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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13, in the reply filed on January 13, 2026 is acknowledged. The traversal is on the ground that there would be no undue burden to consider all of the claims together. This is not found persuasive because, as stated in the Requirement for Restriction, the inventions have acquired a separate status in the art in view of their different classification; and the inventions require a different field of search based on their different classification. Therefore, applicant’s argument is unpersuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 13, 2026.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al. (US 2003/0017223) in view of Hara et al. (US 2018/0178469).
Regarding claims 1-6, 9, and 10, Tasaka et al. teaches a thermoplastic elastomeric resin composition (¶36) comprising 100 parts by weight of a block copolymer (¶37) that may be styrene-isoprene-styrene (SIS), styrene-ethylene-butylene-styrene (SEBS), or styrene-ethylene-propylene-styrene (SEPS) (¶107); from preferably 3 to 50 parts by weight (¶124) of a maleic anhydride modified copolymer (¶116) (interfacial compatible resin); from 1 to 1200 parts by weight of a polyester-type copolymer, which contains a hard segment of an aromatic polyester and a soft segment of an aliphatic polyether (thermoplastic polyetherester, TPEE) (¶142, 143); from 0 to 60 parts by weight of an inorganic filler (reinforcing additive) (¶153, 154); from 0.1 to 3 parts by weight of an organic peroxide (crosslinking agent) (¶155, 158), and from 0.1 to 10 parts by weight of a crosslinking aid (¶160, 163). The organic peroxide and the crosslinking aid form the claimed crosslinking formulation, which is present in 0.2 to 13 parts by weight.
Tasaka et al. does not teach that the block copolymer is dispersed in the thermoplastic polyetherester, or that the block copolymer has a particle size of about 0.5 to 10 microns. However, Hara et al. teaches a thermoplastic resin composition comprising elastomers of SEBS or SEPS dispersed in a thermoplastic resin such as a polyester or a polyamide (¶48-52). Hara et al. also teaches that the elastomer component has a particle size of 10 microns or less (¶54). Tasaka et al. and Hara et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of thermoplastic vulcanizates used for molded articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form a continuous phase of the thermoplastic component and a dispersed phase of the elastomeric component having a particle size of less than 10 microns, as taught by Hara et al., from the thermoplastic polyetherester component and the block copolymer, as taught by Tasaka et al., and would have been motivated to do so in order to have both high barrier properties and high durability of the composition (¶49).
Regarding claim 7, Tasaka et al. teaches that the organic peroxide may be 2,5-dimethyl-2,5-di(tert-butylperoxy) hexane, dicumyl peroxide, benzoyl peroxide, or di-tert-butyl peroxide (¶156).
Regarding claim 8, Tasaka et al. teaches that the crosslinking aid may be trimethylolpropane trimethacrylate or triallylcyanurate (¶161).
Regarding claims 11-13, since the non-aromatic rubber may be contained in 0 parts by weight, it is not a required component of the composition.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,490,797 (“the ‘797 patent”) in view of Tasaka et al. (US 2003/0017223).
Regarding claims 1, 2, and 4-8, claims 1-3 of the ‘797 patent teach a vulcanizate comprising 100 parts by weight of rubber particles that are a styrene copolymer rubber, 40 to 90 parts by weight of a thermoplastic elastomer that is a thermoplastic polyester elastomer (TPEE), and from 5 to 15 parts by weight of a maleic anhydride grafted polymer, wherein a content of the rubber particles is greater than a content of the thermoplastic elastomer in the vulcanizate and the rubber particles are dispersed in the thermoplastic elastomer in a form of spherical particles with particle sizes of 0.5-10 μm.
The claims of the ‘797 patent do not teach that the vulcanizate further comprises from 0.2 to 3 parts by weight of a crosslinking formulation comprising a crosslinking agent and a crosslinking assistant/aid. However, Tasaka et al. teaches a thermoplastic composition comprising a styrene-based copolymer, a TPEE, a maleic anhydride grafted copolymer, and from 0.1 to 3 parts by weight of an organic peroxide (crosslinking agent) (¶155, 158), and from 0.1 to 10 parts by weight of a crosslinking aid (¶160, 163). The organic peroxide and the crosslinking aid form the claimed crosslinking formulation, which is present in 0.2 to 13 parts by weight. Further, the organic peroxide may be 2,5-dimethyl-2,5-di(tert-butylperoxy) hexane, dicumyl peroxide, benzoyl peroxide, or di-tert-butyl peroxide (¶156); and the crosslinking aid may be trimethylolpropane trimethacrylate or triallylcyanurate (¶161). The ‘797 patent and Tasaka et al. are analogous art because they are from the same field of endeavor, namely that of thermoplastic vulcanizate compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a crosslinking formulation, as taught by Tasaka et al., to the vulcanizate, as taught by the ‘797 patent, and would have been motivated to do so in order to crosslink the composition so it can be used for molded articles.
Regarding claim 3, Tasaka et al. further teaches that the styrene copolymer rubber particles may be SIS, SEBS, or SEPS (¶107). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use SIS, SEBS, or SEPS as the styrene copolymer rubber, and would have been motivated to do so because Tasaka et al. teaches that these are suitable for use in a very similar composition.
Regarding claims 9 and 10, Tasaka et al. further teaches that the vulcanizate may contain from 0 to 60 parts by weight of a reinforcing filler (¶152-154). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0 to 60 parts by weight of a reinforcing filler to the vulcanizate, and would have been motivated to do so in order to provide reinforcement and durability to the vulcanizate.
Regarding claims 11-13, since the non-aromatic rubber may be contained in 0 parts by weight, it is not a required component of the composition.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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