (E) is polypropylene
As shown in the table above, claims 13 – 15 of ‘623 contains all the limitations established by claims 19 – 21 of the instant application, and are thus not patentably distinct.
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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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