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/Restriction
Applicant's election with traverse of Group I, claim(s) 1-7 in the reply filed on 04/06/2026 is acknowledged. The traversal appears to be on the ground(s) that Yamatsu does not teach wherein the elastomer is 50% by mass or more of a total mass of the resin composition. This is not found persuasive because, as cited in the rejection below and incorporated herein, the resin composition is known in the art. Since the technical feature of the resin composition is already known in the art, this technical feature is not a special technical feature as it does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/06/2023.
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, 2, 4-7, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18/547,235 (App. No. 18/547,235).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/547,235 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 2, 4-7, App. No. 18/547,235 teaches a resin composition comprising an elastomer, a (meth)acrylic compound, and a thermal polymerization initiator, wherein the content of the elastomer is 50% by mass or more (claim 1), the (meth)acrylic compound is an alkanediol di(meth)acrylate, (claim 2), the thermal initiator is a peroxide or dialkyl peroxide (claims 4-5), the elastomer is styrene-based elastomer (claim 6) and a cured product thereof. (claim 7).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 4-7, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 18/850,273 (App. No. 18/850,273).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/850,273 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 2, 4-7, App. No. 18/850,273 teaches a resin composition comprising an elastomer, a polymerizable compound, and a polymerization initiator, (claim 1), the elastomer is a styrene-based block copolymer (claim 2), wherein the content of the elastomer is 50% by mass or more (claim 2-4), the polymerizable compound is a (meth)acrylic compound or an alkanediol di(meth)acrylate, (claim 5-7), the initiator is a peroxide or peroxyester (claims 8-9) and a cured product thereof. (claim 10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 4-7, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-12 of copending Application No. 18/850,300 (App. No. 18/850,300).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/850,300 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 2, 4-7, App. No. 18/850,300 teaches a resin composition comprising a styrene-based block copolymer, a (meth)acrylic compound, and a polymerization initiator, (claim 1), wherein the content of the styrene-based block copolymer is 50% by mass or more (claim 2-3), the (meth)acrylic compound is an alkanediol di(meth)acrylate, (claim 4-7), the initiator is a peroxide or peroxyester (claims 10-11) and a cured product thereof. (claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102/103
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.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2018-104646 A to Sim et al. (hereinafter Sim).
Regarding claims 1-7, Sims teaches a resin composition comprising (A) a styrenic elastomer, (B) a polymerizable compound, (See abstract), and a thermal polymerization initiator (para 53-54), such as peroxides or peroxy esters (para 54). Sims teaches peroxides or peroxy esters and preferable from the viewpoint of curability, transparency and heat resistance. (para 54). The (B) polymerizable compound is preferably a bifunctional or polyfunctional (meth)acrylate (para 25), which meets the claimed methacrylic compound. Examples of (meth)acrylates include aliphatic (meth)acrylates such as 1,9-nonanediol di(meth)acrylate (para 27) which are preferable from the viewpoint of compatibility with the styrene-based elastomer, transparency and heat resistance (para 27), polyfunctional (meth)acrylates such as trimethylolpropane tri(meth)acrylate which are preferable from the viewpoint of compatibility with the styrene-based elastomer, transparency and heat resistance (para 28), or tricyclodecanedimethanol di(meth)acrylates which are preferable from the viewpoint of improving flexibility/stretchability, transparency, weather resistance, and heat resistance. (para 44-45). Specifically, the resin composition contains 80 parts of a styrene-butadiene rubber (Dynaron 2324P), 20 parts of either ditrimethylolpropane tetraacrylate or nonanediol diacrylate for the (meth)acrylate, and 1.5 parts of a polymerization initiator (See Table 1, para 93-94). The above correlates to about 79 mass% of elastomer in the resin composition, which meets the claimed range. Sims further teaches the resin composition is cured with heat. (para 52 and 82).
Thus, one skilled in the art would at once envisage the claimed arrangement combination because, as cited above, Sims specifically teaches the styrene-butadiene rubber in the claimed mass% range of 79% in the examples, the peroxide/peroxyester as preferable thermal initiators, and preferable examples of alkanediol dimethacrylates and trimethylolpropane tri(meth)acrylates as methacrylic compounds, which meets the claimed arrangement combination. (See MPEP 2131.02(III), "A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination").
In the alternative, if it is found that the reference does not anticipated the claims, the claimed invention would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention because, as cited above and incorporated herein, Sims specifically teaches the styrene-butadiene rubber in the claimed mass% range of 79% in the examples, the peroxides or peroxy esters and preferable from the viewpoint of curability, transparency and heat resistance, (para 54), the 1,9-nonanediol di(meth)acrylate and trimethylolpropane tri(meth)acrylate are preferable from the viewpoint of compatibility with the styrene-based elastomer, transparency and heat resistance (para 27-28), which meets the claimed arrangement combination, and thus, one skilled in the art would envisage using the above methacrylates for the polymerizable compounds and peroxide/peroxyester for the polymerization initiator of the examples. (See MPEP 2144.08).
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-119614 A to Yamanaka (hereinafter Yamanaka).
Regarding claims 1-7, Yamanake teaches a resin composition comprising (a) 100 parts of a copolymer of an aromatic vinyl compound-conjugated diene, (e) 0-30 parts of a liquid polybutadiene, (h) 0-15 parts of a (meth)acrylate ester compound, (j) 0-3.5 parts of an organic peroxide and (i) 1-1500 parts of an ethylene-based copolymer (See abstract and para 6-7). Specifically in Example
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100 parts of a hydrogenated block copolymer of styrene-isoprene (i.e. elastomer), (Septon2002, ingredient (a-1-1)), 13 parts of polybutadiene (i.e. elastomer), (R-45HT) (ingredient (e)), 6 parts of 2-hydroxyethyl methacrylate (Light Ester HO), (ingredient (h)), 188 parts of ethylene-acrylic acid copolymer (Hi-Milan 1605) (ingredient (i)) organic peroxide (Perhexa 25B, 2,5-dimethyl-2,5-di(t-butyl peroxide)hexane), (ingredient (j)), and 1.5 parts of crosslinking aid of a mixture of 2-methyl-1,6-octanediol dimethacrylate and 1,9-nonanediol dimethacrylate (NK Ester IND) ,which meets the claimed alkanediol dimethacrylate. When the above ethylene-based copolymer of Example 2 is 1 part, the above elastomers correlates to about 92.6 mass% of elastomers, which demonstrates the above parts ranges overlaps and meet the claimed elastomer range. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Yamanake further teaches the 1-1500 parts of an ethylene-based copolymer is used from the viewpoint of good flexibility and improved scratch and abrasion resistance (para 33-34). Yamanake further teaches examples of crosslinking aids include trimethylolpropane trimethacrylate for uniform and efficient crosslinking (para 38).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the 1 part of ethylene-based copolymer in the Examples of Yamanake because Yamanake teaches amount of ethylene-based copolymer is used from the viewpoint of good flexibility and improved scratch and abrasion resistance (para 33-34), which results in the amount of elastomer within the claimed mass% range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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