DETAILED ACTION
Pending Claims
Claims 1-8, 13, 14, 20, 21, and 33 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
Claim 1 contains multiple periods (see first wherein limitation). A claim should only conclude with a period. Claim 2 is objected to because it is dependent from claim 1. Appropriate correction is required.
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 1-8, 13, 14, 21, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (US 2012/0190786 A1) in view of Uehara et al. (US 2018/0030194 A1).
Regarding claims 3-8, 13, 14, 21 and 33, Sasaki discloses: (3) a thermoplastic elastomer composition (Abstract; paragraph 0042; Examples in Table 2) comprising
component (A) a styrene-based thermoplastic elastomer (Examples in Table 2; see also paragraphs 0043-0074 and the reference examples in Table 1), and
component (B) a polyolefin resin (Examples in Table 2; see also paragraphs 0078-0080 & 0147);
(4) further comprising component (C): hydrocarbon softener for rubber (Examples in Table 2; see also paragraphs 0075-0077 & 0147); (5) wherein the content of the component (B) is 3% by mass or more and 30% by mass or less in a total of 100% by mass of the components (A), (B) and (C) (Examples in Table 2; see also paragraphs 0077 & 0080); (6 & 7) wherein the content of the component (A) is 35% by mass or more and 65% by mass or less in a total of 100% by mass of the components (A) and (C) (Examples in Table 2; see also paragraphs 0077 & 0080);
(8) having a compression set of 40% or less (Examples 1-3, 6-8 & 10 in Table 2; see also paragraph 0127);
(13) having a melt flow rate (230 oC, load 5 kgf) of 0.5 g/10 minutes or more and 200 g/10 minutes or less (Examples 1, 2, 4, 5 & 8 in Table 2; see also paragraphs 0119-0120);
(14) having a Duro hardness A of 10 or more and 50 or less (Examples 1 & 6 in Table 2; see also paragraph 0118);
(21) a molded article made of the thermoplastic elastomer composition (paragraphs 0100-0110, 0128-0129 & 0146); and (33) wherein the molded article is a rubber stopper having a needle pricking part (paragraphs 0128-0129 & 0146).
The exemplary embodiments in Table 2 are formulated with hydrogenated block copolymer (a)-1, which has a peak top molecular weight of 315,000 (see Table 1). Accordingly, these examples fail to disclose that: (3-8, 13, 14, 21 & 33) the styrene-based thermoplastic elastomer has a peak Lp having a peak top in the range of 100,000 or more and 400,000 or less and a peak Hp having a peak top in the range more than 400,000 and 600,000 or less in a differential molecular weight distribution diagram calculated in terms of styrene obtained by gel permeation chromatographic analysis of the styrene thermoplastic elastomer. However, the general teachings of Sasaki disclose that the peak top molecular weight can range from 250,000 to 500,000 (see paragraph 0065), which suggests that styrene-based thermoplastic elastomers having peak top molecular weights in this range, including the peak top molecular weight of hydrogenated block copolymer (a)-1 (315,000) and peak top molecular weights ranging from 400,000-500,000, are considered equivalent styrene-based thermoplastic elastomers for this composition. In light of this, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06. Combining the hydrogenated block copolymer (a)-1 (peak top molecular weight of 315,000) and a hydrogenated block copolymer having a peak top molecular weight of 400,000-500,000 would have obviously satisfied the instantly claimed component (A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Sasaki with the instantly claimed component (A) because: (a) the exemplary embodiments of Sasaki are formulated with hydrogenated block copolymer (a)-1, which has a peak top molecular weight of 315,000; (b) the general teachings of Sasaki disclose that the peak top molecular weight can range from 250,000 to 500,000; (c) the range of Sasaki suggests that styrene-based thermoplastic elastomers having peak top molecular weights in this range, including the peak top molecular weight of hydrogenated block copolymer (a)-1 (315,000) and peak top molecular weights ranging from 400,000-500,000, are considered equivalent styrene-based thermoplastic elastomers for this composition; (d) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious; and (e) combining the hydrogenated block copolymer (a)-1 (peak top molecular weight of 315,000) and a hydrogenated block copolymer having a peak top molecular weight of 400,000-500,000 would have obviously satisfied the instantly claimed component (A).
The exemplary embodiments in Table 2 are formulated with a polyolefin resin (c)-1 and a polyolefin resin (c)-2, specifically a random polypropylene (c)-1 and homopolypropylene (c)-2 (see paragraph 0147). The general teachings of Sasaki et al. contemplate the use of various polyolefin resins, including polypropylenes and propylene copolymers (see paragraphs 0078-0079). However, they fail to explicitly disclose: (3-8, 13, 14, 21 & 33) (B) a hydrocarbon group-grafted polypropylene.
Uehara et al. disclose a related composition (see paragraph 0069) formulated with a hydrogenated block copolymer (see paragraphs 0024-0068) and at least one of a polyolefin resin (paragraphs 0071-0076), a tackifier resin (paragraphs 0077-0079), and a softening agent (paragraphs 0080-0083). They demonstrate that polyolefin resins, including polypropylene resins, containing polar hydrocarbon groups introduced by graft copolymerization (see paragraphs 0072-0075) are also recognized in the art as suitable polyolefin resins for this type of composition. In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Sasaki with (B) a hydrocarbon group-grafted polypropylene because: (a) the exemplary embodiments of Sasaki are formulated with a polyolefin resin (c)-1 and a polyolefin resin (c)-2, specifically a random polypropylene (c)-1 and homopolypropylene (c)-2; (b) the general teachings of Sasaki et al. contemplate the use of various polyolefin resins, including polypropylenes and propylene copolymers; (c) Uehara et al. disclose a related composition formulated with a hydrogenated block copolymer and at least one of a polyolefin resin, a tackifier resin, and a softening agent; (d) Uehara et al. demonstrate that polyolefin resins, including polypropylene resins, containing polar hydrocarbon groups introduced by graft copolymerization are also recognized in the art as suitable polyolefin resins for this type of composition; and (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claims 1 and 2, the combined teachings of {Sasaki and Uehara et al.} are as set forth above and incorporated herein to obviously satisfy claims (1 & 2).
Claims 8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (US 2012/0190786 A1) in view of Uehara et al. (US 2018/0030194 A1) and Tsunoda et al. (JP 2011-153227 A).
Regarding the claims 8 and 20, the combined teachings of {Sasaki and Uehara et al.} are as set forth above and incorporated herein. Sasaki contemplate the use of various additives (see paragraphs 0081-0083), including thermoplastic resins (see paragraph 0081). However, they fail to explicitly disclose: (20) (D) a polyphenylene ether-based resin.
Tsunoda et al. disclose a similar thermoplastic elastomer composition (Abstract; paragraphs 0008-0010) formulated with a hydrogenated thermoplastic polystyrene elastomer (paragraphs 0011-0017), a paraffin oil (softener) (paragraphs 0018), and a polyolefin (see paragraphs 0019-0021). They contemplate the use of various additives (see paragraphs 0022-0040). These additives include polyphenylene ether, which helps reduce the compression set of the composition (see paragraph 0035-0037). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. Furthermore, the skilled artisan would have expected the resulting composition to have: (8) a compression set of 40% or less due to the compression set reduction provided by the polyphenylene ether.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the composition resulting from the combined teachings of {Sasaki and Uehara et al.} with (D) a polyphenylene ether-based resin because: (a) Sasaki contemplate the use of various additives, including thermoplastic resins; (b) Tsunoda et al. disclose a similar thermoplastic elastomer composition formulated with a hydrogenated thermoplastic polystyrene elastomer, a paraffin oil (softener), and a polyolefin; (c) Tsunoda et al. contemplate the use of various additives; (d) the additives of Tsunoda et al. include polyphenylene ether, which helps reduce the compression set of the composition; and (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. Furthermore: (f) the skilled artisan would have expected the resulting composition to have a compression set of 40% or less due to the compression set reduction provided by the polyphenylene ether.
International Search Report
The international search report cited one X-reference. This reference has been considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
33A in Figures 3A and 3B;
40c in Figure 4B;
40d in Figures 4A and 4B; and
50c in Figure 5B.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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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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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
August 21, 2026
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