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 .
Applicant’s election without traverse of Invention I in the reply filed on May 2, 2026 is acknowledged.
Claims 9-14 are cancelled due to Applicant’s cancellation filed May 2, 2026.
Claims 1-8 and 15-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 and 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The recitation of “a thermoplastic resin having a hardness of 80 shore A” in claim 1 and 15, “a first thermoplastic polyurethane resin having a relatively low hardness” and “ a second thermoplastic resin having a relatively high hardness” in claim 3 and 17, and “a hardness of the first thermoplastic polyurethane resin and a hardness of the second thermoplastic polyurethane resin are 66 Shore A and 71 Shore A, respectively” in claim 4 and 18 causes confusion. It is unclear how the hardness of the thermoplastic resins are measured.
The term “relatively low” and “relatively high” in claim 3 and 17 is a relative term which renders the claim indefinite. The term “relatively low” and “relatively high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether the hardness of the first thermoplastic polyurethane resin is relatively low compared to the second thermoplastic polyurethane resin or relatively low to compared to all resins. Therefore, the hardness of the first and second thermoplastic polyurethane is rendered indefinite.
Claims 2, 6, 7, 16, and 19-20 are rejected for being dependent on claims 1 and 15.
Claim Interpretation
The term “high specific gravity” of claim 1, 3, 4, 7, 8, 15, is interpreted as having a specific gravity of 3.5 to 5.6 in view of instant specification [0088].
Claim Analysis
Summary of Claim 1:
A resin composition for a strap of a wearable electronic device, the resin composition comprising:
50 to 80 percent by weight of a thermoplastic resin having a hardness of 80 Shore A or less,
and 20 to 50 percent by weight of a high specific-gravity inorganic compound,
wherein the resin composition has a specific gravity of 1.6 or more, a hardness of 50 to 80 Shore A, a tensile strength of 15 to 27 MPa, and a tear strength of 53 to 79 kgf/cm.
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 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (“Rheology and Processing of BaSO4-filled Medical-Grade Thermoplastic Polyurethane” as listed on IDS dated July 11, 2023) in view of Yang et al. (CN 103333484).
The examiner refers to the English translation of Yang et al. provided in this Office Action.
Regarding claim 1, Lu et al. disclose a composition comprising thermoplastic polyurethane and 20 vol% or 50 wt% of BaSO4 (page 1944-1946), thereby lying within the claimed ranges of thermoplastic resin and high specific gravity inorganic compound. BaSO4 is known to have a density of 4.49 g/cm3, equivalent to a specific gravity of 4.49 and thereby reading on a high specific gravity inorganic compound as recited in the instant claim as defined above.
Lu et al. is silent on the thermoplastic polyurethane having a shore A hardness as recited in the instant claim.
Yang et al. teach a medical grade thermoplastic polyurethane having a Shore A hardness between 75 and 95 (claim 1), thereby lying within the claimed range. Yang et al. offer the motivation that the thermoplastic polyurethane is used for medical catheters and provides good biocompatibility [0016]. Lu et al. is also concerned with medical devices (page 1941). Therefore, it would have been obvious to use the thermoplastic polyurethane of Yang et al. with the composition of Lu et al. since both are concerned with medical devices.
Lu et al. and Yang et al. are silent on the resin composition having a specific gravity, Shore A hardness, tensile strength, and tear strength as recited in the in claim.
However, Lu et al. in view of Yang et al. teach a substantially identical composition. In view of the substantially identical resin composition of Lu et al. in view of Yang et al., the resin composition of Lu et al. in view of Yang et al. will possess the claimed properties because specific gravity, Shore A hardness, tensile strength, and tear strength are inherent properties. 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 examiner interprets the phrase “for a strap of a wearable electronic device” in claim 1 reciting the purpose or intended use of the claimed resin composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. (MPEP 2111.02(11) (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161,1165 (Fed. Cir. 1999) and Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation")).)
Regarding claim 2, Lu et al. teach the thermoplastic polyurethane comprises no plasticizer, thereby reading on the instant claim.
Regarding claim 3, Lu et al. do not teach the non-plasticizer thermoplastic polyurethane resin comprises a first and second thermoplastic polyurethane resin as recited in the instant claim.
Yang et al. teach the thermoplastic polyurethane is a mixture of a thermoplastic polyurethane with a Shore D hardness between 65 and 78 and a thermoplastic polyurethane with a Shore A hardness between 75 and 95 (claim 1). Shore D hardness is generally used for harder polymers. Therefore, Yang et al. teach a first thermoplastic polyurethane with a Shore A hardness between 75 and 95 thermoplastic polyurethane resin having a relatively low hardness and a second thermoplastic polyurethane having a relatively high hardness as recited in the instant claim. Yang et al. offer the motivation that the thermoplastic polyurethane is used for medical catheters and provides good biocompatibility [0016]. Lu et al. is also concerned with medical devices (page 1941). Therefore, it would have been obvious to use the thermoplastic polyurethane of Yang et al. with the composition of Lu et al. since both are concerned with medical devices.
Regarding claim 5 and 6, Lu et al. is silent on the mixing ratios of the first and second thermoplastic polyurethane resin as recited in the instant claim.
Yang et al. teach the first thermoplastic polyurethane accounts for 10-45 wt% of the total composition weight and the second thermoplastic polyurethane accounts for 55-90 wt% of the total composition weight, equivalent to a mixing ratio of 9:11 to 1:9 and thereby overlapping the claimed ranges of instant claim 5 and 6. Yang et al. offer the motivation that the thermoplastic polyurethane is used for medical catheters and provides good biocompatibility [0016]. Lu et al. is also concerned with medical devices (page 1941). Therefore, it would have been obvious to use the thermoplastic polyurethane of Yang et al. with the composition of Lu et al. since both are concerned with medical devices.
Regarding claim 7, Lu et al. disclose the high specific-gravity inorganic compound is barium sulfate (page 1944-1946), thereby reading on the instant claim.
Allowable Subject Matter
Claims 4 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 15-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C.(pre-AIA ), 2nd paragraph, set forth in this Office Action.
Claim 4, 8, and 15-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 4 and 8 are allowed over the closest prior art, Lu et al. (“Rheology and Processing of BaSO4-filled Medical-Grade Thermoplastic Polyurethane”.
Lu et al. discloses a resin composition comprising thermoplastic polyurethane and 20 vol% or 50 wt% of BaSO4 (abstract, page 1944-1946).
Lu et al. do not teach or fairly suggest a resin composition comprising the specific combination of a first thermoplastic polyurethane resin having a specific hardness of 66 Shore A and a second thermoplastic polyurethane resin having a hardness of 71 shore A in the specific weight ratios between the first and second thermoplastic polyurethane resin and between the thermoplastic resin and high specific-gravity inorganic compound as recited in the instant claims.
Claims 15-20 are allowed over the closest prior art, Lu et al. (“Rheology and Processing of BaSO4-filled Medical-Grade Thermoplastic Polyurethane”).
Lu et al. discloses a resin composition comprising thermoplastic polyurethane and 20 vol% or 50 wt% of BaSO4 (abstract, page 1944-1946).
Lu et al. do not teach or fairly suggest a wearable electronic device including a fastening member wherein the fastening member comprises the specific resin composition comprising the specific combination of a thermoplastic resin having a specific Shore A hardness, and a high specific gravity inorganic compound in the recited amounts, wherein the specific resin composition has a specific gravity, hardness, tensile strength, and tear strength as recited in the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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