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 .
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.
Claim(s) 1, 3, 5-7, 10, 11 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian et al (US 9,249,291) in view of Onder et al (US 6,458,880).
Qian teaches a thermoplastic elastomer compound comprising (a) at least about 80 weight percent, by weight of the compound, of thermoplastic polyurethane (Table 1) and (b) at most about 1.15% weight percent (col 4, line 5-herein understood to read on the claimed “more than 1 weight percent and at most about 5 weight percent”) , by weight of the compound, of polysiloxane (col 3, lines 45+; Table 1 wherein the masterbatch may comprise 2% and the masterbatch comprises 50% silicone). Qian teaches the PTO may be Elastollan which is known in the art to be a polyether-type thermoplastic polyurethane. Qian teaches the composition may further comprise a secondary elastomer selected from the group consisting of styrenic block copolymers and thermoplastic vulcanizates (col 2, lines 14+)-both of which are herein understood to read on the claimed “secondary elastomer.” The thermoplastic vulcanizate may comprise a polyolefin and a discontinuous phase of a vulcanized olefin rubber (col 2, lines 40+) and is understood to read on the claimed “polyolefin elastomer.” Said components are added in amounts which read on the claimed invention (see claim 9). The composition may further comprise one or more additives selected from the group consisting of antioxidants and stabilizers; colorants; plasticizers; ultraviolet light absorbers; and combinations thereof (col 4, lines 41+). Said components are added in amounts which read on the claimed invention (see claim 9)
Qian does not explicitly teach the claimed amount of TPU. However, Qian teaches an overlapping range and further teaches the TPU provides the composition with strength and over molding properties (col 3, lines 35+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amount of TPU in the composition in order to optimize the strength and overmolding properties so the composition.
With regards to claim 5, Qian teaches the thermoplastic polyurethane is selected from aromatic thermoplastic polyurethane, aliphatic thermoplastic polyurethane, and combinations thereof (col 3, lines 12+).
With regards to claim 6, Qian teaches the thermoplastic polyurethane may be an aromatic thermoplastic polyurethane.
With regards to claim 7, Qian teaches the polysiloxane may be a non-functional polysiloxane (col 3, line 45).
With regards to claim 10, Qian teaches the TPU may be Elastollan 85A which have a Shore A hardness of 85, and the styrene block copolymer may be Kraton A1535 which has a Shore A hardness of 83. Said teaching is understood to read on the limitation requiring “the first hardness is greater than the second hardness.” With regards to the hardness of the compound, hardness of a polymer blend is typically estimated by the weighted hardnesses of the components (see cited NPL). Thus, the skilled artisan would expect the composition hardness to be less than the first hardness and greater than the second hardness.
With regards to claim 11, since the components utilized in Qian each has a Shore A hardness less than 90, the compound is understood to have Shore A hardness of less than about 90 according to ASTM D2240.
With regards to claim 14, Qian teaches the polysiloxane is present in an amount up to 1.15wt% , herein understood to read on the claimed “about 1.5…” Alternatively, the courts have held a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality. No such showing has been made. Qian further teaches that Dow Corning reports improved surface properties when the siloxane is present in amounts up to 5 wt percent by weight of the compound (col3, lines 65+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of polysiloxane present in the composition in order to optimize the surface properties of the final product.
With regards to claim 15, Qian is silent to the presence of wax being required in the claimed composition. Thus, Qian is understood to read on the claimed composition wherein the compound is free of wax.
With regards to claim 16, Qian teaches the composition may be molded (col 5, lines 40+).
With regards to claim 18, the examiner takes the position Qian teaches the claimed method limitations (col 5, lines 40+) wherein the claimed composition is used as an over-molding portion of an article, and applied to a substrate of a thermoplastic resin without an adhesive present at said interface. Alternatively, the courts have held the method of making a product does not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a materially different product. In the present application, no such showing has been made.
With regards to claims 17 and 19, the composition of Qian is understood to necessary demonstrate no detectable blooming after the article is subjected to weathering according to the 4-Cycle Weathering Test. Said compound is understood to necessarily possess the same physical properties of the claimed compound since they are compositionally identical-comprising the same components in the same relative amounts. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).
With regards to claim 20, Qian teaches the claimed method limitations (col 5, lines 40+) wherein the claimed composition is used as an over-molding portion of an article, and applied to a substrate of a thermoplastic resin without an adhesive present at said interface.
Qian does not teach the compound has a crystallization temperature of at least about 150 °C or from about 165 to about 195 °C according to the Parallel Plate Rheometer Method. However, Qian teaches that that the composition may comprise an optional filler (col 4, lines 32+) and Onder teaches a polyurethane molding composition (abstract) wherein talc is added to the polyurethane composition in order to increase the crystallization temperature to a desired level; (col 1, lines 35+). Increased crystallization temperatures may result in stronger, more stable, wear resistant and solvent resistant compositions and lead to rapid set-up of the final product, thus reducing molding cycle times (col 1, lines 19+). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the crystallization temperature of the composition by adding talc thereto. The motivation for doing so would have been to optimize the strength, wear resistance, solvent resistance, and/or cycle time of the composition. The examiner takes the position “talc” reads on the claimed “colorant” additive (e.g. see US 4,294,940 and US 4,537,766wherein talc is listed as a colorant)
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian et al (US 9,249,291) in view of Onder et al (US 6,458,880), as applied to claims above, and further in view of Elia et al (US 20122/0108136).
Qian in view of Onder is relied upon as above but does not explicitly teach the TPU may comprise a polycaprolactone-type polyurethane. However, Elia teaches that such polycaprolactone-type polyurethane polymers ()033-0034) are useful for overmolding compositions (abstract). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize polycaprolactone type TP as the TPU Of Qian because Elia teaches such TPUs are useful in overmolding compositions, especially due to their melting points (0034).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian et al (US 9,249,291) in view of Onder et al (US 6,458,880), as applied to claims above, and further in view of Sterling (US 4,511,354).
Qian in view of Onder is relied upon as above, but does not teach the polysiloxane should comprise a non-functional polydimethylsiloxane having a viscosity at 25 °C of about 50 cSt or less. However, Sterling teaches the viscosity of the silicone oil present in a styrene block copolymer composition should be selected to result in proper coating and mixing of the rubber pellets (col 5, lines 10+)> Thus, it would have bene obvious to one of ordinary skill int eh art at the time the inventio was filed to optimize the viscosity of the polysiloxane utilized in the composition of Qian in order to ensure proper coating and/or mixing of the polysiloxane with the styrene block copolymer.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
Claim Rejections - 35 U.S.C. §103
With regards to the rejection of claims 1, 3, 5-7, 10-11, and 14-20 under 35 U.S.C. § 103 as being
unpatentable over U.S. 9,249,291 to Qian et al. (hereinafter "Qian") in view of U.S. 6,458,880 to Onder et al. (hereinafter "Onder"), applicant argues Qian teaches the inclusion of a very low amount of silicone, limited to <1.0 wt.% siloxane polymer may be added to the composition. Applicant argues Table 5 demonstrates beyond said amounts the elastomer exhibits delamination (Table 5, a formulation with 2.3 wt.% Dow Corning MB50-002 masterbatch (~1.15 wt.% siloxane polymer in the compound) exhibits delamination, whereas the comparable formulations at ~0.6 wt.% siloxane did not. Said argument is noted but is not persuasive as a reference may be relied upon for all that it fairly teaches and is not limited to the preferred/exemplary embodiments. Qian teaches the composition may comprise 1.15% weight percent (col 4, line 5-herein understood to read on the claimed “more than 1 weight percent and at most about 5 weight percent”) , by weight of the compound, of polysiloxane (col 3, lines 45+). The examiner further notes Comparative example B in table 5 demonstrates that compositions containing 2.3 wt.% Dow Corning MB50-002 masterbatch (~1.15 wt.% siloxane polymer in the compound) maintained the silking feel (consistent with Dow Corning report that improved surface properties are achieved when the siloxane is present in amounts up to 5 wt percent by weight of the compound (col3, lines 65+)). While said example was said to exhibit “bubbles or other imperfections” on its surface when molded, said teaching fails to demonstrate criticality/inoperability with regards to the amount siloxane polymer in the composition.
Applicant further argues Qian's formulations depends upon mineral-oil plasticizer (Puretol 380 at 12.2-17.8 wt.% for Examples 1-3 in Table 5), a component expressly excluded by Applicant's amended claim 1. Qian further fails to disclose the formulation of amended claim 1 as it allows and even encourages the use of plasticizers. See Qian, Table 1, Table 5. Said argument is noted but is not persuasive as a reference may be relied upon for all that it fairly teaches and is not limited to preferred or exemplary embodiments; the broadest teachings of Qian do not require a plasticizer (col 4, lines 23+; wherein the plasticizer is taught to be optional).
Applicant argues Qian’s teachings are directly contrasted by Applicant's Examples 2-4 wherein formulations with 1.46 wt.%, 1.94 wt.%, and 1.94 wt.% silicone loadings, respectively, were processed without delamination and without plasticizer oils, while meeting the claimed PPR-measured Tc ≥ 150 ([0108]-[0112], Table 3-4). In particular, the molded articles exhibited coherent surfaces (no bubbles or gate-region defects) and stable adhesion/processing behavior notwithstanding the elevated silicone loading. These results demonstrate that the delamination observed by Qian at ~1.15 wt.% silicone is not inherent to higher silicone levels, but rather arises from Qian's specific formulation limitations. Said argument is not persuasive for the reasons noted above. Furthermore, applicant has failed to explain how said data demonstrates unexpected results and how said results are commensurate in scope with the claimed invention.
Applicant further argues that, while Qian does nominally disclose an enormous 10-90 wt.% range for TPU in the elastomer blends, the exemplary formulations Qian presents never include
more than 50 wt.% TPU and Qian provides no teaching that would direct one of ordinary skill to a ≥ 80 wt.% TPU formulation. Said argument is noted but is not persuasive as a reference may be relied upon for all that it fairly teaches and is not limited to the preferred/exemplary embodiments disclosed therein.
Additionally, applicant argues the Office has not shown that Qian's compositions, as actually
made under Qian's processing conditions, necessarily and inevitably pass Applicant's specified 4-Cycle Weathering Test without blooming, and the record evidence demonstrates that ostensibly similar formulations exhibit surface bloom absent the claimed features. Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. Specifically, it is unclear to which “record evidence” applicant refers and how said evidence rebuts the examiner’s position of record.
With regards to Onder, applicant argues said reference cannot remedy these gaps. Specifically, applicant argues Onder reports that the benefits of talc inclusion are "particularly apparent for polyurethanes derived from hydroxyl terminated polyesters (i.e., polyester-based polyurethanes)" while noting that talc "did not appear to result in any significant increase in crystallization temperature" for polyether-based polyurethanes. Applicant argues claim 1 expressly encompasses polyether-type TPUs and thus Onder provides no teaching that could motivate one of ordinary skill to modify a polyether-type TPU prepared in accordance with the teachings of Qian with talc as the Examiner proposes. Said argument is noted but is not persuasive as the argument is not commensurate in scope with the pending claims; the claims do not require the polyether-based polyurethane.
Applicant additionally argues Onder is silent as to polysiloxane and thus cannot counter Qian's express teaching against including >1 wt.% siloxane to reach the elastomer of amended claim 1. Said argument is not persuasive for the reasons noted above. The examiner notes Onder is not relied upon to teach/render obvious the claimed polysiloxane.
Concerning claim 4, applicant argues Elia is directed to overmolded polyamide composite structures and does not disclose or suggest a primarily-TPU, plasticizer free composition with the claimed polysiloxane loading, nor does it provide a basis for achieving the claimed crystallization temperature benefits. Said argument is noted but is not persuasive as the reference was never relied upon for such teachings.
Concerning claim 8, applicant argues Sterling does not disclose or suggest a primarily-TPU, plasticizer free composition with the claimed polysiloxane loading, nor does it provide a basis for achieving the claimed crystallization temperature benefits. Said argument is noted but is not persuasive as the reference was never relied upon for such teachings.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787