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 .
Status of Claims
Claims 1-4 are pending in the current application.
Claim Rejections - 35 USC § 102 / 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hibara et al. (JP 2016079228 A, herein English machine translation utilized for all citations).
Regarding Claim 1, Hibara teaches a thermoplastic polyester elastomer resin composition comprising a thermoplastic polyester-based elastomer (A) and a silicone modified (meth)acrylic polymer (B) for use to form a molded product, where the thermoplastic polyester-based elastomer (A) contains a hard segment and a soft segment bonded to each other (Hibara, Abstract, Pgs 1, 11-12). Hibara teaches the hard segment comprises an aromatic polyester block formed from an aromatic dicarboxylic acid (such as terephthalic acid or naphthalene dicarboxylic acid) and an aliphatic diol (such as ethylene glycol or 1,4-cyclohexanedimethanol); and the soft segment comprises an aliphatic polyether block (Hibara, Pg 2). Although Hibara does not explicitly disclose the silicone modified (meth)acrylic polymer (B) having an average dispersion area of 0.3 μm2 or less dispersed within the thermoplastic polyester-based elastomer (A), Hibara teaches the thermoplastic polyester-based elastomer (A) has a ratio of the hard to soft segments of 30/70 to 50/50; the soft segment has an average molecular weight of 400-6000; the thermoplastic polyester-based elastomer (A) content is 50 mass% or more of the composition; the silicone modified (meth)acrylic polymer (B) includes copolymers with tradenames of KP578, KP561P, and/or KP562P; the silicone modified (meth)acrylic polymer (B) has a melting/softening point of about 100oC; the silicone modified (meth)acrylic polymer (B) has an average particle diameter of 30-70 μm; the silicone modified (meth)acrylic polymer (B) content is 1.5 to 20 parts by mass with respect to 100 parts by mass of the thermoplastic elastomer; the silicone modified (meth)acrylic polymer (B) has excellent affinity with the soft segment of the polyester-based elastomer; the silicone modified (meth)acrylic polymer (B) does not cause any adverse effects on moldability; and the thermoplastic polyester elastomer resin composition can be formed into a molded product by injection molding (Hibara, Pgs 2-4, 11). Hibara discloses a thermoplastic polyester elastomer resin composition that appears substantially identical to the claimed invention (Specification as originally filed, [0009]-[0031]). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, I & II. In view of the foregoing, one of ordinary skill in the art would readily understand that Hibara’s thermoplastic polyester elastomer resin composition is necessarily capable of forming a matrix having silicone modified (meth)acrylic polymer (B) having an average dispersion area of 0.3 μm2 or less when injection molded into a product, or would at least render obvious the claimed dispersion area where any differences would be minor and obvious (MPEP 2143, MPEP 2112.01).
Regarding Claim 2, Hibara teaches the silicone modified (meth)acrylic polymer (B) is a graft copolymer having a main skeleton of silicone and a side-chain of (meth)acrylic polymerizable reactive groups (Hibara, Pg 3).
Regarding Claim 3, Hibara teaches the silicone modified (meth)acrylic polymer (B) includes copolymers with tradenames of KP578, KP561P, and/or KP562P, and preferably has a melting/softening point of about 100-200oC (Hibara, Pgs 3-4). Although Hibara does not explicitly disclose the silicone modified (meth)acrylic polymer (B) has a weight loss percentage at 250oC of 3.3% or more, Hibara discloses a silicone modified (meth)acrylic polymer (B) that appears substantially identical to the claimed invention (Specification as originally filed, [0026]-[0029]). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, I & II. In view of the foregoing, one of ordinary skill in the art would readily understand that Hibara’s silicone modified (meth)acrylic polymer (B) necessarily exhibits a weight loss percentage at 250oC of 3.3% or more, or would at least render obvious the claimed dispersion area where any differences would be minor and obvious (MPEP 2143, MPEP 2112.01).
Regarding Claim 4, Hibara teaches a molded product formed from the thermoplastic polyester elastomer resin composition as discussed above for claim 1 (Hibara, Abstract, Pgs 1, 11-12).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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