DETAILED ACTION
Priority
Applicant’s response filed on 06/08/2026 has been fully considered. Claims 1-9 and 11-18 are pending. Claim 1 is amended. Claim 10 is canceled.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1, 3, 4, 7, 11-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (WO 2020/102074 A1, cited in IDS, made of record on 08/15/2023) in view of Takeshi et al. (US 2011/0046307 A1).
Regarding claims 1, 3, 7, and 12, Xu teaches thermoplastic elastomer compounds including hydrogenated farnesene-styrene block copolymer (HFSC) [00011], which reads on 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 as claimed, wherein the aromatic vinyl compound in the polymer block (a1) is styrene as claimed. Xu teaches that the thermoplastic elastomer compounds further include secondary styrenic block copolymer [00058] that is styrene-isoprene-styrene block copolymer [00060], which reads on the resin composition further comprising 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 100 mol% of a structural unit derived from isoprene as claimed, wherein the aromatic vinyl compound in the polymer block (b1) is styrene as claimed. Xu teaches that the thermoplastic elastomer compounds further include plasticizer [00011], which reads on the resin composition further comprising a plasticizer (C) as claimed. Xu teaches that the thermoplastic elastomer compound further include polyolefin having a bio-based content of at least about 95% [00011], which reads on the resin composition further comprising a biomass-derived polyolefin-based resin (D) as claimed, wherein the biomass-derived polyolefin-based resin (D) has a biobased content of about 95% by mass or more as claimed. Xu teaches that the thermoplastic elastomer compounds have a bio-based content of at least about 40% [00011] and that the term “bio-based content” means as determined according to ASTM D6866 [00032]. The specification of the instant application recites that “biobased content of the resin composition” means a content percentage of the bio-derived raw materials in the resin composition measured in accordance with ASTM D6866-16 [0011]. Xu’s teachings therefore read on wherein the resin composition has a biobased content of about 40% by mass or more as claimed.
Xu does not teach that the block copolymer (B) has a vinyl bond amount of 1 to 35 mol%. However, Takeshi teaches a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], wherein the conjugated diene polymer block of the first block copolymer has a vinyl bond content of from 1 to 20% by mol, and the conjugated diene polymer block of the second block copolymer has a vinyl bond content of from 1 to 20 mol % [0012], wherein the proportion of the aromatic vinyl monomer units relative to all the polymer components in the block copolymer composition is from 27 to 70% by weight [0011], wherein the aromatic vinyl monomer is styrene [0026], which means that the proportion of the conjugated diene units relative to all the polymer components in the block copolymer composition is from 73 to 30% by weight, which means that Takeshi’s block copolymer composition has a vinyl bond content of from 0.40 to 19 mol%. The vinyl bond content is based on the calculations 30 g / 68.12 g/mol / (30 g / 68.12 g/mol + 70 g / 104.15 g/mol) * 1% / 100% * 100% = 0.40% and 70 g / 68.12 g/mol / (70 g / 68.12 g/mol + 30 g / 104.15 g/mol) * 20% / 100% * 100% = 19%. Xu and Takeshi are analogous art because both references are in the same field of endeavor of a resin composition comprising a block copolymer comprising a polymer block comprising a structural unit derived from an aromatic vinyl compound and a polymer block comprising a structural unit derived from isoprene. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the vinyl bond content of Xu’s styrene-isoprene-styrene block copolymer to be from 0.40 to 19 mol%, as suggested by Takeshi. The proposed modification would read on wherein the block copolymer (B) has a vinyl bond amount of 0.40 to 19 mol% as claimed. One of ordinary skill in the art would have been motivated to do so because Takeshi teaches that a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], having a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the first block copolymer and a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the second block copolymer [0012], wherein the proportion of the aromatic vinyl monomer units relative to all the polymer components in the block copolymer composition is from 27 to 70% by weight [0011], is beneficial for the vinyl bond content not being too high so that the elongation set of the block copolymer composition to be obtained is not large [0040, 0046], and because the elongation set of Xu’s styrene-isoprene-styrene block copolymer not being large would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required elongation set that is not large to some extent.
Regarding claim 4, Xu teaches that examples of commercially available HFSC include those that have a styrene content of about 30%, 20%, or 30% [00046] and that HFSC is hydrogenated farnesene-styrene block copolymer [00041], which optionally reads on wherein a content of the polymer block (a1)in the block copolymer (A) is 20%, about 30%, or 30% by mass as claimed.
Xu does not teach a specific embodiment wherein a content of the polymer block (a1)in the block copolymer (A) is 1% to 65% by mass. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Xu’s commercially available hydrogenated farnesene-styrene block copolymer that has a styrene content of about 30%, 20%, or 30% as Xu’s hydrogenated farnesene-styrene block copolymer. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of Xu’s hydrogenated farnesene-styrene block copolymer that one of ordinary skill in the art does not need to synthesize themselves because Xu teaches that examples of commercially available HFSC include those that have a styrene content of about 30%, 20%, or 30% [00046] and that HFSC is hydrogenated farnesene-styrene block copolymer [00041].
Regarding claim 11, Xu teaches that the thermoplastic elastomer compounds include plasticizer [00011] and that the suitable plasticizer includes synthetic oil [00065], which optionally reads on wherein the plasticizer (C) is a process oil as claimed.
Xu does not teach a specific embodiment wherein the plasticizer (C) is a process oil. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Xu’s plasticizer to be synthetic oil. The proposed modification would read on wherein the plasticizer (C) is a process oil as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying plasticity of Xu’s thermoplastic elastomer compounds, because it would have been beneficial for providing a species of plasticizer that is suitable for Xu’s thermoplastic elastomer compounds, or because it would have obvious to try with a reasonable expectation of success because Xu teaches that the thermoplastic elastomer compounds include plasticizer [00011] and that the suitable plasticizer includes synthetic oil [00065]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 13, Xu teaches that the thermoplastic elastomer compound comprises 10 to 65 wt. % of the hydrogenated farnesene-styrene block copolymer (HFSC) and 2 to 20 wt. % of the secondary styrenic block copolymer [0078], and that the secondary styrenic block copolymer is styrene-isoprene-styrene block copolymer [00060], which reads on the resin composition according to claim 1, comprising the block copolymer (A) and the block copolymer (B) at a mass ratio [(A)/(B)] of 97/3 to 33/67 as claimed. The mass ratio [(A)/(B)] is based on the calculations (65 / (65 + 2) * 100) / (2 / (65 + 2) * 100) = 97/3 and (10 / (10 + 20) * 100) / (20 / (10 + 20) * 100) = 33/67. Xu that the thermoplastic elastomer compound further comprises 2 to 20 wt. % of the plasticizer and 2 to 20 wt. % of the bio-based polyolefin [00078], which reads on the resin composition according to claim 1, comprising 2 to 167 parts by mass of the plasticizer (C) and 2 to 167 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) as claimed. The parts by mass of the plasticizer (C) is based on the calculations 2 / (65 + 20) * 100 = 2 and 20 / (10 + 2) * 100 = 167. The parts by mass of the biomass-derived polyolefin-based resin (D) is based on the calculations 2 / (65 + 20) * 100 = 2 and 20 / (10 + 2) * 100 = 167.
Regarding claim 16, the Office recognizes that all of the claimed physical properties are not positively taught by Xu, namely that the standard deviation of six points of the maximum height roughness Rz measured in accordance with JIS B 0601-2001 when the resin composition is emboss processed by injection molding is 12 or less. However, Xu in view of Takeshi renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the resin composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that as one preferred embodiment of the resin composition of the present embodiment, the standard deviation of six points of the maximum height roughness Rz measured in accordance with JIS B 0601-2001 when the resin composition is emboss processed by injection molding is preferably 12 or less [0092]. Therefore, the claimed physical properties would naturally arise from the resin composition of Xu. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 17, the Office recognizes that all of the claimed physical properties are not positively taught by Xu, namely that the resin composition satisfies the following formula (1): [(-16°C hardness/23°C hardness) × 100 ≤ 120] (1) wherein, the 23°C hardness is a hardness measured at an atmospheric temperature of 23°C according to a type A durometer method of JIS K 6253-2:2012, and the -16°C hardness is a hardness measured at an atmospheric temperature of -16°C according to a type A durometer method of JIS K 6253-2:2012. However, Xu in view of Takeshi renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the resin composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that for the resin composition of the present embodiment, good hardness can be maintained even at a low temperature [0094], that it is understood that the hardness of the resin composition and the molded body of Examples does not become too high even at a low temperature, and the change in hardness is small even at a low temperature [0120], and that it is understood that the resin composition and the molded body of Examples 8 to 11 also had little change in hardness even at a low temperature [0120]. Therefore, the claimed physical properties would naturally arise from the resin composition of Xu. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 18, Xu teaches thermoplastic articles molded from the thermoplastic elastomer compounds [00012] and overmolded thermoplastic articles including an overmold portion molded from the thermoplastic elastomer compounds [00013], which reads on a molded body obtained by using the resin composition according to claim 1 as claimed.
Claims 2, 5, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (WO 2020/102074 A1, cited in IDS, made of record on 08/15/2023) in view of Takeshi et al. (US 2011/0046307 A1) as applied to claim 1, and further in view of Sasaki et al. (US 2016/0108228 A1, cited in IDS).
Regarding claim 2, Xu in view of Takeshi renders obvious the resin composition according to claim 1 as explained above. Xu teaches that the thermoplastic elastomer compounds include hydrogenated farnesene-styrene block copolymer (HFSC) [00011], which reads on wherein a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in a block copolymer (A) is greater than 0 mol%.
Xu does not teach with sufficient specificity that a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in a block copolymer (A) is 70 mol% or more. However, Sasaki teaches a hydrogenated block copolymer that is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived from an aromatic vinyl compound and a polymer block containing 100% by mass of a constitutional unit derived from farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], wherein a hydrogenation rate of the carbon-carbon double bonds in the polymer block containing 100% by mass of a constitutional unit derived from farnesene is 70 to 100 mol % from the viewpoint of obtaining a thermoplastic elastomer composition that is excellent in flexibility, molding processability, weather resistance, and rubber elasticity [0065], wherein the hydrogenated block copolymer is present in a thermoplastic elastomer composition [0022]. Xu and Sasaki are analogous art because both references are in the same field of endeavor of a resin composition comprising a block copolymer comprising a polymer block comprising a structural unit derived from an aromatic vinyl compound and a polymer block comprising a structural unit derived from farnesene. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the hydrogenation rate of the carbon-carbon double bonds in the hydrogenated farnesene block in Xu’s hydrogenated farnesene-styrene block copolymer to be 70 to 100 mol %, as suggested by Sasaki. The proposed modification would read on wherein a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in a block copolymer (A) is 70 mol% or more as claimed. One of ordinary skill in the art would have been motivated to do so because Sasaki teaches that a hydrogenated block copolymer that is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived from an aromatic vinyl compound and a polymer block containing 100% by mass of a constitutional unit derived from farnesene [0034] having a hydrogenation rate of the carbon-carbon double bonds in the polymer block containing 100% by mass of a constitutional unit derived from farnesene of 70 to 100 mol % is beneficial for obtaining a thermoplastic elastomer composition that is excellent in flexibility, molding processability, weather resistance, and rubber elasticity [0065], wherein the aromatic vinyl compound is styrene [0035], and that the hydrogenated block copolymer is beneficial for being useful in a thermoplastic elastomer composition [0022], and because being excellent in flexibility, molding processability, weather resistance, and rubber elasticity would have been desirable for Xu’s hydrogenated farnesene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required flexibility, molding processability, weather resistance, and rubber elasticity to some extent.
Regarding claim 5, Xu in view of Takeshi renders obvious the resin composition according to claim 1 as explained above.
Xu does not teach that the block copolymer (A) has a peak top molecular weight of 50,000 to 600,000 as determined by gel permeation chromatography in terms of standard polystyrene. However, Sasaki teaches a hydrogenated block copolymer that has a peak top molecular weight of 195,000 to 600,000 [0045], wherein the hydrogenated block copolymer is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived form an aromatic vinyl compound and a polymer block containing 100% by mass of a constitutional unit derived from farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], wherein the hydrogenated block copolymer is present in a thermoplastic elastomer composition [0022]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the peak top molecular weight of Xu’s hydrogenated farnesene-styrene block copolymer to be 195,000 to 600,000, as suggested by Sasaki. The proposed modification would read on wherein the block copolymer (A) has a peak top molecular weight of 195,000 to 600,000 as determined by gel permeation chromatography in terms of standard polystyrene as claimed. One of ordinary skill in the art would have been motivated to do so because Sasaki teaches that a hydrogenated block copolymer having a peak top molecular weight of 195,000 to 600,000 is beneficial for flexibility and rubber elasticity at especially high temperatures [0045], wherein the hydrogenated block copolymer is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived form an aromatic vinyl compound and a polymer block containing 100% by mass of a constitutional unit derived from farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], and that the hydrogenated block copolymer is beneficial for being useful in a thermoplastic elastomer composition [0022], and because flexibility and rubber elasticity at especially high temperatures would have been desirable for Xu’s hydrogenated farnesene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required flexibility and rubber elasticity at high temperatures to some extent.
Regarding claim 6, Xu in view of Takeshi renders obvious the resin composition according to claim 1 as explained above.
Xu does not teach that a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in the block copolymer (B) is 70 mol% or more. However, Sasaki teaches a hydrogenated block copolymer that is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived from an aromatic vinyl compound and a polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], wherein the conjugated diene other than farnesene is isoprene [0037], wherein a hydrogenation rate of the carbon-carbon double bonds in the polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene is 70 to 100 mol % from the viewpoint of obtaining a thermoplastic elastomer composition that is excellent in flexibility, molding processability, weather resistance, and rubber elasticity [0065], wherein the hydrogenated block copolymer is present in a thermoplastic elastomer composition [0022]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the hydrogenation rate of the carbon-carbon double bonds in the isoprene block in Xu’s styrene-isoprene-styrene block copolymer to be 70 to 100 mol %, as suggested by Sasaki. The proposed modification would read on wherein a hydrogenation rate of carbon-carbon double bonds in a structural unit derived from a conjugated diene compound in the block copolymer (B) is 70 mol% or more as claimed. One of ordinary skill in the art would have been motivated to do so because Sasaki teaches that a hydrogenated block copolymer that is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived from an aromatic vinyl compound and a polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene [0034] having a hydrogenation rate of the carbon-carbon double bonds in the polymer block containing 100% by mass of a constitutional unit derived from farnesene of 70 to 100 mol % is beneficial for obtaining a thermoplastic elastomer composition that is excellent in flexibility, molding processability, weather resistance, and rubber elasticity [0065], wherein the aromatic vinyl compound is styrene [0035], wherein the conjugated diene other than farnesene is isoprene [0037], and that the hydrogenated block copolymer is beneficial for being useful in a thermoplastic elastomer composition [0022], and because being excellent in flexibility, molding processability, weather resistance, and rubber elasticity would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required flexibility, molding processability, weather resistance, and rubber elasticity to some extent.
Regarding claim 8, Xu in view of Takeshi renders obvious the resin composition according to claim 1 as explained above.
Xu does not teach that a content of the polymer block (b1) in the block copolymer (B) is 1% to 65% by mass. However, Sasaki teaches a hydrogenated block copolymer that is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived from an aromatic vinyl compound and a polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], wherein the conjugated diene other than farnesene is isoprene [0037], wherein a mass ratio of the polymer block composed of a constitutional unit derived from an aromatic vinyl compound and the polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene is 10/90 to 60/40 [0044], wherein the hydrogenated block copolymer is present in a thermoplastic elastomer composition [0022]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select a mass ratio of the styrene block of Xu’s styrene-isoprene-styrene block copolymer to the isoprene block of Xu’s styrene-isoprene-styrene block copolymer to be 10/90 to 60/40, as suggested by Sakaki. The proposed modification would read on wherein a content of the polymer block (b1) in the block copolymer (B) is 10% to 60% by mass as claimed. One of ordinary skill in the art would have been motivated to do so because Sasaki teaches that a hydrogenated block copolymer that is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived from an aromatic vinyl compound and a polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene [0034] having a mass ratio of the polymer block composed of a constitutional unit derived from an aromatic vinyl compound and the polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene that is 10/90 to 60/40 is beneficial for a thermoplastic elastomer composition that is excellent in all of flexibility, molding processability, weather resistance, and rubber elasticity [0044], wherein the aromatic vinyl compound is styrene [0035], wherein the conjugated diene other than farnesene is isoprene [0037], and that the hydrogenated block copolymer is beneficial for being useful in a thermoplastic elastomer composition [0022], and because being excellent in flexibility, molding processability, weather resistance, and rubber elasticity would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required flexibility, molding processability, weather resistance, and rubber elasticity to some extent.
Regarding claim 9, Xu in view of Takeshi renders obvious the resin composition according to claim 1 as explained above.
Xu does not teach that the block copolymer (B) has a peak top molecular weight of 50,000 to 600,000 as determined by gel permeation chromatography in terms of standard polystyrene. However, Sasaki teaches a hydrogenated block copolymer that has a peak top molecular weight of 195,000 to 600,000 [0045], wherein the hydrogenated block copolymer is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived form an aromatic vinyl compound and a polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], wherein the conjugated diene other than farnesene is isoprene [0037], wherein the hydrogenated block copolymer is present in a thermoplastic elastomer composition [0022]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the peak top molecular weight of Xu’s styrene-isoprene-styrene block copolymer to be 195,000 to 600,000, as suggested by Sasaki. The proposed modification would read on wherein the block copolymer (B) has a peak top molecular weight of 195,000 to 600,000 as determined by gel permeation chromatography in terms of standard polystyrene as claimed. One of ordinary skill in the art would have been motivated to do so because Sasaki teaches that a hydrogenated block copolymer having a peak top molecular weight of 195,000 to 600,000 is beneficial for flexibility and rubber elasticity at especially high temperatures [0045], wherein the hydrogenated block copolymer is a hydrogenated product of a block copolymer including a polymer block composed of a constitutional unit derived form an aromatic vinyl compound and a polymer block containing 1 to 100% by mass of a constitutional unit derived from farnesene and 99 to 0% by mass of a constitutional unit derived from a conjugated diene other than farnesene [0034], wherein the aromatic vinyl compound is styrene [0035], wherein the conjugated diene other than farnesene is isoprene [0037], and that the hydrogenated block copolymer is beneficial for being useful in a thermoplastic elastomer composition [0022], and because flexibility and rubber elasticity at especially high temperatures would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required flexibility and rubber elasticity at high temperatures to some extent.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (WO 2020/102074 A1, cited in IDS, made of record on 08/15/2023) in view of Takeshi et al. (US 2011/0046307 A1) as applied to claim 1, and further in view of Xu et al. (WO 2018/232200 A1, cited in IDS, made of record on 08/15/2023).
Regarding claims 14 and 15, Xu 2020 in view of Takeshi renders obvious the resin composition according to claim 1 as explained above. Xu 2020 teaches that in some embodiments, the thermoplastic elastomer compounds further include one or more optional additives [00072] and that the thermoplastic elastomer compound includes 0 to 10 wt. % of the optional additives, 10 to 65 wt. % of the hydrogenated farnesene-styrene block copolymer (HFSC), and 2 to 20 wt. % of the secondary styrenic block copolymer [00078] that is styrene-isoprene-styrene block copolymer [00060], which means that the amount of the one or more optional additives is up to 10 / (10 + 2) * 100 = 83 parts by mass with respect to 100 parts by mass of the total content of the block copolymer (A) and the block copolymer (B).
Xu 2020 does not teach that the resin composition according to claim 1, further comprises 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), wherein the polyolefin-based resin (E) is polypropylene. However, Xu 2018 teaches polypropylene that is present in a TPE compound [00024] that is a thermoplastic elastomer [0004] compound [00024] further comprising HSFC [00010] that is polystyrene-polyhydrogenated farnesene-polystyrene triblock copolymer bio-based elastomers [0006], bio-PE [00010] that is polyethylene bio-based polymer [0006], SEBS [00010] that is hydrogenated form of styrene-ethylene-butylene-styrene [0005], and mineral oil [00010], wherein the amount of the polypropylene is 1-30 wt. %, the amount of the HSFC TPE is 30-80 wt. %, and the amount of the SEBS is 3-40 wt. % [00029]. Xu 2020 and Xu 2018 are analogous art because both references are in the same field of endeavor of a resin composition comprising a block copolymer comprising a polymer block comprising a structural unit derived from an aromatic vinyl compound and a polymer block comprising a structural unit derived from farnesene, a plasticizer, and a biomass-derived polyolefin-based resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Xu 2018’s polypropylene to modify Xu 2020’s thermoplastic elastomer compounds, and to select the amount of Xu 2018’s polypropylene in Xu 2020’s thermoplastic elastomer compounds to be greater than 0 wt. % and less than or equal to 10 wt. %. The proposed modification would read on the resin composition according to claim 1, further comprising greater than 0 parts by mass and less than or equal to 83 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) as claimed, wherein the polyolefin-based resin (E) is polypropylene as claimed. One of ordinary skill in the art would have been motivated to do so because Xu 2018 teaches that the polypropylene is nearly ubiquitous in polymer compound and is beneficial for assisting in compatibility of a TPE compound to a polypropylene substrate during overmolding when it is present in a TPE compound [00024], wherein the TPE is compound is a thermoplastic elastomer [0004] compound [00024] further comprising HSFC [00010] that is polystyrene-polyhydrogenated farnesene-polystyrene triblock copolymer bio-based elastomers [0006], bio-PE [00010] that is polyethylene bio-based polymer [0006], SEBS [00010] that is hydrogenated form of styrene-ethylene-butylene-styrene [0005], and mineral oil [00010], and because assisting in compatibility of a TPE compound to a polypropylene substrate during overmolding and an amount that is greater than 0 wt. % and less than or equal to 10 wt. % would have been desirable for Xu 2020’s thermoplastic elastomer compounds because Xu 2020 teaches that in some embodiments, the thermoplastic elastomer compounds further include one or more optional additives [00072], that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], that the substrate portion of the overmolded thermoplastic article is molded from a thermoplastic resin compound [00088], that the thermoplastic resin compound includes one or more thermoplastic resins [00088], that suitable thermoplastic polymer resins include conventional or commercially available thermoplastic polymer resins [00090].
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 1-9 and 11-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-12, 16, and 18-24 of copending Application No. 18/274,609 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a resin composition comprising: a block copolymer (I) comprising a polymer block (al) 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 (claim 1), wherein the block copolymer (I) is a mixture comprising a block copolymer (P) having a polymer block (al) 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 (al) 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) (claim 3), wherein the block copolymer (Q) has a vinyl bond amount of 1 to 35 mol% (claim 12), which reads on a resin composition comprising: a block copolymer (A) comprising a polymer block (al) 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 (bl) 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 45% by mass or more, and wherein the block copolymer (B) has a vinyl bond amount of 1 to 35 mol% as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that Applicant will consider filing a terminal disclaimer at such point as the claims are deemed otherwise in condition for allowance (p. 6), the provisional rejection of claims 1-9 and 11-18 on the ground of nonstatutory double patenting as being unpatentable over claims 3-12, 16, and 18-24 of copending Application No. 18/274,609 is maintained in this Office action because the applicant has not filed a terminal disclaimer and has not amended the claims to overcome the provisional rejection.
Applicant’s arguments, filed 06/08/2026, see p. 6-12, with respect to the rejection of claims 1, 3, 7, 12, 13, and 16-18 under 35 U.S.C. 102(a)(1) as being anticipated by Xu (WO 2020/102074 A1, cited in IDS, made of record on 08/15/2023).have been considered and are responded to by the new grounds of rejection in this Office action.
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that the claimed recitations in claim 1 are neither fully taught nor reasonably suggested by the cited art, alone, or in combination (p. 7), Xu (WO 2020/102074 A1, cited in IDS, made of record on 08/15/2023) in view of Takeshi et al. (US 2011/0046307 A1) renders obvious the claimed recitations in claim 1 as explained in the rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Xu in view of Takeshi in this Office action.
In response to the applicant’s argument that the Office’s position that applying the numerical values in Takeshi to Xu is a matter of routine design choice and treating the vinyl bond content as a parameter that can be independently optimized is an incorrect premise because in the presently invention, the vinyl bond content functions inseparably in conjunction with the presence of block copolymer (B) and is not a parameter that can be independently optimized in isolation, that therefore, the conclusion in the Office action that the claimed invention is a mere design choice is unfounded (p. 9), the Office’s proposed modification of the teachings of Xu in view of Takeshi is correct. The modification of the vinyl bond content that the Office proposes would have been done in conjunction with the presence of the block copolymer (B) because it is the vinyl bond content of the block copolymer (B) that would have been modified. Takeshi’s and Xu’s block copolymers have substantially similar composition, and Takeshi teaches benefits of their vinyl bond content in their block copolymer that would have been desirable for Xu’s block copolymer. Specifically, one of ordinary skill in the art would have been motivated to select the vinyl bond content of Xu’s styrene-isoprene-styrene block copolymer to be from 0.40 to 19 mol%, as suggested by Takeshi, because Takeshi teaches that a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], having a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the first block copolymer and a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the second block copolymer [0012] is beneficial for the vinyl bond content not being too high so that the elongation set of the block copolymer composition to be obtained is not large [0040, 0046], and because the elongation set of Xu’s styrene-isoprene-styrene block copolymer not being large would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparation of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required elongation set that is not large to some extent.
In response to the applicant’s argument that one of the deficiencies in the rejection is that the technical function of the vinyl bond content is different between Takeshi and the present disclosure because in Takeshi, the vinyl bond content has an effect of controlling elastic modulus and permanent elongation, and in the presently claimed invention, the vinyl bond content is determined to govern low-temperature hardness behavior and flow characteristics during molding, although as noted below, this is in the presence of block copolymer (B) (p. 9), the Office recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Based on this fact, in order for the Office to establish obviousness of selecting the vinyl bond content of the styrene-isoprene-styrene block copolymer to be 1 to 35 mol%, there would need to be some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. The teaching, suggestion, or motivation to do so therefore would not need to be the same as the reason in the instant application. One of ordinary skill in the art would have found it obvious to select the vinyl bond content of Xu’s styrene-isoprene-styrene block copolymer to be from 0.40 to 19 mol%, as suggested by Takeshi, because one of ordinary skill in the art would have been motivated to do so because Takeshi teaches that a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], having a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the first block copolymer and a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the second block copolymer [0012], wherein the proportion of the aromatic vinyl monomer units relative to all the polymer components in the block copolymer composition is from 27 to 70% by weight [0011], is beneficial for the vinyl bond content not being too high so that the elongation set of the block copolymer composition to be obtained is not large [0040, 0046], and because the elongation set of Xu’s styrene-isoprene-styrene block copolymer not being large would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required elongation set that is not large to some extent.
In response to the applicant’s argument that there is a recognized difference in the respective roles of the block copolymer (B), that in Xu, the secondary styrene-based block copolymer is merely included as an additive component, and that in the present invention, block copolymer (B) is an essential component for achieving low-temperature properties and moldability (p. 10), the Office recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Based on this fact, in order for the Office to establish obviousness of selecting the vinyl bond content of the styrene-isoprene-styrene block copolymer to be 1 to 35 mol%, there would need to be some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. The teaching, suggestion, or motivation to do so therefore would not need to be the same as the reason in the instant application. One of ordinary skill in the art would have found it obvious to select the vinyl bond content of Xu’s styrene-isoprene-styrene block copolymer to be from 0.40 to 19 mol%, as suggested by Takeshi, because one of ordinary skill in the art would have been motivated to do so because Takeshi teaches that a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], having a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the first block copolymer and a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the second block copolymer [0012], wherein the proportion of the aromatic vinyl monomer units relative to all the polymer components in the block copolymer composition is from 27 to 70% by weight [0011], is beneficial for the vinyl bond content not being too high so that the elongation set of the block copolymer composition to be obtained is not large [0040, 0046], and because the elongation set of Xu’s styrene-isoprene-styrene block copolymer not being large would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required elongation set that is not large to some extent.
In response to the applicant’s argument that there is a lack of motivation to combine Takeshi and Xu because Takeshi is directed to improving elasticity and permanent elongation, as discussed in its paragraph [0009], that such purpose is unrelated to the problem of Xu, which is concerned with adhesion and overmolding performance, as described in Xu paragraph [0002], and that Takeshi is similarly different from the goal of the present disclosure, which is low-temperature performance and moldability (p. 10), Takeshi’s and Xu’s block copolymers are substantially similar in composition, Takeshi teaches a benefit of the vinyl bond content of their block copolymer, and the benefit would have been desirable for Xu’s block copolymer. The Office recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Based on this fact, in order for the Office to establish obviousness of selecting the vinyl bond content of the styrene-isoprene-styrene block copolymer to be 1 to 35 mol%, there would need to be some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. The teaching, suggestion, or motivation to do so therefore would not need to be the same as the reason in the instant application. One of ordinary skill in the art would have found it obvious to select the vinyl bond content of Xu’s styrene-isoprene-styrene block copolymer to be from 0.40 to 19 mol%, as suggested by Takeshi, because one of ordinary skill in the art would have been motivated to do so because Takeshi teaches that a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], having a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the first block copolymer and a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the second block copolymer [0012], wherein the proportion of the aromatic vinyl monomer units relative to all the polymer components in the block copolymer composition is from 27 to 70% by weight [0011], is beneficial for the vinyl bond content not being too high so that the elongation set of the block copolymer composition to be obtained is not large [0040, 0046], and because the elongation set of Xu’s styrene-isoprene-styrene block copolymer not being large would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required elongation set that is not large to some extent.
In response to the applicant’s argument that Takeshi provides neither teaching nor suggestion relative to the problem addressed in Xu or the presently claimed invention, and that accordingly, there is no motivation to combine Xu and Takeshi (p. 10), the Office recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art would have found it obvious to select the vinyl bond content of Xu’s styrene-isoprene-styrene block copolymer to be from 0.40 to 19 mol%, as suggested by Takeshi, because one of ordinary skill in the art would have been motivated to do so because Takeshi teaches that a block copolymer composition comprising an asymmetric aromatic vinyl-conjugated diene-aromatic vinyl block copolymer and an aromatic vinyl-conjugated diene-aromatic vinyl block copolymer [0010], wherein the conjugated diene monomers are isoprene [0029], having a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the first block copolymer and a vinyl bond content of from 1 to 20% by mol in the conjugated diene polymer block of the second block copolymer [0012], wherein the proportion of the aromatic vinyl monomer units relative to all the polymer components in the block copolymer composition is from 27 to 70% by weight [0011], is beneficial for the vinyl bond content not being too high so that the elongation set of the block copolymer composition to be obtained is not large [0040, 0046], and because the elongation set of Xu’s styrene-isoprene-styrene block copolymer not being large would have been desirable for Xu’s styrene-isoprene-styrene block copolymer in Xu’s thermoplastic elastomer compounds because Xu teaches that preparing of the thermoplastic elastomer compounds [00081] comprises mixing in an extruder that is elevated to a temperature that is sufficient to melt the polymer matrix [00082], and that the thermoplastic resin compounds are used to prepare overmolded thermoplastic articles [00083] that include an overmold portion molded from the thermoplastic elastomer compound [00087], which would have required elongation set that is not large to some extent.
In response to the applicant’s argument that the data of record establishes the criticality of the claimed invention, supported by evidence of unexpectedly superior results, that Examples and Comparative Examples in the present specification clearly demonstrate unexpected results, and that the results would have been unexpected at the time of the presently claimed invention (p. 10-11), the applicant’s arguments of unexpected results are not persuasive because the applicant did not compare the claimed invention with the closest prior art, which is Xu (WO 2020/102074 A1). In order to argue unexpected results, the applicant therefore would need to compare the claimed resin composition with Xu’s resin composition, which means that the applicant would need to compare the resin composition of claim 1 with a same resin composition, except wherein the block copolymer (B) does not have a vinyl bond amount of 1 to 35 mol%. The applicant did not do this because the applicant’s Comparative Examples 1, 2, 3, and 4 comprised Block copolymer (B’-1), (B’-2), or (B’-3) ([0117], Table 2), which were a styrene-ethylene-butylene-styrene block copolymer having a vinyl bond amount of 37 mol%, a styrene-ethylene-butylene-styrene block copolymer having a vinyl bond amount of 73 mol%, or a styrene-ethylene-butylene-styrene block copolymer having a vinyl bond amount of 37 mol%, respectively [0098], which do not read on Xu’s styrene-isoprene-styrene block copolymer. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness (MPEP 716.02(e)). The applicant’s arguments of unexpected results are not persuasive also because the applicant attempted to demonstrate the criticality of the claimed range of the vinyl bond amount of the block copolymer (B) that is 1 to 35 mol%, but the applicant did not demonstrate its criticality because the applicant did not compare a sufficient number of examples inside the claimed range with a sufficient number of examples outside the claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d)(II)). This is because all of the applicant’s Comparative Examples 1, 2, 3, and 4 comprised a block copolymer (B) that had a vinyl bond amount that is outside the claimed range, but that also comprised a structural unit derived from ethylene and butylene instead of isoprene ([0098], [0117], Table 2), which means that the difference between the results for Comparative Examples 1, 2, 3, and 4 and the results for Examples 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, and 11 could have been due not just to a difference in vinyl bond amount, but also to a difference in the composition of the structural units. The applicant’s arguments of unexpected results are not persuasive also because the applicant did not establish that the results are in fact unexpected and significant because one of ordinary skill in the art would have expected the results for Examples 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, and 11 to be different from the results for Comparative Examples 1, 2, 3, and 4 because they differed not just in vinyl bond amount, but also differed in the composition of the structural units. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MPEP 716.02(b)(I))."
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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