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 .
Preliminary amendment filed 2/14/2024 is made of record. Claims 1, 3-12, 14 are amended; claims 15-20 are added. Accordingly, claims 1-20 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-7 and 15-18, drawn to multi-block copolymer.
Group II, claim(s) 8-14 and 19-20, drawn to method for preparing a multi-block copolymer.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I to II lack unity of invention because even though the inventions of these groups require the technical feature of multi-block copolymer comprising a polystyrene-based block including a repeating unit derived from aromatic vinyl-based monomer, and a polyolefin-based block including a repeating unit derived from an ethylene and a repeating unit derived from an alpha-olefin, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Lee et al (US 2020/0031978 A1). Specifically, Lee et al teach a polyolefin-polystyrene multi-block copolymer (abstract). See paragraph 22 below.
During a telephone conversation with Lingyan Wang on 6/25/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-7 and 15-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-14 and 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
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 1-7 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/285,045 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to multi-block copolymer comprising a polystyrene-based block including a repeating unit derived from an aromatic vinyl-based monomer and a polyolefin-based block including a repeating unit derived from an ethylene and repeating unit derived from an alpha-olefin, and the multi-block copolymer satisfies the following conditions when a storage modulus G' according to temperatures and a loss modulus G" according to temperatures as measured by a dynamic mechanical analysis method are plotted as a y-axis and an x-axis, respectively: a) a slope at 130°C is 2.00 to 4.00, and b) a slope at 190°C is 3.00 to 5.00; alpha-olefin monomers; slope at 1300C being less than that at 1900C, difference between the slope at 1300C and the slope at 1900C is 0.50 to 2.00, slope in the temperature range of 1300C to 2500C is in a range of 2.00 to 5.00, slope at 2500C is 3.00 to 4.80, has a molecular weight distribution of 1.5 to 3.0, claims in copending application no. 18/285,045 are drawn to thermoplastic composition comprising the multi-block copolymer of present claims. Therefore, present claims 1-7 are fully anticipated by the claims in copending application.
Copending claims are silent with respect to Mw, and amount of monomers in dependent claims of present application.
However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to example 1 in Table 2, of copending application, wherein the multiblock copolymer comprises styrene in amounts of 25.4%, α-olefin in amounts of 32.1% and has a weight average molecular weight of 180,326 g/mol. Therefore, in light of the teachings in general disclosure of copending application, it would have been obvious to one skilled in art to prepare a multi-block copolymer comprising styrene and α-olefin in presently claimed amounts and having a Mw falling within the range of present claims, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Specification
The abstract of the disclosure is objected to because abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. see MPEP § 608.01(b). In the present instance, abstract does not summarize the invention but rather refers to the general disclosure. Correction and/or clarification are required.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites “less than that slope at 1900C” and should be rephrased as “less than the slope at 1900C” . Appropriate correction and/or clarification are required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites “wherein a slope at a range of 1300C to 2500C is in a range of 2.00 to 5.00”. It is unclear whether the claim requires a slope of 2.00 to 5.00 over the entire temperature range of 1300C to 2500C or it could be an average with one or more than one value within claimed range and others outside the range. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
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 1-7 and 15-18 are rejected under 35 U.S.C. 102)a)(1) as being anticipated by Lee et al (Macromolecules; vol. 53; pages 7274-7284; Year: 2020).
Regarding claims 1-6 and 18, Lee et al disclose a polystyrene-poly(ethylene-co-1-hexene)-polystyrene tri-block copolymer (abstract) which reads on multi-block copolymer comprising a polystyrene-based block including a repeating unit derived from an aromatic vinyl-based monomer and a polyolefin-based block including a repeating unit derived from an ethylene and a repeating unit derived from an α-olefin in present claim 1; α-olefin is 1-hexene in present claim 2; and polystyrene-poly(ethylene-co-1-hexene)-polystyrene block copolymer in present claim 18.
Lee et al are silent with respect to slope of the G’ and G’’ for the multi-block copolymer.
However, process of preparing the tri-block polymer includes a coordinative chain transfer polymerization with pyridylamido Hf catalyst in the presence of 1 (i.e.,
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). An anionic initiator and styrene monomer were sequentially added to allow growth of polystyrene and form polystyrene-poly(ethylene-co-1-hexene)-polystyrene tri-block copolymer (page 7278, bridging paragraph col. 1 to col. 2). See example 1 (Table 2), of Lee et al, wherein the triblock copolymer has an ethylene content of 44.9 wt%, hexene content of 30.4 wt%, a styrene content of 25 wt%, molecular weight distribution of 1.7 and Mw of 146 kDa. These values fall within narrow range for these components, molecular weight distribution and weight average molecular weight for the polymers in present application (see instant specification, Table 2). The process of preparing the polymer in present application includes (S1) preparing a polyolefin-based block by reacting ethylene and alpha-olefin using catalyst composition comprising a transition metal compound in the presence of an organozinc compound, and (S2) preparing a multi-block polymer by reacting an aromatic vinyl-based monomer with the polyolefin-based block in the presence of an anionic polymerization initiator (paragraph 0019). Therefore, given that process of preparing the polymer, in Lee et al, including a step of chain coordination transfer polymerization in the presence of Hf based catalyst and organozinc compound as a chain transfer agent to prepare the polyolefin block and a step of preparing a multi-block polymer by reacting with a aromatic vinyl-based monomer in the presence of anionic initiator is substantially similar, obtained multi-block copolymer comprises styrene, ethylene and 1-hexene in amounts as in present invention, has molecular weight distribution and weight average molecular weight as in present invention, it is the Office’s position that the triblock copolymer, of Lee et al, inherently exhibits the presently claimed slope of the G’ and G’’ for the multi-block copolymer (such as a slope at 1300C of 2.00 to 4.00 and slope at 1900C of 3.00 to 5.00 as in present claim 1; slope at 1300C is less than slope at 1900C as in present claim 3; difference between the slope at 1300C and the slope at 1900C of 0.50 to 2.00 as in present claim 4; slope at a range of 1300C to 2500C is in a range of 2.00 to 5.00 as in present claim 5; and a slope at 2500C of 3.00 to 4.80 as in present claim 6). Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, see example 1, of Lee et al (Table 2), wherein the triblock copolymer has a molecular weight distribution (Mw/Mn) of 1.7.
Regarding claim 15, see example 1, of Lee et al, wherein the triblock copolymer has a weight average molecular weight (Mw) of 146 kDa (i.e., equal to 146,000 g/mol and reads on Mw in present claim 15).
Regarding claim 16, see example 1, of Lee et al, wherein the triblock copolymer has 1-hexene in amounts of 30.4 wt% (i.e., reads on the content of repeating unit derived from α-3olefin based monomer in present claim 16).
Regarding claim 17, see example 1, of Lee et al, wherein the triblock copolymer has styrene in amounts of 25.0 wt% (i.e., reads on the content of repeating unit derived from aromatic vinyl-based monomer in present claim 17).
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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