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 Arguments
In their response dated 8/24/2026 applicants added new claims 9-14, and argued following:
With respect to the anticipatory rejection over Nishida applicants argued following:
Nishida component A-1 comprises crosslinkable rubber polymer A-1-1 and thermoplastic resin A-1-2 which are utilized in specified amounts that add up to 100 parts. However, instant claim 1 requires 100 or propylene polymer.
Examiner agrees. Crosslinkable rubber is encompassed by term “comprising” and to avoid any issues with the ratios, the examiner utilized a specific example 2 from Nishida, to get actual amounts of each component and normalized the content of each component such that propylene polymer is 100 parts in following manner:
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Consequently, regardless the ratio of what ratio is defined in the specification, the example is a good way to reflect the amounts of each component. Furthermore, applicants’ own calculations are not exactly correct. Specifically, if rubber component is utilized in 50 parts per 40 parts of propylene, there is no way content of the rubber can be as high as applicants indicated in their response. The correct content of rubber should be 125 parts. This goes along with the content of rubber being 20 parts which is half of the 40 parts of polypropylene, yet applicants’ calculated amounts have rubber content at 169. Applicants should review their calculations.
The same error in calculation are made with respect to the content of mineral oil. Example 2 which examiner relied upon used 100 parts of mineral oil per 40 parts of propylene resin. Oil is therefore used in an amount of 2.5 times the content of polypropylene Softener should not be more than 250 parts. Comparative example 2 contains additional 40 parts of oil and based on the description in [0055] it is not what Nishida wants (see X with 175 underneath)
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Interestingly, applicants’ calculations have content of the rubber in example 1 the same as content of rubber in example 2, yet example has 50 parts of rubber while example 1 has 30 parts of rubber.
Consequently, Nishida does anticipate claims as rejected in the office action dated 6/2/2026.
With respect to the anticipatory rejection over Enami:
Applicants argued the process utilized by Enami and the way ethylene alpha olefin and rubber copolymer are blended. Further applicants argued that the mineral oil is blended based on the content of rubber. Consequently, the components of Enami are not calculated based on the 100 parts of propylene.
First, the applicants are not claiming process. Instant claims are directed to a composition and overall amounts of each component. Examiner also did not rely on the examples since such would require normalization as was done with Nishida reference. Examiner relied on [0011] of Enami which gives overall content of each component. In [0011] Enami reports the amounts explicitly based on 100 parts of propylene resin. Examiner would like to further stress that while examples are good way to describe the composition, they are by no means the only way to define the composition. Having said that, the examiner relied on [0011] while applicants argue examples. Applicants’ arguments is not commensurate with the grounds of rejection. Enami’s [0011] explicitly discloses following composition:
100 parts of propylene resin;
20-500 parts of hydrogenated polymer wherein block A is mainly styrene and block B is primarily butadiene;
0.3-5 parts of silicone oil
5-250 parts of ethylene alpha olefin
While ethylene alpha olefin is added per 100 parts of rubber, that does not change the content of propylene resin, so if both rubber and propylene are used in 100 parts the content of ethylene and alpha olefin will still be 5-250 parts.
While applicants’ reliance on the examples is not wrong, the examples do not teach away from the invention of Enami overall.
It should be also noted that while applicants claim broad ranges themselves, the actual content of each component as depicted in the examples is very specific and also does not reflect the entire range. Enami presents his invention in the same manner and that does not mean that the rest of the ranges within his disclosures are not applicable.
With respect to the obviousness rejection which was directed at dynamic cure applicants failed to address the grounds of rejection.
Double Patenting Rejections
With respect to Double Patenting rejection over Kurita, applicants stated that Kurita discloses content of softener that is less than claimed range.
This statement is not correct. Claim 5 of Kurita discloses composition comprising softener, however the claim itself does not state what the actual content of the softener is. Consequently, the examiner concluded that the content of the softener is viewed as open and under broadest reasonable interpretation it includes the instantly claimed amount. It should be noted that MPEP 804 allows examiner to utilize instant specification as a dictionary to learn the meaning of the term. While specification is not “dictionary” per se, it is procedural and legal reference. Consequently MPEP 804 allows use of specification to be context-specific, for example, to establish scope of the claim. As such ranges of each component do not fall under the purview of MPEP 804. If specification could be consulted for ranges, the Double Patenting rejection would have indicated that. As such open range under broadest reasonable interpretation includes claimed amounts.
With respect to the Double Patenting rejection over co-pending application 18/845878, while copending claims do not explicitly recite softener, they recite components A, B, C and F completely omitting components D and E. In this case MPEP 804 can be used as a dictionary because scope of the claims omits two components and therefore the boundaries of the invention have to be established. Consequently, instant specification defines component D as softener and component E and polyorganosiloxane. Since co-pending claims do not recite specific ranges for D and E, under broadest reasonable interpretation, the ranges are open encompassing instant claims 1 and 2.
Consequently, applicants’ arguments are not persuasive, and all rejections are maintained. The rejections will be restated to include new claims. This action is final as necessitated by amendment.
*** The examiner would like to note that claims 5 and 7 are directed to a composition while the limitations therein are directed to the process. While examiner did reject the claims and brought the reference teachings dynamic crosslinking, the process limitations does not carry patentable weight in composition claims. In fact, they are non-limiting claims with respect to composition, and the composition only has to be capable of being dynamically treated.
New claim 14 is non-limiting because property of melt flow rate is that of dynamically cured composition, which is chemically and structurally different from composition of claim 1. As such the composition of claim 1 only has to be capable of achieving the claimed property, which will sine the type and amount of each component in Nishida is in the same range as claimed invention. Additionally, the melt flow rate as claimed is reflective of specific component and specific amounts. Consequently, the scope of instant claim 1 is much broader than the scope of examples. Furthermore, there is nothing in the specification showing that all possible ethylene alphaolefin polymers and all possible softeners or hydrogenated block polymer utilized over the entire claimed range will actually be able to achieve melt property of claim 5. The only reason a scope of enablement was not issued is because in the specification itself applicants recite MFR of 0.1-100 g/10 min, which is really broad.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 5-9, 11, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishida (JP 2008-001808) translation provided.
With respect to claim 1, Nishihara discloses thermoplastic elastomeric composition having following components:
Component A comprises crosslinked rubber A-1 and non-crosslinked rubber A-2
Component B comprises crosslinking agents (peroxides) [0037]
Component C is oil that meets the limitation of softener utilized in 5-500 parts, preferably 10-150 parts per 100 parts of component A [0044].
Component A as disclosed above comprises A-1 and A-2, wherein A-1 comprises A-1-1 and A-1-2 Component preferred A-1-1 is polymer of ethylene and alpha olefin [0011] also referred to as A-1-1α. A-1-1 also includes hydrogenated copolymer as A-1-1β which includes block shaped aromatic vinyl compound [0018] and vinyl aromatic compound [0016]. The crosslinked rubber of A-1-1 is at most 30% by weight of the A component.
Component of A-1-2 is propylene-based polymer as preferred embodiment [0024-0025].
The content of A-1-1 and A-1-2 is preferably 1-99 parts [0030], A1 is preferably 1-99 parts [0035]
Component A2 is hydrogenated elastomer comprising block copolymers of styrene and butadiene [0034].
While the disclosure of Nishida allows for various adjustments in amounts and type of polymers, example 2 teaches following:
Component content normalized to 100
A-1-1 is ethylene -alpha olefin 60 parts 150 parts
A-1-2 is polypropylene 40 parts 100 parts
A-2 is styrene and diene-based rubber [0059] 50 parts 125 parts
MO is a softener 100 parts 250 parts
Please note that the instant invention does not have to be better but it has to be different. Wherein per explanation above the table styrene diene rubber is hydrogenated and ethylene polymer is a copolymer of ethylene and 1-octene. PP is homopolymer, softener is mineral oil.
With respect to claims 3 and 13, content of C (softener) to B (ethylene-alpha olefin) is 250/150 = 1.6
With respect to claims 5 and 14, the composition undergoes dynamic crosslinking which is viewed as dynamic treatment [0049]. The examiner would like to further stress that this claim refers to future process to which the composition is subject to and not to the composition itself. The dynamic treatment is a process step which does not carry patentable weight. Similarly, the melt flow rate of the instant invention refers to dynamically treated composition which is chemically and structurally distinct from composition of claim 1. Consequently, the property is that of an entirely different product having chemical makeup based on the examples in the specification. The composition of Nishida therefore is capable of providing composition having claims melt flow rate.
With respect to claim 6, term at least partially crosslinked includes fully crosslinked.
With respect to claim 7, Nishida utilizes the thermoplastic rubber composition to mold parts using mixers, extruders and molding [0049, 0053].
With respect to claim 8, the composition is utilized to make automotive interior parts [0063].
With respect to claim 9, Nishida discloses preferred rubbers (component D), are copolymers and block polymers comprising styrene in an amount of up to 80% [0017]. The rubbers can be partially or fully hydrogenated [0034-0035] where block polymer type 4 SBSB is preferred. Examples include random styrene butadiene hydrogenated rubber where content of the styrene is 70 parts and styrene butadiene block copolymer wherein styrene content is 35 and diene is 65. The rubbers of Nishida are produced according to WO 01/48079 incorporated there in as a reference.
With respect to claim 11, content of styrene in the vinyl aromatic block is 20% or less, overlapping with claimed range.
Claims 1-6, 8-11, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Enami (JP 2004-075945).
With respect to claim 1, Enami discloses thermoplastic elastomer composition comprising [0011]:
100 parts of polypropylene resin
20-500 parts of hydrogenated polymer wherein block A is primarily vinyl aromatic monomer and block B is primarily hydrogenated butadiene.
0.3-5 parts of silicon oil
5-250 parts of ethylene-alpha olefin resin (EAO) [0012] wherein alpha olefin is defined as monomer having 3-10 carbon atoms [0033].
5-200 parts of processing oil which me per 100 parts of hydrogenated block polymer, which when compared to polypropylene can be also from 5-200 parts or higher [0040] as long as the tensile properties of the composition are not affected. This polymer meets definition of softener.
With respect to claim 2, silicon oil is defined as low molecular weight of straight chains of polydimethyl siloxanes which meet the limitation of polyorganosiloxane [0037]. Silicon oil is utilized as lubricant
With respect to claim 3 and 13, content of softener to EAO is (just picking upper range) 200/250 is 0.8
With respect to claim 4, Enomi clearly stated that block A is predominantly vinyl aromatic and block B is predominantly diene, which means that small content of another monomer in at least butadiene block is encompassed. Which in this case would be vinyl aromatic compound. The hydrogenated polymer of Enomi meets the claim since claims are silent with respect to the extent to which diene block is modified with vinyl aromatic.
With respect to claim 5 and 14, while the examiner was not able to find explicit recitation of term “dynamic”, Enomi does include dynamic processes to melt and cure composition. Specifically, examples teach subjecting the powder composition to heating and adjusting the temperature to ensure that the powder is properly melted and adhered to the substrate. However, as noted in the claim interpretation, dynamic treatment is a process and does not further limit claim that is directed to a composition. Similarly, claim 14 refers to the melt flow rate property of dynamically treated composition of claim 1, wherein the dynamically treated composition is both chemically and structurally distinct from the composition of claim 1. As such, claim 14 does not limit the composition of claim 1. The composition of Enami is capable of obtaining such properties based on the content and type of each component.
With respect to claim 6, while Enomi does not explicitly state that the component B is partially crosslinked, it discloses EOR EG 8407 (see examples) which is ethylene and 1 octene copolymer partially crosslinked, in order to become thermoplastic elastomer.
With respect to claim 8, disclosure of Enomi is utilized to make automotive interior products such as instrument panels, console boxes and door trims [0018].
With respect to claims 9 and 11, Enomi discloses use of SBR copolymer with styrene content of 70, which has been disclosed in WO 01/48079. English translation of the WO patent is US PG Pub to Uehara utilized in this office action. The block polymer has styrene content of in one block of 35 further meeting limitation of instant claim 11.
With respect to claim 10, the recitation of content of a vinyl bond before hydrogenation does not limit the independent claim 1. Specifically, the composition of claim 1 specifically requires presence of hydrogenated rubber, not what the rubber was like before it was hydrogenated.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Enami (JP 2004-075945) in view of Ouhadi (US 2006/0100347).
The discussion of Enami from paragraph 2 of this office action is incorporated here by reference. In summary Enami discloses composition comprising all elements on instant claim 1. While Enami adjusts the cure conditions dynamically, he does not explicitly use the term “dynamic treatment” and while discloses various molding methods all methods include melt processing however injection molding is not listed. While the composition is focused on slash molding the meltability of the composition of Enami allows it to be used using different molding processes which Enami does not exclude as possibility.
Ouhadi discloses another thermoplastic elastomer composition which is based on polypropylene, rubber compound that is copolymer of ethylene and alpha olefin [0026], hydrogenated styrene and diene-based rubbers [0028] and additive process oils. The composition of Ouhadi comprises the same basic ingredients as curing agent that is also peroxide as it is disclosed in Enami. Ouhadi discloses that his composition is utilized to make vehicle interior parts [0007] which is the same article as that of Enami.
With respect to claim 5, in the event applicants do not agree with the position taken in paragraph 2, these types of articles are dynamically cured [0056].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to cure the composition of Enami dynamically. This is because dynamic vulcanization as disclosed in Ouhadi allows one to control the temperature depending on the mixing stage. Enami already teaches using extrusion to uniformly mix the ingredients therefore using extruders to cure would be an obvious step.
With respect to claim 7, while Enami discloses article that is made using slash molding, he does not exclude or teaches away from using injection molding. Enami discloses slash molding as a process used to make film comprising at least one layer. Ouhadi discloses basically composition that has the same broad components that is subject to injection molding in order to form automotive interior article. Ouhadi states that injection molding process when utilized to make films and skins for automotive interior parts eliminates visible welding lines which lower the strength of the part [0007].
Consequently, it would have been obvious to one having ordinary skill in the art to injection mold the skin of the Enami and thereby obtain the claimed invention. As disclosed in Ouhadi such modification would eliminate weaknesses in the automotive article which are result of welding joints.
Following rejection is utilized to especially to meet the limitations of the newly added claims, however, since newly added claims include limitation of the independent claim, all claims will be rejected.
Claims 1, 3-14 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara (US 2008/0249219).
With respect to claim 1, Uehara discloses composition comprising (claim 1):
100 parts of ethylene/1-butene copolymer wherein butene is an alpha olefin
10-500 parts of at least one styrene block copolymer
10-140 parts of oil relative to 100 parts of components a and b, and
0-500 parts of polypropylene resin
Resin composition of Uehara is further limited in the specification where the ethylene/1-butene copolymer is utilized in 100 parts, styrene block polymer is utilized in 10-200 parts [0044] and polypropylene resin is utilized in an amount of 20-200 parts.
Based on the amounts disclosed and the narrower embodiments, the composition where ethylene/1-butene is 100 parts, styrene block is 100 parts and polypropylene is 100 parts would result in 20-280 parts of oil which is well within the bounds of options available to one having ordinary skill in the art as all components are within ranges claimed by Uehara.
With respect to claims 3 and 13, ratio of softener (oil) to styrene block polymer encompasses instant range for 100 parts of styrene block polymer (and olefin) lubricant 20-240 which the ratio is from 0.2-2.4 by utilizing possible range of oil.
With respect to claims 4 and 9-11, the styrene polymers are based on block copolymers of styrene as block A and diene as block B [0022] which are hydrogenated [0025]. The content of styrene overall is 8-65 wt.% which meets instant claim 9. The diene block contains small amount of styrene [0024], and the vinyl aromatic block comprises 10-35 wt.% of styrene further meeting claim 11. While claim 10 is non-limiting because it refers to the content of diene unsaturation before it is hydrogenated, Uehara discloses 35-55% of diene units that become hydrogenated.
With respect to claims 5 and 14, claims are directed to dynamic treatment of the composition which does not further limit the composition itself. Process steps do not carry patentable weight in the composition claims. With respect to claim 14, the melt flow rate refers to dynamically treated composition which is chemically and structurally different from the composition of instant claim 1. Consequently, the composition of Uehara is capable of providing article having claimed melt flow rate based on the total amounts and types of components.
With respect to claims 7 and 8, Uehara utilizes the composition to make injection molded articles such as interior parts of the automobile [0049].
With respect to claim 12, the ethylene polymer, the ethylene/butene copolymer has butene content of 8-25 % which leaves balance of 75-92 to ethylene. With respect to the amount of the ethylene copolymer, claim 1 assumed 1:1:1 ratio of hydrogenated rubber, ethylene copolymer and polypropylene. However, Uehara allows for lower content of polypropylene than both rubber and ethylene copolymer. For example, if composition comprises rubber 100 parts, ethylene copolymer 100 parts and polypropylene 50 parts, normalizing PP to 100 % content of ethylene will be 200 parts.
It would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize any content of components in Uehara as long as these components are within claimed ranges and thereby obtain the claimed invention. Utilizing these components in proposed ranges would allow one of ordinary skill in the art to still produce molded body by injection molding while maintaining excellent dispersability [0049].
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara (US 2008/0249219) in view of Nishihara (US 2002/0045710) in view of evidence in Babu article.
Discussion of Uehara from paragraph 4 of this office action is incorporated here by reference. In Summary, Uehara discloses a composition comprising polypropylene hydrogenated rubber, ethylene/alpha olefin copolymer and mineral oil. The composition is utilized to make automotive interior parts and has good mechanical properties and thermal resistance.
Uehara further teaches that the composition can include additives [0046] such as additional rubbers, slip agents or stabilizers, wherein slip agents are known for its ability to reduce friction. It should be noted that while main ethylene copolymer of Uehara is ethylene/butene, Uehara does not limit discloses alpha olefin to just butene. Other alpha olefins include octene and the like [0038].
While slip agents are disclosed in Uehara, the reference lacks description of what these slip agents are, leaving one of ordinary skill in the art free to determine what is available in industry and select the component based on what is already known in the art.
With respect to claim 2, Nishihara discloses composition comprising hydrogenated rubber, thermoplastic resin (Abstract) such as polypropylene (B-1) [0049] and ethylene/alpha olefin (B-2). Composition further comprises crosslinking agent (C), softener d [0077] and a slip agent [0085].
The slip agent of Nishihara is polyorganosiloxane [0086] utilized in an amount 0.01-20 parts [0088]. Nishihara teaches that the slip agent is added when the abrasion resistance property is required.
Consequently, it would have been obvious polydimethylsiloxane as the slip agents, because Uehara places no limits as to what the slip agents should be. Additionally, polydimethylsiloxane has been successfully utilized with other composition comprising the same type of component.
The combination of two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to for a third composition that is to be used for the very same purpose may be prima facie obvious. In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 426 (CCPA 1971). Selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp. 325 U.S. 327, 65 USPQ 297 (1945).
The composition comprising silicon oil will still make molded article via injection molding [0176]. Resulting composition also has good thermal properties and mechanical strength that includes tensile properties [0263]. The composition is utilized for the same purpose since Nishihara discloses making automotive interior parts as well [0016].
With respect to claim 6, Uehara further teaches the importance of preventing oil bleed out. One having ordinary skill in the art would readily understand that when polymer compositions either absorb or retain oil, their dimensional stability is affected. Such phenomenon causes swelling, plasticization, and the like causing dimensional drift which includes change in size or warping and in turn mechanical properties will be negatively impacted.
Nishihara teaches how to better improve the oil resistance property, and that is achieved by at least partially crosslinking components of the composition. First, the hydrogenated rubber [0003] can be dynamically crosslinked [0007] using peroxide. Crosslinking can be partial or complete [0018]. Crosslinking has to be accomplished carefully, in order not to decompose polypropylene utilized therein.
Additionally, Nishihara teaches use of rubber polymer such as ethylene/alphaolefin, which is crosslinked after components A and B are compounded. Crosslinking of the olefin after compounding also contributes to improvement of properties such as dimensional stability and mechanical properties, wherein both properties are important to Uehara. Studies of dynamic crosslinking of ethylene octene and polypropylene have been studied by Babu. Babu reported that the crosslinking of the olefins improves compatibility and mechanical properties including impact resistance.
In the light of the above disclosure and as evidenced by Babu, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to at least partially crosslink ethylene/alphaolefin polymer such that degradation of polypropylene is minimized and thereby obtain the claimed invention. As shown in Babu crosslinking of ethylene/alpha olefin directly contributes to improving mechanical properties of otherwise immiscible the blend.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,472,820 to Kurita. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Kurita discloses an article, which is part of the vehicle interior that meet instant claim 8. The composition utilized to make the article includes”
Ethylene – alpha olefin copolymer,
Hydrogenated block copolymer comprising principally vinyl aromatic and principally diene blocks,
Olefin resin,
Softener,
Organopolysiloxane,
MPEP 804 in case of Double Patenting rejections allows use of specification as a dictionary. Consistent with the MPEP the examiner looked to the specification for the definition of olefin resin. Specification in [0056] defines olefin resin as preferably propylene resin. Olefin resin (Component C) is utilized in amount 20-150 parts (patented claim 3). Components A and B are utilized in a ratio of 20/80 to 75/25 (patented claim 3) but have no limits as to the amounts in which they are utilized. Since content of these resins is open, their amount can be much higher than 200 parts together.
The thermoplastic elastomer in patented claim 4 is crosslinked which meets the limitation of instant claim 6.
In both teachings the parts are injection molded into automobile interior article.
Double patenting rejection over application 17/432,900 will not be stated since the application is abandoned. Shall applicants revive the application the double patenting rejection will be issued without affecting the status of the instant invention such as finality.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/845878 (‘878). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Co-pending application ‘8789 discloses thermoplastic composition comprising mixture of following:
Composition 1:
Component B comprising ethylene/alpha olefin polymer in amount of 10-180 parts per 100 parts of olefin resin
Component C hydrogenated block copolymer comprising vinyl aromatic block and diene block utilized in amount of 170-500 parts per 100 parts of olefin resin.
Composition 2:
Component C is utilized in an amount of 30 parts by weight based on mass of the olefin resin A.
MPEP 804 in case of Double Patenting rejections allows use of specification as a dictionary. Consistent with the MPEP the examiner looked to the specification for the definition of olefin resin. Specification in [0015] defines olefin resin as preferably propylene resin.
The composition 1 is premixed with crosslinking agent when melt-mixed and molded into an article such as skin of the instrument panel.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicants’ 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
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 3, 2026
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