DETAILED ACTION
Applicant’s response filed on 04/03/2026 has been fully considered. Claims 1-6 are pending. Claims 4 and 5 are amended.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP 2003-313308 A, machine translation in English used for citation) in view of Griebel et al. (WO 2021/021273 A1).
Regarding claim 1, Takahashi teaches a polyester elastomer composition that is obtained by blending and melt-kneading a polyester elastomer [0004], where in the polyester elastomer composition, in examples, the Z-average molecular weight (Mz) [0006] is 2.61 × 105, 1.09 × 106, or 1.52 × 106 ([0029], [Table 1], Examples 2, 3, 4), and the JIS-D hardness [0024] that is hardness (durometer type D) in accordance with JIS K6253 [0028] is 32, 32, or 33 ([0029], [Table 1], Examples 2, 3, 4), which reads on a thermoplastic polyester resin composition containing a polyester resin component containing a polyester elastomer (a), wherein the thermoplastic polyester resin composition has a z-average molecular weight Mz of 261000, 1090000, or 1520000 and a Shore D hardness of 32 or 33. Takahashi teaches that the hardness (durometer type D) according to JIS K6253 of the polyester elastomer composition is preferably 10 or more [0007], that when the hardness is less than 10, heat resistance and oil resistance are lowered [0007], that the upper limit of the hardness is preferably 80 or less [0007], and that if it exceeds 80, the rubber elasticity is lowered [0007], which suggests modifying the hardness (durometer type D) according to JIS K6253 of Takahashi’s polyester elastomer composition in Takahashi’s examples to be 10 to 80, which would read on wherein the thermoplastic polyester resin composition has a Shore D hardness of 10 to 80. Takahashi teaches that the polyester elastomer composition is obtained by further blending and melt-kneading a crosslinking aid [0004], that the blending ratio of the respective components at the time of melt-kneading is usually 0.01 to 10 parts by weight of the crosslinking aid per 100 parts by weight of the polyester elastomer [0016], that the crosslinking aid is optionally glycidyl methacrylate [0015], and that in examples, the amount of the crosslinking aid [0025] is 0.2, 0.6, or 0.2 parts by weight per 100 parts by weight of the polyester elastomer ([0029], [Table 1], Examples 2, 3, 4), which optionally reads on the thermoplastic polyester resin composition containing, relative to 100 parts by mass of the polyester resin component containing a polyester elastomer (a), 0.01 to 10 parts by mass of a compound (b) having one epoxy group.
Takahashi does not teach that thermoplastic resin composition contains, relative to 100 parts by mass of the polyester resin component containing a polyester elastomer (a), 0.2 to 1.0 part by mass of a compound (b) having two epoxy groups. However, Griebel teaches a delayed crosslinking agent that is a poly-epoxide compound that is selected from glycidyl epoxy resins that are glycidyl ether of bisphenol A [0034], wherein the delayed crosslinking agent is present in a polymeric blend further comprising a thermoplastic polyester elastomer [0004], wherein the crosslinking agent is used in an amount of about 0.5 to about 5% by weight, based upon the total weight of the thermoplastic polyester elastomer and a high temperature thermoplastic polymer [0014], wherein the thermoplastic polyester elastomer has a Shore D hardness of 20-70 [0021]. Takahashi and Griebel are analogous art because both references are in the same field of endeavor of a thermoplastic polyester resin composition comprising a polyester resin component containing a polyester elastomer. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A to substitute for a fraction of Takahashi’s crosslinking aid, and to optimize the amount of Griebel’s delayed crosslinking agent to be from 0.2 to 1.0 part by weight per 100 part by weight of Takahashi’s polyester elastomer. The proposed modification would read on the thermoplastic resin composition containing, relative to 100 parts by mass of the polyester resin component containing a polyester elastomer (a), 0.2 to 1.0 part by mass of a compound (b) having two epoxy groups as claimed. One of ordinary skill in the art would have been motivated to do so because Griebel teaches that the delayed crosslinking agent that is glycidyl ether of bisphenol A is beneficial for being useful as a delayed crosslinking agent [0034] in a polymeric blend further comprising a thermoplastic polyester elastomer [0004], that use of the delayed crosslinking agent provides the benefit of delaying crosslinking of the blend until after the blend has been molded thereby creating an article having performance advantages over a thermoplastic article [0031], and that the crosslinking agent is useful in an amount of about 0.5 to about 5% by weight, based upon the total weight of the thermoplastic polyester elastomer and a high temperature thermoplastic polymer [0014], which would have been desirable for Takahashi’s polyester elastomer composition because Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading a polyester elastomer and a crosslinking aid [0004], that the blending ratio of the respective components at the time of melt-kneading is usually 0.01 to 10 parts by weight of the crosslinking aid per 100 parts by weight of the polyester elastomer [0016], that when the blending amount of the crosslinking aid is less than 0.01 parts by weight, the mechanical strength tends to decrease [0017], that if the amount exceeds 10 parts by weight, the effect of improving the mechanical strength reaches a plateau, and in addition, problems such as deterioration of the appearance of a molded article made of the composition occur [0017], that the polyester elastomer composition can be subjected to various thermoplastic resin methods such as a (co) extrusion method [0021], that the crosslinking aid is optionally glycidyl methacrylate [0015], and that in examples, the amount of the crosslinking aid [0025] is 0.2, 0.6, or 0.2 parts by weight per 100 parts by weight of the polyester elastomer ([0029], [Table 1], Examples 2, 3, 4), which means that the amount of Griebel’s delayed crosslinking agent in part by weight per 100 part by weight of Takahashi’s polyester elastomer would have affected the mechanical strength of Takahashi’s polyester elastomer composition and the appearance of a molded article made of Takahashi’s polyester elastomer composition, which means that optimizing the amount of Griebel’s delayed crosslinking agent in part by weight per 100 part by weight of Takahashi’s polyester elastomer would have been beneficial for optimizing the mechanical strength of Takahashi’s polyester elastomer composition and the appearance of a molded article made of Takahashi’s polyester elastomer composition.
Takahashi does not teach a specific embodiment wherein the thermoplastic polyester resin composition has a Shore D hardness of 60 to 85. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the hardness (durometer type D) according to JIS K6253 of Takahashi’s polyester elastomer composition to be 60 to 80. The proposed modification would read on wherein the thermoplastic polyester resin composition has a Shore D hardness of 60 to 80 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing heat resistance, oil resistance, and rubber elasticity of Takahashi’s polyester elastomer composition because Takahashi teaches that in the polyester elastomer composition, in examples, the JIS-D hardness [0024] that is hardness (durometer type D) in accordance with JIS K6253 [0028] is 32, 32, or 33 ([0029], [Table 1], Examples 2, 3, 4), that the hardness (durometer type D) according to JIS K6253 of the polyester elastomer composition is preferably 10 or more [0007], that when the hardness is less than 10, heat resistance and oil resistance are lowered [0007], that the upper limit of the hardness is preferably 80 or less [0007], and that if it exceeds 80, the rubber elasticity is lowered [0007].
Regarding claim 2, Takahashi teaches that the polyester elastomer is a polyether ester block copolymer containing, as main constituent components, a hard segment mainly composed of an aromatic polyester and a soft segment mainly composed of an aliphatic polyether [0007], that the polyether ester block copolymer can be obtained by using an aliphatic or alicyclic diol having 2 to 12 carbon atoms, an aromatic dicarboxylic acid, and an aliphatic polyether as raw materials, forming an oligomer by an esterification reaction or a transesterification reaction, and then polycondensing the oligomer [0008], that as the aliphatic polyether, a poly (alkylene ether) glycol can be used [0010], and that the content of the aliphatic polyether component in the polyester elastomer is usually from 10 to 80% by weight [0012], which reads on wherein the polyester elastomer (a) is a block copolymer containing a hard segment and a soft segment bonded to each other, wherein the hard segment contains polyester that contains as constituent components an aromatic dicarboxylic acid component and aliphatic and/or alicyclic diol component, wherein the soft segment contains as a constituent component a polyalkylene glycol component, and wherein a content of the polyalkylene glycol component in the polyester resin component is 10 to 80 mass%.
Takahashi does not teach with sufficient specificity that a content of the polyalkylene glycol component in the polyester resin component is 1 to 24 mass%. Before the effective filing of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the content of Takahashi’s aliphatic polyether component to be from 10 to 24% by weight. The proposed modification would read on wherein a content of the polyalkylene glycol component in the polyester resin component is 10 to 24 mass% as claimed. One of ordinary skill in the art would have been motivated to do so because it would been beneficial for optimizing heat resistance and oil resistance of Takahashi’s polyester elastomer composition because Takahashi that the content of the aliphatic polyether component in the polyester elastomer is usually from 10 to 80% by weight [0012], that if the content of the aliphatic polyether component is less than 10% by weight, the resulting polyester elastomer composition tends to be inferior in heat resistance and oil resistance [0012], and that if it exceeds 80% by weight, it tends to be difficult to develop the desired physical properties even by melt-kneading [0012].
Regarding claim 3, Takahashi teaches that the polyester elastomer composition is obtained by further blending and melt-kneading a radical generator [0004], and that the blending ratio of the respective components at the time of melt-kneading is usually 0.01 to 10 parts by weight of the radical generator per 100 parts by weight of the polyester elastomer [0016], which reads on wherein the thermoplastic polyester resin composition further contains 0.01 to 10 parts by mass of a reaction promoter (c) relative to 100 parts by mass of the polyester resin component.
Takahashi does not teach with sufficient specificity that the thermoplastic polyester resin composition further contains 0.05 to 0.5 parts by mass of a reaction promoter (c) relative to 100 parts by mass of the polyester resin component. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the blending ratio of Takahashi’s radical generator to be from 0.05 to 0.5 part by weight per 100 parts by weight of Takahashi’s polyester elastomer. The proposed modification would read on wherein the thermoplastic polyester resin composition further contains 0.05 to 0.5 parts by mass of a reaction promoter (c) relative to 100 parts by mass of the polyester resin component as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing fluidity and mechanical strength of Takahashi’s polyester elastomer composition because Takahashi teaches that the polyester elastomer composition is obtained by further blending and melt-kneading a radical generator [0004], that the blending ratio of the respective components at the time of melt-kneading is usually 0.01 to 10 parts by weight of the radical generator per 100 parts by weight of the polyester elastomer [0016], that when the blending ratio of the radical generator is less than 0.01 parts by weight, the effect of improving fluidity and other properties is insufficient [0017], and that when the amount is more than 10 parts by weight, a decrease in mechanical strength due to a decrease in molecular weight of the produced polyester elastomer composition may become large, which is not preferably [0017].
Regarding claim 4, the Office recognizes that all of the claimed physical properties are not positively taught by Takahashi, namely that the thermoplastic polyester resin composition has a melt flow rate in accordance with JIS K7210: 230°C of 2 to 8 g/10 min. However, Takahashi in view of Griebel renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic polyester resin composition according to claims 1-3 as explained above. Furthermore, the specification of the instant application recites that from the viewpoint of flowability related to extrusion stability, the thermoplastic polyester resin composition preferably has a melt flow rate of 2 g/10 min or more and 8 g/10 min or less [0035]. Also, Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading [0004], that the melt-kneading is carried out in a multi-screw kneading extruder [0019], and that the polyester elastomer composition can be subjected to various thermoplastic resin methods such as a (co) extrusion method [0021]. Therefore, the claimed physical properties would naturally arise from the thermoplastic polyester resin composition that is rendered obvious by Takahashi in view of Griebel. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 5, claim 5 is interpreted as “The thermoplastic polyester resin composition according to claim 1, wherein the thermoplastic polyester resin composition is capable of being extrusion molded”. The thermoplastic polyester resin composition that is rendered obvious by Takahashi in view of Griebel is capable of being extrusion molded because Takahashi in view of Griebel renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic polyester resin composition according to claim 1. Also, Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading [0004], that the melt-kneading is carried out in a multi-screw kneading extruder [0019], and that the polyester elastomer composition can be subjected to various thermoplastic resin methods such as a (co) extrusion method [0021].
Regarding claim 6, Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading [0004], that the melt-kneading is carried out in a multi-screw kneading extruder [0019], that the polyester elastomer composition can be subjected to various thermoplastic resin methods such as a (co) extrusion method [0021], that the polyester elastomer composition is extruded with a twin-screw extruder [0025], and that pellets are obtained [0026], which reads on an extrusion-molded article containing the thermoplastic polyester resin composition according to claim 5 as claimed.
that in the elastomer composition, the ratio of the Z-average molecular weight (Mz) to the weight-average molecular weight (Mw) preferably satisfies the formula Mz/Mw>1.7 [0006], that the Z-average molecular weight is generally larger than the weight-average molecular weight, but Mz / Mw> 1.7 means that the molecular weight distribution is broadened to the high molecular weight size [0006], that when Mz/Mw is 1.7 or less, the melt properties are generally not good, and it is difficult to satisfy both of the conflicting requirements of high fluidity at the time of melting and high mechanical strength of the molded article [0006], that the value of Mz/Mw is preferably less than 100 [0006], and that when this value is 100 or more, the desired physical properties are not generally exhibited as in the case of the value of 1.7 or less [0006],
Response to Arguments
Applicant’s arguments, see p. 3, filed 04/03/2026, with respect to the rejection of claims 4 and 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. The rejection of claims 4 and 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn.
Applicant's arguments filed 04/03/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that there is no reasonable motivation for those skilled in the art to select only glycidyl ether of bisphenol A among various examples of glycidyl epoxy resins and non-glycidyl epoxy resins shown in paragraphs [0034] of Griebel (p. 4), Griebel teaches a specific embodiment of their delayed crosslinking agent being a poly-epoxide compound that is selected from glycidyl epoxy resins that are glycidyl ether of bisphenol A [0034]. Each of Griebel’s delayed crosslinking agent is a specific embodiment of their delayed crosslinking agent being the delayed crosslinking agent. One of ordinary skill in the art would have been motivated to use Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A to substitute for a fraction of Takahashi’s crosslinking aid, and to optimize the amount of Griebel’s delayed crosslinking agent to be from 0.2 to 1.0 part by weight per 100 part by weight of Takahashi’s polyester elastomer because Griebel teaches that the delayed crosslinking agent that is glycidyl ether of bisphenol A is beneficial for being useful as a delayed crosslinking agent [0034] in a polymeric blend further comprising a thermoplastic polyester elastomer [0004], that use of the delayed crosslinking agent provides the benefit of delaying crosslinking of the blend until after the blend has been molded thereby creating an article having performance advantages over a thermoplastic article [0031], and that the crosslinking agent is useful in an amount of about 0.5 to about 5% by weight, based upon the total weight of the thermoplastic polyester elastomer and a high temperature thermoplastic polymer [0014]. These benefits of Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A would have been desirable for Takahashi’s polyester elastomer composition because Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading a polyester elastomer and a crosslinking aid [0004], that the blending ratio of the respective components at the time of melt-kneading is usually 0.01 to 10 parts by weight of the crosslinking aid per 100 parts by weight of the polyester elastomer [0016], that when the blending amount of the crosslinking aid is less than 0.01 parts by weight, the mechanical strength tends to decrease [0017], that if the amount exceeds 10 parts by weight, the effect of improving the mechanical strength reaches a plateau, and in addition, problems such as deterioration of the appearance of a molded article made of the composition occur [0017], that the polyester elastomer composition can be subjected to various thermoplastic resin methods such as a (co) extrusion method [0021], that the crosslinking aid is optionally glycidyl methacrylate [0015], and that in examples, the amount of the crosslinking aid [0025] is 0.2, 0.6, or 0.2 parts by weight per 100 parts by weight of the polyester elastomer ([0029], [Table 1], Examples 2, 3, 4). Based on these teachings of Takahashi and Griebel, the amount of Griebel’s delayed crosslinking agent in part by weight per 100 part by weight of Takahashi’s polyester elastomer would have affected the mechanical strength of Takahashi’s polyester elastomer composition and the appearance of a molded article made of Takahashi’s polyester elastomer composition, which means that optimizing the amount of Griebel’s delayed crosslinking agent in part by weight per 100 part by weight of Takahashi’s polyester elastomer would have been beneficial for optimizing the mechanical strength of Takahashi’s polyester elastomer composition and the appearance of a molded article made of Takahashi’s polyester elastomer composition.
In response to the applicant’s argument that a person skilled in the art would find that using Griebel’s delayed crosslinking agent in Takahashi’s polyester elastomer composition cannot increase the melt viscosity of the polyester elastomer composition because Griebel’s delayed crosslinking agent delays a crosslinking reaction until after the polyester elastomer composition has been molded (p. 4), although Takahashi teaches that it is usually preferred to use polyvinyl compounds rather than monovinyl compounds [0014], that these vinyl compounds promote the formation of crosslinking between molecules of polyester-based elastomer during melt-kneading, thereby increasing the melt viscosity of the resulting polyester-based elastomer composition [0014], Takahashi’s teaching is a preferred embodiment but not a required embodiment. Takahashi does not require promoting the formation of crosslinking during melt-kneading. Furthermore, the basis of the rejection is using Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A to substitute for a fraction of Takahashi’s crosslinking aid. A fraction of Takahashi’s crosslinking aid is therefore still present in Takahashi’s polyester elastomer composition. Although Griebel teaches that the delayed crosslinking agent that is a poly-epoxide compound that is selected from glycidyl epoxy resins that are glycidyl ether of bisphenol A [0034] provides the benefit of delaying crosslinking of the blend until after the blend has been molded [0031], one of ordinary skill in the art would have had a reasonable expectation of success in using Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A to substitute for a fraction of Takahashi’s crosslinking aid because a fraction of Takahashi’s crosslinking aid would still be present, and Griebel teaches that the delayed crosslinking agent that is glycidyl ether of bisphenol A is beneficial for being useful agent [0034] in a polymeric blend further comprising a thermoplastic polyester elastomer [0004], and that use of the delayed crosslinking agent provides the benefit of delaying crosslinking of the blend until after the blend has been molded thereby creating an article having performance advantages over a thermoplastic article [0031], which is similar in composition and used to Takahashi’s polyester elastomer composition because Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading a polyester elastomer and a crosslinking aid [0004], and that the composition is used to make a molded article made of the composition [0017].
In response to the applicant’s argument that accordingly, a person skilled in the art would not have been motivated to modify the polyester elastomer composition of Takahashi to have used Griebel’s delayed crosslinking agent instead of Takahashi’s crosslinking aid (p. 4), the basis of the reaction is using Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A to substitute for a fraction of Takahashi’s crosslinking aid, and to optimize the amount of Griebel’s delayed crosslinking agent to be from 0.2 to 1.0 part by weight per 100 part by weight of Takahashi’s polyester elastomer. A fraction of Takahashi’s crosslinking aid therefore would be present along with Griebel’s delayed crosslinking agent. One of ordinary skill in the art would have been motivated to do so because Griebel teaches that the delayed crosslinking agent that is glycidyl ether of bisphenol A is beneficial for being useful as a delayed crosslinking agent [0034] in a polymeric blend further comprising a thermoplastic polyester elastomer [0004], that use of the delayed crosslinking agent provides the benefit of delaying crosslinking of the blend until after the blend has been molded thereby creating an article having performance advantages over a thermoplastic article [0031], and that the crosslinking agent is useful in an amount of about 0.5 to about 5% by weight, based upon the total weight of the thermoplastic polyester elastomer and a high temperature thermoplastic polymer [0014]. Griebel’s delayed crosslinking agent that is glycidyl ether of bisphenol A that is a diglycidyl ether of bisphenol A would have been desirable for Takahashi’s polyester elastomer composition because Takahashi teaches that the polyester elastomer composition is obtained by blending and melt-kneading a polyester elastomer and a crosslinking aid [0004], that the blending ratio of the respective components at the time of melt-kneading is usually 0.01 to 10 parts by weight of the crosslinking aid per 100 parts by weight of the polyester elastomer [0016], that when the blending amount of the crosslinking aid is less than 0.01 parts by weight, the mechanical strength tends to decrease [0017], that if the amount exceeds 10 parts by weight, the effect of improving the mechanical strength reaches a plateau, and in addition, problems such as deterioration of the appearance of a molded article made of the composition occur [0017], that the polyester elastomer composition can be subjected to various thermoplastic resin methods such as a (co) extrusion method [0021], that the crosslinking aid is optionally glycidyl methacrylate [0015], and that in examples, the amount of the crosslinking aid [0025] is 0.2, 0.6, or 0.2 parts by weight per 100 parts by weight of the polyester elastomer ([0029], [Table 1], Examples 2, 3, 4). Based on these teachings of Takahashi and Griebel, that the amount of Griebel’s delayed crosslinking agent in part by weight per 100 part by weight of Takahashi’s polyester elastomer would have affected the mechanical strength of Takahashi’s polyester elastomer composition and the appearance of a molded article made of Takahashi’s polyester elastomer composition, which means that optimizing the amount of Griebel’s delayed crosslinking agent in part by weight per 100 part by weight of Takahashi’s polyester elastomer would have been beneficial for optimizing the mechanical strength of Takahashi’s polyester elastomer composition and the appearance of a molded article made of Takahashi’s polyester elastomer composition.
In response to the applicant’s argument that the inventors have discovered that the use of the compound (b) having two epoxy groups exhibits excellent effect of improving extrusion moldability compared with a compound having three or more epoxy groups, that Griebel never disclose the effect of the results shown in the examples, that Takahashi fails to teach a compound having two epoxy groups, and that thus the result would not have bene expected from Takahashi (p. 4-5), the applicant’s arguments of unexpected results are not persuasive because claim 1 does not exclude the compound (b) from having more than two epoxy groups as long as the compound (b) has two epoxy groups. The Office interprets “a compound (b) having two epoxy groups” to be a compound (b) comprising two epoxy groups and optionally further comprising other groups, such as additional epoxy groups. The specification of the instant application does not define “a compound (b) having two epoxy groups” as a compound (b) having two epoxy groups and not more than two epoxy groups. The applicant’s arguments of unexpected results are not persuasive also because the applicant’s results are not commensurate in scope with the claimed invention. Claim 1 does not limit the species of the polyester elastomer (a), the species of the compound (b) having two epoxy groups, and the upper limit of the z-average molecular weight Mz of the thermoplastic polyester resin, limits the amount of the compound (b) having two epoxy groups to 0.2 to 1.0 parts by mass relative to 100 parts by mass of the polyester resin component containing polyester elastomer (a), limits the Shore D hardness of the thermoplastic polyester resin composition to 60 to 85, and does not exclude the thermoplastic polyester resin composition to further comprising ingredients not recited in the claim. Examples 1 to 9 in Table 1 comprised one or two of two species of 100 parts by mass of a polyester resin component containing a polyester elastomer, 0.4 or 0.6 of one of two species of the compound (b) having two epoxy groups relative to 100 parts by mass of the polyester resin component containing polyester elastomer (a), Shore D hardness that is 66, 70, or 80, a z-average molecular weight Mz of the thermoplastic polyester resin that is 300000, 380000, 400000, 460000, or 530000, and further comprises 0.1 or 0.2 parts by mass of one of four ingredients not recited in the claims. The applicant did not show that the results of Examples 1 to 9 would occur for any known species of polyester elastomer (a), any known species of the compound (b) having two epoxy groups, no upper limit of z-average molecular weight Mz of the thermoplastic polyester resin, all amounts of the compound (b) having two epoxy groups that are 0.2 to 1.0 parts by mass relative to 100 parts by mass of the polyester resin component containing polyester elastomer (a), all Shore D hardness values of the thermoplastic polyester resin composition that are 60 to 85, and all cases where the thermoplastic polyester resin composition further comprises ingredients not recited in the claim in any amount. 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 (MPEP 716.02(d))." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). The applicant did not show a sufficient number of examples that would allow one of ordinary skill in the art to determine a trend in the exemplified data that would allow the artisan to reasonably extend the probative value thereof over the entire scope of claim 1. 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 (MPEP 716.02(d)(I)). The applicant did not show a sufficient number of examples inside the scope of claim 1 with a sufficient number of examples outside the scope of claim 1. 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 (MPEP 716.02(d)(II)).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID T KARST/Primary Examiner, Art Unit 1767
Prosecution Insights