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 .
The amendment dated 01/27/2026 has been considered and entered. The response was considered but not found to be persuasive. Therefore, the previous rejections in view of Kumiko (EP 2 653 498 A1) are maintained.
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.
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 7 – 14, 17 – 19, 21 are rejected under 35 U.S.C. 103 as obvious over Doi Kumiko (EP 2,653,498A1)
In regard to claim 7, Kumiko teaches a composition comprising polybutylene terephthalate (PBT) A), 0.01 to 5 parts by mass of a saturated (i.e., 100% esterification) fatty acid ester of polyglycerol B) based on the polybutylene terephthalate, and other optional additive C) and optional filler D) [abstract, 0016 and 0017]. The polyglycerol ester comprises C19-30 saturated aliphatic acyl groups and has at least 3 repeating glycerol units when n is 1 or more [0010]. Since the claimed polyglycerol ester is taught as an additive, the food grade additive of the claim is taught. There is no teaching of any residual glycerol or polyglycerol in the ester, and thus appears to provide below 7% (i.e., 0%) of such residual ingredients as claimed.
The polybutylene terephthalate resin can be used in combination with another thermoplastic resin A’) such as polyethylene terephthalate (PET), polytrimethylene terephthalate etc. or mixtures which can be present at 100 parts by mass or less [0025 – 0026]. Since the claimed polymer, i.e., the PBT and/or PET etc., is taught, and the claimed polyglycerol fatty acid ester in the claimed amounts, the claimed limitations and properties will be expected, which makes the claim obvious.
Kumiko teaches the blend of the polymer and the polyglycerol ester and thus provides for the method of making the composition as claimed.
In regard to claim 8, Kumiko provides the method and teaches the composition having fatty acid chain length that is close but does not overlap the claimed range. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In regard to claims 9 – 12, Kumiko provides the method and teaches the composition having the polymer such as PET and poly trimethylene terephthalate.
In regard to claim 13, Kumiko provides the method and teaches the composition having fully saturated esters which provide 100% saturation.
In regard to claim 14, Kumiko provides the method and teaches the composition having the claimed limitations and would be expected to have the same properties.
In regard to claims 17 – 19, 21, Kumiko provides the method and teaches the composition having the claimed limitations as previously stated. Since the same ingredients are taught, the method would similarly be expected to experience the property of reduction in torque as claimed.
Applicant argues that the functional properties are not inherent. The argument is not persuasive.
The functional properties of the same material would be expected to be inherently provided unless applicant can provide evidence of the contrary. The argument of lack of inherency is merely unsupported speculation.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Kumiko does not teach the degree of esterification for the polyglycerol fatty ester nor recites it is food grade. The argument is not persuasive.
Kumiko teaches a saturated polyglycerol ester and not a partially saturated compound and thus provides 100% saturation. Also, since the same ingredient is taught, the compound itself meets the food grade component of the claim.
Applicant argues no data in Kumiko teaches that the polyglycerol ester reduces surface friction or torque. The argument is not persuasive.
Since the same ingredient is taught it would be expected to have similar properties.
Applicant argues that Kumiko’s teaching is limited to mold release and not internal lubrication or anti-blocking. The argument is not persuasive.
The claims are drawn to a composition having polybutylene terephthalate and polyglycerol ester which Kumiko teaches and thus would be sufficient to provide the intended use.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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