DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/20/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8, 10-14 and 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, the claims have been amended to add the limitation “non-polar” with respect to styrenic block copolymer. Applicant does not point to support for the new limitation. This is a case of whether a genus, or subgenus, (i.e. non-polar styrenic block copolymers) is supported by a species (e.g. SEBS) and generic disclosure (styrenic block copolymers)
MPEP 2163.05 discusses situations of the addition of a generic claim a sub-generic claim (section II). Specifically stating:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that ‘only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus.’).”
14. In the instant case, it is not evident how there is a representative number of samples especially given that SEBS is listed as a styrenic block copolymer, while applicant argues that certain SEBS polymers are polar. Note specifically that the same Kraton A1535 is listed in paragraph 56 of the originally filed specification that applicant also argues is polar according to the Polymers Product Guide by the Kraton Corporation. The new limitation cannot both be supported from a species such as SEBS, while on the other hand stating that the new limitation distinguishes from the prior art that has the same SEBS. Applicant cannot have it both ways.
Nevertheless, it is not clear how a representative number of samples of non-polar styrenic copolymers is present to support the new limitation “non-polar”. The generic term “styrenic block copolymers” covers any block polymer with styrene including blocks with (meth)acrylates (e.g. PMMA), isobutylene, bio-based (e.g. myrcene), etc. In the instant application, the only exemplified styrenic block copolymers are with blocks of isoprene, butadiene or hydrogenated blocks thereof (e.g. SEBS).
Claim Rejections - 35 USC § 103
Claim(s) 8, 10-14 and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0332096 (herein Lu) in view of US 2018/0022914 (herein Gu) and US 2014/0100311 (herein Cai).
As to claims 8 and 12-14, Lu teaches a thermoplastic elastomer composition. See abstract. Specifically note the examples (and paragraphs 55-57) with 10 to 35 wt% SEBS (elastomer that is a styrenic block copolymer), 15 to 50 wt% mineral oil (paragraph 7) and 4 to 25 wt% LLDPE (paragraph 57) within the claimed range. The elastomer has a 67 1/s of about 200 to about 2000 measured at 200 oC. See paragraph 19. Lu is silent on the filler.
Gu teaches similar compositions. See abstract and examples. Gu teaches that a filler is added to lower cost and control properties of the elastomer composition. See paragraph 68-72. The filler is added in an amount of 10-15 wt% (see examples in table 2b, 2c, etc. wherein “VICRON 25-11”, calcium carbonate, is added).
As to the new limitation, SEBS is non-polar since it is hydrogenated styrene butadiene styrene, which has no polar groups.
It would have been obvious at the time of the invention to have modified the composition of Lu via adding filler in an amount of about 10 to 15 wt% as suggested by Gu because one would want to lower costs and control properties of the composition. See paragraph 68-72 and examples of Gu.
Lu is silent on the polar polymer.
Cai teaches similar thermoplastic elastomer compositions. See abstract and examples.
Cai teaches that a polar polymer is added in amounts of 2 to 60 parts to impart desirable properties (exemplified as 4.65 wt%, see example). See paragraphs 31, 105-106 and 108. The polar polymer is bio based, thus advantageously biorenewable (paragraph 18) and additionally exhibits sought-after properties such as elasticity, high physical strength and oil stability (paragraph 19).
It would have been obvious at the time of the invention to have modified the compositions of Lu with the bio-based polar polymers of Cai within the claimed range because one would want to add polymers taught to impart desirable properties, are biorenewable, and also improve elasticity, high physical strength and oil stability. See paragraphs 18-19, 31, 105, 106 and 108 of Cai.
As to claims 10-11, the ratio 10-11, the ratio is 0.7 to 1.5. See paragraph 18.
As to claim 21, the mineral oil is paraffinic oil. See paragraph 13.
As to claim 22, the limitation “made from chemically recycled monomers” is a process step in a product by process claim, which is given little patentable weight absent a showing of criticality. See MPEP 2113 for more information on how product by process claims are not limited by the steps, only the structure implied by the steps. In the instant case, the polyethylene is identical.
As to claim 23, the filler is talc. See paragraph 71 and 72 of Gu.
As to claim 24, the styrene block copolymer can be styrene-ethylene propylene-styrene (SEPS). See paragraph 25.
As to claim 25, the styrenic copolymer is hydrogenated polyisoprene. See paragraph 9.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0332096 (herein Lu) in view of US 2018/0022914 (herein Gu), US 2014/0100311 (herein Cai), and JP 2021-161279 (herein Kaeko) and Achilias et al. Journal of Hazardous Materials 149 (2007) 536-542 (herein Achilias).
The discussion with respect to Lu, Gu and Cai set-forth above is incorporated herein by reference.
A machine translation of Kaeko is relied upon as the English translation of Kaeko.
As to claim 22, the following rejection is set-forth assuming that the limitation “made from chemically recycled monomers” imparts a structurally different polyethylene than those disclosed in Lu. In the instant case, Lu, is silent on the limitation that the polyethylene is “made from chemically recycled monomers”.
Kaeko discloses elastomer compositions comprising polyethylene. See paragraph 7-12. Kaeko discloses that the polyethylene can be chemically recycled polyethylene (polyethylene made from chemically recycled monomers). See paragraph 35 and 49. Moreover, Achilias discloses that polyethylene can be prepared from chemically recycled monomers (via depolymerization into ethylene monomers followed by polymerization back into polyethylene. See pages 536-537. The polyethylene can be utilized for automotive parts, films, containers, etc. See page 537, left column. The use of chemical recycled monomers helps fill the need of increasing plastic consumption, while reducing the need of incineration and waste. See pages 536-537. Further, the very use of recycling is advantageous from a green and marketing perspective.
Therefore, it would have been obvious at the time of the invention to have modified the composition of Lu with polyethylene made from chemically recycled monomers as suggested by Kaeko and Achilas because one would want to utilize a method that reduces waste, is good for the environment, green and positive from a marketing perspective.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Kraton A1536H is “slightly” polar and points to the Polymers Product Guide by Kraton. In response, Kraton A1535H is not polar. Nothing in Kraton nor the prior art suggests this. The fact that the Polymers Product Guide states that there is some compatibility with some polar polymers is not indicative that Kraton A1535H is polar. Kraton A1535H is also compatible with nonpolar polymers (polystyrene). Kraton A-1535H is a polymer of Styrene-ethylene/butylene/styrene-styrene, none of which are polar monomers nor would be considered as such by the skilled artisan. Moreover, Lu teaches various styrene block copolymers other than Kraton A1535H.
Applicant continues the argument that polar polymers or mineral oils are listed in the alternative.
In response, the examiner disagrees that one would not have been motivated to utilized both. As an initial matter, the instant argument was previously addressed in the Final Office action mailed 08/18/25. In summary, nothing in the prior art references teaches against utilizing multiple softeners. Cai states that oils and polar polymers may be utilized together. Specifically see abstract and paragraphs listing softener and polar polymer (referred to as a synergistic additive). The softener may be mineral oil (paragraph 29) or other oils (paragraph 73). In other words, the softener (e.g. oil) and synergistic additive (polar polymer) are added for different reasons. Therefore, it is clear that 1) the polar polymer of Cai is not listed as a softener and 2) that it is thus not listed as an alternative given that it is a separate component.
As to the argument that only comparative examples have mineral oil, this point is moot since the broader disclosure teaches that they are suitable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764