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 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 24 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 24 recites the limitation "the polyol composition(PZ) " in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim is confusing as to intent because it can not be definitively determined what component is being referred back to by this expression in that claim 24 and/or claim 18 do not define a “polyol composition (PZ)”.
Appropriate correction is required.
For examination purposes “(PZ)” has been treated as meaning “(PC)”.
Claim Rejections - 35 USC § 103
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 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) 18-20, 22-25, 27, 28, 30-33 and 35-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2002-327037 in view of Kaufhold et al.(6,355,762).
JP-2002-327037 discloses thermoplastic polyurethane(TPU) foam pellets comprising a block copolymer prepared from a composition containing: 1) aromatic/aliphatic polyester (Ecoflex FBX 7011; poly(butylene adipate-co-terephthalate) which includes 90% by weight PBT), MDI as diisocyanate and polylactide (89000 g/mol) as an aliphatic polyol with an Mn of greater than 500 g/mol (see page 4, Examples, including example 1, and paragraphs [0040]-[0043]). JP-2002-327037 is sufficient in its disclosure of the aromatic polyester (PE-1) component as defined by applicants’ claims. The aromatic/aliphatic polyester (Ecoflex FBX 7011; poly(butylene adipate-co-terephthalate) which includes 90% by weight PBT)[PBT being polybutylene terephthalate] is sufficient in meeting the requirements of applicants’ claims regarding component (PE-1) with the butanediol included in its structure being sufficient to meet the diol (D2) requirements of the rejected claims as they now stand defined. Pellets having sizes as claimed are disclosed (paragraph [0024]). Regarding the claimed product-by-process heating indications of the claims, owing to the closeness of the materials disclosed and disclosed formation of good pelletized articles for molding to useful cushioning products, it is held that difference is not seen between the products of JP-2002-327037 and the instant claims based on the manner in which the products as claimed are formed. {see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112)}, and burden lies with applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product; see /n re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (MPEP § 2113). Additionally, regarding formed and molded product features of the claims, the disclosed formed, pelletized and molded articles of JP-2002-327037 are suitably in meeting the formed and molded articles of the claims to any degree that may be required by applicants’ claims (para [0001], [0007], [0029] and Examples).
JP-2002-327037 differs from the claims in that low molecular weight polyols as claimed are not included within its mixes. However, Kaufhold et al. discloses it to be well known to include chain extenders in forming TPU’s for the purpose of imparting their recognized chain-extending effects (see abstract and column 4 lines 5-29). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the chain-extenders of Kaufhold et al., which meet the short chain polyol requirements of applicants’ claims, in forming the beads and molded products of JP-2002-327037 for the purpose of forming acceptably developed, chain extended and softened expanded products in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claim 24, JP-2002-327037 differs from this claim in that overlap of amounts of respective components is not exact. However, overlap is evident {see page 4, paras [[0016] & [0017]} for purposes of achieving good foamability, biodegradability and other favorable effects. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the respective polyol and polyester components of JP-2002-327037 in any amount provided for by JP-2002-327037 in forming the products of the combination of JP-2002-327037 and Kaufhold et al. for the purpose of forming acceptably developed products having good foamability, biodegradability and other favorable effects in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejection as set forth above is maintained.
The following previous arguments are maintained to be still applicable here:
Kaufhold et al. is not looked to in order to remedy a deficiency as suggested by applicants. Kaufhold et al. is looked to in order to remedy the deficiency of JP-2002-327037 regarding component (D1) of the claims (i.e. the polyols of the claims with identified molecular weights that are low, specifically diols with molecular weights identified as being below 500). Position in this regard is maintained, and has not been argued to fail based on this combination as applied.
JP-2002-327037 is sufficient in its disclosure of the aromatic polyester (PE-1) component as defined by applicants’ claims. The aromatic/aliphatic polyester (Ecoflex FBX 7011; poly(butylene adipate-co-terephthalate) which includes 90% by weight PBT) is sufficient in meeting the requirements of applicants’ claims regarding component (PE-1) with the butanediol included in its structure being sufficient to meet the diol (D2) requirements of the claims. Based on the preponderant evidence of record, including the material make-up of the polyester (PE-1) defined by the claims, those polyesters of the disclosure, including the examples, that represent/illustrate (PE-1) as compared to the materials of JP-2002-327037, it is held and maintained that the sufficiency of JP-2002-327037 in this regard is evident.
Regarding applicants’ defining of their component (PE-1) through the manner in which it is produced, it has long been held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113). Even when used in defining a component of the claims, this holding applies, and, based on the preponderant evidence of record, burden is rightly placed upon applicant to demonstrate any difference that may be evident based on the manner in which (PE-1) is produced as supported by limitation(s) set forth in the claims. Currently, such demonstration is not seen or made evident on the record.
It is maintained that JP-2002-327037 is sufficient in its disclosure of the material effects of component (PE-1) of the claims as laid out above, and it is maintained that applicants’ have not sufficiently met their burden of factually demonstrating any difference that may be evident based on the manner in which (PE-1) is produced as supported by limitation(s) set forth in the claims. Allegations of effects referred to on reply are not a suitable replacement for a fact/evidence based demonstration of difference made evident to be based on the manner in which (PE-1) is produced as supported by limitation(s) set forth in the claims.
Regarding arguments concerning Kaufhold et al., it is held, maintained and reiterated that Kaufhold et al. is not looked to in order to remedy a deficiency as suggested by applicants. Kaufhold et al. is looked to in order to remedy the deficiency of JP-2002-327037 regarding component (D1) of the claims (i.e. the polyols of the claims with identified molecular weights that are low, specifically diols with molecular weights identified as being below 500). Position in this regard is maintained, and has not been argued to fail based on this combination as applied.
As to applicants latest arguments on reply, the transitional expression “consisting of” used in the drafting of the Markush group of the instant concern is closed in the sense of defining the member(s) that are required to meet the requirement(s) of the Markush group set forth and does not close the limitations of the claims in the manner as asserted by applicants. The PBT pointed to in the rejection above is sufficient to meet this requirement of the claims.
Further, applicants’ arguments are not commensurate in scope with what is defined by the limitations of the claims. It is the limitations of the claims that are required to be provided for through the combination of the cited prior art, and it is held an maintained that such position is properly laid out in the rejection as set forth above. The limitations of the claims are not reflective of, nor do they require, a degradation product as referred to in the remarks on reply in order to fulfill the requirements delineated by the limitations of the claims as they currently stand defined. Additionally, in forming the polymer as defined by the limitations of the claims as provided through the combination of the prior art, including polyester structures and formed urethane structures, block structures to any degree required by the claims would necessarily follow from that which is provided for through the combination of the cited prior art.
Allowable Subject Matter
Claim 38 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art, including JP-2002-327037 taken alone or in combination with other prior art, is insufficient in its teaching or fair suggestion of products as claimed formed from aromatic polyester (PE-1) as claimed which is formed using diol (D2) in the manner as defined by new claim 38.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/Primary Examiner, Art Unit 1765