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 .
Response to Amendment
This Action is in response to Applicant’s Reply of May 13, 2026.
Claims 5 and 11 have been cancelled.
Applicant’s amendment to claim 1 overcomes the previously presented 35 USC 112(b) rejection thereof.
Applicant’s amendment to claim 1 overcomes the previously presented 35 USC 102(a)(1) rejection thereof.
Response to Arguments
Applicant’s arguments with respect to the 35 USC 112(b) rejection regarding the use of term “proportion” have been fully considered and are persuasive. The 35 USC 112(b) rejection of claim 1 has been withdrawn.
Applicant’s arguments with respect to claim 1, as amended, have been fully considered and are persuasive. The 35 USC 102(a)(1) rejection, as previously presented, of claim 1 has been withdrawn.
Applicant's arguments have been fully considered but they are not persuasive.
Applicant has argued that the need to include the Kasiun NPL document to teach the properties of materials disclosed in Tsukigawara shows that Tsukigawara does not anticipate claims.
As noted in MPEP 2112(IV), “a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is “the natural result of the combination of prior art elements.” (emphasis in original).” Tsukigawara clearly anticipates the use of an adhesive polyolefin; the Kaisun reference was used only to show an inherent property, the softening temperature, of the adhesive polyolefin. Since Tsukigawara discloses the material, the courts have held that it also discloses the inherent properties of that material. The evidentiary reference is only used to show what those properties are.
It is noted that Applicant is correct that Kaisun does not disclose the softening temperature of polyolefin. Son et al. (KR 20160025134 A) has been added as an evidentiary reference to show the softening temperature of polyolefin, a material anticipated by Tsukigawara.
Applicant has argued that Tsukigawara fails to disclose a thickness of the outer layer of 1-1.5mm because paragraph 20 is referring to ratios and not specific measurements. Applicant points to the claims to show that the language in paragraph 20 is referring to ratios and not measurements.
The portion of Tsukigawara that was cited to teach the thickness of the outer layer is referring thicknesses and not ratios.
“The thicknesses of the inner layer 1, the intermediate layer 2, and the outer layer 3 are not particularly limited. For example, when the thickness of the inner layer 1 is 1, the thickness of the outer layer 3 is 0.1 to 8.4. Is more preferable, and more preferably 0.8 to 1.3. The thickness of the intermediate layer 2 is preferably 0.06 to 0.49, more preferably 0.13 to 0.17. By setting the thickness of the inner layer 1, the intermediate layer 2, and the outer layer 3 in the above-described range, the flexibility and the flexibility of the laminated tube 10 can be improved in a well-balanced manner.”
This is shown by the use of different nomenclature in that paragraph and the proceeding paragraph that specifically references ratios. The claim language referred to also specifically references ratios and uses the same language as this paragraph.
“For example, when the diameter of the laminated tube 10 is 20 mm or less, the ratio of the inner layer 1: the intermediate layer 2: the outer layer 3 = 0.2 to 0.8: 0.001 to 0.2: 0 in terms of the thickness of the entire tube. It is preferably set to 0.2 to 0.8. Thereby, the flexibility and the flexibility of the laminated tube 10 can be improved in a well-balanced manner.”
This difference in nomenclature shows that the values in the two paragraphs are not referring to the same thing. This nomenclature in the first paragraph specifically states that the “thickness of the outer layer 3 is…”. There is no mention of the thickness of the outer layer compared to or in relation to another layer or parameter. There is no language in this paragraph to suggest it is referring to a ratio.
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.
Claim(s) 1-3, 7, and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsukigawara (JP 2020032588 A, Tsuk) as evidenced by “Overview of materials for Thermoplastic Polyurethane, Elastomer, Polyester Grade” , “What Is Polyolefin Hot Melt Adhesive? The Ultimate Guide for Industrial Applications” (hereinafter Kaisun), and Son et al. (KR 20160025134 A, Son).
Regarding claim 1: Tsuk discloses a multilayered tubular shaped object 10, having an inner layer 1, an outer layer 3, and an interlayer 2 interposed between the inner layer and the outer layer to bond them together Fig 1, wherein:
the inner layer contains a polyolefin as a main component paragraph 3 on page 2 of the translation, “As the thermoplastic resin forming the inner layer 1, various elastomers such as a polyolefin elastomer, a polystyrene elastomer, a polyester elastomer, a polyamide 12 elastomer, and a polyurethane elastomer can be used.”,
the outer layer contains a thermoplastic polyurethane as a main component paragraphs 1 and 2 on page 3 of the translation, “Therefore, in the laminated tube 10 of the present embodiment, the outer layer 3 is formed of a thermoplastic resin having a lower hardness than the resin forming the inner layer 1. Thereby, since the outer layer 3 easily follows the bending deformation and the repulsive force when bent becomes small, the laminated tube 10 which is excellent in flexibility and in which buckling hardly occurs is obtained.
As the thermoplastic resin forming the outer layer 3, various elastomers such as a polyolefin elastomer, a polystyrene elastomer, a polyester elastomer, a polyamide 12 elastomer, and a polyurethane elastomer can be used.”,
the interlayer contains an adhesive polyolefin as a main component paragraph 6 on page 2 of the translation, “Since the intermediate layer 2 needs to be chemically bonded to various resins constituting the inner layer 1 and the outer layer 3, it is preferable that the intermediate layer 2 be formed of an adhesive resin having a polar group. In view of the above, a polyolefin-based adhesive resin is particularly preferable.”,
a thickness of the outer layer is 1 to 1.5 mm paragraph 4 on page 3 of the translation, “For example, when the thickness of the inner layer 1 is 1, the thickness of the outer layer 3 is 0.1 to 8.4.” – these values are considered to be in mm based on other units indicated in the reference such as in paragraph 5 on the same page,
a proportion of a sum of the thickness of the outer layer and a thickness of the interlayer to a thickness of the multilayered tubular shaped object is 0.7 to 0.88 paragraph 5 on page 3 of the translation, “For example, when the diameter of the laminated tube 10 is 20 mm or less, the ratio of the inner layer 1: the intermediate layer 2: the outer layer 3 = 0.2 to 0.8: 0.001 to 0.2: 0 in terms of the thickness of the entire tube. It is preferably set to 0.2 to 0.8. Thereby, the flexibility and the flexibility of the laminated tube 10 can be improved in a well-balanced manner.”, and
a softening temperature of the thermoplastic polyurethane is 135 to 200°C the softening temperature of thermoplastic polyurethane is known to be 35 – 165 [Symbol font/0xB0]C as shown by “Overview of materials for Thermoplastic Polyurethane, Elastomer, Polyester Grade”,
a softening temperature of the polyolefin is 95 to 190°C the softening temperature of polyolefin is known to be between 110-150 [Symbol font/0xB0]C as shown by Son which discloses a polyolefin elastomer composition and its properties, “The ethylenic copolymer mixture (B) may have a softening point of 100 ° C or higher. The upper limit of the softening point of the ethylenic copolymer mixture (B) is not particularly limited. For example, the higher the softening point, the better the heat resistance can be. Specifically, the softening point may be 100 ° C to 250° C, 100 ° C to 200 ° C, 100 ° C to 180 ° C, 100 ° C to 160 ° C, or 120 ° C to 160 ° C. Within the above range, it is possible to prevent the polyolefin elastomer from being degraded or deformed at high temperature.”, and
a softening temperature of the adhesive polyolefin is 120 to 185°C the softening temperature of adhesive polyolefin is known to be between 110-150 [Symbol font/0xB0]C as shown by Kaisun.
Regarding claim 2: Wherein a proportion of the thickness of the interlayer to a thickness of the inner layer is 0.1 or more and less than 2 paragraph 5 on page 3 of the translation, “For example, when the diameter of the laminated tube 10 is 20 mm or less, the ratio of the inner layer 1: the intermediate layer 2: the outer layer 3 = 0.2 to 0.8: 0.001 to 0.2: 0 in terms of the thickness of the entire tube. It is preferably set to 0.2 to 0.8. Thereby, the flexibility and the flexibility of the laminated tube 10 can be improved in a well-balanced manner.”.
Regarding claim 3: Wherein a proportion of the thickness of the inner layer to the thickness of the multilayered tubular shaped object is 0.06 to 0.25 paragraph 5 on page 3 of the translation, “For example, when the diameter of the laminated tube 10 is 20 mm or less, the ratio of the inner layer 1: the intermediate layer 2: the outer layer 3 = 0.2 to 0.8: 0.001 to 0.2: 0 in terms of the thickness of the entire tube. It is preferably set to 0.2 to 0.8. Thereby, the flexibility and the flexibility of the laminated tube 10 can be improved in a well-balanced manner.”.
Regarding claim 7: Wherein the thickness of the inner layer is 0.05 to 2.5 mm paragraph 4 on page 3 of the translation, “For example, when the thickness of the inner layer 1 is 1, the thickness of the outer layer 3 is 0.1 to 8.4.” – these values are considered to be in mm based on other units indicated in the reference such as in paragraph 5 on the same page.
Regarding claim 16: Wherein the thickness of the interlayer is 0.01 to 1.5 mm paragraph 4 on page 3 of the translation, “The thickness of the intermediate layer 2 is preferably 0.06 to 0.49, more preferably 0.13 to 0.17.” – these values are considered to be in mm based on other units indicated in the reference such as in paragraph 5 on the same page.
Regarding claim 17: Wherein a maximum load in a compression bending test (span: 200 mm) for the multilayered tubular shaped object is 19 N or less.
While Tsuk does not disclose that the maximum load in a compression bending test (span: 200 mm) for the multilayered tubular shaped object is 19 N or less, if a composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 18: Wherein an amount of deflection of the multilayered tubular shaped object is less than 40 mm in a test for measuring an amount of deflection (temperature: 100°C).
While Tsuk does not disclose that the amount of deflection of the multilayered tubular shaped object is less than 40 mm in a test for measuring an amount of deflection (temperature: 100°C), , it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 103
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.
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(s) 4, 8, 10, and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuk.
Regarding claim 4: Tsuk discloses all of the limitations of the above claim(s) except the amount of the polyolefin contained in the inner layer is 75 mass% or more.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the amount of the polyolefin contained in the inner layer was 75 mass% or more, since it has been held that 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).
Regarding claim 8: Tsuk discloses all of the limitations of the above claim(s) except the amount of the thermoplastic polyurethane contained in the outer layer is 75 weight% or more.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the amount of the thermoplastic polyurethane contained in the outer layer was 75 weight% or more, since it has been held that 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).
Regarding claim 10: Tsuk discloses all of the limitations of the above claim(s) except the amount of the adhesive polyolefin contained in the interlayer is 75 mass% or more.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the amount of the adhesive polyolefin contained in the interlayer was 75 mass% or more, since it has been held that 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).
Regarding claim 12: Tsuk discloses all of the limitations of the above claim(s) except the adhesive polyolefin comprising a polyolefin having an aromatic ring on a side chain.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the adhesive polyolefin comprised a polyolefin having an aromatic ring on a side chain, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 13: Tsuk discloses all of the limitations of the above claim(s) except the adhesive polyolefin comprising a styrene grafted polyolefin and polystyrene.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the adhesive polyolefin comprised a styrene grafted polyolefin and polystyrene, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 14: Tsuk discloses all of the limitations of the above claim(s) except the adhesive polyolefin comprises an ester containing group on a side chain.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the adhesive polyolefin comprised an ester containing group on a side chain, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 15: Tsuk discloses all of the limitations of the above claim(s) except the adhesive polyolefin comprises a maleic anhydride modified ethylene-vinyl acetate copolymer.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the adhesive polyolefin comprised a maleic anhydride modified ethylene-vinyl acetate copolymer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuk in view of Nishioka et al. (US 2007/0148389, Nish).
Tsuk discloses all of the limitations of the above claim(s) except the polyolefin comprises at least one of high density polyethylene, syndiotactic polypropylene, isotactic polypropylene and polymethyl pentene.
Nish discloses a multilayered tubular shaped object similar to that of Tsuk. Nish discloses that one layer is made from polyolefin in the form of high-density polyethylene (HDPE), low-density polyethylene (LDPE), ultrahigh molecular weight polyethylene (UHMWPE), polypropylene (PP), ethylene/propylene copolymer (EPR), ethylene/butene copolymer (EBR), ethylene/vinyl acetate copolymer (EVA), ethylene/vinyl acetate copolymer saponification product (EVOH), ethylene/acrylic acid copolymer (EAA), ethylene/methacrylic acid copolymer (EMAA), ethylene/methyl acrylate copolymer (EMA), ethylene/methyl methacrylate copolymer (EMMA) and ethylene/ethyl acrylate (EEA) [0032].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the polyolefin comprised at least one of high density polyethylene, syndiotactic polypropylene, isotactic polypropylene and polymethyl pentene, as taught by Nish, since the examiner notes the equivalence of various forms of polyolefin for their use in the multilayered tubular shaped object art and the selection of any of these known equivalents to use in Tsuk would be within the level of ordinary skill in the art, as taught by Nish.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuk in view of Ludlow (US 2019/0283359).
Tsuk discloses all of the limitations of the above claim(s) except the thermoplastic polyurethane comprising at least one of an adipate ester-based thermoplastic polyurethane, an ether-based thermoplastic polyurethane, a caprolactone-based thermoplastic polyurethane and a polycarbonate-based thermoplastic polyurethane.
Ludlow discloses a multilayered tubular shaped object similar to that of Tsuk. Ludlow discloses a layer that is formed from a thermoplastic polyurethane in the form of polyether-type thermoplastic polyurethanes [0047], [0048], [0087], [0089], [0090].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tsuk so that the thermoplastic polyurethane included polyether-type thermoplastic polyurethanes in order to have used a thermoplastic polyurethane that was more resistant to hydrolytic degradation [0048].
Conclusion
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
06/04/2026
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