DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-8, 10-14, 16-20 is/are pending.
Claim(s) 1-8, 10-14, 16-20 is/are rejected.
Claim(s) 9, 15, 21-22 is/are cancelled by Applicant.
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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 previously filed on 11/25/2025 has been entered on 01/22/2026. Applicant’s supplemental submission filed on 01/22/2026 has been entered.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8, 10-14, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• SEXTL ET AL (US 2002/0032266), in view of JP 2013-023551 (ASAI-JP ‘551),
or
• JP 2013-023551 (ASAI-JP ‘551), in view of SEXTL ET AL (US 2002/0032266),
in view of TOSOH - ZEOLITES (2017),
and in view of TAKEUCHI ET AL (US 2021/0040296),
and in view of OHTA ET AL (US 2007/0042145).
and in view of MOELLER ET AL (US 2016/0122530).
and in view of HAN ET AL (US 2023/0347330) or 10-RING ZEOLITES: SYNTHESIS, CHARACTERIZATION AND CATALYTIC APPLICATIONS (hereinafter 10-RING ZEOLITES),
as stated in the previous Office Action mailed 10/20/2025.
SEXTL ET AL ‘266 discloses thermoplastic compositions comprising:
• thermoplastic resin (e.g., polyester, etc.);
• 0.01-10 wt% ZSM-5 hydrophobic zeolite, wherein the hydrophobic zeolite has:
(i) a water absorption of at most 10 wt%;
(ii) a Si/Al ratio of at least 15 (preferably at least 50);
(iii) an average particle size of less than 15 microns;
wherein the thermoplastic compositions can be used to form low-emission articles by: (i) producing a composition containing a mixture of resin (e.g., polyester) and zeolite; (ii) forming the thermoplastic composition into articles (e.g., packaging, films, films, etc.). (entire document, paragraph 0001, 0007-0011, 0013, 0016-0017, 0021-0025, etc.) However, the references do not specifically discuss the type of polyester.
ASAI-JP ‘551 discloses molded articles formed from a molding composition comprising:
• polybutylene terephthalate (PBT) resin;
• 0.5-10 mass% silica-alumina zeolite (e.g., but not limited to, HSZ-800 891HOA by Tosoh Corporation, which is a high silica ZSM-5 zeolite as evidenced by TOSOH - ZEOLITES (2017); etc.);
• up to 60 mass% other components (e.g., other resins, additives, etc.).
The molded articles can be formed by:
(i) producing a molding composition comprising PBT and zeolite and optionally additives;
(ii) shaping the PBT molding composition using known molding methods (e.g., injection molding, extrusion molding, etc.) to form molded articles (e.g., sheets, strands, tubes, etc.).
(entire document, e.g., paragraph 0002-0004, 0010, 0012-0014, 0016, 0026, 0031, 0035-0043, 0048, etc.) However, the reference does not specifically discuss the chemical composition of the zeolite.
TOSOH - ZEOLITES (2017) provides evidence that commercially available HSZ series zeolites are high silica zeolites comprising SiO2 and Al2O3 with selective absorption properties, wherein the HSZ-800 series zeolites are ZSM-5 zeolites and wherein the HSZ-890 HOA series zeolites have high SiO2 / Al2O3 ratio (corresponding to the recited “YO2 to X2O3 molar ratio”) (e.g., of about 1500). (entire document)
TAKEUCHI ET AL ‘296 discloses that it is well known in the art to incorporate hydrophobic zeolites with an average particle size of 0.01-10 microns in typical amounts of 0.3-15 mass% in thermoplastic resins (e.g., polyester resins, etc.), wherein the hydrophobic zeolites have a SiO2 / Al2O3 molar ratio (corresponding to the recited “YO2 to X2O3 molar ratio”) of 30/1 to 8000/1, wherein higher SiO2 / Al2O3 molar ratio generally have higher hydrophobicity which provides a high affinity for low polarity odor molecules, hydrophobic gases, and/or lipophilic (e.g., solvent) gases, which thereby provides easy adsorption of said compounds, while the hydrophobic zeolites have difficulty in adsorbing highly polar water molecules. (paragraph 0082-0089, 0100, 0103, 0113-0121, 0151-0155, etc.)
OHTA ET AL ‘145 discloses that it is well known in the art to utilize high silica zeolites having silica/alumina ratios (corresponding to the recited “YO2 to X2O3 molar ratio”) of 80 or more (preferably 100 or more) (e.g., ZSM-5; ZSM-11; ZSM-12; Y-type zeolite; etc.) with a typical average particle size of 0.5-10 microns in thermoplastic resins (e.g., PBT, etc.) to trap undesirable organic compounds (e.g., compounds which produce offensive odors and/or nasty tastes, etc.), wherein the high silica zeolites exhibit superior ability to trap said undesirable organic compounds even under high humidity conditions compared to zeolites with low silica/alumina ratios, which makes the high silica zeolites particularly useful as an adsorbent in packaging material containing water-containing products. (paragraph 0054, 0057-0066, etc.)
MOELLER ET AL ‘530 disclose that it is well known in the art to incorporate an acrylic acid polymer in typical amounts of 0.01-2 wt% as an additive in polyester (e.g., polybutylene terephthalate (PBT), etc.) molding compositions used produce molded articles with reduced total organic carbon emissions. The reference further discloses that it is well known in the art to utilize 30-99.99 wt% polyester resin (e.g., polybutylene terephthalate (PBT), etc.) and up to 70 wt% additives (e.g., stabilizers, antioxidants, UV stabilizers, colorants, lubricants, etc.) to form polyester molding compositions useful for producing a variety of molded articles with modified or enhanced various performance properties (e.g., environmental resistance, durability, visual appearance, coefficient of friction, etc.). (paragraph 0001-0008, 0017-0018, 0074, 0090-0092, 0151-0164, etc.)
HAN ET AL ‘330 provides evidence that it is well known in the art that the ZSM-5 refers to a high silica zeolite with an MFI structure containing 10-membered ring channel systems (corresponding to the recited “maximum ring size of equal to or more than 10 T-atoms”). (paragraph 0005, etc.)
10-RING ZEOLITES provides evidence that it is well known in the art that the ZSM-5 refers to a zeolite with an MFI structure containing 10- ring channel systems (corresponding to the recited “maximum ring size of equal to or more than 10 T-atoms”). (page 3-4, etc.)
Regarding claims 1, 3-4, 11-14, 16-17, 19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known thermoplastic polyester resins such as PBT (as suggested in ASAI-JP ‘551) as the thermoplastic resin in the low emission thermoplastic compositions of SEXTL ET AL ‘266 which contain hydrophobic high silica ZSM-5 zeolite (e.g., characterized by Si/Al ratio (corresponding to the recited “YO2 to X2O3 molar ratio”) of at least 50 and a water absorption of 10 wt% or less) in order to provide useful molded articles with reduced emissions and/or enhanced adsorption of undesirable organic compounds (e.g., odor-generating, toxic, etc.).
Alternatively, regarding claims 1, 3-4, 11-14, 16-17, 19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate known hydrophobic high silica ZSM-5 zeolites (e.g., characterized by Si/Al ratio (corresponding to the recited “YO2 to X2O3 molar ratio”) of preferably 50 or more and a water absorption of 10 wt% or less, as suggested by SEXTL ET AL ‘266 -- for example, such as Si/Al ratios of at least 80, preferably at least 100 as suggested in OHTA ET AL ‘145) as the zeolite component in the thermoplastic polyester-based compositions of ASAI-JP ‘551 in order to produce PBT molding compositions with reduced emissions and enhanced adsorption of undesirable organic compounds (e.g., odor-generating, toxic, etc.), as suggested in TAKEUCHI ET AL ‘296.
Further regarding claims 1, 13, 18, one of ordinary skill in the art would have utilized known thermoplastic polyester resins (e.g., PBT as suggested by ASAI-JP ‘551 and MOELLER ET AL ‘530) to constitute the major component (e.g., 30-99.99 wt%, as suggested in MOELLER ET AL ‘530) in the thermoplastic polyester-based compositions of SEXTL ET AL ‘266 and/or ASAI-JP ‘551 in order to produce molded articles (e.g., packaging, films, fibers, etc.) with reduced emissions and/or useful adsorption of undesirable organic compounds.
Further regarding claims 1, 5-6, one of ordinary skill in the art would have used known and/or commercially available hydrophobic high silica ZSM-5 zeolites having an MFI structure and containing 10-ring structures (as evidenced in HAN ET AL ‘330 or 10-RING ZEOLITES) as the zeolite component in the thermoplastic polyester-based compositions of SEXTL ET AL ‘266 and/or ASAI-JP ‘551 in order to provide molded articles with reduced emissions and/or useful adsorption of undesirable organic compounds.
Further regarding claims 1, 7, 13, 19, since SEXTL ET AL ‘266 discloses hydrophobic ZSM-5 zeolites with high silica/alumina ratios (e.g., characterized by a Si/Al ratio (corresponding to the recited “YO2 to X2O3 molar ratio”) of at least 50) and a water absorption of 10 wt% or less, the Examiner has reason to believe that hydrophobic ZSM-5 zeolites in accordance with SEXTL ET AL ‘266 with high silica/alumina ratios (corresponding to the recited “YO2 to X2O3 molar ratio”) of 80 or more (as suggested in TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145) would have water adsorption values, when measured using the test conditions in the specification, which at least partially reads on the water absorption values recited in claims 1, 7, 13, 19; therefore, the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Regarding claim 2, since TAKEUCHI ET AL ‘296 discloses that zeolites with high silica/alumina ratios tend to be hydrophobic, the Examiner has reasons to believe that zeolites with high silica/alumina ratios of (e.g., 80 or more, as suggested in TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145) would have low adsorption rates of polar molecules (e.g., ammonia) which at least partially reads on the ammonia adsorption recited in claim 2; therefore, the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Regarding claims 5-6, one of ordinary skill in the art would have utilized known and/or commercially available zeolites with MFI structure containing 10- ring channel systems (corresponding to the recited “maximum ring size of equal to or more than 10 T-atoms”) with high affinity for organic compounds and relatively low affinity for polar compounds (e.g., as characterized by high silica/alumina ratios of 80 or more, as suggested in TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145) as the zeolite component in the thermoplastic polyester-based compositions of SEXTL ET AL ‘266 and/or ASAI-JP ‘551 in order to provide molded articles with reduced emissions and/or enhanced adsorption of undesirable organic compounds.
Regarding claim 8, since: (i) SEXTL ET AL ‘266 discloses the use of hydrophobic high silica (i.e., high silica/alumina ratio) ZSM-5 zeolites with an average particle size of 0.01-10 microns; the Examiner has reasons to believe that the suggested average particle sizes for zeolites disclosed in SEXTL ET AL ‘266 would have volume-based particle size D50 values which at least partially reads on the D50 recited in claim 8; therefore, the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594. Additionally and/or alternatively, one of ordinary skill in the art would have selected the particle size of high silica ZSM-5 zeolites utilized as the zeolite component in the thermoplastic polyester-based compositions of SEXTL ET AL ‘266 and/or ASAI-JP ‘551 based on the physical structure (e.g., film thickness, etc.) and/or surface characteristics (e.g., gloss, surface smoothness, etc.) of molded articles made from the polyester-based compositions.
Regarding claims 10, 20, one of ordinary skill in the art would have incorporated effective amounts of known additional resins (e.g., acrylic acid polymers, etc., as suggested in MOELLER ET AL ‘530) in the thermoplastic polyester-based compositions of SEXTL ET AL ‘266 and/or ASAI-JP ‘551 in order to further enhance various performance properties (e.g., impact resistance; intercomponent compatibility; flexibility; etc.)
Regarding claim 11-12, 21, one of ordinary skill in the art would have incorporated effective amounts of known performance-enhancing additives (e.g., lubricants, etc. as suggested in MOELLER ET AL ‘530) in the thermoplastic polyester-based compositions of SEXTL ET AL ‘266 and/or ASAI-JP ‘551 in order to further enhance various performance properties (e.g., impact resistance; intercomponent compatibility; flexibility; handling properties; etc.)
Regarding claims 13-14, 16, one of ordinary skill in the art would have used conventional thermoplastic product-forming methods such as: (i) providing a mixture comprising the zeolite-containing thermoplastic polyester-based composition; (ii) shaping the thermoplastic polyester-based composition using known shaping methods (e.g., molding, etc.); to process the low emission thermoplastic polyester-based compositions of SEXTL ET AL ‘266 into known plastic products
Regarding claim 16, one of ordinary skill in the art would have utilized the PBT-based molding compositions of ASAI-JP ‘551 to form known molded articles (e.g., films, sheets, fibers, packaging, etc.).
Response to Arguments
Applicant's arguments previously filed 11/25/2025 and Applicant’s Supplemental arguments filed 01/22/2026 have been fully considered but they are not persuasive.
(A) Applicant’s arguments filed 11/25/2025 directed to claim 22 in the Claim Amendments previously filed 11/25/2025 (entered 01/22/2026) have been considered but are moot because claim 22 has been cancelled in the Supplemental Claim Amendments filed 01/22/2026.
(B) Applicant argues (in the Response previously filed 11/25/2025) that with respect to SEXTL ‘266, “No teaching is made to select the particular polymer claimed and the very zeolites claimed and combine them. The reference teaches polymers and zeolites are known. Such general teaching does not lead one to the instant invention, alone or in combination with any of the other art.” 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).
In particular, SEXTL ‘266 discloses compositions comprising a thermoplastic resin (e.g., polyester, etc.) incorporating a ZSM-5 zeolite with hydrophobic characteristic (as represented by a controlled low level of water absorbance) to produce low-emission resin compositions, while ASAI-JP ‘551 discloses the combination of zeolites (e.g., ZSM-5, etc.) and a polybutylene terephthalate (PBT) resins to form a resin composition which exhibits reduced emissions of acetaldehyde and other similar undesirable compounds (e.g., volatile organic compounds, etc.). Therefore, Applicant’s arguments that the combination of SEXTL ‘266 and ASAI-JP ‘551 and additional references cited in the present rejections under 35 U.S.C. 103 fail to establish a prima facie case of obviousness are unpersuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited combination of PBT resin and the specified zeolite, particularly in view of the teachings in SEXTL ‘266 with respect to an improved ability to reduce undesirable emissions in thermoplastic resin compositions by incorporating hydrophobic ZSM-5 zeolites.
(C) Applicant argues (in the Response previously filed 11/25/2025) that with respect to ASAI-JP ‘551, “The reference indicates the zeolite can be a broad range of possible zeolites, including either natural or article minerals containing silica/alumina. The general teaching to use any zeolite does not suggest (alone or in combination with the other cited art) using the very particular zeolites claimed.” However, the working examples 1-2 in ASAI-JP ‘551 utilize both:
(i) a PBT resin identified as “Polycondensate of terephthalic acid and 1,4-butanediol, inherent viscosity (IV) is 0.69, "DURANEX 300FP" manufactured by Wintech Polymer”; and
(ii) “Adsorbent 1: Zeolite (“HSZ-800 891HOA” manufactured by Tosoh Corporation)” as the zeolite material, wherein the HSZ-800 series zeolites produced by TOSOH are identified as ZSM-5 zeolites with the HSZ-800 890 HOA series has a relatively high Si/Al ratio (e.g., about 1500), as evidenced by TOSOH - ZEOLITES (2017).
In the absence of objective evidence that the “HSZ-800 891HOA” zeolite utilized in working examples 1-2 in ASAI-JP ‘551 is: (i) not a ZSM-5 zeolite; and/or (ii) does not exhibit a Si/Al ratio similar to HSZ 890 HOA; the Examiner has reason to believe that that ASAI-JP ‘551 discloses the use of zeolites which conform to all of the zeolite limitations in the present claims (with the exception of the recited water absorption). Furthermore, in view of the teaching in SEXTL ‘266 regarding the benefits of utilizing ZSM-5 zeolites with a hydrophobic nature (as evidenced by higher Si/Al ratios and relatively low water absorbance values), it is the Examiner’s position the combination of ASAI-JP ‘551 and SEXTL ‘266 (and the additional secondary references) establish a proper prima facie case of obviousness, especially when Applicant has not provided objective evidence that the ZSM-5 zeolites having water absorbance values as suggested in SEXTL ‘266 would are incapable of exhibiting water absorption values (as measured by Applicant’s specific methodology) which at least partially overlap the recited “water absorption” values.
(D) Applicant argues (in the Response previously filed 11/25/2025) that “it not proper for the Office to rely on Tosoh (Zeolite Molecular Sieves, May 16, 2025) or Takeuchi et al. (U. S. Publication No. 2021/0040296 Al), or Han et al (U. S. Publication No. 2023/0347330 Al), because they all have effective dates later than the August 3, 2020 priority date of the present application. A certified copy of the priority document of the present application was filed with the USPTO on February 1,2023 perfecting applicant's 2020 priority claim.
However, Applicant’s arguments are unpersuasive because the above references relied upon in the rejections under 35 U.S.C. 103 in the previous Office Action mailed 10/20/2025 properly qualify as prior art under 35 U.S.C. 102(a)(1) and/or 102(a)(2) for the following reasons:
• TOSOH - ZEOLITES (2017) qualifies as prior art under 35 U.S.C. 102(a)(1) because the reference has an effective publication date of October 2, 2017 (i.e., the TOSOH - ZEOLITE webpage was archived on October 2, 2017 on the “The Wayback Machine” website, as clearly noted in the PTO-892 mailed 10/20/2025).
• TAKEUCHI ET AL (US 2021/0040296) qualifies as prior art under 35 U.S.C. 102(a)(2) because the U.S. patent document has an effective filing date of at least March 27, 2019 (based on the international filing date for a national stage entry under 35 U.S.C. 371) and possibly as early as March 30, 2018 (based on the filing date of the JP foreign priority documents).
• HAN ET AL (US 2023/0347330) qualifies as prior art under 35 U.S.C. 102(a)(2) because the relied upon subject matter in the U.S. patent document (i.e., paragraph 0005, regarding the description of the physical structure and chemical composition of ZSM-5 zeolites) has an effective filing date of June 24, 2020 (based on the filing date of the CN foreign priority document 202010590434.7, as evidenced by paragraphs 0004-0005 in the English machine translation of CN 113830778 A (the publication version of CN foreign priority document 202010590434.7) which describes the relied upon subject matter of paragraph 0005 in HAN ET AL ‘330).
(E) Applicant argues (in the Response previously filed 11/25/2025) that “The Office Action appears to be of the view that the combination of a polyester and a zeolitic material would have been obvious because both are “known per se.” However, merely because both may be known, does not provide motivation to combine them as claimed.”
However, both SEXTL ‘266 and ASAI-JP ‘551 each individually disclose the combination of a ZSM-5 zeolite and a polyester resin. Regarding SEXTL ‘266, the reference discloses resin compositions containing a ZSM-5 zeolite and a thermoplastic resin (e.g., polyester). While Applicant argues that the absence of specific experimental examples utilizing PBT in SEXTL ‘266 constitutes a complete failure to teach or suggest the use of polyester resin as the resin component in the zeolite-containing resin composition, the teachings of a reference are not limited solely to working Examples in a reference, but encompass the reference as a whole.
MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments [R-07.2022]
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.").
See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Regarding ASAI-JP ‘551, the reference explicitly discloses resin compositions containing a silica / alumina zeolite and a PBT resin. In particular, the working examples 1-2 in ASAI-JP ‘551 utilize both:
(i) a PBT resin identified as “Polycondensate of terephthalic acid and 1,4-butanediol, inherent viscosity (IV) is 0.69, "DURANEX 300FP" manufactured by Wintech Polymer”; and
(ii) “Adsorbent 1: Zeolite (“HSZ-800 891HOA” manufactured by Tosoh Corporation)” as the zeolite material, wherein the HSZ-800 series zeolites produced by TOSOH are identified as ZSM-5 zeolites with the HSZ-800 890 HOA series has a relatively high Si/Al ratio (e.g., about 1500), as evidenced by TOSOH - ZEOLITES (2017).
In the absence of objective evidence that the “HSZ-800 891HOA” zeolite utilized in the working examples 1-2 in ASAI-JP ‘551 is: (i) not a ZSM-5 zeolite; and/or (ii) does not exhibit a relatively high Si/Al ratio similar to HSZ 890 HOA; the Examiner has reason to believe that that ASAI-JP ‘551 discloses the use of zeolites which conform to all of the zeolite limitations in the present claims (with the exception of an explicitly disclosed water absorption value).
(F) Applicant argues (in the Response previously filed 11/25/2025) that “The Office Action fails to articulate why a skilled person would have been motivated to combine the cited references in the specific manner to give the claimed invention. For example, there is no explanation of a problem that needs to be solved in the primary or other references, that would lead one to the present invention, nor any teachings or suggestion in the prior art that would lead to the claimed combination.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). As discussed in detail in the outstanding rejections under 35 U.S.C. 103, ASAI-JP ‘551 discloses the majority of the claimed invention, with the exception of an explicitly disclosed water absorption value (this deficiency being addressed by SEXTL ‘266), while SEXTL ‘266 similarly discloses the majority of the claimed invention, with the exception of an explicit disclosure of PBT resin (this deficiency being addressed by ASAI-JP ‘551). Additionally, ASAI-JP ‘551 and SEXTL ‘266 and TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145 each discuss a substantially similar problem and a technique to address said problem -- i.e., the undesirable emission of organic compounds from resin compositions, and the use of zeolites, (in particular, high Si/Al ratio zeolites with hydrophobic characteristics, in the case of SEXTL ‘266 and TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145), as an useful additive in thermoplastic resins which advantageously absorbs undesirable organic compounds (e.g., odor-generating or offensive-tasting molecules, hydrophobic and/or lipophilic gases, etc.), thereby reducing undesirable emissions from the thermoplastic resin compositions. Therefore, Applicant’s assertions that the Examiner has provided “no explanation of a problem that needs to be solved in the primary or other references” that would lead to a combination of references which renders the claimed invention prima facie obvious is unpersuasive.
Additionally, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited combination of PBT resin and the specified zeolite compound.
(G) Applicant argues (in the Response previously filed 11/25/2025) that “the examples of record demonstrate unexpected results for the claimed invention, rebutting the allegedly established prima facie case of obviousness.” However, while there is some evidence that molding compositions consistent with the present claims provide superior performance with respect to THF outgassing, the showings provided by the Specification are not commensurate in scope with the present claims -- for example, but not limited to:
• the lower limit on the amount of zeolite in the recited molding composition;
• the chemical composition of the zeolite (e.g., when the Y is not silicon and/or titanium; and/or X is not aluminum or boron);
• the physical structure of the zeolite (e.g., when the framework structure is not MFI (Mobile Five) or BEA (Beta);
In particular, with respect to the type of zeolite:
• the majority of the claims allows Y to be any tetravalent element and if present, X to be any trivalent element;
• the working examples do not provide evidence that relied upon unexpectedly superior THF outgassing reduction would be present in Y is Sn, Zr, Ge (as recited in claim 3) or other tetravalent elements (e.g., hafnium, etc.); and/or X is Ga, In (as recited in claim 4) or other trivalent elements (e.g., iron, lanthanum, yttrium, etc.), since the type of X and Y elements present in the zeolite is reasonably expected to materially affect the physical structure of the zeolite (e.g., pore size, pore shape, porosity, surface area, etc.), which in turn would be reasonably expected to affect the adsorption characteristics of the zeolite;
• the working examples do not provide evidence that relied upon unexpected superior THF outgassing reduction would be present in zeolites having framework structures other than MFI or BEA (beta); since the adsorption characteristics of zeolites are significantly affected by the framework structure (which in turn determine the porosity, pore size, and surface area available for adsorption processes), because the physical structure of the zeolite affects the ability of compounds to reach and react with active adsorption sites within the zeolite;
etc.
While Applicant is not required to provide evidence of unexpected results and/or criticality for every possible embodiment encompassed by the present claims, any showings of criticality and/or unexpected results provided by the specification or Applicant should be reasonably representative of the full scope of the claimed invention and/or provide sufficient evidence that can be reasonably extended by one of ordinary skill in the art over the scope of the present claims.
MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
PNG
media_image1.png
18
19
media_image1.png
Greyscale
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
PNG
media_image1.png
18
19
media_image1.png
Greyscale
The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
PNG
media_image1.png
18
19
media_image1.png
Greyscale
II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
PNG
media_image1.png
18
19
media_image1.png
Greyscale
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
In the present instance, the present claims are substantially broader in scope than the showing provided by the working Examples in the Specification, particularly in view of the well-known relationship between zeolite hydrophobicity (as represented by a relatively low water absorption value) and the ability of the zeolite to absorb organic compounds (as discussed in SEXTL ‘266 and TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145).
The Examiner notes that the working Examples in the specification do not adequately describe the chemical composition of many of the zeolites used in said working Examples, so it is difficult to clearly establish the scope of the showings provided by the Specification.
The Examiner further notes that the presence of the value “>1000” in Table 1 with respect to the “SAR (where applicable)” column is confusing and misleading because the presence of any numerical value implies the presence of both silicon and aluminum in the zeolite, while the description of zeolites 1-4, 6-12 of the Examples appears to indicate that silicon and/or aluminum is effectively not present in said zeolites in any amount, thereby rendering the “SAR” value essentially meaningless. Therefore, unless silicon and aluminum are present in zeolites 1-4, 6-12 of the Examples in measurable amounts, the appropriate entry in the “SAR” column in Table 1 should be “n/a” (i.e., not applicable).
(H) Applicant argues (in the Response previously filed 11/25/2025) that “The Office Action mapping of claim elements to these references are respectfully believed to be speculative and unsupported by the art, and only possible using impermissible hindsight reconstruction of the present invention.” In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
(I) Applicant argues (in the Response previously filed 11/25/2025) that that “the cited references do not provide any date, rationale, or disclosure that would allow a skilled artisan to reasonably expect that combining a polyester with the specific zeolitic material claimed would result in any improved properties”. However, as discussed in detail in the outstanding rejections under 35 U.S.C. 103 and Examiner’s response to Applicant’s arguments above, ASAI-JP ‘551 and SEXTL ‘266 and TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145 each discuss the use of zeolites, (in particular, high Si/Al ratio zeolites with hydrophobic characteristics, in the case of SEXTL ‘266 and TAKEUCHI ET AL ‘296 and OHTA ET AL ‘145), as an useful additive in thermoplastic resins which advantageously absorbs undesirable organic compounds (e.g., odor-generating or offensive-tasting molecules, hydrophobic and/or lipophilic gases, etc.), thereby reducing undesirable emissions from the thermoplastic resin compositions. The combination of familiar elements (i.e., silica/alumina zeolites with hydrophobic characteristics, as represented by high Si/Al ratios and relatively low water absorption values; PBT resins) according to known methods (i.e., mixing said hydrophobic silica/alumina zeolites with PBT resin) is likely to be obvious when it does no more than yield predictable results (i.e., a PBT-based molding composition which exhibit reduced emissions of undesirable organic compounds). See KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739 (2007). Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims for the reasons discussed above.
(J) Applicant argues (in the Response previously filed 11/25/2025) that MOELLER ET AL ‘530 “does not suggest that incorporating a zeolitic material with the claimed properties would mitigate this issue” of THF decomposition products in polyester resins. 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).
Additionally, in response to applicant's argument (in the Response previously filed 11/25/2025) that MOELLER ET AL ‘530 fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., the use of the claimed zeolitic material to reduce THF decomposition products; etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited combination of PBT resin and the specified zeolite compound.
Applicant's supplemental arguments filed 01/22/2026 have been fully considered but they are not persuasive.
(K) Applicant argues that “The Advisory Action asserts that the unexpected results demonstrated in the specification are "not commensurate in scope with the present claims," alleging that the examples only cover a narrow range of compositions-namely PBT contents of approximately 96-97 wt% and zeolite levels of 1-2 wt%-and therefore cannot support the broader claim scope. The Office Action further states that there is no objective evidence that the technical effect would persist at lower polymer contents, at zeolite levels outside 1-2 wt%, or with zeolites having Si/Al ratios below 400 or substantially above 1000.” However, while the Advisory Action mailed 12/08/2025 expressed concerns regarding the scope of the asserted showing of unexpected results and/or criticality, the Advisory Action did not assert that the showing of unexpected results (regarding THF outgassing) provided by the specification was strictly limited to “a narrow range of compositions-namely PBT contents of approximately 96-97 wt% and zeolite levels of 1-2 wt%”.
(L) Applicant argues that “the examples do not merely support a narrow species-they validate the principle that governs performance across the entire claimed range of 0.1-10 wt% zeolite” and further argues that “These results, achieved at zeolite levels as low as 1 wt%, establish a robust performance baseline. Even at 0.1 wt% zeolite, the effect remains credible…”
While Applicant’s arguments regarding the recited upper limit on zeolite content (i.e., 10 wt%) and the recited lower limit on PBT content may be persuasive, Applicant’s arguments with respect to the recited lower limit (i.e., 0.1 wt%) of zeolite are not persuasive. Applicant has not provided objective evidence that the relied upon unexpectedly superior reduction in THF outgassing associated with the recited zeolite would be present at very low concentrations (i.e., as low as 0.2 wt% or 0.1 wt%), since it is reasonable to assume that a certain critical minimum threshold of zeolite content is required to provide sufficient adsorption capacity to produce the relied upon unexpectedly superior reduction in THF outgassing -- i.e., there is no objective evidence that the relied upon unexpectedly superior reduction in THF outgassing exhibited at 1 wt% can be reasonably extrapolated down to substantially lower zeolite concentrations of 0.5 or 0.3 or 0.2 wt% or 0.1 wt%.
(M) Applicant fails to address the Examiner’s concerns regarding the scope of the showing with respect to the type of zeolite -- in particular, the chemical composition and physical structure of the zeolite. Both MFI and BEA (Beta) zeolites are generally characterized by ring sizes of 10-12 T-atoms, and (2) pore sizes of about 5-6 angstroms. Since the adsorption characteristics of a zeolite are strongly affected by the framework structure of the zeolite -- i.e., the framework structure determines the pore size, porosity, surface area, and other physical structure parameters of the zeolite, which in turn affects the ability of a target chemical compound to reach an active adsorption site in the zeolite and/or the adsorption capacity for a target chemical compound -- it is unclear whether the relied upon unexpectedly superior reduction in THF outgassing would be present with zeolites having materially different physical structures (e.g., containing a substantial percentage of pores which are smaller or larger than 5-6 angstroms; containing a substantial percentage of 6-8 member rings; etc.), since adsorption is affected by the ability of a target chemical compound to reach an active adsorption site, which can be negatively affected if the pore is too large (resulting in insufficient contact with surfaces with active adsorption sites) or too small (resulting in an inability to reach the active site) relative to the target chemical compound to be adsorbed. Applicant has not provided evidence that the relied upon unexpectedly superior reduction in THF outgassing would be present using zeolites with frameworks structures other than MFI or BEA (beta).
(N) Applicant argues (in the supplemental arguments filed 01/22/2026) that “The claimed subject matter is non-obvious over the cited combination of Sextl et al. (US 2002/0032266), Asai et al. (JP 2013-023551), and secondary references (Tosoh, Takeuchi, Ohta, Moeller, Han, Kubů) for several reasons. None of these references, individually or in combination, teaches or suggests the specific combination of features now claimed:…” Applicant’s arguments regarding the alleged failure of the relied upon combination of references to teach or disclose the claimed invention (including Applicant’s allegations of “impermissible hindsight”) have been exhaustively discussed in the Examiner’s Response to Arguments previously filed on 11/25/2025 -- see sections (B)-(F) above.
Since Applicant has not presented any substantive new arguments directed to the relied upon combination of references and the prima facie case of obviousness in the rejections under 35 U.S.C. 103 in the present Office Action, Applicant’s arguments regarding the alleged failure of the relied upon combination of references to teach or disclose the claimed invention (including Applicant’s allegations of “impermissible hindsight”) remain unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
March 21, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787