DETAILED ACTION
Pending Claims
Claims 1-12 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
Claim 8 is objected to because of the following informalities: the period should come after chemical formula (3). 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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kumagai et al. (WO 2021/193561 A1). Note: the equivalent publication of US 2023/0050436 A1 has been relied upon as a translation document. Accordingly, all citations are directed to equivalent US publication.
Regarding claims 1 and 3-12, Kumagai et al. disclose: (1) a chloroprene-based block copolymer (Abstract; paragraphs 0024-0041) comprising:
a polymer block (A) derived from a monomer that can yield a polymer with a glass transition temperature of 80 oC or higher when homopolymerized (paragraphs 0026-0035), and
a chloroprene-based polymer block (B) having a chloroprene monomer unit and a polyfunctional monomer unit (paragraphs 0036-0041);
(3) wherein: a molded body of a latex composition comprising the chloroprene-based block copolymer has a tensile strength at break of 20 MPa or more, as measured in accordance with JIS K 6251 after being heat-treated at 130 oC for 30 minutes (paragraph 0046);
(4) wherein: the polymer block (A) has a number average molecular weight of 10,000 or more (paragraph 0028);
(5) wherein: the polymer block (A) has a molecular weight distribution of 2.0 or less (paragraph 0028);
(6) wherein: the polymer block (A) is a polymer block comprising an aromatic vinyl monomer unit (paragraph 0027);
(7) wherein: the polyfunctional monomer is a monomer represented by chemical formula (1) or an aromatic polyene monomer and
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(see claim for variable limitations) (paragraphs 0038-0039);
(8) wherein: the chloroprene-based block copolymer has a functional group with a structure represented by chemical formula (2) or chemical formula (3); and
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in chemical formula (2), R3 represents hydrogen, chlorine, a substituted or unsubstituted alkyl group, a substituted or unsubstituted alkenyl group, a substituted or unsubstituted aryl group, a substituted or unsubstituted mercapto group, or a substituted or unsubstituted heterocyclyl group (paragraphs 0059-0061);
(9) a latex comprising the chloroprene-based block copolymer (paragraph 0025); (10) a latex composition comprising 100 parts by mass of the latex and 0.5 to 5.0 parts by mass of an anti-aging agent (paragraph 0069); (12) a rubber composition comprising the latex (paragraphs 0024 & 0062-0069); and
(11) a rubber composition comprising the chloroprene-based block copolymer (paragraphs 0024 & 0062-0069).
Kumagai et al. fail to explicitly disclose an embodiment where (1 & 3-12) the chloroprene-based block copolymer comprises 30% to 60% by mass of a polymer block (A) and 40% to 70% by mass of the chloroprene-based polymer block (B). Rather, they disclose that the chloroprene-based block copolymer comprises 5% to 30% by mass of a polymer block (A) and 70% to 95% by mass of the chloroprene-based polymer block (B). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
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 chloroprene-based block copolymer of Kumagai et al. with 30% to 60% by mass of a polymer block (A) and 40% to 70% by mass of the chloroprene-based polymer block (B) because: (a) Kumagai et al. disclose that the chloroprene-based block copolymer comprises 5% to 30% by mass of a polymer block (A) and 70% to 95% by mass of the chloroprene-based polymer block (B); and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 2, the teachings of Kumagai et al. are as set forth above and incorporated herein. They fail to explicitly disclose (2) wherein: a molded body of a latex composition comprising the chloroprene-based block copolymer has a 25% modulus of 2.5 MPa or more, as measured in accordance with JIS K 6251 after being heat-treated at 130 oC for 30 minutes. However, the skilled artisan would have expected the block copolymer of Kumagai et al. to obviously embrace embodiments capable of satisfying this future property because the teachings of Kumagai et al. obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Therefore, the skilled artisan would have expected the block copolymer of Kumagai et al. to obviously embrace embodiments capable of satisfying the instantly claimed 25% modulus property (when molded into a body) because: the teachings of Kumagai et al. obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claims 1-6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ozoe et al. (JP 2010-001458 A) and Mestach et al. (US 2014/0039122 A1).
Regarding claims 1, 9, 11, and 12, Ozoe et al. disclose: (1) a chloroprene-based block copolymer (Example 4 in paragraphs 0104-0106; see also paragraphs 0021-0042) comprising:
a polymer block (A) derived from a monomer that can yield a polymer with a glass transition temperature of 80 oC or higher when homopolymerized (Example 4 in paragraph 0104: see “methacrylic acid”; see also Table 1 of Mestach et al. for Tg associated with methacrylic acid), and
a chloroprene-based polymer block (B) having a chloroprene monomer unit (Example 4 in paragraph 0104: see “chloroprene”) and a polyfunctional monomer unit (Example 4 in paragraph 0104: see “2,3-dichloro-1,3-butadiene”);
(9) a latex comprising the chloroprene-based block copolymer (Example 4 in paragraph 0106); (12) a rubber composition comprising the latex (Example 4 in paragraph 0106); and
(11) a rubber composition comprising the chloroprene-based block copolymer (Example 4 in paragraph 0106).
The block copolymer in Example 4 of Ozoe et al. features a hydrophilic polymer block derived from methacrylic acid. The block copolymer has a methacrylic acid content of 19.4 wt%, corresponding to 19.4 wt% of the polymer block (A) and 80.6 wt% of the chloroprene-based polymer block (B). Accordingly, this example fails to disclose an embodiment where (1) the chloroprene-based block copolymer comprises 30% to 60% by mass of a polymer block (A) and 40% to 70% by mass of the chloroprene-based polymer block (B). However, the general teachings of Ozoe et al. disclose that the hydrophilic polymer block can be present in amount of up 50 wt% (see paragraph 0025), corresponding to a maximum of 50 wt% of the polymer block (A) and a minimum of 50 wt% of the chloroprene-based polymer block (B). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
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 chloroprene-based block copolymer of Ozoe et al. (in light of Mestach et al.) with 30% to 60% by mass of a polymer block (A) and 40% to 70% by mass of the chloroprene-based polymer block (B) because: (a) the block copolymer in Example 4 of Ozoe et al. features a hydrophilic polymer block derived from methacrylic acid; (b) the block copolymer in Example 4 of Ozoe et al. has a methacrylic acid content of 19.4 wt%, corresponding to 19.4 wt% of the polymer block (A) and 80.6 wt% of the chloroprene-based polymer block (B); (c) the general teachings of Ozoe et al. disclose that the hydrophilic polymer block can be present in amount of up 50 wt%, corresponding to a maximum of 50 wt% of the polymer block (A) and a minimum of 50 wt% of the chloroprene-based polymer block (B); and (d) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 2 and 3, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. They fail to explicitly disclose: (2) wherein: a molded body of a latex composition comprising the chloroprene-based block copolymer has a 25% modulus of 2.5 MPa or more, as measured in accordance with JIS K 6251 after being heat-treated at 130 oC for 30 minutes; and (3) wherein: a molded body of a latex composition comprising the chloroprene-based block copolymer has a tensile strength at break of 20 MPa or more, as measured in accordance with JIS K 6251 after being heat-treated at 130 oC for 30 minutes. However, the skilled artisan would have expected the block copolymer of Ozoe et al. (in light of Mestach et al.) to obviously embrace embodiments capable of satisfying these future properties because the teachings of Ozoe et al. (in light of Mestach et al.) obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Therefore, the skilled artisan would have expected the block copolymer of Ozoe et al. (in light of Mestach et al.) to obviously embrace embodiments capable of satisfying the instantly claimed 25% modulus property and tensile at break property (when molded into a body) because: the teachings of Ozoe et al. (in light of Mestach et al.) obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Regarding claim 4, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. The block copolymer in Example 4 of Ozoe et al. has a number average molecular weight 5,300 (see Example 4 in paragraph 0104). Accordingly, this embodiment fails to disclose (4) wherein: the polymer block (A) has a number average molecular weight of 10,000 or more. However, the general teachings of Ozoe et al. disclose that the number average molecular weight of the block copolymer is preferably as high as 100,000 (see paragraph 0025). In light of the previously discussed polymer block content range, the skilled artisan would have expected embodiments at the higher end of this Mn range to obviously embrace embodiments satisfying the instantly claimed Mn of polymer block (A).
Therefore, the skilled artisan would have expected the block copolymer of Ozoe et al. (in light of Mestach et al.) to obviously embrace embodiments having a polymer block (A) Mn of 10,000 or more because: (a) the block copolymer in Example 4 of Ozoe et al. has a number average molecular weight 5,300; (b) the general teachings of Ozoe et al. disclose that the number average molecular weight of the block copolymer is preferably as high as 100,000; and (c) in light of the previously discussed polymer block content range, the skilled artisan would have expected embodiments at the higher end of this Mn range to obviously embrace embodiments satisfying the instantly claimed Mn of polymer block (A).
Regarding claim 5, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. The block copolymer in Example 4 of Ozoe et al. has a molecular weight distribution of 1.6 (see Example 4 in paragraph 0104). They fail to explicitly disclose (5) wherein: the polymer block (A) has a molecular weight distribution of 2.0 or less. However, the skilled artisan would have expected this overall molecular weight distribution to reflect, at least approximately, the molecular weight distribution of both polymer blocks.
Therefore, the skilled artisan would have expected the block copolymer of Ozoe et al. (in light of Mestach et al.) to obviously embrace embodiments having a polymer block (A) molecular weight distribution of 2.0 or less because: (a) the block copolymer in Example 4 of Ozoe et al. has a molecular weight distribution of 1.6; and (b) the skilled artisan would have expected this overall molecular weight distribution to reflect, at least approximately, the molecular weight distribution of both polymer blocks.
Regarding claim 6, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. The block copolymer in Example 4 of Ozoe et al. has a hydrophilic polymer block prepared with methacrylic acid (see Example 4 in paragraph 0104). Accordingly, this example fails to disclose an embodiment where (6) the polymer block (A) is a polymer block comprising an aromatic vinyl monomer unit. However, the general teachings of Ozoe et al. contemplate the use of other equally suitable hydrophilic polymer blocks, including polystyrene sulfonic acid blocks (see paragraphs 0023-0024). In light of this, it has been found that substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
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 chloroprene-based block copolymer of Ozoe et al. (in light of Mestach et al.) with a polymer block (A) derived from an aromatic vinyl monomer because: (a) the block copolymer in Example 4 of Ozoe et al. has a hydrophilic polymer block prepared with methacrylic acid; (b) the general teachings of Ozoe et al. contemplate the use of other equally suitable hydrophilic polymer blocks, including polystyrene sulfonic acid blocks; and (c) it has been found that substituting equivalents known for the same purpose is prima facie obvious.
Regarding claim 8, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. The block copolymer in Example 4 of Ozoe et al. is polymerized using azo-initiators (see Example 4 in paragraph 0104). This example fails to disclose: (8) wherein the chloroprene-based block copolymer has a functional group with a structure represented by chemical formula (2) or chemical formula (3)
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,
where in chemical formula (2), R3 represents hydrogen, chlorine, a substituted or unsubstituted alkyl group, a substituted or unsubstituted alkenyl group, a substituted or unsubstituted aryl group, a substituted or unsubstituted mercapto group, or a substituted or unsubstituted heterocyclyl group. However, the general teachings of Ozoe et al. also contemplate the use dithiocarbamate initiators (see paragraph 0026), which would have provided functionality represented by chemical formula (2).
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 chloroprene-based block copolymer of Ozoe et al. (in light of Mestach et al.) with the instantly claimed functional group because: (a) the block copolymer in Example 4 of Ozoe et al. is polymerized using azo-initiators; (b) the general teachings of Ozoe et al. also contemplate the use dithiocarbamate initiators; and (c) dithiocarbamate initiators of Ozoe et al. would have provided functionality represented by chemical formula (2).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over {Ozoe et al. (JP 2010-001458 A) and Mestach et al. (US 2014/0039122 A1)} in view of Kumagai et al. (WO 2021/193561 A1).
Regarding claim 7, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. The block copolymer in Example 4 of Ozoe et al. is prepared with a 2,3-dichloro-1,3-butadiene polyfunctional monomer (see Example 4 in paragraph 0104). The general teachings of Ozoe et al. contemplate the use of other monomers copolymerizable with chloroprene (see paragraph 0028); however, they fail to disclose: (7) a monomer represented by chemical formula (1) or an aromatic polyene monomer
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(see claim for variable limitations).
The teachings of Kumagai et al. are as set forth above and incorporated herein. Kumagai et al. disclose a similar block copolymer and demonstrate that the instantly claimed monomers are recognized in the art as suitable monomers copolymerizable with chloroprene (see paragraphs 0038-0041). 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 prepare the block copolymer of Ozoe et al. (in light of Mestach et al.) with the instantly claimed polyfunctional monomer because: (a) the block copolymer in Example 4 of Ozoe et al. is prepared with a 2,3-dichloro-1,3-butadiene polyfunctional monomer; (b) the general teachings of Ozoe et al. contemplate the use of other monomers copolymerizable with chloroprene; (c) Kumagai et al. disclose a similar block copolymer and demonstrate the instantly claimed monomers are recognized in the art as suitable monomers copolymerizable with chloroprene; and (d) 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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over {Ozoe et al. (JP 2010-001458 A) and Mestach et al. (US 2014/0039122 A1)} in view of Nishino et al. (US 2019/0389994 A1).
Regarding claim 10, the teachings of Ozoe et al. (in light of Mestach et al.) are as set forth above and incorporated herein. Ozoe et al. contemplate the use of preservatives, UV absorbers, and antioxidants (see paragraph 0084), which provide anti-aging properties. However, they fail to disclose: (10) 0.5 to 5.0 parts by mass of an anti-aging agent per 100 parts by mass of the latex.
Nishimo et al. disclose a similar block copolymer and latex (see Abstract). Nishimo et al. also contemplate the use of age inhibitors (see paragraph 0083). They demonstrate that the instantly claimed amount is recognized in the art as a suitable amount of aging inhibitor for this type of composition (see paragraph 0083).
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 of Ozoe et al. (in light of Mestach et al.) with the instantly claimed amount of anti-aging agent because: (a) Ozoe et al. contemplate the use of preservatives, UV absorbers, and antioxidants, which provide anti-aging properties; (b) Nishimo et al. disclose a similar block copolymer and latex; (c) Nishimo et al. also contemplate the use of age inhibitors and demonstrate that the instantly claimed amount is recognized in the art as a suitable amount of aging inhibitor for this type of composition.
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 1-4, 6, 9, 11, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/788,782 (US 2023/0025987 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1, 3, 4, 6, 9, 11, and 12, copending claim 1 satisfies the limitations of claims (1, 3, 4, 6, 9, 11 & 12) with the following exception: it fails to explicitly disclose an embodiment where (1) the chloroprene-based block copolymer comprises 30% to 60% by mass of a polymer block (A) and 40% to 70% by mass of the chloroprene-based polymer block (B). Rather, it discloses that the chloroprene-based block copolymer comprises 5% to 30% by mass of a polymer block (A) and 70% to 95% by mass of the chloroprene-based polymer block (B). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Regarding claim 2, the skilled artisan would have expected the block copolymer of the copending claim to obviously embrace embodiments capable of satisfying the instantly claimed 25% modulus property (when molded into a body) because: the copending claim obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,492,279.
Regarding claims 1 and 3-12, patented claims 1-11 satisfy the limitations of claims (1 & 7), patented claim 2 obviously satisfies the limitations of claim (3), patented claim 3 satisfies the limitations of claim (4), patented claim 4 satisfies the limitations of claim (5), patented claim 5 satisfies the limitations of claim (6), patented claim 6 satisfies the limitations of claim (8), patented claims 7, 8, and 11 satisfy the limitations of claim (9), patented claim 8 satisfies the limitations of claim (10), patented claim 9 satisfies the limitations of claim (11), and patented claims 10-11 satisfy the limitations of claim (12), with the following exception: the patented claims to explicitly disclose an embodiment where (1 & 3-12) the chloroprene-based block copolymer comprises 30% to 60% by mass of a polymer block (A) and 40% to 70% by mass of the chloroprene-based polymer block (B). Rather, they disclose that the chloroprene-based block copolymer comprises 5% to 30% by mass of a polymer block (A) and 70% to 95% by mass of the chloroprene-based polymer block (B). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Regarding claim 2, the skilled artisan would have expected the block copolymer of the patented claims to obviously embrace embodiments capable of satisfying the instantly claimed 25% modulus property (when molded into a body) because: the patented claims obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
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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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 12, 2026
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