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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 10, 2025 has been entered.
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.
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 9, 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (U.S. 6,447,913) in view of Tojo (U.S. 20160289445) as evidenced by Weigl (U.S. 6,582,824) and DowsilTM Trefil F-202.
Watanabe teaches thermoplastic polyester (TP) composition for press-fit and screwed molded articles. (Column 2 lines 25-26)
The exemplified compositions comprise the following compounds and the following amounts (generally exemplified Table 1 and Columns 13-14):
Component
Amount
Recited Component
Reads over Claim
A1 (TP) (Column 13
56-61 parts
TP resin (A)
Claim 9
Acrylic graft copolymer (B1, B4) (Column 13)
5-10 parts
Elastomer (B)
Claim 9
Glass Fibers (D1)
30 parts
Fiber filler (C)
Claim 9 and Claim 13
Silicone powder (C1)
3-5 parts
Silicone (D)
Claim 9 (see below)
Epoxy Compound (E1)
1 parts
The above amounts read over the recited amounts of Components A-E of Claim 9.
For B1 and B4, the MMA and BA are alkyl (methyl and butyl) on the recited unsaturated carboxylic acids for Claim 9 or, alternatively, B1 has ethyl (alkyl) on the recited unsaturated carboxylic acid. Watanabe teaches these as olefin elastomers. See Column 3 lines 45-67 through all of Column 4 for specific combinations). (Claim 9’s product by process ethylene- alkyl α,β-unsaturated carboxylic acid)
The above epoxy compound exemplified by Watanabe, Epikote 1004K, is a bisphenol A type epoxy with an epoxy equivalent value of 875-975 g/eg as evidenced by Weigl in Column 20 lines 15-20). Watanabe is also silent on a general range of epoxy equivalent values of the epoxy compound to be used in the invention.
Tojo, working in the field of thermoplastic polyester compositions for use in insert molding ¶[0150] similar to Wanatabe and Applicant, teaches the use of specific epoxy novolac compounds to improve the hydrolysis resistance and maintain retention stability of thermoplastic polyester resins as these resins tend to be susceptible to degradation by hydrolysis. (¶[0034] ¶[0003])
Wantanbe teaches novolacs as a possible epoxy compound in Column 10 lines 15-35.
It would have obvious to a person having ordinary skill in the art at the time the invention was filed to practice the inventio of Watanabe, such as the exemplified compositions, by substituting the novolac epoxies of Tojo for the exemplified by bisphenol epoxies for the advantage of using an epoxy compound which improves the hydrolysis resistance and maintains the retention stability of thermoplastic polyester resins as these resins tend to be susceptible to degradation by hydrolysis as taught by Tojo. (¶[0003], ¶[0034). One of ordinary skill in the art would have been motivated to choose the novolac compounds of Tojo in B-1 and B-2 (¶[0156], ¶[0157] because they are exemplified by Tojo for this purpose. These have epoxy equivalents of 253 and 290 g/eq. These epoxy equivalents meet the range recited by Claim 9 and also the novolac of Claim 10.
With respect to the dimethyl silicone Component D recited, Watanabe exemplifies Dowsil Trefoil F202. As evidenced by Dow Trefoil F202 (and also explained by Watanabe) this is silicone oil infused silicone powder. As evidenced by Dow Tefoil F202 this silicone oil is dimethyl silicone. Watanabe does not specifically exemplify a dimethyl silicone oil as a discrete component.
While Watanabe is not limited to silicone oil infused silicone powder (see Column 8 lines 30-35 which also teaches dimethyl polysiloxane (or silicone)), Watanabe teaches the silicone powder preferred by Watanabe is a combination of silicone oils (0.5 to 80 wt% by weight silicone oil blended into silicone powder – Column 8 lines 40-45) and the silicone oils have a dynamic viscosity of 100 to 200,000 cSt (mm2/2) or more preferably 500 to 150,000 cSt (mm2/s). (1 cSt = 1 mm2/s) Column 9 lines 14-20.
Therefore, the silicone powder of Watanabe is a combination of silicone oil and silicone powder. The Component D of the instant claims is simply “is” which is considered to be comprising language. In other words, there is nothing to prevent the silicone powder from reading on the claimed Component D itself as combination of silicone oil and silicone powder as the silicone oil is taught to absorb (i.e. not react) with the silicone powder. Alternatively, the silicone oil is Component D and the silicone powder it is absorbed on is simply another component in the composition that is permitted by the overall comprising language of the claimed composition.
The amount of silicone oil is taught by Watanabe as 0.5 to 80 wt% of the powder which sets up and overlapping range of amounts of silicone oil especially in light of the exemplified amounts. For instance, Watanabe exemplifies 3 parts of silicone powder, which therefore, reasonably suggests 0.5 to 80 % of the 3 parts of silicone powder as silicone oil. In other words, 0.15 to 2.4 parts of silicone oil.
The above reads over Component D of Claim 9.
Regarding the tensile strength limitation of Claim 9, while Watanabe as motivated above does not teach or suggest the claimed tensile strength retention rate, one of ordinary skill in the art is reasonably suggested when tested appropriately the compositions of Watanabe as modified as discussed above must meet the claimed range of 60% or more because the above modified compositions of Watanabe have all the claimed components of Claim 9 and all of Applicant examples which have the claimed components meet this limitation (A or B for Hydrolysis Evaluation; A is 90 % or more, B is 80 to 90% see ¶[0076] of the as-filed specification). This meets the tensile strength limitation of Claim 9.
Relevant to Claim 12, Watanabe teaches the amount of carboxylic end group in the thermoplastic polyester resin (See Column 13) but not the resulting carboxylic end group concentration in the resulting composition.
Tojo teaches melting blending the components, such as the thermoplastic polyester and epoxy compound, to achieve a carboxylic end group concentration of 15 eq/t or less for desired hydrolysis resistance. (¶[0042]).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the Watanabe, such as the above modified thermoplastic polyester resin with the novolac epoxy of Tojo, such that the resulting carboxylic end group concentration in the resulting melt blended composition is less than 15 eq/t for desired hydrolysis resistance as taught by Tojo in ¶[0042]. This meets the claimed range of Claim 12.
The molded parts, screw parts, and press-fit parts of Watanabe discussed above read over Claim 14, Claim 15 and Claim 16. (See also Column 11 lines 50-67 continuing into Column 12)
If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Considering the teachings of the prior art of record, Watanabe and Tojo, Applicant’s results in the as-filed specification do not appear to be truly unexpected. As above Tojo already teaches improved hydrolysis and retention stability in using novolac epoxies in thermoplastic polyester resin compositions. (¶[0003], ¶[0034]) Tojo also teaches fiberous fillers increase retention stability (¶[0136]). Watanabe teaches silicone compounds improve alkali resistance and Watanabe is drawn to having improved alkali resistance overall (see Column 8 lines 25-30 and Column 11 lines 55-65). These are all values tested by Applicant. The above reasonably suggests that Applicant’s demonstrated results in the above combinations of components recited are not truly unexpected. Note also that Applicant does not compare against specific types of silicone oil nor viscosities.
Response to Arguments
Applicant’s remarks filed September 11, 2025 have been fully considered but are not persuasive in moving the application to allowance. No claim amendments are filed with the response filed September 11, 2025. The previous remarks to arguments section of the non-final of June 13, 2025 are relevant to Applicant’s remarks to unexpected results and, therefore, are repeated to be maintained against these arguments from Applicant.
Applicant argues adjusting for the bisphenol-A epoxy to match the epoxy equivalent of Example 1 on of the as-filed spec would result in even lower retention. It is unclear why this is even being done. The rejection is based on using Tojo’s exemplified novolac epoxies which having an epoxy equivalent of 253 and 290 g/eq as a substitute for the exemplified bisphenol-A epoxies of Watanabe for the benefit of using an epoxy compound which improves the hydrolysis resistance and maintains the retention stability of thermoplastic polyester resins as these resins tend to be susceptible to degradation by hydrolysis taught by Tojo.
Wantanbe teaches novolacs as a possible epoxy compound in Column 10 lines 15-35.
The art is not limited by the examples in the prior art. Applicant appears to create their own rejection of Watanabe and Tojo and without pointing out errors in the rejection of record. Therefore, this argument is not persuasive.
Applicant argues their Comparative Example 3 establishes that alkaline and hydrolysis resistance are independent quantities and one of ordinary skill in the art would not have a reasonable expectation of success in achieving improved alkali resistance claimed by Applicant.
Comparative Example 3 is simply an example without any epoxy in it. It is unclear what weld strength has to do with Applicant’s argument. Additionally, Comparative Example 2 and Comparative Example 1 also do not have any epoxy in them and have much less tensile retention rate compared to Comparative Example 3 such that is unclear how Applicant can convincingly argue these parameters are independent because the Comparative Examples above appear to demonstrate this is not the case.
Comparative Example 3 also indicates that even without the novolac epoxy in the recited epoxy equivalent range, the alkaline resistance is still considered good from Applicant’s perspective as it is A or B level.
As previously stated, Tojo also teaches fiberous fillers increase retention stability (¶[0136]). Watanabe teaches silicone compounds improve alkali resistance and Watanabe is drawn to having improved alkali resistance overall (see Column 8 lines 25-30 and Column 11 lines 55-65). These are all values tested by Applicant. The above reasonably suggests that Applicant’s demonstrated results in the above combinations of components recited are not truly unexpected.
Additionally, Tojo teaches the use of epoxy novolacs increases hydrolysis resistance. This is found in each of Applicant’s inventive examples.
Taking on Applicant’s distinction between alkaline (physical) and hydrolysis (chemical) degradation, the epoxy novolac prevents chemical degradation of the chains (i.e. chain scission) is reasonably suggested to increase the tensile strength because the chains are no longer degraded leading to more strength relative the degrade state. Hence, preventing chemical attack improves the physical state (or strength) towards the environment and one would have expected the alkaline resistance to be improved also in the resulting Watanabe and Tojo composition especially in light of the fact that Watanabe already teaches increase alkali resistance overall.
The art is not required to teach a combination of properties. The art together suggests that Applicant’s combination of properties would be expected from the teachings of the combination of the prior art. Therefore, the results are not truly unexpected. If Applicant can demonstrate their results are more than what would have been expected from the improved alkaline resistance of Watanabe and the hydrolysis resistance of Tojo and the retention of stability of Tojo the remarks may be found persuasive to the establishing the combination is more than what would have been expected from these teachings. However, Applicant’s arguments are, instead, there is no document that tests everything they test with the components recited and, therefore, it the results must be unexpected. This is not persuasive for the reasons put forth above and also repeated below from the previous remarks.
Note that Applicant’s weld strength arguments are not persuasive as every composition has nearly the same weld strength but for Comparative Example 3 which does not have any epoxy type compound in it (novolac or bisphenol A) and, therefore, the weld strength would have been expected to be present at the levels indicated by Applicant. In other words, weld strength is not truly unexpected.
In response to applicant's argument that the combination of properties including alkaline resistance of the instant application are not tested or contemplated by the prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Note also as discussed below, Applicant must make the claims commensurate in scope with the showing of allegedly unexpected results. Applicant argues the specification provides a clear nexus between the claims the demonstration of unexpected results but this argument is not persuasive. The claims themselves must be commensurate in scope to create the required nexus between the claims and the demonstrations. The specification is not the considered in creating the demonstration outside of it containing the claims and the demonstration.
Applicant’s remarks filed June 10, 2025 have been fully considered but are not persuasive.
Applicant argues that all working examples of Watanabe exclusively use bisphenol A-type epoxy resin as Component (E) while Watanabe provides no working examples using bisphenol A epoxy compounds. Applicant also argues, without evidence or reasoning, that one of ordinary skill in the art would question the use of all the different type of epoxy compounds taught in Watanabe. (emphasis added). Presumably, this statement is made because Watanabe specially teaches novolac type epoxy compounds may be used for their Component (E). This argument is not persuasive. Watanabe is not limited to their examples. If Applicant wishes to argue that Watanabe is not enabled, as a patent has the presumption of enablement, for the list of epoxy compounds to be used, including novolac type epoxy, the Examiner will entertain such arguments when the appropriate amount of evidence moves the argument from speculation to actual arguments with evidentiary basis.
Applicant argues that Tojo motivates using the novolac epoxy compounds in a specific epoxy equivalent range for hydrolysis resistance which is not the reason Applicant is using the epoxy compound. This argument is not persuasive.
There is no requirement that the prior art reason to combine or use components found in the prior art for the same reason as Applicant has allegedly found.
Additionally, Applicant appears to be trying to reinterpret their results in light of the prior art’s teachings to alleged their results are not unexpected. This will not be persuasive.
Firstly, in ¶[0042] of the as-filed specification, Applicant states epoxy compounds in the claimed range of epoxy equivalents dramatically improve the alkaline and hydrolysis resistance. Therefore, the hydrolysis resistance is a reason for using epoxy equivalents in the recited range which Tojo has also found. Simply because Tojo does not address the alkaline resistance of the epoxy range does not mean that the property is not present or somehow unexpected to be present. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004).
Secondly, the bulk of Applicant’s arguments on RCE have been to the difference between using a novolac type epoxy compared to a bisphenol A type epoxy. This argument is not persuasive. Applicant makes no statements in their as-filed specification concerning the type of epoxy used such as novolac giving alkaline resistance vs. bisphenol A type epoxy not having the recited alkaline resistance. In fact, ¶[0043] discloses preferred examples of epoxy compound E include bisphenol type epoxy and novolac type epoxy compounds. While Applicant may particular prefer novolac type epoxy in the same paragraph, reading ¶[0042] and ¶[0043] as a whole suggest dramatically improved alkaline resistance and hydrolysis resistance from both types of epoxies. This undermines Applicant’s arguments to type of epoxy.
Thirdly, Applicant discloses in ¶[0049] in order to impart alkaline resistance, which could not be achieved with conventional techniques, it is important to blend the epoxy compound (E) having the claimed epoxy equivalent range to reduce the amount of carbonyl groups originally present in the thermoplastic polyester resin A. Applicant makes no remarks to this requirement and this requirement is also missing from the claims.
Finally, Applicant mischaracterizes their inventive and comparative examples to argue there is something special about novolac epoxies compared to bisphenol A type epoxy resins in the invention. The above ¶[0042] and ¶[0043] section of the as-filed specification do not support their arguments, and further, the comparative examples are not to different types of epoxies but to epoxy equivalent values inside and outside the claimed range. This is in line with Applicant’s as-filed specification but undermines Applicant’s arguments that novolac epoxies are somehow unexpectedly better in terms of alkaline resistance compared to bisphenol A type epoxies.
For the above reasons, Applicant’s arguments to the type of epoxy giving unexpectedly better alkaline resistance are not persuasive.
Applicant argues that alkaline resistance of the prior art is completely different than hydrolysis resistance. This argument is presumably to the Examiner’s assertation the results are not truly unexpected because of the teachings of Tojo and Watanabe. This argument is not persuasive.
Applicant’s results are to BOTH hydrolysis resistance and alkaline resistance. It is unclear from the documents provided why Applicant asserts they must be completely independent and unrelated material properties as no citations to the details of the provided evidence is given. However, Watanabe specifically deals with alkaline resistance and refers to environmental stress cracking (Column 1 lines 30-41) and also tests the samples by immersion testing them under bending strain in sodium hydroxide. Applicant test the samples by immersing them in sodium hydroxide and testing the tensile modulus. Both are mechanical testing involving immersion of the samples into sodium hydroxide to assess the mechanical properties in alkaline environment (i.e. environmental stress cracking). Watanabe suggest composition which have better environmental stress cracking (i.e. alkaline resistance) and Applicant also argues their results unexpectedly have better environmental stress cracking. Example has put forth arguments that the recited tensile limitation must be presents in the combination of Watanabe and Tojo because of the compounds used and epoxy equivalents used and that Watanabe (not Tojo) already teaches better alkaline resistance. Burden shifts to Applicant to demonstrate Applicant has found even better alkaline resistance than Watanabe, unexpectedly better than what would be expected from Watanabe’s compositions in light of the prior art such as Tojo. Applicant’s points to the type of epoxy compound as the defining factor making the allegedly unexpected results truly unexpected but for the above reasons, the Examiner disagrees because Applicant’s results and as-filed specification do not support their arguments. Applicant further has not argued why their results are unexpectedly better than what would be expected from the alkaline resistance results of Watanabe.
Further, Applicant must also make the claims probative of the demonstration of allegedly unexpected results. With this amendment, Applicant has removed the specific elastomer used in the demonstrations, the silicone oil used the demonstrations and there is not limitation relating the epoxy equivalent amount with the carboxyl amounts as discussed in ¶[0049]. One could even argue Applicant’s X in ¶[0045] of the as-filed specification is also required as this is the only demonstration provided in the as-filed specifications Tables and ¶[0045] discloses further improvement in alkaline resistance with specific X (X = Formula 6; dicyclopentadiene for improved alkaline and hydrolysis resistance).
Also, it should be noted that Applicant’s comparative examples are not definitive on their alleged unexpectedly better alkaline resistance arguments with respect to the claimed tensile strength limitation. Comparative Example 3 has no epoxy compound in it at all and meets the claimed limitation, for example (78 % retention, B rating). Inventive Example 18 has the bisphenol-A epoxy in it which meets the retention limitation as claimed. The alkaline resistance claimed cannot be solely do to epoxy compound type for these reasons. Comparative example 5 simply has a bisphenol A type epoxy with epoxy equivalent outside the claimed range. An example with a novolac compound with similar epoxy equivalent using is similar amounts would help make Applicant’s point.
For the above reasons, the rejections over Watanabe are maintained. Examiner reminds Applicant of their right to appeal this decision.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766