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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 6, 2026 has been entered.
Response to Amendment
Applicant’s amendment to the claims filed April 6, 2026 has been entered. Claims 1 and 14 are currently amended. Claims 2 and 3 have been canceled. Claims 1 and 4-16 are pending and under examination.
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.
Claims 14-16 are 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.
Regarding claim 14, the claim recites the extrusion head has a length of 100-110 mm and an outlet neck of a length of 35-40 mm. The limiting effect of the recitation is unclear. As an initial matter, it is not clear which components are necessarily in view. It’s not clear whether “extrusion head” is referring to the die or another component. It is also not clear whether “outlet neck” is referring to an adapter component downstream of the extruder and upstream of the extrusion head or whether the outlet neck is positioned near the outlet of the extrusion head/die. Further, it is not clear how the recited lengths relate to each other. It’s not clear whether the “outlet neck” length is in addition to the length of the “extrusion head” (e.g. (100-110 mm) + (35-40 mm) to give a total length ranging from 135-150 mm) or whether the outlet neck is part of the extrusion head and forms 35-40 mm of the 100-110 mm length (e.g. (100-110 mm) total length with (35-40 mm) of it formed by the outlet neck and the rest of the remaining length formed by another component). Appropriate correction and clarification are required in a manner supported by the original disclosure.
Claims 15 and 16 are rejected as dependent claims.
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.
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 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (US 2003/0092846).
Regarding claim 1, Zhao et al. teach a thermoplastic elastomer (Abstract) capable of being used to manufacture at least one layer of a flexible hose for transporting fluids (Abstract; the material can be extruded or blow molded), the thermoplastic elastomer consisting of: a polymer matrix consisting of a first thermoplastic part (A1) and a second elastomeric part (A2), said first thermoplastic part (Al) and said second elastomeric part (A2) being present in the thermoplastic elastomer in a percentage by weight respectively in amounts that overlap the claimed range (paragraphs [0017], [0019], [0031], [0034]-[0050]; [0061]-[0071]; [0101]-[0106]) (B) at least one a plasticizing agent in amounts that overlap the claimed range (paragraphs [0022], [0057], [0059], [0066], [0107]; 10 to 80 pph overlaps with 30 to 55% by weight of the total composition; and wherein the plasticizing agent is a mineral oil: paragraphs [0059], [0063], [0107]; paraffinic/mineral oil); (C) at least one a filler in amounts that overlap the claimed range (paragraphs [0057], [0058]; including 0%); (D) at least one an additive that overlaps the claimed range (paragraphs [0020], [0031], [0051]-[0055], [0108]-[0112]; the initiators of Zhao et al. are reasonably understood to be additives within the scope of the claim; further, the acrylic monomers are either reasonably understood to be within the scope of the polymer matrix as claimed in the final thermoplastic elastomer composition or as an additive as claimed); wherein a total sum of the percentages by weight of said components from (A) to (D) is 100% (e.g. no additional materials are required than those recited above in Zhao et al.); wherein the percentages by weight of said components from (A) to (D) are calculated with respect to a total weight of the thermoplastic elastomer (note: the amounts of each of the components in Zhao et al. overlap the claimed amounts when converted to this criteria); wherein the thermoplastic elastomer has a Shore A hardness that overlaps the claimed range (paragraph [0017]); and wherein the thermoplastic elastomer can be a post-consumer material (paragraphs [0002] and [0081] – recycled as post-consumer waste).
Zhao et al. teach and suggest the articles produced from the composition can be reused post-consumer and teach and suggest the composition is “fully recyclable” (paragraph [0015]; note the word “fully”) and that it is “the composition” that is recycled (paragraph [0081]; “the composition” includes the additives, such as the plasticizing agent/mineral oil) and that the full-composition is recycled in Example 1 (paragraphs [0121] and Table IV). As such, Zhao et al. establish that these articles would/can include both the plasticizer/mineral oil and the thermoplastic part of the composition.
As to the amounts of the thermoplastic elastomer that can be utilized, the polymer matrix of Zhao et al. can be utilized in amounts greater than 50% by weight. Thermoplastic elastomers are thermoplastics that can be recycled, but that have properties similar to rubber/elastomers in use (indeed this recyclability is one of their known advantages over, for example, vulcanized rubbers, in certain applications). Since Zhao et al. make clear that the materials can be recycled from post-consumer products, it follows that one having ordinary skill in the art would have utilized recycled post-consumer thermoplastic elastomer materials (e.g. the polymer matrix) to reuse the materials for further use in subsequent applications. As such, whether the suggestion is to reuse the entire composition (i.e. up to 100%) or just a portion of the composition (i.e. in amounts that overlap and include values above 50%), the teaching of Zhao et al. is understood to reasonably teach and suggest the claimed amounts of recycled materials.
As to the standards by which this post-consumer material is identified, selected, traced, controlled and declared to be compliant, etc. (i.e. these are the factors and criteria that are understood to be in view based on the recited standards), one having ordinary skill in the art would have found it prima facie obvious to have responded to market forces and/or government requirements in order to be able utilize the recyclable post-consumer materials identified by Zhao et al. again. While complying with such standards may require effort, this effort is not understood to be inventive. Instead, it is understood to be a routine expedient in the art. It is also noted that the claim does not require any new or unique properties associated with the composition. At most, it must be capable of being utilized as a layer/the layer in a hose. However, the hose itself is not understood to require any particular properties. In other words, to the extent applicant’s position is that utilizing recycled materials introduces challenges based upon a generally recognized drop-off in properties associated with recycled materials, there is nothing in the claims that requires such consideration. In claim 1 for example, the composition itself could be fed in lower percentages to another process. Further, a hose of limited applications could be produced from the composition even if the recycled form of the material has lower mechanical properties than the virgin form of the material. Further still, it is not definitive that a thermoplastic elastomer will have a significant drop-off in properties when recycled. Any drop-off in properties can be reasonably accounted for based on the application and the addition of other materials, as may be required (e.g. some virgin material, additional additives, etc.). Further, Zhao et al. specifically disclose the materials are suitable for reuse and have produced the composition with this in mind. As such, the limitations directed to the UNI EN ISO 14021 and UNI EN 15343 standards are not understood to differentiate the claim over the teaching and suggestion of the prior art.
As to the relative mechanical properties of the recycled or virgin thermoplastic elastomer, in paragraph [0081] of Zhao et al. make clear that polyvinyl chloride easily degrades with recycling and that the composition of Zhao et al. is an improvement over such material. Zhao et al. provide an alternative to polyvinyl chloride so that the material can be recycled (see paragraph [0002] – “There is a need for recyclable materials that can be used as alternatives to polyvinyl chloride”). Further, paragraphs [0003], [0006], and [0081] suggest that olefinic polymers can be recycled without a loss of properties and Table IV suggests only small mechanical property changes (e.g. as evidenced by changes of 10% or less in viscosity) can be realized with the composition of Zhao et al.
As to claims 4-7, as cited above in the rejection of claim 1, Zhao et al. utilize the claimed materials, utilize them in amounts that overlap the claimed range, and the compositions have properties that overlap the claimed range.
Claims 1, 4-8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Siddhamalli et al. (US 2012/0070597) in view of Zhao et al. (US 2003/0092846).
Regarding claim 1, Siddhamalli et al. teach a thermoplastic elastomer (Abstract; paragraphs [0034] and [0038]) capable of being used to manufacture at least one layer of a reinforced or spiraled flexible hose for transporting fluids (Abstract; paragraphs [0024], [0025]), the thermoplastic elastomer consisting of: a polymer matrix consisting of a first thermoplastic part (A1) and a second elastomeric part (A2), said first thermoplastic part (A1) and said second elastomeric part (A2) being present in the thermoplastic elastomer in a percentage by weight respectively in amounts that overlap the claimed range (paragraphs [0006], [0007]; elastomer: paragraphs [0010]-[0014]; thermoplastic: paragraphs [0015]-[0018]) (B) at least one a plasticizing agent in amounts that overlap the claimed range and wherein the plasticizing agent is mineral oil (paragraph [0019]); (C) at least one a filler in amounts that overlap the claimed range (paragraph [0020]); (D) at least one an additive that overlaps the claimed range (paragraph [0020]); wherein a total sum of the percentages by weight of said components from (A) to (D) is 100% (e.g. no additional materials are required than those recited above); wherein the percentages by weight of said components from (A) to (D) are calculated with respect to a total weight of the thermoplastic elastomer (note: the amounts of each of the components overlap the claimed amounts when converted to this criteria); wherein the thermoplastic elastomer has a Shore A hardness that overlaps the claimed range (paragraph [0027]); wherein the thermoplastic elastomer is capable of being used in an amount greater than or equal to 90% by weight on a total weight of the flexible hose (note: as an initial matter, this limitation is only understood to require a composition that is capable of producing any flexible hose for any purpose or application in this amount; further, to the extent this material must provide a particular property to the hose, this is also understood to be met based on the breadth of the claim; further, as one having ordinary skill in the art will recognize, other layers and/or materials and/or reinforcements can be utilized to provide additional properties to a hose; further, Siddhamalli et al. disclose the material itself may form the hose/tube and would therefore be included in an amount greater than 90% by weight of the hose).
Siddhamalli et al. do not teach the material is provided as a post-consumer material in amounts and as evaluated under the standards as claimed.
However, Zhao et al. (paragraphs [0002], [0015], [0081] – recycled as post-consumer waste; paragraph [0121] and Table IV) disclose analogous compositions, products, and methods wherein it is disclosed “the composition” of the thermoplastic elastomer from post-consumer products produced from the thermoplastic elastomer can be recovered/reused/recycled/”fully recyclable” (paragraph [0015]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Siddhamalli et al. and Zhao et al. and to have utilized post-consumer materials of the thermoplastic elastomer composition, including the oil and the thermoplastic of the composition, in amounts as claimed and in accordance with the standards as claimed in the composition, hose, and method of Siddhamalli et al., as suggested by Zhao et al., for the purpose, of realizing the benefits of recycling materials known in the art to be suitable for being recycled (e.g. reduced costs, environmental stewardship).
As to the amounts of the thermoplastic elastomer suggested by the combination, the polymer matrix of Siddhamalli et al. can be utilized in amounts greater than 50% by weight in the original composition. Further, the combination suggests reusing the materials as a whole and this suggests utilizing the same composition as a whole (i.e. 100% by weight of the materials). In either understanding, the claim is understood to be met by the combination regarding the amount of material utilized.
As to the standards by which this post-consumer material is identified, selected, traced, controlled and declared to be compliant, etc. (i.e. these are the factors and criteria that are understood to be in view based on the recited standards), one having ordinary skill in the art would have found it prima facie obvious to have responded to market forces and/or government requirements in order to be able utilize the recyclable post-consumer materials again. While complying with such standards may require effort, this effort is not understood to be inventive. Instead, it is understood to be a routine expedient in the art. Each of the secondary suggests reusing the materials post-consumer and the combination suggests a composition, hose, and method that includes the required amounts and type of material. Whatever business requirements and/or government regulations are required to be able to implement the suggestion of the prior art (e.g. demonstrating or achieving compliance with certain current standards to facilitate marketing or to be able to demonstrate the material is suitable for use in particular applications) are understood to be a routine expedient in the art absent a showing of new or unexpected results. Recognizing the known advantages of recycling (e.g. lower cost and/or environmental stewardship) is not a new or unexpected result. Further, the claims do not require any particular property be attributed to the composition or hose. As such, any argument that there is some difficulty in producing a composition or hose from recycled materials having certain properties (e.g. harder to make a hose having the same mechanical properties from recycled material as it would be to make a hose having those properties from virgin material) would generally be understood to not be commensurate in scope with the claims.
As to claims 4-7, above in the rejection of claim 1, Siddhamalli et al. utilize the claimed materials, utilize them in amounts that overlap the claimed range, and the compositions have properties that overlap the claimed range.
Regarding claim 8, the combination set forth above teaches the thermoplastic elastomer as set forth in claim 1. Further, Siddhamalli et al. teach the composition is utilized to produce a hose/tubing (Abstract; paragraphs [0024], [0025], [0032]). When produced as disclosed in one embodiment (e.g. as the only layer of a hose/tube – paragraph [0024]), the hose/tube will have amounts of post-consumer material and the thermoplastic elastomeric material in amounts as claimed.
Regarding claim 14, the combination teaches the composition and the hose as set forth above. Further, Siddhamalli et al. teach extruding the material to produce a first layer of a hose/tube (paragraphs [0024], [0025] and [0032]). Regarding the dimensions set forth in the claim regarding the extrusion head and the outlet neck, one having ordinary skill in the art would have readily determined the appropriate sizes of the equipment in order to produce the required articles in the required amounts. The scope of the claim is indefinite (see the section 112b rejection above). To the extent the scope of the claim can be determined, it is submitted that the dimensions are directed to conventional components of an extrusion system and that these components can be conventionally understood as having the required sizes since it is not clear where the recited components necessarily begin and end or how the components interrelate with each other. Absent further clarity in the claim, the length limitations of the claim are understood to be rendered prima facie obvious by the disclosure of extruding a hose.
Claims 9-13, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Siddhamalli et al. (US 2012/0070597) in view of Zhao et al. (US 2003/0092846), as applied to claims 1-and 4-8 and 14 above, and further in view of any one of Cegalin et al. (US 10,981,349), Bunting et al. (US 10,189,198), Montalvo et al. (US 8,752,591), Kawazura et al. (US 6,179,008), Hempel (US 4,822,548), or Oglesby et al. (US 4,706,712).
As to claims 9-13, 15 and 16, the combination teaches the hose and method as set forth above. Further, it is noted that adding additional polymeric and reinforcing layers or materials to hoses or methods of producing such hoses is routine in the art. Additionally, each of Cegalin et al. (Abstract; Figures 1 and 2), Bunting et al. (Abstract; Figures 1 and 2), Montalvo et al. (Abstract; Figures 2-7), Kawazura et al. (Abstract; Figures 1-8), Hempel (Abstract; Figure 1), and Oglesby et al. (Abstract; Figures 1-6) provide analogous hoses and methods of producing hoses wherein additional layers and reinforcements are added. Each of these is understood to suggest the claimed configurations for use with the thermoplastic elastomer hose layer of Siddhamalli et al. to teach and suggest each and every limitation set forth in the claims to one of ordinary skill in the art.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Siddhamalli et al. (paragraphs [0024] and [0025]) and any one of the secondary references and to have added additional polymeric layers and/or reinforcement layers/materials as claimed to the hose or method of Siddhamalli et al., as suggested by any one of the references, for the purpose, as suggested by the references of producing a hose having desired properties for a particular application (e.g. strength, flexibility, mechanical properties, chemical resistance or inertness).
Response to Arguments
Applicant’s arguments filed April 6, 2026 have been fully considered. The arguments directed to the Cornils et al. reference have been fully considered, and they are persuasive. As such, the rejection that included the Cornils et al. reference has been withdrawn.
Applicant’s arguments regarding the teaching of Zhao et al. have been fully considered, but they are not persuasive. Applicant argues that Zhao et al. only disclose the recyclability of the olefinic component and of the final composition and not recycled oil because Zhao et al. disclose “Hydrobrite White paraffinic oil”. This argument is not persuasive.
While the examiner agrees that the teaching of Zhao et al. suggests that the initial utilization of the paraffinic oil is from a source that is not explicitly a post-consumer/recycled source of the plasticizing agent/oil, the examiner does not agree that the claim is limited to such a usage. This initial composition of Zhao et al., as argued, may be properly understood as not meeting the claimed invention; however, it is not this initial composition that is applied or relied upon in the rejection. Zhao et al. teach that “the composition” (paragraph [0081]) is “fully recyclable” (paragraph [0015]) and exemplify recycling of the composition, including all the components such as the plasticizing agent and the thermoplastic part, in Example 1 (paragraph [0121] and Table IV). As such, when the original composition of Zhao et al., which does not read on the claimed invention, is re-utilized/recycled, the “Hydrobrite White paraffinic oil” becomes recycled oil, is no longer a virgin oil, and the recycled limitations of the claim are taught and suggested. As such it follows that Zhao et al. still reasonably teach and suggest utilizing the claimed materials as required by the amended claim.
Further, the examiner submits that it is clear from the teaching of Zhao et al. that, when utilized, the additives/plasticizers/oil are not separated out from thermoplastic components prior to being recycled but that they are also recycled as part of the composition. Zhao et al. teach and suggest the articles produced from the composition can be reused post-consumer and teach and suggest the composition is “fully recyclable” (paragraph [0015]; note the word “fully”) and that it is “the composition” that is recycled (paragraph [0081]; “the composition” includes the additives, such as the plasticizing agent/mineral oil) and that the full-composition is recycled in Example 1 (paragraphs [0121] and Table IV). As such, Zhao et al. establish that these articles would/can include both the plasticizer/mineral oil and the thermoplastic part of the composition.
It is submitted that the claims would need to be further amended to overcome the prima facie case of obviousness.
As to claim 14, the newly added length limitations have rendered the scope of the claim indefinite for the reasons set forth above. To the extent the scope can be determined, the dimensions set forth in the claim regarding the extrusion head and the outlet neck would have been readily determined in order to produce the required articles in the required amounts. Absent further clarity, it is submitted that the dimensions are directed to conventional components of an extrusion system and that these components can be conventionally understood as having the required sizes since it is not clear where the recited components necessarily begin and end or how the components interrelate with each other. Absent further specificity and clarity in the claim, the rejection is understood to remain proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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