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 .
Response to Amendment
Amendments to the claims, filed on 2/12/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
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 Rejections - 35 USC § 103
Claims 1, 3, 4, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2015/0267049 A1).
Regarding claims 1, 3, 4 and 8, Kim teaches resin composition comprising a base resin comprising a polyester-based elastomer (e.g., copolyetherester elastomer resin); a polybutylene-based engineering plastic (e.g., polybutylene terephthalate); an additive; wherein the additive comprises an epoxy-based combatibilizer (e.g., glycidyl-modified ethylene-octene copolymer (EOR-GMA)); an antioxidant (e.g., phenol or amine based), a heat-resistant stabilizer, and carbon component (e.g., carbon black) (para 14-15, 39-41, 43-45).
Kim teaches the glycidyl-modified ethylene-octene copolymer may be present in an amount of 2% by weight in the composition (i.e., about 1.5 parts based on 100 parts by weight of the base resin) (para 37); and further teaches adjusting it to optimize the melt flow index of the composition. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of glycidyl-modified ethylene-octene copolymer in the composition to optimize its melt flow index.
Kim teaches the polyalkylene dicarboxylate-based resin (e.g., polybutylene terephthalate) may be used up to 1 to 30 parts by weight based on 100 parts (i.e., 30%) by weight in total of the composition (para 48); so accounting for glycidyl-modified ethylene-octene copolymer (2% or 2 parts by weight); the polyester-based elastomer would be present in an amount of up to at least 68% by weight or 68 parts based on 100 parts by weight of the base resin, e.g., 100 parts minus 30 parts polybutylene terephthalate and 2 parts EOR-GMA. This results in a base resin that comprises at least about ~69.4% (e.g., 68/98) by weight of the polyester-based elastomer; and up to about 30.6% (e.g., 30/98) by weight of the engineering plastic; based on the sum of the weight of the polyester-based elastomer and the weight of the engineering plastic. These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kim, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Kim teaches its heat stabilizer and/or antioxidant may be used from 1% to 5% by weight (i.e., 1 to 5 parts based on 100 parts by weight of the base resin) in the composition (para 39). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kim, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
With regard to the carbon black, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the amount of carbon black used in the composition to optimize the color of the final part.
Furthermore, It would have been obvious to one of ordinary skill in the art at the time of invention to adjust the concentration and amount of polyester-based elastomer, engineering plastic, antioxidant, heat-resistant stabilizer, and carbon component in the composition to optimize the physical properties of the final component or article made from the composition. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claims 9, 10, and 12, Kim teaches the composition can be used in automobile parts (e.g. air ducts and/or hoses) (para 50, 53) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention a vehicle part that is an air intake hose; and a vehicle comprising the vehicle part.
Regarding claim 11, Kim teaches or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention an air intake hose comprising the composition of the instant claims as well as the fact the part is blow molded (para 50); so it is deemed to inherently possess the properties of the instant claim. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Response to Arguments
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of prior art of record. The Applicant is directed to the 35 USC § 103 section above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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