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 .
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2021-152116. For convenience, the machine translation will be cited below.
JP ‘116 exemplifies a composition comprising the following:
20.5 parts (A-1) propylene homopolymer FY6, which meets applicants’ (A) and has a MW=520,000 g/mol, as evidenced by the instant specification, p. 25;
79.5 parts (B-1) oil-extended ethylene-propylene-ethylidene norbornene copolymer, which meets applicants’ (B);
2 parts (C-1) Kraton G1657, with a diblock content of 29%, where the composition has an overall diblock content of 0.2%, and meets applicants’ (C);
167.2 parts total content of (D-1)+(D-2) paraffin-based oil rubber softeners, which meet applicants’ component (D); and
(E-1) Tackilol 201 phenol resin, which meets applicants’ (E); (E-2) stannous chloride, (F-1) talc filler, (G-1) Irganox 1076, and (H-1) silicone as additives; and
where the composition has a hardness of 41.
JP ‘116 anticipates instant claims 1-4 and 7-12.
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021-152116, as applied above to claims 1-4 and 7-12.
JP ‘116 anticipates instant claims 1-4 and 7-12, as described above and applied herein as such, as JP ‘116 exemplifies a composition comprising applicants’ claimed components, where the diblock content of (C) is within the claimed amount.
JP ‘116 teaches that the composition can provide a molded article with a hardness of 20-80, preferably 25-75.
This range overlaps with the claimed range of 45-95 in instant claim 5 or 45-85 in instant claim 6, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
JP ‘116 is prima facie obvious over instant claims 5-6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DE 202008014218 teaches a similar composition but does not teach limiting the diblock content of the SEBS copolymer, as claimed.
JP 11-60749 exemplifies the following thermoplastic elastomer composition comprising 30 parts (A) PP-1; 70 parts EP-1, ethylene-proyplene-ethylidene norbornene copolymer rubber (paraffin oil 70 phr oil extension), which meets applicants’ (B) and (D); 0.3 parts CLPE-1, chlorinated polyethylene;0.6 parts PR-1, alkylphenol formaldehyde resin Takkirol 201, which meets applicants’ (E); 25 parts hydrogenated block copolymer d; 1.2 parts zinc oxide;0.8 parts stearic acid.
JP ‘749 teaches the hydrogenated block copolymer to include SEBS (Kraton G1657) as a functional equivalent (Tables 3 and 5); therefore, substituting the hydrogenated block copolymer d with Kraton G1657 is prima facie obvious; however, the diblock content would be about 5 wt%, which is greater than the claimed amount of 0.05-2 wt% based on the total composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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