DETAILED ACTION
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 1, claims 1-7, 15-24, species of a vinyl-based crosslinking agent with a polar functional group, a composition of claim 1
filed on 7/31/2026 is acknowledged. The traversal is on the ground(s) that (i) the restricted inventions are not independent or distinct inventions and (ii) that examination of both claimed invention together would not present a serous burden on the U.S. Patent and Trademark Office.
With respect to (i), it is not found persuasive because 1) the claimed group inventions are independent or distinct because each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search; the prior art applicable to one invention would not likely be applicable to another invention, and 2) the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41 has been adequately addressed in MPEP §802.01. Therein, it is stated that the legislative intent was to maintain the substantive law on the subject of restriction practice prior to enactment of 35 USC 121. Such practice permitted restriction between distinct, albeit dependent inventions. If the intent had been otherwise, then only the term “independent” would have been used. Thus, restriction between the distinct inventions set forth in this application is proper even though these inventions are clearly related.
With regard to (ii) applicants allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
Restriction for examination purposes as indicated is proper because all these inventions listed in last action are independent or distinct for the reasons given below and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);(d) the prior art applicable to one invention would not likely be applicable to another invention;(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
In this particular case, the prior art applicable to one invention would not likely be applicable to non-elected invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 8-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/31/2026.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-4, 6-7 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 uses “comprising” to replace “selected from the group consisting of”, which changes the scope of the claim and is not supported by the specification.
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.
Claim(s) 1-2, 4, 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al (JP2020002217).
In setting forth this rejection a machine translation of JP2020002217 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Saito teaches a composition comprising 30.8 parts of C-1 and 9.2 parts of compound E-1 and inorganic filler (table 1, example 1). C-1 is a styrene based thermoplastic elastomer Septon V9827, E-1 is triallyl isocyanurate with Mw of 249. The content of E-1 is 29.8 parts per 100 parts of C-1.
Claim(s) 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al (JP2020002217) as evidenced by Kelley et al (US 9,265,629).
Kelley teaches Septon V9827 has a styrene content of 30 wt% (7:40-41).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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