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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025 has been entered.
Response to Amendment
This office action is in response to the Amendment filed on 12/16/2025. Claims 1-8 are pending in the application.
The rejections under 35 USC 103 over Kobayashi et al. set forth in the September 16 Office Action are MAINTAINED for the reasons set forth below. To ensure Applicant’s amendments are fully addressed, the rejections are set forth in full.
Claim Analysis
Summary of Claim 1:
A thermoplastic elastomer composition comprising:
100 parts by mass of an ethylene/α-olefin/non-conjugated polyene copolymer (A) comprising constituent units derived from ethylene, a C3-C20 a-olefin and a non-conjugated polyene;
1 to 100 parts by mass of a crystalline polyolefin (B);
0.1 to 20 parts by mass of a polyorganosiloxane (C) having a viscosity at 25°C (measured by a method in accordance with ASTM D 445-46T) of 100,000 cSt or less; and
0.1 to 0.7 parts by mass of a higher fatty acid amide (D).
wherein a coefficient of static friction or a coefficient of dynamic friction of a shaped article including the thermoplastic elastomer composition measured at 80 °C in accordance with JIS K 7125 is 0.8 or less.
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 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over by Kobayashi et al. (JP 2000-026668 (A), full English Machine translation provided by Applicant).
Regarding claim 1, Kobayashi et al. teach a thermoplastic elastomer composition comprising 40-90 parts by weight of an olefin based rubber (A) such as Ethylene/α-olefin/non-conjugated diene copolymer rubber wherein the α-olefin has 2-20 carbon atoms ([0011]-[0013]), 10-60 parts by weight of a polyolefin resin such as crystalline polypropylene (B) [0009], [0030], 1-15 parts by weight of an organopolysiloxane having a viscosity of 10 cSt or more [0032] and 0.1 to 5 parts by weight of a fatty acid amide based on the total amount of components (A) and (B) (Claims 1,2 and 3), which is equivalent to 1.11 to 37.5 parts by weight of the organopolyxiloxane and 0.11 to 12.5 parts by weight of the fatty acid amide (see calculations below). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kobayashi et al.
Kobayashi et al. further teach the composition is suitable for an automobile component such as a glass run channel [0003] with good sliding wear resistance with a window glass, excellent in abrasion and scratch resistance ([0006],[0008],[0038]).
Kobayashi et al. are silent on the coefficient of static friction or coefficient of dynamic friction of the shaped article.
However, it is noted that the language regarding properties of a shaped article formed from the composition is a property resulting from an intended use of the composition. Kobayashi et al. teach a composition comprising all of the claimed components in amounts that overlap made by a substantially similar process and a glass run channel with good sliding wear resistance with a window glass. Therefore, it would be reasonable to infer that the glass run channel would have the claimed coefficient of static friction or the claimed coefficient of dynamic friction given that the composition of Kobayashi et al. is substantially identical to the claimed invention. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
The parts by mass of C and D per 100 parts of A of Kobayashi are calculated as follows:
-Min C per 100 A ( C= 1 pbw minimum value; A=90 maximum value; B= 10 minimum value)
Min C per 100 A = 1 * (90 + 10)/90 = 1.11 parts by weigh of C based on 100 parts of A
-Max C per 100 A ( D= 15 pbw, maximum value; A=40 minimum value; B= 60 maximum value)
Max C per 100 A = 15 * (40 + 60)/40 = 37.5 parts by weigh of C based on 100 parts of A
-Min D per 100 A ( D= 0.1 minimum value; A=90 maximum value; B= 10 minimum value)
Min D per 100 A = 0.1 * (90 + 10)/90 = 0.111 parts by weigh of D based on 100 parts of A
-Max D per 100 A ( D= 5 maximum value; A=40 minimum value; B= 60 maximum value)
Max D per 100 A = 5 * (40 + 60)/40 = 12.5 parts by weigh of D based on 100 parts of A
Regarding claim 2, Kobayashi et al. teach a polypropylene having a MRF (ASTM F-1238 65T, 230 °C) of 13 g/10Min [0040]. While Kobayashi et al. are silent on the melting point of the crystalline polypropylene, it is noted that the melting point of polypropylene is about 160°C, as evidenced by Farrow, p.191, 1963. Kobayashi also teach the resin composition is being used for a glass run channel [0003], similar to the claimed invention, therefore the melting point of the polypropylene of Kobayashi et al. is expected to be 100°C or above.
Regarding claim 3, Kobayashi et al. teach additives such as mineral oil- based softeners are added to the thermoplastic elastomer composition [0019], as required by the instant claim.
Regarding claim 4, Kobayashi et al. teach the polyolefin resin includes crystalline polyolefins such as polypropylene or polyethylene resins such as propylene homopolymers, random copolymers of propylene and up to 10 mol% of other α-olefins and block copolymers of propylene and up to 30 mol % of other α-olefins among others [0030].
Regarding claim 5, Kobayashi et al. teach the thermoplastic elastomer composition is obtained by dynamically heat-treating a mixture of the crystalline polypropylene, rubber , softener in the presence of an organic peroxide [0020]. Kobayashi et al. further teach the components are kneaded in a molten state [0023], thereby reading on the dynamic heat treatment in the presence of a crosslinking.
Regarding claims 6-8, Kobayashi et al. teach the composition is used to make automobile parts including a glass run channel ([0002]-[0003]), thereby reading on the shaped article of claim 6 and the glass run channel of a vehicle of claims 7 and 8.
Response to Arguments
Applicant’s arguments, see pages 4-6, filed 12/16/2025 with respect to the rejection(s) of the claims under USC 103 over Kobayashi et al. have been fully considered but they are not persuasive.
Regarding the rejection over Kobayashi et al., the Applicant states “Kobayashi is silent with respect to any coefficient of friction. Further, Kobayashi does not include any teaching or motivation to provide a polymer composition having excellent slidability at high temperatures.” In response, Examiner acknowledges Kobayashi et al. is silent on the coefficient of friction of the shaped article. However, attention is drawn to the rejection as set forth above, wherein Kobayashi’s composition is substantially identical to the claimed invention and is capable of being used to form an article with the claimed properties, therefore it meets the limitations of the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763