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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 8/20/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kamiya (JP 2015-160886, machine translation cited on IDS dated 11/13/2023).
The rejection is adequately set forth in paragraph 3 of Office action mailed 4/20/2026 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 8/20/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Kamiya’s ethylene-α-olefin copolymer having kinematic viscosity at 100°C and 40°C of 300-5000 mm2/s and 4000-100,000 mm2/s, respectively, does not read on the claimed kinematic viscosity at 100°C and 40°C.
It is the examiner’s position that the endpoints disclosed by Kimiya of 300 and 4,000 mm2/mm, respectively, share an endpoint with the claimed ranges 30-300 mm2/g and 300-4,000 mm2/g, respectively. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the art to utilize an ethylene-α-olefin copolymer having claimed kinematic viscosity as a suitable kinematic viscosity. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Applicant also argues that Kamiya does not disclose a single copolymer having claimed kinematic viscosity properties at 40°C and 100°C.
The examiner agrees, however, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Kamiya discloses a polymer composition comprising 100 parts by weight (pbw) block copolymer; 1-200 pbw ethylene-α-olefin copolymer (b) having kinematic viscosity at 100°C and 40°C of 300-5000 mm2/s and 4000-100,000 mm2/s, respectively, number average molecular weight of 100-30,000 with a narrow Mw/Mn distribution of 1.0-3 (paragraphs 0055-0056) and ethylene content 3-80 mol %; 1-200 pbw ethylene-α-olefin copolymer (c) having kinematic viscosity at 100°C and 40°C of 1-299 mm2/s and 1-3999 mm2/s, respectively, and ethylene content of 30-80 mol % (paragraph 0052); and 0-100 pbw polyolefin having MFR of 0.1-500 g/10 min (abstract; paragraphs 0009, 0039, and 0055). Tables 2 and 3 (in original Japanese-language document) have Examples 8-10 that comprise 100 pbw SEPS (block copolymer styrene block and hydrogenated polyisoprene block) and 100 pbw of a blend of ethylene-α-olefin copolymer (b) and ethylene-α-olefin copolymer (c) having kinematic viscosity at 100°C of 159, 145, and 145 mm2/s, respectively, and kinematic viscosity at 40°C of 1978, 1694, and 1694 mm2/s, respectively (see Tables 4 and 5). This blend also reads on the claimed ethylene/α-olefin copolymer (B) because b-1, b-2, and c-2 are all ethylene/propylene copolymers (
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). While the individual exemplified polymers do not meet the claimed kinematic viscosities, see Table 1 for values of b-1, b-2, and c-2, the blends do. See paragraph 0126 of the instant specification which teaches that the ethylene/α-olefin copolymer (B) “may be used singly, or two or more of such copolymers.”
Applicant argues that that additional experiments discussed in the specification show that kinematic viscosity affects compression set and permanent set.
The data is not persuasive for three reasons. First, the data has not been presented in the form of a 132 declaration and therefore cannot be relied upon for establishing patentable subject matter. Second, the data is not a direct comparison to the prior art because Kamiya exemplifies formulations comprising a blend of ethylene-α-olefin copolymers having claimed kinematic viscosity at 100°C and 40°C. Third, the data is not reasonably commensurate in scope with the scope of the claims because the data only shows criticality for kinematic viscosity at 40°C of 400 mm2/s. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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