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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikeda et al. (US Pat. 5,571,871).
Considering Claim 1: Ikeda et al. teaches a process of preparing a hydrogenated polymer composition comprising a hydrogenated conjugated diene polymer modified with a boron containing functional group (26:35-57), comprising the steps of anionically polymerizing isoprene/a conjugated diene in the presence of butyl lithium/a reactive metal compound to produce a diene polymer with a reactive terminal group (26:35-57), reacting the reactive terminal polymer with a boron ester (26:35-57) that is preferably tripropylborate or tributylborate (6:12-21) to prepare a terminal modified diene polymer with boron containing terminal groups; and hydrogenating the conjugated diene polymer to react the double bonds present in the polymer (26:35-57). The original specification of the instant application teaches propyl and butyl groups as having the claimed Taft steric parameter in Formula (I) (¶0035). Ikeda et al. teaches mixing the borate with water/a polar compound prior to adding to the polymer (26:35-57). As the borate compound is sufficiently dewatered, it would implicitly have been mixed with water prior to dewatering, and there would be water present in the mixture, due to the dewatering only being sufficient.
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.
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 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (US Pat. 5,571,871).
Considering Claims 3-5: Ikeda et al. teaches a polymer composition comprising a hydrogenated conjugated diene polymer modified with a boronic acid group (26:35-57). Ikeda et al. teaches a polymer modified with groups of the formula
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54
56
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,
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70
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, or
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, where X and Y are hydrogen or an aliphatic hydrocarbon group with 1 to 20 carbon atoms, R1-R3 are hydrogen or an aliphatic hydrocarbon group with 1 to 20 carbon atoms, and M is a alkali or alkali earth metal (3:5-52). Ikeda et al. teaches a second polymer having the structure
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48
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,
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52
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, or
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90
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, where Z is hydrogen or an aliphatic hydrocarbon group with 1 to 20 carbon atoms, X is hydrogen or an aliphatic hydrocarbon group with 1 to 20 carbon atoms, R1-R3 are hydrogen or an aliphatic hydrocarbon group with 1 to 20 carbon atoms, and M is a alkali or alkali earth metal (4:1-38). The polymers are blended with ethylene vinyl alcohol (1:45-50).
Ikeda et al. does not teach using a blend of the two polymers in the composition. However, "[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). The two boron modified polymers would have different polarity due to the alkyl group of the second polymer, which does not hydrolyze to a boric acid group. As such, the amount of each polymer in the blend would be a result effective variable controlling the polarity, and thus the compatibility with the ethylene vinyl alcohol, of the blend. It would have been obvious to a person of ordinary skill in the art to have used a blend of the boron modified polymers of Ikeda et al., and it would have been obvious to a person of ordinary skill in the art to have optimized the relative amounts through routine experimentation, and the motivation to do so would have been, as Ikeda et al. suggests, to provide compatibility with the ethylene vinyl alcohol polymer and good transparency to the composition with ethylene vinyl alcohol (1:40-55).
Ikeda et al. teaches that the polymer can comprise a diene that can be butadiene or isoprene. However, "[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). It would have been obvious to a person of ordinary skill in the art to have used a mixture of isoprene and butadiene in the block copolymer, and the motivation to prepare a polymer with a combination of isoprene and butadiene, and the motivation to do so would have been, as Ikeda et al. suggests, they are functional equivalent.
Response to Arguments
Applicant's arguments filed May 21, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Ikeda et al. does not teach mixing the boric acid compound with a polar compound prior to adding to the reactive terminal polymer. Ikeda et al. teaches mixing the borate with water/a polar compound prior to adding to the polymer (26:35-57). As the borate compound is sufficiently dewatered, it would implicitly have been mixed with water prior to dewatering, and there would be water present in the mixture, due to the dewatering only being sufficient.
B) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the induction rate and the use of TMEDA) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
C) The applicant’s argument that Ikeda et al. does not teach polymers comprising both isoprene and butadiene is not persuasive. Ikeda et al. teaches that the polymer can comprise a diene that can be butadiene or isoprene. However, "[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). It would have been obvious to a person of ordinary skill in the art to have used a mixture of isoprene and butadiene in the block copolymer, and the motivation to prepare a polymer with a combination of isoprene and butadiene, and the motivation to do so would have been, as Ikeda et al. suggests, they are functional equivalent.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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