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 .
DETAILED ACTION
EXAMINER’S COMMENT
Insertion of continuing data of PCT and Japanese Foreign Priority document at beginning of the specification is suggested.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 110662806 A (Jan. 7, 2020) with Machine translation or CN equivalent WO 2018/221661 A1 (Dec. 16, 2018) with Machine translation.
CN and WO are equivalent and the examiner points out CN except for claim 7 which is further taught by WO.
The Machine translated CN teaches a hydrogenated diblock copolymer of a polystyrene block and a conjugated diene block and a gel composition thereof for filling cables in abstract. The Machine translated CN teaches that an aromatic vinyl compound polymer block (A) comprises 90 mass % or more including 100 mass % in abridging paragraph of pages 4-5 meeting the instant amount of claim 1. The Machine translated CN teaches that the content of the polymer block (A) is 38-44 mass % falling within scope of the recited amount of claim 1. The Machine translated CN teaches that the conjugated diene polymer block (B) comprises 90 mass % or more including 100 mass % in middle of page 6 meeting the instant amount
The Machine translated CN teaches that a peak molecular weight (Mt) of block copolymer is 50,000-250,000 at bottom of page 7. CN teaches the Mt ranging from about 120,000 to about 150,000 in table 2 falling within scope of the recited peak molecular weight (Mt) of claim 1.
The diblock copolymer taught by CN would comprise the same blocks claimed in claim 1 and amounts thereof, Mt and content of the polymer block (A). CN teaches a gel composition comprising 90 wt.% of a base oil (a) and 10 wt.% of the block copolymer yielding a dropping point of 200oC to 207oC in table 3 (See lines 1-6 of the Machine translation). Thus, the gel composition taught by CN would be expected to meet the recited conditions (3-1) to (3-3) of claim 1 and condition (4) of claim 2 as well as claims 11 and 12 inherently. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of CN. In re Best, 195 USPQ 430, 433 (CCPA 1977). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
The Machine translated CN teaches a block copolymer of styrene and isoprene in middle of page 13 meeting claims 3 and 4.
The Machine translated CN teaches a hydrogenation rate of the block (B) is up to 99.5 mol % in a lower part of page 8 meeting claim 5.
The Machine translated CN teaches a polymerization method of adding conjugated diene compound which is polymerized and adding the aromatic vinyl compound which is polymerized in middle of page 9 meeting claim 6. Although the machine translated language is somewhat confusing, there would be two methods of obtaining a block copolymer ((1) polymerize the aromatic vinyl compound first and then adds the conjugated diene compound and polymerize it. (2) the conjugated diene compound first and then adds the aromatic vinyl compound and polymerize it). A court held that very limited choice is anticipation. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
The Machine translated CN teaches that the base oil (a) of the gel comprises a paraffinic hydrocarbon and naphthenic hydrocarbon in middle of page 4 meeting claims 8-10.
The Machine translated CN teaches a cable filling material in claim 13 of page 17 meeting claim 13.
The Machine translated WO teaches a crumb for gel composition in middle of page 9 meeting claim 7
Thus, the instant invention lacks novelty.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over CN 110662806 A (Jan. 7, 2020) with Machine translation or CN equivalent WO 2018/221661 A1 (Dec. 16, 2018) with Machine translation. as applied to claims 1-12 above, and further in view of Bening et al. (US 10,336,884, July 2, 2019).
Further regarding the recited condition (3-3) of claim 1, utilization a protective gel composition having no separation of an oil for cable is known in the art as taught by “Background” section and table 2 of Bening et al. Such protective gel composition having no separation of an oil would be expected to yield a cable having long lasting properties.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a gel composition of CN/WO having the recited oil separation degree (3-3) of the instant claim 1 since a gel composition having no separation of an oil for a longer life of the cable is known as taught by Bening et al. absent showing otherwise.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/Primary Examiner, Art Unit 1762