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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15, 19 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification does not support the limitation “wherein the copolyetherester resin composition does not contain any additional thermoplastic resins.”
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 7-12, 15 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (JP 2001-247752A) in view of McKenna (2003/0216500) as evidenced by Houze et al. (2021/0155807).
Regarding claims 1, 9-12 and 15: Takahashi teaches a composition comprising 100 parts by weight of a copolyetherester, 0.01 to 10 parts by weight of an epoxy compound [0006], 0.01 to 5 parts of an arylamine antioxidant [0006], 0.01 to 5 parts by weight of a hindered phenol antioxidant [claim 2], 0.01 to 5 parts by weight of a thioester antioxidant [claim 2, 0018], and 0.01 to 5 parts by weight of a phosphite antioxidant [claim 2, 0019]. Takahashi teaches adding a hydrolysis resistance improver [0024]. The composition of Takahashi does not comprise additional thermoplastic resins [Examples].
Takahashi fails to teach the claimed epoxy compound.
However, McKenna teaches adding 2 or 4 wt% of EPON 1001F as a hydrolysis stabilizer to polyester resin compositions [Examples; Tables].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 2 wt% or 4wt% of EPON 1001F as taught by McKenna to the composition of Takahashi to improve the hydrolysis stability of the composition. Epon 1001F is a poly(Bisphenol A-Co-Epichlorohydrin) Glycidyl End-Capped as evidenced by Houze et al. [0050]. The claimed epoxy groups are present at 2 wt% or 4 wt% EPON 1001F.
The ranges taught in the prior art overlap the claimed ranges.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Since the composition is the same as claimed it will possess the claimed retention of strain at break. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. It is noted that the claimed testing method does not specify how long the composition is exposed to air flow at 150°C. Therefore, the strain at break after 720 hours will be exactly the same as it was before the 720 since the composition does not undergo any change if it only exposed to air flow at 150°C for a very short period of time, such as five seconds.
Regarding claim 2: Takahashi teaches that the copolyetherester is prepared from terephthalic acid, 1,4-butanediol [0009] and polytetramethylene ether glycol [0028; claims 3-4].
Regarding claim 3: Takahashi teaches Irganox 1010 [0036], which is the same compound as Evernox-10.
Regarding claim 7: Takahashi teaches a diphosphite, or a sterically hindered aryl phosphite [0019, 0035].
Regarding claims 8 and 20: Takahashi teaches tris(2,4-di-t-butylphenyl) phosphite
Claim(s) 4 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (JP 2001-247752A) and McKenna (2003/0216500) as evidenced by Houze et al. (2021/0155807) as applied to claims 1 and 3 above further in view of Kim (2018/0223096).
Takahashi fails to teach the claimed phenolic antioxidant.
However, Kim teaches using a mixture of phenolic antioxidant to stabilize a copolyetherester resin composition [0057, 0100]. Kim teaches N,N′-trimethylenebis-[3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionamide (Irganox® 1019) and N N′-hexamethylenebis(3,5-di-tert-butyl-4-hydroxyhydrocinnamamide) (Irganox® 1098) [0100]. Irganox 1019 is the same as N,N’-propane-1,3-diylbis[3-(3,5-di-tert-butyl-4-hydroxyphenyl) propionamide] as recited in claim 19.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a mixture of Irganox 1019 and Irganox 1098 as taught by Kim as the phenolic antioxidant in Takahashi. It is a simple substitution of one known element for another to obtain predictable results. When using a mixture of phenolic antioxidant, the skilled artisan would immediately envision a 1:1 mixture.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (JP 2001-247752A) and McKenna (2003/0216500) as evidenced by Houze et al. (2021/0155807) as applied to claim 1 above further in view of Zeilstra (Die Angewandte Makromolekulare Chemie 137 (1985) 83-92).
Takahashi fails to teach the claimed thioester.
However, Zeilstra teaches that dilauryl thiodipropionate (Irganox PS 800) is a thioester antioxidant for copolyetherester compositions (p. 88).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use dilauryl thiodipropionate (Irganox PS 800) as taught by Zeilstra as the thioester in the composition of Takahashi to stabilize the composition. It is a simple substitution of one known element for another to obtain predictable results.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (JP 2001-247752A) in view of McKenna (2003/0216500), Kim (2018/0223096) and Zeilstra (Die Angewandte Makromolekulare Chemie 137 (1985) 83-92) as evidenced by Houze et al. (2021/0155807).
Takahashi teaches a composition comprising 100 parts by weight of a copolyetherester, 0.01 to 10 parts by weight of an epoxy compound [0006], 0.01 to 5 parts of an arylamine antioxidant [0006], 0.01 to 5 parts by weight of a hindered phenol antioxidant [claim 2], 0.01 to 5 parts by weight of a thioester antioxidant [claim 2, 0018], and 0.01 to 5 parts by weight of a phosphite antioxidant [claim 2, 0019]. Takahashi teaches adding a hydrolysis resistance improver [0024]. The composition of Takahashi does not comprise additional thermoplastic resins [Examples].
Takahashi fails to teach the claimed epoxy compound.
However, McKenna teaches adding 2 or 4 wt% of EPON 1001F as a hydrolysis stabilizer to polyester resin compositions [Examples; Tables].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 2 wt% or 4wt% of EPON 1001F as taught by McKenna to the composition of Takahashi to improve the hydrolysis stability of the composition. Epon 1001F is a poly(Bisphenol A-Co-Epichlorohydrin) Glycidyl End-Capped as evidenced by Houze et al. [0050]. The claimed epoxy groups are present at 2 wt% or 4 wt% EPON 1001F.
Takahashi fails to teach the claimed phenolic antioxidant.
However, Kim teaches using a mixture of phenolic antioxidant to stabilize a copolyetherester resin composition [0057, 0100]. Kim teaches N,N′-trimethylenebis-[3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionamide (Irganox® 1019) and N N′-hexamethylenebis(3,5-di-tert-butyl-4-hydroxyhydrocinnamamide) (Irganox® 1098) [0100]. Irganox 1019 is the same as N,N’-propane-1,3-diylbis[3-(3,5-di-tert-butyl-4-hydroxyphenyl) propionamide] as recited in claim 19.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a mixture of Irganox 1019 and Irganox 1098 as taught by Kim as the phenolic antioxidant in Takahashi. It is a simple substitution of one known element for another to obtain predictable results. When using a mixture of phenolic antioxidant, the skilled artisan would immediately envision a 1:1 mixture.
Takahashi fails to teach the claimed thioester.
However, Zeilstra teaches that dilauryl thiodipropionate (Irganox PS 800) is a thioester antioxidant for copolyetherester compositions (p. 88).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use dilauryl thiodipropionate (Irganox PS 800) as taught by Zeilstra as the thioester in the composition of Takahashi to stabilize the composition. It is a simple substitution of one known element for another to obtain predictable results.
Takahashi fails to teach the claimed phosphite antioxidant.
However, Zeilstra teaches that Ultranox 626 (claimed phosphite) is a phosphite antioxidant for copolyetherester compositions (p. 88).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Ultranox 626 as taught by Zeilstra as the phosphite in the composition of Takahashi to stabilize the composition. It is a simple substitution of one known element for another to obtain predictable results.
The ranges taught in the prior art overlap the claimed ranges.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Since the composition is the same as claimed it will possess the claimed retention of strain at break. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. It is noted that the claimed testing method does not specify how long the composition is exposed to air flow at 150°C. Therefore, the strain at break after 720 hours will be exactly the same as it was before the 720 since the composition does not undergo any change if it only exposed to air flow at 150°C for a very short period of time, such as five seconds.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark II et al. (EP 0443457 A2) in view of McKenna (2003/0216500) and Zeilstra (Die Angewandte Makromolekulare Chemie 137 (1985) 83-92) as evidenced by Houze et al. (2021/0155807).
Clark II et al. teach a composition comprising: a copolyetherester, a phenolic antioxidant, and thioester antioxidant, and phosphite antioxidant, and an epoxy compound (Examples; Claims). Clark II et al. teach that the amount of copolyetherester is about 90 parts by weight and that the amount the amount of copolyetherester is increased to increase the flexibility of the composition (page 8, lines 34-40). Clark et al. teach that the thioester antioxidant is used in effective amounts that can be determined by the skilled artisan (page 8, lines 49-53). Clark II et al. teach using 0.15 wt% thioester antioxidant in the examples [Examples], but the claimed range is obvious, and could be obtained by the skilled artisan through routine experimentation as disclosed by Clark II et al. The claimed range is a standard range used in the art for antioxidants, as demonstrated by Kim [0103].
About 90 parts either overlaps, or is very close to the claimed amount of 94.5 wt%.
"About" permits some tolerance. At least about 10% was held to be anticipated by a teaching of a content not to exceed about 8% In re Ayers, 154 F2d 182, 69 U.S.P.Q. 109 (C.C.P.A. 1946).
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Alternatively, The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Clark II et al. fail to teach the claimed epoxy compound.
However, McKenna teaches adding 2 wt% or 4 wt% EPON 1001F as a hydrolysis stabilizer to polyester resin compositions [Examples; Tables].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 2wt% or 4wt% of EPON 1001F as taught by McKenna to the composition of Clark II et al. to improve the hydrolysis stability of the composition. Epon 1001F is a poly(Bisphenol A-Co-Epichlorohydrin) Glycidyl End-Capped as evidenced by Houze et al. [0050]. 2 wt% or 4wt% of EPON 1001F provides the claimed epoxy group content.
Clark II et al. fail to teach the claimed thioester, phenolic antioxidant, and phosphite antioxidant.
However, Zeilstra teaches that dilauryl thiodipropionate (Irganox PS 800) is a thioester antioxidant for copolyetherester compositions, that Irganox 1098 (claimed phenolic antioxidant) is a phenolic antioxidant for copolyetherester compositions, and that Ultranox 626 (claimed phosphite) is a phosphite antioxidant for copolyetherester compositions (p. 88).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use dilauryl thiodipropionate (Irganox PS 800), Ultranox 626 and Irganox 1098 as taught by Zeilstra as the thioester, phosphite, and phenolic antioxidants in the composition of Clark II et al. to stabilize the composition. It is a simple substitution of one known element for another to obtain predictable results.
Since the composition is the same as claimed it will possess the claimed retention of strain at break. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. It is noted that the claimed testing method does not specify how long the composition is exposed to air flow at 150°C. Therefore, the strain at break after 720 hours will be exactly the same as it was before the 720 since the composition does not undergo any change if it only exposed to air flow at 150°C for a very short period of time, such as five seconds.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that the lack of a component in the examples is sufficient support for a negative limitation. This is incorrect. The mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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