DETAILED ACTION
Summary
This is a non-final office action for application 18/569,507 filed on 12 December 2023. The preliminary amendment filed on the same date is acknowledged.
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 .
Specification
The disclosure is objected to because of the following informalities:
Table 5 and Table 6 have the upper left corner whited out in each table. Because of this, these tables in the pre-grant publication (US20240270951-A1) are marked with illegible text markings ‘(?)’. The WIPO publication (WO2022263445-A1) has the same issue. From the headers in the other tables, it appears likely that these are wt.% labels. Please unblock this corner of each table so that they can be printed correctly in any future publications.
Appropriate correction is required.
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 14-17 and 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 23-24 of copending Application No. 18/835,787 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims contain limitations that overlap with those of the instant claims. The mappings between the instant claims and the copending claims are as follows:
Regarding Claim 14, copending Claim 23, which includes the limitations of copending Claim 16, recites a molding composition with the random copolymer (a) (44-64wt% vinyl aromatic monomer / 36-56wt% methyl methacrylate) and a vinylaromatic-diene block copolymer (b) comprising hard S blocks made from vinylaromatic monomers and at least one soft block B made from dienes or at least one soft block B/S made from dienes and vinyl aromatic monomers wherein the proportion of diene is 47-67 wt% and that there at least two S blocks (copending Claim 23). This matches the recitation for the compositions of (a) and (b) by the instant claim. Copending Claim 23 recites 71-98.99wt% of the (a) component, 1-28.99 wt% of the (b) component, and collectively 0.01-7 wt% of components (c), (d) and (e) which can collectively be interpreted as additives. This overlaps the recitation of 71-90wt% (a), 10-29 wt% (b) and 0-5 wt% (c) additives that are recited by the instant claims. It would be obvious to modify the copending claims and use amounts for these components that are also within the range recited by the instant claims due to overlapping range.
Regarding Claims 15-17, the instant claims each add limitations to instant 14 that recite narrower ranges for (a), (b) and (c) that are still within the ranges recited by Copending Claim 23. The instant claims are still an obvious modification of the copending claims due to overlapping range.
Regarding Claim 21, Copending Claim 23 already recites limitation of a linear block copolymer with two terminal S blocks and at least one soft B or B/S block that instant Claim 21 adds to instant Claim 14.
Regarding Claim 22, Copending Claim 24, which includes the limitations of Copending Claim 16, recites a styrene-butadiene block copolymer of the structure S-B-S or S-B/S-S which has two S blocks. Copending 16 recites the remaining limitations for (a), (b) and the additives in overlapping amounts as is shown in the rejection of Claim 14 above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-20, 23-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 16, 19-22, 25 and 28-31 of copending Application No. 18/835,787 in view of COCHRAN (WO-2018091513-A1). The COCHRAN (WO-2018091513-A1) reference is included in the IDS dated 12 December 2023. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims, in view of COCHRAN, contain limitations that overlap with those of the instant claims. The mappings between the instant claims and the copending claims are as follows:
Regarding Claim 14, copending Claim 16 recites a molding composition with the random copolymer (a) (44-64wt% vinyl aromatic monomer / 36-56wt% methyl methacrylate) and a vinylaromatic-diene block copolymer (b) comprising hard S blocks made from vinylaromatic monomers and at least one soft block B made from dienes or at least one soft block B/S made from dienes and vinyl aromatic monomers wherein the proportion of diene is 47-67 wt%. Copending Claim 16 recites 71-98.99wt% of the (a) component, 1-28.99 wt% of the (b) component, and collectively 0.01-7 wt% of components (c), (d) and (e) which can collectively be interpreted as additives. This overlaps the recitation of 71-90wt% (a), 10-29 wt% (b) and 0-5 wt% (c) additives that are recited by the instant claims. It would be obvious to modify the copending claims and use amounts for these components that are also within the range recited by the instant claims due to overlapping range.
Copending Claim 16 recites at least one hard block S while the instant claim recites at least two hard blocks S. COCHRAN, in an invention of a blend of styrene-butadiene block copolymers and styrene-methyl methacrylate copolymers (Abstract; p. 2, lines 1-10) teaches and exemplifies vinylaromatic/diene block copolymers with two terminal S blocks (p. 2, lines 1-10; p. 9, lines 25-27). COCHRAN teaches that articles made from its composition have a high clarity and toughness (Abstract; p. 8, lines 26-27). The recitation of at least two hard S blocks is an obvious modification of the recitation of copending Claim 16 based on the teaching of COCHRAN for the purpose of providing high clarity and toughness.
Regarding Claims 15-17 and 29, the instant claims each add limitations to instant 14 that recite narrower ranges for (a), (b) and (c) that are still within the ranges recited by Copending Claim 16. Also, copending Claim 19 narrows the scope of copending Claim 16 in a way that increases the overlap between the copending claims and the instant claims. The instant claims are still an obvious modification of the copending claims due to overlapping range.
Regarding Claim 18, copending Claim 20 adds a limitation to copending Claim 16 that the refractive index between the (a) and (b) components differs by no more than 0.02. This overlaps the recitation in instant Claim 18 that the refractive index of (a) and (b) differs by no more than 0.01. The instant claim is an obvious modification of the copending claim due to overlapping range.
Regarding Claim 19, copending Claim 21 modifies the amounts of the vinylaromatic and methyl methacrylate in the (a) component of copending Claim 16 in the same way that instant Claim 19 modifies those amounts in instant Claim 14. The instant claims are still an obvious modification of the copending claims due to overlapping range.
Regarding Claim 20, copending Claim 22 recites a narrower range for the diene component of the (b) polymer that overlaps the narrower range recited in instant claim 20. The instant claim is an obvious modification of the copending claim due to overlapping range.
Regarding Claim 23, copending Claim 25 adds the same limitation that (a) is a continuous phase in which (b) is finely dispersed to copending Claim 16 that instant claim 23 adds to instant claim 14.
Regarding Claim 24, copending Claim 28 recites a process where the components of copending Claim 16 are melt-mixed. This matches instant Claim 24 which recites a process where the components of instant Claim 14 are melt-mixed.
Regarding Claim 25, copending Claim 29 recites a shaped article produced from the composition of copending Claim 16. This matches instant claim 25 which recites a shaped article produced from the composition of instant Claim 14.
Regarding Claim 26, copending Claim 30 recites a houseware or home appliance comprising the molding composition of copending Claim 16. This matches the recitation of instant Claim 26 which recites a houseware or home appliance formed from the composition of instant Claim 14.
Regarding Claim 27, copending Claim 31 recites that the article of copending Claim 29 is a houseware or home appliance. This matches the recitation of Instant 27 where the shaped article of instant Claim 25 is a houseware or home appliance.
Regarding Claim 28, the instant claim adds a limitation to instant Claim 14 that that the vinylaromatic monomer in (a) is styrene and the vinylaromatic-diene block copolymer (b) where the at least two terminal S blocks comprises styrene and the at least one soft B block are is made from butadiene. COCHRAN already makes obvious the styrene and butadiene in the (b) block in the rejection of instant Claim 14 above. COCHRAN also teaches and exemplifies styrene as the vinylaromatic component in its SMMA copolymer (p. 2, lines 8-9; p. 9, lines 17-23). Styrene as the vinylaromatic monomer of the (a) component is an obvious modification of the copending claim based on the teachings of COCHRAN.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 14-29 are only rejected with double patenting and would be allowable if those issues are addressed.
Claims 30-31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, COCHRAN (WO-2018091513-A1), cited in the Double Patenting rejections above, teaches a blend of a random styrene-methyl-methacrylate (SMMA) copolymer and star-shaped styrene-butadiene block copolymers, but COCHRAN does not teach amounts of its two components within the 71-90 wt% and 10-29 wt% recited by Claim 14. OTSUZUKI (US-5891962-A) teaches a transparent rubber-modified styrene copolymer resin where and exemplifies an SMMA copolymer om the recited amount and with the recited styrene and methyl methacrylate fractions, but while OTSUZUKI teaches that its rubber component can be a styrene-butadiene block copolymer, OTSUZUKI does not exemplify copolymers with an amount of diene within the recited range and OTSUZUKI provides no suggestion of multiple vinylaromatic blocks as is required by Claim 14.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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