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 .
Claim Objections
Claim 7 misidentifies the chemical relationship between the thermoplastic polyester elastomer and the monomers mentioned thereafter. The word "comprises" should be replaced with "derived from".
Applicant states in their response that claim 7 has been amended in a manner consistent with that suggested previously but no modifications were made to this claim.
Claim Rejections - 35 USC § 102/103
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.
Claims 1-3 and 6-14 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 Na et al., U.S. Patent Application Publication No. 2014/0058019 for the reasons outlined previously and in view of the following additional considerations.
The product EOR-GMA has been equated with claimed component (B) and is described as having a GMA content of “8 to 10%”. The Examiner acknowledges that it is not entirely clear why the GMA content is reported as a range. Possible reasonable construals are (i) some lots of this product contain 10% GMA grafted to an ethylene/octene copolymers whereas other lots are ones for which the GMA content is less than 10%, but 8% or more, or (ii) a portion of the individual polymer chains contain 10 wt.% grafted GMA whereas another portion has less than 10%, but 8% or more within the same lot.
Where the first interpretation is correct, then the claimed invention is anticipated and none of Applicants’ arguments apply. If the second possible reading is more accurately aligned with the intent of “(GMA: 8 to 10% by weight)”, Applicants’ arguments still would not compel the removal of the rejection because MPEP 716.02(e) instructs that, “an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest (for emphasis) prior art which is commensurate in scope with the claims.” In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). “Where there are deviations from the closest prior art, they must 1) be explained and 2) shown unlikely to influence the outcome of the comparison. In re Finley, 81 USPQ 383; Ex Parte Armstrong, 126 USPQ 281; In re Widmer, 147 USPQ 518; In re Magerlein, 202 USPQ 473. In the alternative, “Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner.” In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978).
It is the Examiner’s position that Comparative Example 6 actually more resembles that which is claimed since only some fraction of the graft polymer chains have a GMA content of 8% whereas the remainder have a GMA content of 10%, or less than 10%, but more than 8% (and, therefore, prior art composition CE6 has properties more similar than those claimed in instant Comparative Example 7). Accordingly, Applicants’ comparison is not with the closest prior art.
As an aside, it is Applicants’ contention (top of page 8 of their response) that, because Comparative Example 7 has better melt viscosity and melt tension, its moldability, heat aging resistance, and grease resistance are enhanced. However, Comparative Example 7 has only a slightly lower heat aging resistance than does Inventive Example 5 and the record does not explain how this slight difference (87.3% vs 85.3%) is meaningful in the context of how the instant compositions are being used. It is further observed that the grease resistance-related tensile strength/elongation retention of Comparative Ex. 7 of the Spec actually compare favorably with these properties in Inventive Examples 1 and 2.
Claim Rejections - 35 USC § 103
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Na et al., U.S. Patent Application Publication No. 2014/0058019 in view of Ohashi et al., U.S. Patent Application Publication No. 2017/0130046.
Na does not indicate a favored molecular weight range for the polycarbodiimide component nor could that of the CE-2 used in Comparative Example 6 be gleaned either from the limited information in the legend that follows Table 1 or the Nisshinbo Chemical website. Ohashi is regarded as being related prior art because it too is directed to polyester elastomer-based compositions to which carbodiimide compounds are added as crosslinkers/chain extenders and imparting to the overall compositions such benefits as hydrolysis resistance and adhesiveness. In paragraphs [0042-0046], Ohashi indicates that favored permutations of the polycarbodiimide are those which have a degree of polymerization of 10 to 20 (containing 10-20 carbodiimide linkages formed by the condensation of two isocyanate groups with the concomitant loss of one equivalent of CO2). Preferred diisocyanates are outlined in [0043] and simple math may be used to confirm that a polycarbodiimide derived from 11 to 21 diisocyanate monomers will inherently have a molecular weight within the claimed range. Paragraph [0046] espouses the benefits of using polycarbodiimides of this type including their workability, compatibility with the base polymer, and lack of bleed-out. One of ordinary skill practicing the invention to Na would be motivated to selected polycarbodiimides according to the teachings of Ohashi to realize these advantages.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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July 28, 2026
/MARC S ZIMMER/Primary Patent Examiner of Art Unit 1765
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