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 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 7 broadens the scope of the stearate selection “(1) aluminium tristearate at 0.5 to 1 wt %, plus sodium stearate at 0.25 to 0.75 wt %;(2) aluminium distearate at 0.5 to 1 wt %;(3) stearic acid at 0.3 to 0.8 wt %;(4) aluminium distearate at 0.5 to 1 wt% plus sodium stearate at 0.25 to 0.75 wt%; and (5) aluminium distearate at 0.5 to 1 wt% plus stearic acid at 0.25 to 0.75 wt%” whereas claim 1 recites a narrower scope: a stearate selected from: 2a aluminium tristearate; 2b aluminium distearate; 2c mixtures of aluminium tristearate and aluminium distearate; 2d mixtures of one or more of any of the foregoing with stearic acid or sodium stearate. For the purpose of further examination, it is taken to mean in claim 7 that “stearate selected from: 2a aluminium tristearate; 2b aluminium distearate; 2c mixtures of aluminium tristearate and aluminium distearate; 2d mixtures of one or more of any of the foregoing with stearic acid or sodium stearate”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 16 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 16 broadens the scope of the stearate selection “(1) aluminium distearate at 0.5 to 1.5 wt%;(2) aluminium tristearate at 0.5 to 1.5 wt%;(3) aluminium distearate at 0.4 to 1 wt%, plus stearic acid at 0.3 to 1 wt%;(4) aluminium distearate at 0.5 to 1 wt %, plus sodium stearate at 0.4 to 1 wt %; (5) aluminium tristearate at 0.3 to 1 wt%, plus sodium stearate at 0.3 to 1 wt %; and (6) sodium stearate at 0.2 to 0.6 wt%” whereas claim 11 recites a narrower scope: a stearate selected from: 2a aluminium tristearate; 2b aluminium distearate; 2c mixtures of aluminium tristearate and aluminium distearate; 2d mixtures of one or more of any of the foregoing with stearic acid or sodium stearate. For the purpose of further examination, it is taken to mean in claim 16 that “stearate selected from: 2a aluminium tristearate; 2b aluminium distearate; 2c mixtures of aluminium tristearate and aluminium distearate; 2d mixtures of one or more of any of the foregoing with stearic acid or sodium stearate”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-4, 7-8, 10, 23, 25, 27 are rejected under 35 U.S.C. 103 as being unpatentable over Senda et al. (US5733986, herein Senda), in the view of Michels et al. (EP0707030, herein Michels).
Regarding Claims 1-3, 27, Senda teaches the copolyetherester composition [C3; L32] comprising: (1) automobile constant velocity joint boot which is modified to a higher melt viscosity using a polyester elastomer (hereinafter abbreviated as TPEE) [C1; L10-15] can be manufactured, for example, by reacting terephthalic acid, or terephthalic acid dimenthyl, 1,4-butanediol, and poly(oxytetramethylene) glycol as essential components; [C3; L31] which reads on the copolyetherester resin, and matches its monomers of the (i) a poly(alkylene oxide)diol, (ii) a dicarboxylic acid selected from terephthalate, (iii) a diol selected from butane diol; and (2) stearic acid [C6; L36], but does not explicitly teach the mixtures of aluminium tristearate and aluminium distearate, however, Michels teaches the aluminium stearates which can be used are selected from aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017]. Michels further teaches the incorporation of aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017] and apply into copolyetheresters [0042]. Because both the stearic acid [C6; L36] as taught by Senda and the aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017] taught by Michels are known in the art to be useful for lubricant for copolyetheresters based composite, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the stearic acid [C6; L36] as taught by Senda with the aluminium distearate, aluminium tristearate and mixtures thereof, [0017] taught by Michels, and would have been motivated to do so because both compounds individually are known to be effective lubricant for copolyetheresters based composite. (see MPEP 2144.06).
Regarding Claim 4, Senda teaches the TPEE (A) which the copolyetherester resin derived from the poly(alkylene oxide)diol as set forth above, has the proportion of soft segments to hard segments within the molecular structure is preferably, when the former is divided by the later (ratio by weight), 40/60; [C2; L61] hence, the soft segment fraction is 40%, lies in the claimed range, wherein, the soft segments are units comprising aliphatic polyester [C2; LL58], such as poly(oxytetramethylene) glycol [C3; L14] which is poly(alkylene oxide)diol, as of PTMEG.
Regarding Claims 7, Senda and Michels teach the copolyetherester composition as set forth in claim 1 above, Senda teaches lubricant (E), stearic acid [C6; L36], but does not explicitly teach the aluminium distearate and the range, however, Michels teaches the aluminium stearates which can be used are selected from aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017]. Michels further teaches the incorporation of aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017] and apply into copolyetheresters [0042], in the range of the additive comprises 20 to 35% by weight of the aluminum stearate [0016-17], and the additive comprises 0.03 to 2.0% by weight of the total composition [0110], hence, can collectively lead to the aluminium distearate concentration as (20%-35%)x(0.03-2%)=0.006% to 0.7%, overlap the claimed range of claimed (2). Because both the stearic acid [C6; L36] as taught by Senda and the aluminium distearate [0017] taught by Michels are known in the art to be useful for lubricant for copolyetheresters based composite, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the stearic acid [C6; L36] as taught by Senda with the aluminium distearate [0017] and the ranges taught by Michels, and would have been motivated to do so because both compounds individually are known to be effective lubricant for copolyetheresters based composite. (see MPEP 2144.06).
Regarding Claims 8, 10, Senda teaches palmatic acid, lauric acid [C6; L38] both are acid wax compounds with saturated fatty acids.
Regarding Claim 23, Senda teaches the resin composition for the automobile constant velocity joint boot [C8; L61].
Regarding Claim 25, Senda and Michels teach the copolyetherester composition as set forth in claim 1 above, Senda teaches “TPEE (A), modified polyetherester block copolymer” [C3; L48], in the range of “Example 3, 100 parts” [Table 2; P10], which is 100/(100+1.5+2+1.5+1)=94.34%, lies in the claimed range; lubricant (E), stearic acid, 0.05˜2.0 parts by weight of lubricant (E) [C6; L36, and C7; L18] as the stearate and overlaps the claimed range; lubricant (E), polyolefin waxes, 0.05˜2.0 parts by weight of lubricant (E) [C6; L33, and C7; L18] as the wax and overlaps the claimed range.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to apply lubricant (E), stearic acid, 0.05˜2.0 parts by weight [C6; L36, and C7; L18] and polyolefin waxes, 0.05˜2.0 parts by weight [C6; L33, and C7; L18] as the wax, into the resin composition. Doing so would further lead to the cost effectiveness owing to the low amount of stearate been used.
Claims 11-14, 16, 17, 19, 20, 22, 24, 26, 28 are rejected under 35 U.S.C. 103 as being unpatentable over Senda et. al. (US5733986, herein Senda), in the view of Michels et al. (EP0707030, herein Michels) and Honda et. al. (JP2009292887, herein Honda, a machine translation is being used for citation purposes).
Regarding Claims 11-14, 17, 19, 28, Senda teaches the copolyetherester composition [C3; L32] comprising: (1) TPEE can be manufactured, for example, by reacting terephthalic acid, or terephthalic acid dimenthyl, 1,4-butanediol, and poly(oxytetramethylene) glycol as essential components. [C3; L31] which reads on the copolyetherester resin, and matches its monomers of the (i) a poly(alkylene oxide)diol, (ii) a dicarboxylic acid selected from terephthalate, (iii) a diol selected from butane diol. Senda further teaches the TPEE (A) which the copolyetherester resin derived from the poly(alkylene oxide)diol, has the proportion of soft segments to hard segments within the molecular structure is preferably, when the former is divided by the later (ratio by weight), 40/60. [C2; L61] hence, the soft segment fraction is 40%, lies in the claimed range, wherein, the soft segments are units comprising aliphatic polyester [C2; L58], such as poly(oxytetramethylene) glycol [C3; L14] which is poly(alkylene oxide)diol, as of PTMEG. Senda teaches (2) stearic acid [C6; L36], but does not explicitly teach the mixtures of aluminium tristearate and aluminium distearate, however, Michels teaches the aluminium stearates which can be used are selected from aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017]. Michels further teaches the incorporation of aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017] and apply into copolyetheresters [0042]. Because both the stearic acid [C6; L36] as taught by Senda and the aluminium distearate, aluminium tristearate and mixtures thereof, and also contain stearic acid [0017] taught by Michels are known in the art to be useful for lubricant for copolyetheresters based composite, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the stearic acid [C6; L36] as taught by Senda with the aluminium distearate, aluminium tristearate and mixtures thereof, [0017] taught by Michels, and would have been motivated to do so because both compounds individually are known to be effective lubricant for copolyetheresters based composite. (see MPEP 2144.06).
Senda is silent on the specified PTFE. However, Honda teaches “PTFE; number average molecular weight ranges from 1.5 million to tens of millions” [0057] overlaps the claimed range; and the PTFE used in the form of an aqueous dispersion [0058] reads on the claimed method. Senda and Honda are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyester copolymer derived from 1,4-butanediol-based composition as engineering plastics. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Senda to add the teachings of Honda and provide wherein said “PTFE; number average molecular weight ranges from 1.5 million to tens of millions” [0057]; in the form of an aqueous dispersion [0058] into the resin composition formation. Doing so would further lead to the desired property as of “improved impact resistance, particularly low-temperature impact resistance, and also has good thermal stability, and to a molded article obtained by injection molding the thermoplastic polyester resin composition.” [0001] as taught by Honda.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 16, Senda and Michels teach the copolyetherester composition [C3; L32] as set forth in claim 11, Senda does not teach the ranges of aluminium distearate, aluminium tristearate and the range. However, Michels teaches the aluminium stearates which can be used are selected from aluminium distearate, aluminium tristearate and mixtures thereof, the additive comprises 20 to 35% by weight of the aluminum stearate [0016-17], and the additive comprises 0.03 to 2.0% by weight of the total composition [0110], hence, can collectively lead to the aluminium distearate concentration as (20%-35%)x(0.03-2%)=0.006% to 0.7%, overlap the claimed ranges of (1) to (2). Senda and Michels are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyetherester copolymer derived from 1,4-butanediol-based composition development as engineering plastics including stearate as lubricant. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Senda to substitute the teachings of Michels and provide wherein said the aluminium stearates which can be used are selected from aluminium distearate, aluminium tristearate and mixtures thereof, the additive comprises 20 to 35% by weight of the aluminum stearate [0016-17], and the additive comprises 0.03 to 2.0% by weight of the total composition [0110], into the resin composition development. Doing so would further lead to the desired property as of good impact resistance of the coating [0062] as taught by Michels.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claims 20, 22, Senda teaches palmatic acid, lauric acid [C6; L38] both are acid wax compounds with saturated fatty acids.
Regarding Claim 24, Senda teaches the resin composition for the automobile constant velocity joint boot [C8; L61].
Regarding Claim 26, Senda teaches “TPEE (A), modified polyetherester block copolymer” [C3; L48], in the range of “Example 3, 100 parts” [Table 2; C10], which is 100/(100+1.5+2+1.5+1)=94.34%, lies in the claimed range; lubricant (E), stearic acid, 0.05˜2.0 parts by weight of lubricant (E) [C6; L36, and C7; L18] as the stearate and overlaps the claimed range; lubricant (E), polyolefin waxes, 0.05˜2.0 parts by weight of lubricant (E) [C6; L33, and C7; L18] as the wax and overlaps the claimed range.
Senda is silent on the PTFE and range. However, Honda teaches “PTFE; anti-dripping agent (E).” [0056] and The anti-dripping agent (E) is blended in an amount of 0 to 3 parts by mass per 100 parts by mass of the thermoplastic polyester resin composition [0062] overlaps the claimed range. Senda and Honda are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyester copolymer derived from 1,4-butanediol-based composition development as engineering plastics. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Senda to add the teachings of Honda and provide wherein said PTFE; anti-dripping agent (E).” [0056] and the anti-dripping agent (E) is blended in an amount of 0 to 3 parts by mass per 100 parts by mass of the thermoplastic polyester resin composition [0062] into the resin composition development. Doing so would further lead to the desired property as of “improved impact resistance, particularly low-temperature impact resistance, and also has good thermal stability, and to a molded article obtained by injection molding the thermoplastic polyester resin composition.” [0001] via the specified anti-dripping agent and range inclusion as taught by Honda.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 1/5/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Senda et. al. (US5733986, herein Senda) and Michels et al. (EP0707030, herein Michels).
In this case, the applicant’s arguments are directed toward the amendment to independent claim 1, which has been addressed by the rejection set forth above.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant’s argument is not in commensurate of the scope of the instant claims, wherein, Senda and Michels collectively teach the claimed composition as set forth in the new rejection above, however, the instant claims do not exclude the organic polyisocyanate compound and a silicone compound.
In fact, organic polyisocyanate compound and a silicone compound as taught by Senda actually meet the instant application. First, Senda teaches dimethylsilicone oil [C14; L16] which as known as lubricant to adjust viscosity; wherein, the instant application teaches viscosity modifiers [Instant App. US20230052552; 0168]; second, Senda teaches polyisocyanate compound is for its high thickening effects [C5; L22], wherein, the instant application teaches polyurea type thickener [Instant App. US20230052552; 0168], wherein, the polyisocyanate compound thickener is a type of polyurea thickener.
Hence, Senda does not teach against the instant application.
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767