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
Applicant’s amendment to the claims filed November 4, 2025 has been entered. Claims 1, 4, 8, 11 and 16 are currently amended. Claims 1-16 are pending and under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “wherein the thermoplastic elastomer retains mechanical properties that are at least 90% of the mechanical properties of a same thermoplastic elastomer made entirely of virgin material”. The limitation contains subject matter which was not described in the specification in such a way as to reasonably convey possession of the claimed invention. The instant specification does not appear to disclose the thermoplastic elastomer of claim 1 retains at least 90% of the mechanical properties of the same thermoplastic elastomer made entirely of virgin material. The rejection can be overcome by pointing to the location in the specification where support for the limitation may be found. The other claims are rejected as dependent claims.
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 1-16 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.
Claim 1 recites, “wherein the thermoplastic elastomer retains mechanical properties that are at least 90% of the mechanical properties of a same thermoplastic elastomer made entirely of virgin material”. The limiting effect of the recitation is unclear. It is not clear whether the recitation means that one mechanical property, some mechanical properties, or all mechanical properties of the thermoplastic elastomer of the claim which contains 50% or more by weight of post-consumer material is/are at least 90% of the mechanical property/properties of the same composition made entirely from virgin material. Further, it is not clear whether “virgin material” in this context is referring to just the polymeric components of the thermoplastic elastomer (e.g. component (A)) or whether the other components (e.g. components (B), (D) and (D) are also in view). Appropriate correction and clarification are required.
Claims 2-16 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 1-7 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], [0059], [0107]; 10 to 80 pph overlaps with 30 to 55% by weight of the total composition); (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).
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 the thermoplastic elastomer components 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, etc., 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 claim 2, Zhao et al. teach and suggest the articles produced from the composition can be reused post-consumer. These articles would include both the plasticizer and/or the thermoplastic materials.
As to claim 3, Zhao et al. utilize mineral oil (paragraphs [0059], [0063], [0107]; paraffinic/mineral oil).
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 1-8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Siddhamalli et al. (US 2012/0070597) in view of either one of Zhao et al. (US 2003/0092846) or Cornils et al. (US 5,336,349).
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 (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, each of Zhao et al. (paragraphs [0002], [0081] – recycled as post-consumer waste) and Cornils et al. (col. 2, lines 39-45 – an advantage of utilizing thermoplastic elastomers is that products produced from them can be recovered and reused without particular difficulties) disclose analogous compositions, products, and methods wherein it is disclosed the thermoplastic elastomer from post-consumer products produced from the thermoplastic elastomer can be recovered/reused/recycled.
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 either one of Zhao et al. or Cornils et al. and to have utilized post-consumer materials 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 either one of Zhao et al. or Cornils et al. 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. As such, in combination, even if only the polymer matrix of Siddhamalli et al. is the post-consumer material being reused, the amount of the material in the composition renders the scope of the claim prima facie obvious. 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, etc., 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 claim 2, the combination as set forth above suggests the entire composition of Siddhamalli et al. can be a post-consumer composition.
As to claim 3, Siddhamalli et al. teach the plasticizer can be a mineral oil (paragraph [0019]).
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]).
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 either one of Zhao et al. (US 2003/0092846) or Cornils et al. (US 5,336,349), as applied to claims 1-8 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 November 4, 2025 have been fully considered. The amendment to the claims has overcome the previous section 112b rejections. As such, the rejections have been withdrawn. It is noted that the amendment to the claims has necessitated new grounds of rejection under section 112.
As to the teaching of the Zhao et al. reference, applicant argues that Zhao et al. do not teach the amounts of recycled materials, but only make generic statements and notes that Zhao et al. acknowledge a decrease in the mechanical properties of recycled thermoplastic materials. This argument is not persuasive. The emphasized portion in paragraph [0081] of Zhao et al. makes clear that polyvinyl chloride easily degrades with recycling. 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 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. Further, as suggested by these citations and Table IV, the entire composition can be recycled. To suggest otherwise is to already have an implicit usage of the material necessarily in mind that reads limitations into at least claim 1 that are not there. It is further noted that the amount of recycled material would be readily determined for an application and the teaching that the material can be recycled suggests a composition of fully recycled elastomer (e.g. up to a 100% recycled if the application will allow). How this recycled composition would be ultimately used and in what amounts in a particular article is a different question. There is nothing to suggest the composition of claim 1 having amounts greater than 50% of post-consumer material would not have been prima facie obvious in view of the teaching of Zhao et al. Similarly, based on the suggestion in Zhao et al. that the properties are substantially maintained, it follows that the amount of material utilized could substantially correspond to the amount of virgin material in applications (e.g. up to 100%).
As to the cited article, there is nothing seen that suggests the teaching of Zhao et al. is not still applicable. The Abstract refers to chemically recycling thermoplastic elastomers. This is one known method of recycling. Additionally, mechanical recycling of thermoplastic elastomers is also known (see the Introduction in the article). The relevance of the article to overcome the rejection is not particularly clear and the teaching of both the article and Zhao et al. suggest thermoplastic elastomers can be recycled. Further, Zhao et al. explicitly teach their material is recyclable.
As to Cornils, the teaching as cited is understood to reasonably suggest the required amounts for similar reasons as those set forth above. Cornils teaches the “waste materials from the thermoplastic elastomer can be reused” and that “the recover and reuse of the thermoplastic elastomer can be carried out without particular difficulties” (col. 2, lines 39-45). This is reasonably understood to suggest that the composition can be used, as desired, and in desired amounts. Once such a material has been recovered from one application as required, it has become a post-consumer recycled composition. One would have had a reasonable expectation of success in reusing such a composition in desired amounts based on the needs of the application. Absent further specificity in the claims, the rejection is understood to remain proper.
It is submitted the claims would need to be further amended to overcome the section 112 rejections and the prior art rejections set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742