Prosecution Insights
Last updated: April 19, 2026
Application No. 18/282,864

THERMOPLASTIC POLYESTER ELASTOMER, RESIN COMPOSITION CONTAINING SUCH ELASTOMER, AND MOLDED ARTICLE OBTAINED FROM THE RESIN COMPOSITION

Non-Final OA §102§103
Filed
Sep 19, 2023
Examiner
KARST, DAVID THOMAS
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Toyobo Mc Corporation
OA Round
1 (Non-Final)
64%
Grant Probability
Moderate
1-2
OA Rounds
3y 0m
To Grant
74%
With Interview

Examiner Intelligence

Grants 64% of resolved cases
64%
Career Allow Rate
629 granted / 977 resolved
-0.6% vs TC avg
Moderate +10% lift
Without
With
+10.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
58 currently pending
Career history
1035
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
49.3%
+9.3% vs TC avg
§102
13.0%
-27.0% vs TC avg
§112
24.6%
-15.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 977 resolved cases

Office Action

§102 §103
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. 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. Specification The abstract of the disclosure is objected to because the abstract exceeds 150 words in length. The abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length (MPEP 608.01(b)(I)(C)) . A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Claim Rejections - 35 USC § 102 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. Claim s 1 , 2 , and 4 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Maeda et al. (WO 2018/174129 A1, cited in IDS, made of record on 09/19/2023, machine translation in English used for citation) . Regarding claim s 1 and 2 , Maeda teaches a polyester elastomer resin composition comprising a polyfunctional epoxy compound, a carbodiimide compound , a catalyst component, and a polyester elastomer [0014], wherein the polyester elastomer comprises a hard segment made of a polyester having an aromatic dicarboxylic acid and an aliphatic and/or alicyclic diol as constituent components, and a soft segment made of aliphatic polycarbonate [0014] , wherein the polyfunctional epoxy compound is at least one compound selected from a polyfunctional epoxy compound having a triazine skeleton [0049] that is tris-(2,3-epoxypropyl0-isocyanurate or tris-(3,4-epoxybutyl)- isocyanurate [0049] , a styrene copolymer having a glycidyl group, an olefin copolymer having a glycidyl group [0014] , a diglycidyl ether, or a glycidyl ether [0049] , wherein the hard segment made of polyester composed of an aromatic dicarboxylic acid and an aliphatic or alicyclic diol is bonded to the soft segment made mainly of aliphatic polycarbonate [0039], wherein the carbodiimide compound is a compound having at last one carbodiimide group in its molecule, and which can react with the terminal groups of the polyester elastomer [0055] , wherein by using the carbodiimide compound and the catalyst component in combination, the reaction between the carbodiimide group and the carboxylic acid terminus is further promoted compared to the case in which only the carbodiimide compound is used [0056] , wherein the carboxylic acid terminus is that of the polyester elastomer [0054 0055, 0056, 0058] , wherein the carbodiimide compound is a polycarbodiimide [0057], wherein the catalytic action of the catalyst compound is to promote the reaction between the carboxylic group of the polyester elastomer and the carbodiimide group of the polycarbodiimide compound [0060] , wherein the polyester elastomer resin composition is formed by the reaction of the polyester elastomer with the polyfunctional epoxy compound and the carbodiimide compound [0068], which reads on a thermoplastic polyester elastomer comprising a thermoplastic polyester elastomer comprising a hard segment made of a polyester constituted of an aromatic dicarboxylic acid and an aliphatic or alicyclic diol and a soft segment mainly made of an aliphatic polycarbonate, wherein the hard segment and the soft segment are bonded to each other, wherein the thermoplastic polyester elastomer is at least partially end-capped with a reactive compound as claimed , wherein the reactive compound comprises a polycarbodiimide , wherein a reactive compound having at least one functional group selected from a glycidyl group is further comprised as the reactive compound as claimed . Maeda teaches that the polyester elastomer resin composition has an acid value of 5 eq/t or less [0069] , which reads on wherein the thermoplastic polyester elastomer has an acid value of 5 eq/ton or less as claimed. The Office recognizes that all of the claimed physical properties are not positively taught by Maeda , namely that a melt viscosity of the thermoplastic polyester elastomer is measured under a condition of 230°C in accordance with JIS K 7199, the thermoplastic polyester elastomer satisfies ( i ) and (ii) below: ( i ) the melt viscosity at a shear rate of 10/sec after a preheating time of 5 minutes is 1,800 Pa·s or more, and the melt viscosity at a shear rate of 1,000/sec after a preheating time of 5 minutes is 800 Pa·s or less, and (ii) a ratio of the melt viscosity measured at a shear rate of 10/sec after a preheating time of 5 minutes to the melt viscosity measured at a shear rate of 10/sec after a preheating time of 25 minutes is 0.7 to 1.3 . However, Maeda teaches al l of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic polyester elastomer according to claims 1 and 2 as explained above . Furthermore, the specification of the instant application recites that measurement [0059] of reduced viscosity of the thermoplastic polyester elastomer [0061] was performed according to the following method [0059], that in 25 mL of a mixed solvent (phenol/tetrachloroethane = 60/40), 0.05 g of the thermoplastic polyester elastomer was dissolved, and the reduced viscosity was measured at 30°C using an Ostwald viscometer [0061], that a thermoplastic polyester elastomer had a reduced viscosity of 1.21 dl/g and an acid value of 44 eq/ton [0069], that the resulting composition had the claimed melt viscosities of 2100 Pa s and 730 Pa s, and the claimed ratio of the melt viscosity of 1.11 [0078], that a thermoplastic polyester elastomer had a reduced viscosity of 1.38 dl/g and an acid value of 39 eq/ton [0070], that the resulting composition had the claimed melt viscosities of 3000-9500 Pa s and 330-780 Pa s, and the claimed ratio of the melt viscosity of 0.84-1.29 [0078] , that the thermoplastic polyester elastomer had a reduced viscosity of 1.25 dl/g and an acid value of 49 eq/ton [0072] , that the resulting composition had the claimed melt viscosities of 4000 Pa s and 700 Pa s, and the claimed ratio of the melt viscosity of 1.9 [0078] , that when the reactive compound is a polycarbodiimide , the blending amount thereof is preferably 0.5 to 10 parts by mass , with respect to 100 parts by mass of the thermoplastic polyester elastomer [0045] , that when the reactive compound is a reactive compound having at least one functional group select from a glycidyl group (epoxy group), the blending amount thereof is preferably 0.1 to 4.5 parts by mass, which respect to 100 parts by mass of the thermoplastic polyester elastomer [0045] , that it is preferably to obtain the thermoplastic polyester elastomer through a blocking reaction [0025], and that in this reaction, the active catalyst concentration in the system is arbitrarily set [0026] . Also, Maeda teaches that the reduced viscosity of the polyester elastomer is 0.5 dl/g or more and 3.5 dl/g or less, as measured by the measurement method that is [0048] dissolving 0.10 g of thoroughly dried resin in 25 ml of a phenol/tetrachloroethane mixed solvent (mass ratio 6/4), and measuring at 30°C using an Ubre -Rose viscometer [0074], that the reduced viscosity of the polyester elastomer is more preferably 1.0 dl/g or more and 3.0 dl/g or less, and even more preferably 1.0 dl/g or more and 2.8 dl/g or less [0048], that the acid value of the polyester elastomer is 200 eq/t or less and 10 eq/t or higher [0048] , that a concentration of 50 eq/t or less is more preferable and more preferably 20 eq/t or higher [0048] , and that the polyester elastomer resin composition comprises 0.1 to 5 parts by mass of the polyfunctional epoxy compound and 0.1 to 5 parts by mass of the carbodiimide compound per 100 parts by mass of the polyester elastomer [0014] , which read on the recitations in the specification of the instant application . Therefore, the claimed physical properties would naturally arise from the thermoplastic polyester elastomer of Maeda . 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)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)) . Regarding claim 4, Maeda teaches that the polyester elastomer resin composition is useful for automotive and home appliance parts when manufactured by extrusion molding [0095], which reads on a molded article obtained by extrusion molding of the thermoplastic polyester elastomer according to claim 1 as claimed. 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. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (WO 2018/174129 A1, cited in IDS, made of record on 09/19/2023, machine translation in English used for citation) as applied to claim 1 . Regarding claim 3, Maeda teaches the thermoplastic polyester elastomer according to claim 1 as explained above. Maeda teaches that the resin composition may contain various other additives [0067], and that other additives such as flame retardants may also be added [0067], which reads on a resin composition containing the thermoplastic polyester elastomer according to claim 1 and optionally a flame retardant. Maeda does not teach a specific embodiment wherein the resin composition further contains a flame retardant. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Maeda’s flame retardants to modify Maeda’s resin composition. The proposed modification would read on a resin composition further containing a flame retardant as claimed. One of ordinary skill in the art would have been motivated to do so because Maeda teaches that the resin composition may contain various other additives [0067], and that other additives such as flame retardants may also be added [0067], which would have been beneficial for improving flame retardant properties of Maeda’s resin composition. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (WO 2018/174129 A1, cited in IDS, made of record on 09/19/2023, machine translation in English used for citation) as applied to claim 4, and further in view of Tamashiro (WO 2018/155411 A1, machine translation in English used for citation ). Regarding claim 5, Maeda teaches the molded article according to claim 4 as explained above. Maeda does not teach that the molded article is a cable or a hose. However, Tamashiro teaches a polyester elastomer resin composition that can be applied to hoses and cable coverings [0048], that the polyester elastomer resin composition can be molded into various molded products by extrusion molding [0048], that the flame-retardant polyester elastomer resin composition can be applied to hoses and cable sheathing materials [0066], and that the resin composition can be molded by extrusion molding [0066]. Maeda and Tamashiro are analogous art because both references are in the same field of endeavor of a thermoplastic polyester elastomer, and a molded article obtained by extrusion molding of the thermoplastic polyester elastomer. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to manufacture hoses, cable sheathing, or cable coverings by extrusion molding Maeda’s polyester elastomer resin composition, as suggested by Tamashiro. The proposed modification would read on wherein the molded article is a cable or a hose as claimed. One of ordinary skill in the art would have been motivated to do so because Tamashiro teaches that a polyester elastomer resin composition is beneficial for applying to hoses and cable coverings [0048], that the polyester elastomer resin composition is beneficial for being able to be molded into various molded products by extrusion molding [0048], that the flame-retardant polyester elastomer resin composition is beneficial for being able to be applied to hoses and cable sheathing materials [0066], and that the resin composition is beneficial for being able to be molded by extrusion molding [0066] , which would have been beneficial for providing an additional utility for Maeda’s polyester elastomer resin composition, and which would have been desirable for Maeda’s polyester elastomer resin composition because Maeda teaches that the polyester elastomer resin composition is useful for applications such as automotive and home appliance parts when manufactured by extrusion molding [0095], and that the resin composition may contain various other additives that are flame retardants [0067]. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT DAVID KARST whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7732 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 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, FILLIN "SPE Name?" \* MERGEFORMAT Mark Eashoo can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 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
Read full office action

Prosecution Timeline

Sep 19, 2023
Application Filed
Mar 19, 2026
Non-Final Rejection — §102, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
64%
Grant Probability
74%
With Interview (+10.1%)
3y 0m
Median Time to Grant
Low
PTA Risk
Based on 977 resolved cases by this examiner. Grant probability derived from career allow rate.

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