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 .
Claims filed 4/22/2024 are made of record. Claims 1-20 are currently pending in the application.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-11, drawn to method of forming a thermoplastic vulcanizate, classified in C08J 3/24
II. Claims 12-20, drawn to thermoplastic vulcanizate, classified in C08C 4/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the thermoplastic vulcanizate may be prepared by non-dynamic vulcanization.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or 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 require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Anand Patel on 8/12/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-6 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nijhawan et al (WO 2022/204006 A1).
It is noted that WO 2022/204006 A1 (WO) is being utilized for date purposes. However, US equivalent for WO, namely, Nijhawan et al (US 2024/0166879 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claim 1, Nijhawan et al disclose a process for making polymer blends by mixing at ambient temperature followed by adding components into an extruder and increasing temperatures progressively and outputting pellets (paragraph 0055). See example E3, wherein the components added to the extruder include CALPRENE H 6174 P (i.e., styrene-ethylene/butylene-styrene block copolymer and reads on elastomer in present claim 1), ECOPROP PPH-PPC (i.e., recycled polypropylene and reads on thermoplastic resin in present claim 1), EPITOKE RESIN MGS LR235 (i.e., reads on curing agent in present claim 1), and SYNACOL T45 (i.e., recycled plasticizer) (see Table 1 and 4). The term recycled plasticizer oil may also include re-refined oil (paragraph 0025) which reads on oil comprising re-refined oil in present claim 1. It is the Office’s position that forming a thermoplastic vulcanizate comprising thermoplastic resin and at least partially cured elastomer by dynamically vulcanizing is implicit in mixing all components and passing through an extruder at increased temperatures.
Regarding claims 3-6, see example E3, wherein the components used to form thermoplastic vulcanizate include ECOPROP PPH-PPC (see Table 1 and 4) which reads on thermoplastic resin comprises polyolefin in present claim 3, polypropylene in present claim 4, recycled thermoplastic resin in present claim 5, and recycled polypropylene in present claim 6.
Regarding claim 10, see example E3, wherein the components use to make the thermoplastic vulcanizate include 17.9 wt% of CALPRENE H 6174 P (i.e., styrene-ethylene/butylene-styrene block copolymer which reads on elastomer and its amount in present claim 10), 9.0 wt% of ECOPROP PPH-PPC (i.e., recycled polypropylene which reads on thermoplastic resin and its amount in present claim 10), 34.1 wt% of SYNACOL T45 (i.e., recycled plasticizer and reads on the amount of re-refined oil in present claim 10) and has a recycled content of 81.1% (see Table 1 and 4) which reads on recycled content of thermoplastic vulcanizate in present claim 10. The term recycled plasticizer oil may also include re-refined oil (paragraph 0025).
Regarding claim 11, see example E3, wherein the thermoplastic vulcanizate obtained has a Shore A hardness of 53 (i.e., reads on Shore A Hardness of thermoplastic vulcanizate in present claim 11).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nijhawan et al (WO 2022/204006 A1).
The discussion with respect to Nijhawan et al in paragraph 14 above is incorporated here by reference.
Nijhawan et al are silent with respect to mixture of re-refined oil and virgin oil; and mixture of virgin thermoplastic and recycled thermoplastic resin.
However, Nijhawan et al in the general disclosure teach that polymer blend may comprise 30 wt% to 90 wt% recycled content (paragraph 0046). Therefore, in light of the teachings in general disclosure, of Nijhawan et al, it would have been obvious to one skilled in art prior to the filing of present application, to include a combination of virgin and recycled (oils and thermoplastic resin), in the composition used to form the thermoplastic vulcanizate in example E3 (Table 1 and 4) to obtain a thermoplastic vulcanizate having lower amounts of recycled content (such as between 30 wt% and 80 wt%), absent evidence to the contrary.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nijhawan et al (WO 2022/204006 A1) in view of Lin et al (TW 1679237 B).
It is noted that TW 1679237 B is in Taiwanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Nijhawan et al in paragraph 14 above is incorporated here by reference.
Nijhawan et al are silent with respect to EPDM and re-refined oil extended elastomer.
However, Lin et al in the same field of endeavor teach dynamically crosslinked thermoplastic elastomer that include ethylene-propylene-non-conjugated diene rubber (abstract). The dynamically crosslinked thermoplastic elastomer includes a vulcanizable elastic rubber that is oil-extended or non-oil extended ethylene-propylene-non-conjugated diene rubber (paragraph 020). The characteristics of EPDM rubber are superior oxidation resistance and ozone resistance (paragraph 021). Therefore, in light of the teachings in Lin et al, it would have been obvious to one skilled in art prior to the filing of present application, to include oil extended elastomer, of Lin et al, such as EPDM, in the process of preparing thermoplastic vulcanizate, of Nijhawan et al, for above mentioned advantages.
Information Disclosure Statement
The information disclosure statement filed 7/29/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. A copy of the NPL document (PCT International Search Report … pages) is not provided. Additionally, one of the references (WO 2022/005634 A1) is listed twice. Examiner considered one of these listings and put a line through the second one.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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