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.
Claims 1 and 2 are 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).
Considering Claim 2: Ikeda et al. teaches mixing the borate with water/a polar compound prior to adding to the polymer (26:35-57).
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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58
70
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, or
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62
82
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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
68
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, or
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58
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).
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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767