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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 15, 2026 has been entered.
Claims 1-20 are pending as amended on March 31, 2026. Support for amended claim 1 is found on pages 11-14 of the specification.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Response to Arguments
Applicant's arguments filed March 31, 2026 have been fully considered but they are not persuasive.
Applicant argues (page 8) that Miyama (US 2006/0287441 A1) requires moisture but that amended claim 1 does not allow for the addition of water. Claim 1 has been amended to use a closed transitional phrase in line 1 and limit the additives to those selected from the group consisting of elastomeric polymers, impact modifiers, elastomers, rubbers, fibrous fillers, particulate fillers, plasticizers, processing aids, stabilizers, oxidation retarders, agents to counteract thermal degradation and ultraviolet light degradation, glidants, mold release agent, nucleating agents, aluminum oxide, silicone dioxide, nylon 22, and colorants. Applicant points to page 10-14 of the specification where these additives are described. It is noted that the feature upon which applicant relies (i.e., that the additive cannot include water) is 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). While the examiner agrees that moisture does not reasonably read on some of the recited additives (e.g. elastomeric polymers, rubbers, aluminum oxide, silicone dioxide, nylon 22), the broadest reasonable interpretation of other additives (e.g. processing aids) encompasses moisture. As evidence of this position, Bauer (US 20190225773 A1) includes water in a list of processing aids (Bauer, [0119]). The examiner also notes that the instant specification states that recycled polyester should be dried to have a residual moisture content of <0.2% (page 4, lines 40-44), suggesting that residual moisture in the polyester component is not excluded by the consisting of language. Miyama teaches 0.01-16.7% moisture (0.01 to 20 parts by weight based on 100 parts by weight of other components, Miyama, [0056]). A residual moisture content at the lower end of this range (e.g. 0.01%) does not appear to be excluded by the current closed language because the instant application specifies that the polyester component can comprise residual moisture.
Applicant argues (page 8) that the claimed compositions with 10-25 wt% ionomer demonstrate unexpected results. Applicant points to the table on page 18 of the specification. This table reports the melt strength for seven compositions. The evidence pointed to by Applicant does not demonstrate the alleged unexpected result in a manner that is commensurate in scope with the claimed invention. MPEP 716.02(b) states that appellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). Applicant has not sufficiently explained the data provided on page 18 of the specification because Applicant has not described how the melt strength is unexpected or compared it to the closest prior art. In particular, Applicant has not demonstrated the criticality of the upper end of the ionomer content range. The highest ionomer content considered is 20 wt% (examples 2-4). No examples at or above the upper limit of 25 wt% are reported. Additionally, evidence of nonobviousness must be commensurate in scope with the claims for which the evidence is offered to support. See MPEP 716.02(d). Applicant’s instant claim 1 differs from Examples 1-4 because Examples 1-4 comprise polybutylene terephthalate, but claim 1 does not require this specific polyester. Examples 1-4 further comprise a single ionomer under the tradename Surlyn 1707, but claim 1 permits other ionomers. Furthermore, none of the additional additives in claim 1 are present in Examples 1-4 and Examples 1-4 demonstrate narrower polyester, HDPE, and ionomer content ranges. If Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species encompassed by the present claims.
Applicant argues (page 9) that the provisional double patenting rejection over co-pending application 18/711,143 should be removed once the rejections are overcome because the instant application has an earlier filing date. The provisional double patenting rejection is maintained because the double patenting rejection is not the only rejection remaining. See MPEP 804, I. B. 1. (b).
Claim Objections
Claim 1 is objected to because of the following informalities:
The Markush group of additives in claim 1 contains both “elastomeric polymers” and “elastomers” (fifth to last line of claim 1). For the utmost clarity, it is suggested that one of these additives be deleted because they are not distinct alternatives.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miyama (US 2006/0287441 A1, cite No. 1 on 11/05/2025 IDS) in view of Yoshifumi (US 4,772,652) and evidenced by Bauer (US 20190225773 A1).
Regarding claims 1-4, 6-9, 14-17, and 19-20, Miyama teaches a resin composition containing a polyester resin, a polyolefin resin, a compatibilizer, and moisture ([0012]). Based on the total weight of the polyester resin, polyolefin resin, and compatibilizer, the resin composition comprises 50-95 wt.% polyester resin, 10-50 wt.% polyolefin resin, and 0.5-15 wt.% compatibilizer ([0048-0050]). The polyolefin resins preferred by Miyama include high density polyethylene ([0027]). The compatibilizers taught by Miyama include ionomer resins ([0035]). Moisture is included in the composition in an amount of 0.01-20, preferably 0.05-1, parts by weight based on the total weight of all components except the moisture ([0056]). This converts to about 0.05-6.5 wt.% moisture (7/(100+7)=0.065) and 93.5-99.95 wt.% of the polyester resin, HD polyethylene, and ionomer. The resin composition of Miyama reads on a thermoplastic mixture comprising A) about 93.5-99.95 wt.% of a thermoplastic blend (A) consisting of 50-95 wt.% polyester, 10-50 wt.% HD polyethylene, and 0.5-15 wt.% ionomer, and (B) about 0-6.5 wt.% of further additives (moisture). This mixture comprises no polymers other than the polyester, HD polyethylene, and ionomer, satisfying claim 16 (see also examples 1-8 in Table 1 that comprise no additional polymers).
Miyama does not anticipate the claimed content of: polyester, HD polyethylene, and ionomer. However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have used any thermoplastic blend consisting of 50-95 wt.% polyester, 10-50 wt.% HD polyethylene, and 0.5-15 wt.% ionomer because Miyama teaches these ranges. These ranges overlap with the claimed ranges of 55-75 wt.% polyester, 5-25 wt.% HD polyethylene, and 10-25 wt.% ionomer (claim 1). These ranges also overlap with the ranges of 60-70 wt.% polyester and 10-20 wt.% ionomer recited in claim 4, 15-25 wt.% HD polyethylene recited in claim 14, 20-25 wt.% HD polyethylene recited in claim 15, and 60-75 wt.% polyester, 5-20 wt.% HD polyethylene, and 10-20 wt.% ionomer recited in claim 17. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
As the ionomer, Miyama teaches that ethylene-acrylic acid copolymer ionomers (claims 19-20) are preferable ([0035]). Acrylic acid (claim 7) as the functional monomer reads on an ethylenically unsaturated monocarboxylic acid (claim 6) and a proportion of 100% by weight of carboxylic acids in the functional monomers (claim 1). Miyama further teaches metal ions including sodium or potassium ([0035]) (claim 3).
Miyama is silent as to the relative amounts of ethylene and acrylic acid derivatives in the ethylene-acrylic acid copolymer and the degree of neutralization.
However, Yoshifumi teaches suitable ranges for the relative amounts of ethylene and acrylic acid derivatives and the degree of neutralization for ethylene-acrylic acid copolymer ionomers. Yoshifumi teaches polyester resin compositions with excellent toughness, impact strength, and moldability (Yoshifumi, abstract). Like Miyama, Yoshifumi teaches ionomers based on ethylene and acrylic acid (Yoshifumi, col. 11, lines 28-30) and metal ions such as sodium and potassium (Yoshifumi, col. 10, lines 64-66). Yoshifumi further teaches that the carboxylic acid unit should account for 1-30 mol%, preferably 2-10 mol%, of the total copolymer and that below this range the impact strength of the polyester is not improved as much as desired while above this range the ionomer cannot be easily blended with the polyester (Yoshifumi, col. 11, lines 33-43). In addition, Yoshifumi teaches that at least 20 mol%, preferably 60% or more, of the carboxyl groups in the ionomer should be neutralized by the metal ions in order to improve impact resistance (Yoshifumi, col. 11, lines 43-51).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have substituted the unspecified carboxylic acid content and degree of neutralization of Miyama for the 2-10 mol% carboxylic acid content and 60 mol% or more neutralization of Yoshifumi. One would have been motivated to make this substitution in order to improve impact strength and resistance while ensuring that the ionomer that is easy to blend with the polyester.
An ethylene-acrylic acid ionomer with 2-10 mol% carboxylic acid (acrylic acid) corresponds to an ionomer comprising a copolymer of 78-95 wt.% ethylene (ethylene MW=28 g/mol and acrylic acid MW=72 g/mol, 0.98*28/(0.02*72+0.98*28)= 0.95 and 0.9*28/(0.1*72+0.9*28)=0.777); 0 wt.% of one or more compounds selected from 1-octene, 1-butene, and propylene; and 5-22 wt.% acrylic acid (100-78=22 and 100-95=5) (claims 1 and 8). A degree of neutralization of 60 mol% or more with sodium or potassium ions reads on the hydrogen of the carboxyl groups of the carboxylic acids is replaced by a sodium or potassium ion in a proportion of at least 60 mol% of the total number of carboxyl groups (claims 1-2). A range of 78-95 wt.% ethylene overlaps with the claimed range of 50-90 wt.% recited in claim 9. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Miyama’s composition comprises 0.05-6.5% moisture. While Miyama does not explicitly teach that moisture is a processing aid, water is known as a processing aid, as evidenced by Bauer. Bauer includes water in a list of processing aids (Bauer, [0119]). Moisture therefore reads on the claimed processing aid in an amount of 0.05-6.5 wt%.
Regarding claim 10, modified Miyama teaches the thermoplastic mixture of claim 1 and further teaches that the composition may be molded ([0065]). A product produced by molding reads on a molding produced from the mixture of claim 1.
Regarding claims 11-12, modified Miyama teaches the thermoplastic mixture of claim 1. Miyama further teaches that the resin can be used in construction materials, agricultural materials, construction materials, packaging materials, distribution materials, and conductive materials, but does not provide examples of specific articles.
However, Yoshifumi provides examples of articles in which a polyester and ionomer resin is useful. Yoshifumi teaches tubes and pipes and further teaches that articles can be processed into final products by blow molding (Yoshifumi, col. 12, lines 52-66). Tubes and pipes are examples of construction and distribution articles and read on hollow bodies.
Based on the disclosure of Yoshifumi, compositions of ionomers and polyesters were known to be useful in pipes and tubing and amenable to blow molding prior to the effective filing date. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have processed the mixture of Miyama into a tube or pipe as suggested by Yoshifumi in order to carry out the intended use as a construction or distribution material. It would further have been obvious to utilize any known method of preparing the pipes and tubing, including the blow molding suggested by Yoshifumi.
Regarding claims 13 and 18, modified Miyama teaches the thermoplastic mixture of claims 1 and 17. Miyama further teaches wherein the polyester is polybutylene terephthalate ([0021]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Miyama (US 2006/0287441 A1, cite No. 1 on 11/05/2025 IDS) in view of Yoshifumi (US 4,772,652) and evidenced by Bauer (US 20190225773 A1) as applied to claim 1 above, and further in view of Aoyama (US 6,365,659 B1, cited with 12/05/2025 Office action).
Modified Miyama teaches the thermoplastic mixture according to claim 1.
Miyama is silent as to the carboxyl end group content of component A.
However, Aoyama teaches that the quantity of carboxyl end groups is preferably 30-45 equivalents/ton for good throughput and hydrolysis resistance (Aoyama, col. 7, lines 48-53). Like Miyama, Aoyama teaches resin compositions that are useful in packaging (Aoyama, col. 1, line 9; Miyama, [0069]) and aims to reduce hydrolyzation of the polyester resin (hydrolysis resistance, Aoyama, col. 7, lines 50-51; suppressing the hydrolyzation of the polyester resin, Miyama, [0016]). A range of 30-45 equivalents/ton converts to 33-49 mmol/kg polyester (1 ton = 907 kg). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the unspecified carboxyl end group content of Miyama with a carboxyl end group in the range of 33-49 mmol/kg of polyester as taught by Aoyama in order to achieve a composition with good throughput and hydrolysis resistance.
Double Patenting
Claims 1-12 and 14-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9, and 13-15 of copending Application No. 18/711,143 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious over the reference claims.
Regarding claims 1, 4, and 14-17, reference claim 1 teaches a thermoplastic mixture comprising: A) 30% to 100% by weight of a thermoplastic blend consisting of: A-1) 65% to 75% by weight of a polyester, A-2) 5% to 25% by weight of an HD polyethylene, and A-3) 3% to 10% by weight of an ionomer and B) 0 to 70% by weight of further additives. The ionomer of reference claim 1 (A-3) (ref claim 1, lines 7-24) is the same as instant claim 1 (claim 1, lines 6-17).
A range of 65-75% by weight of A-1 overlaps with the claimed ranges of 60-70% (claim 4) and 60% to 75% (claim 17). A range of 5% to 25% by weight of A-2 overlaps with the claimed ranges of 15% to 25% (claim 14), 20% to 25% (claim 15), and 5% to 20% (claim 17). A range of 3% to 10% by weight of A-3 overlaps with the claimed ranges of 10 to 25% (claim 1) and 10 to 20% (claim 4 and claim 17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
While reference claim 1 does not limit the additive to those recited in claim 1, reference claim 1 teaches a content of 0-70% by weight of further additives. It would therefore be obvious to one of ordinary skill prepare a composition with 0% additives, reading on claim 1 and claim 16.
Reference claims 2, 3, 5, 6, 7, 8, 9, 13, 14, and 15 recite the same limitations as claims 2, 3, 5, 6, 7, 8, 9, 10, 11, and 12, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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