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
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 1-14 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.
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
RESPONSE TO ARGUMENTS
Applicant asserts that the same block copolymer taught by CN would not be expected to yield the instantly recited properties 100% of the time and points to Comparative examples 1 and 2 would show that unexpected results of copolymers obtained from a slightly different method.
Thus, applicant’s argument is directed to method claim 6, not to a copolymer of claims 1-5 and 7-14 (i.e., product). An invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
Applicant failed to show that copolymers taught in table 2 of CN would not yield the instantly recited condition (3-1) utilizing applicant’s own method.
Regarding the copolymer of claim 6 obtained by the slightly different method mentioned by applicant, the examiner sees that the Comparative examples 1 and 2 have a poor viscosity stability (116% and 126% change).
The examiner sees that that the instant examples and comparative examples utilize copolymers comprising about 37 wt.% of styrene (i.e., polymer block A) and thus scope of claims is broader than showing since the instant claim 1 recites 20 to 50 wt.% of the polymer block A. Whether an applicant seeks to establish an unobvious difference to overcome an inherency finding or unexpectedly improved results to overcome an obviousness conclusion, the objective evidence an applicant provides must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing must be reviewed to see if the results occur over the entire claimed range. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035-36 (CCPA 1980); In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). See MPEP 716.02(d).
Regarding isoprene as a conjugated diene compound of new claim 14, examples of table 2 of CN and Machine translated WO teach block copolymers of polystyrene and polyisoprene which would meet the recited isoprene
Claims 1-14 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 1-14
above, and further in view of Bening et al. (US 10,336,884, July 2, 2019).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
A typographical error was “as applied to claims 1-12 above” of a heading of Non-Final rejection which should have been “as applied to claims 1-13 above” since the rejection based on “CN 110662806 A (Jan. 7, 2020) with Machine translation or CN equivalent WO 2018/221661 A1 (Dec. 16, 2018) with Machine translation” of the first rejection of Non-Final had clearly rejected claims 1-13.
RESPONSE TO ARGUMENTS
Applicant’s argument is directed to the rejection of claim 1 and the examiner has addressed the rejected claim 1 in the above first rejection.
Applicant further asserts that Bening et al. teach a block of 1,3-butadiene as opposed to the recited isoprene of new claim 14. CN teaches and equate the isoprene and butadiene as the conjugated diene compound (see lower part of page 6 of Machine translated CN). Thus, Bening et al. teach a block copolymer of styrene and butadiene as the conjugated diene compound which is useful as a protective gel composition having no separation of an oil for cable (see “Background” section and table 2 of Bening et al.) and thus the examiner believes that utilization of Bening et al. as a secondary reference teaching utilization of the protective gel composition having no separation of an oil for cable would be proper contrary to assertion that Bening et al. teaches a different conjugated diene compound.
THIS ACTION IS MADE FINAL. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/TAE H YOON/ Primary Examiner, Art Unit 1762
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