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”.
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.
Claim 3 is 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.
Claim 3 contains the trademark/trade name CASMOLY VX-712. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the grease employed in the grease-resistance evaluation and, accordingly, the identification/description is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Any carbodiimide may be characterized as aromatic or aliphatic and, thus, claim 5 doesn’t further limit claim 1 in any substantive way. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, and 5-11, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al., KR 2011-0006103 with Orikasa et al., EP 506006 as an evidentiary reference proving that an exemplification of the glycidyl-modified polyolefin used in Kim has a corresponding amount of glycidyl methacrylate content.
Kim describes a composition comprising the materials outlined at the bottom of page 2 of the machine translation including 50-90 parts of a thermoplastic polyester elastomer (TPEE), 5 to 45 parts of a polyalkylene terephthalate thermoplastic, 0.5 to 5 parts of an ethylene copolymer containing a glycidyl group, 0.1 to 1.5 parts of a chain extender, and 1 to 3 parts of an additive that conveys resistance to heat aging. Exemplary of the composition are those summarized in Table 1 of the original Korean language disclosure with an accompanying description of the components on page 7 of the translation where TPEE-B is a thermoplastic polyester elastomer featuring soft block macromonomer contributions from poly(tetramethylene ether) glycol and having a melt index of 5 (230° C, 2.16 kg), EGMA is the ethylene-glycidyl methacrylate copolymer (RA-3150) with 15% glycidyl methacrylate content according to Orikasa, and CE-1 is a carbodiimide chain extender. Example 2 contains 79 parts of TPEE-B, 1 parts of EGMA, and 0.6 parts of CE-1. Normalized to 100 parts of the TPEE, there would be:
1/79 = x/100, x = 1.26 (parts of the glycidyl modified olefin)
0.6/79 = y/100, y = 0.76 (parts of carbodiimide).
It is appreciated that two references are cited here in a statement of anticipation. According to section 2131.01 of the MPEP, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an “enabled disclosure; ”
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
Orikasa was cited in this instance to establish that the ethylene-glycidyl methacrylate EGMA was inherently in possession of a coincident amount of glycidyl methacrylate content.
As for claim 2, the bottom two rows of Table 2 provide a comparison between tensile elongation rate before aging (second to last row) and after aging for 300 hrs at 150° C in the last row (whereas the test conditions indicated in the claims were instead 336 hrs at 140° C. Table 2 does not address the effects of aging on tensile strength. However, given the strong compositional resemblance of the claimed- and prior art compositions, and particularly the fact that a conforming amount of the ethylene/glycidyl methacrylate copolymer is used (insofar as page 5, lines 10-13 indicate that quantities outside the claimed range result in a diminished heat resistant aging stability), a skilled practitioner of the prior art invention may reasonably expect the prior art composition to be inherently satisfied. The same rationale is applicable to the property limitations of claim 3.
Concerning claims 8 and 9, it is curious that the description of TPEE-B only expressly characterizes the polyalkylene oxide macromer used in its formation. On the other hand, it is noted that there is considerable overlap between the claimed carboxylic acid compounds of claim 8 and those outlined in the second full paragraph on page 3 of the translated document. Likewise, the list of claimed diols in claim 9 names essentially all the same diol compounds delineated in this same passage of the translated document.
As for claim 10, various stabilizers imparting heat resistance are contemplated in the last paragraph of page 5 of the translation.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Na et al., U.S.Patent Application Publication No. 2014/0058019. See Table 1/Comparative Example 6, the accompanying description of materials that follows, [0058] where the materials involved in preparing TPEE-A are disclosed (DMT is an ester derivative of terephthalic acid), and [0069] where a method anticipatory of claim 12 is provided.
Whereas claim 1 expresses the amounts of components (B) and (C) in relation to 100 parts of (A), the quantities of the corresponding materials in “raw terms” are set forth in Table 1. It is verified mathematically that the relative quantities of the glycidyl-modified rubber and carbodiimide are consistent with those claimed by setting up a ratio as follows :
1/75.4 = x/100, x = 1.32 parts of the glycidyl-modified rubber
0.6/75.4 = y/100, y = 0.8 parts of carbodiimide
The reference is not forthcoming as to the extent of maintained tensile strength and tensile elongation when subjected to the conditions set forth in claims 2 and 3 but, given the substantial compositional parallels, it is the Examiner’s position that the limitations of these claims will be inherently satisfied.
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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., KR 2011-0006103 taken with Orikasa et al., EP 506006.
Every aspect of the claimed invention is taught by Kim, including the claimed processing temperature. See the description on page 7 of the translation just above the heading “Test Example”. There is admittedly no mention of the screw rotation rate of the extruder but one of ordinary skill would optimize this aspect as a matter of routine experimentation with an eye towards ensuring a necessary residence time to allow reaction between the TPEE, the glycidyl-modified copolymer, and the carbodiimide to occur while not being so slow as to unduly increase processing time. “Discovering an optimum value of a result effective variable involves only routine skill in the art.” In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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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February 25, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765