DETAILED ACTION
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 1-9 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 the negative limitation “wherein the polyester elastomer is free of an amide group”. This limitation is new matter as there is no positive recitation in the specification for this negative limitation (MPEP 2173.05(i)). While applicant’s remarks point to paragraphs 18-21 for support, neither this section of the specification, nor the specification at large disclose the presence or absence of amide groups. The specific embodiment disclosed in paragraphs 18-21 does not happen to have amide groups, but since the word “amide” does not appear at all in the disclosure, there is not a positive recitation in the specification, as required in the MPEP.
Claims 2-9 are rejected as they are dependent on the independent claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Vollenberg et al. (US 20080023887 A1) in view of Na et al (KR 101008928 B1, see machine translation for citations).
Regarding Claims 1 and 3: Vollenberg teaches a copolyetherester/copolyester (abstract) wherein the copolyetherester/polyester elastomer is the product of a reaction of polyethylene terephthalate (PET) (para 39-40), 1,4-butanediol (para 41), and polyalkylene oxide glycol (para 42). Vollenberg further teaches a rection comprising of 3.49g PET, 2.82g ethylene glycol, 2.45g 1,4-butanediol, and 1.20g polytetrahydrofuran (para 133). The weight ratio of PET and diol is about 1:1.5 (3.49g : 2.82g + 2.45g) and the weight ratio of PET to polytetrahydrofuran/poly(alkylene ether) glycol is about 1:0.34 (3.49g : 1.20g). Vollenberg teaches a copolyetherester (Example 6) that is free of amide groups (para 131). However, Vollenberg is silent on the copolyetherester comprising of 0.01 to 0.29 parts by weight based on 100 parts by weight of the polyester elastomer of a compound having multi-functional groups wherein the compound having multi-functional groups comprises trimesic acid, 1,1,1-trimethylolpropane, pentaerythritol, sorbitol or a combination thereof.
Na teaches a thermoplastic polyester elastomer composition comprising a branching agent of pentaerythritol in an amount of 0.05 to 0.1% by weight (Page 4, lines 21-29). Na and Vollenberg are analogous art because they are directed towards the same field of endeavor namely thermoplastic polyester elastomers. It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to add the pentaerythritol branching agent of Na to the copolyetherester of Vollenberg. Na teaches that branching agents may be added to increase the melt tension of the elastomer melt viscosity. When the content of the branching agent is less than 0.05% by weight, it is difficult to expect an increase in the melt viscosity. When the content of the branching agent is more than 0.1% by weight, the melt viscosity of the TPEE is excessively increased, making it difficult to control the intrinsic viscosity during melt polymerization (Page 4, lines 26-29). One of ordinary skill in the art would have been motivated to add the pentaerythritol to the copolyetherester to increase the melt viscosity leading to a stronger molded product.
Regarding Claim 4: Vollenberg further teaches the polyalkylene oxide glycol comprising of polyethylene oxide, polypropylene oxide, polybutylene oxide or combinations thereof and has a number average molecular weight of 200 to 3000 Daltons, overlapping the claimed range.
Regarding Claim 5: Vollenberg further teaches the copolyetherester/TPEE with an intrinsic viscosity of 1.03 dL/g (Table 1).
Regarding Claim 6: Vollenberg further teaches the copolyetherester derived from scrap/recycled PET (para 21).
Regarding Claims 7 and 8: Vollenberg further teaches the copolyetherester comprising of 1,4-butane diol and polyalkylene oxide glycol derived from biomass (para 45).
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Vollenberg et al. (US 20080023887 A1) in view of Na et al (KR 101008928 B1) in further view of Kawakami et al (US 20040034142 A1).
Regarding Claim 2: Modified Vollenberg teaches all of the requirements of claim 1, as seen above. However, Vollenberg is silent on the PET having an intrinsic viscosity of 0.55 to 0.85dL/g.
Kawakami teaches a polyethylene terephthalate (PET) with an intrinsic viscosity of 0.6 to 1.3 dL/g (para 91) overlapping the claimed range of 0.55 to 0.85dL/g. Kawakami and Vollenberg are analogous art as they are directed towards the same field of endeavor, namely thermoplastic elastomer compositions comprising of PET. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the copolyetherester of Vollenberg with the PET of Kawakami. Kawakami discloses that when the intrinsic viscosity of the polyethylene terephthalate is less than 0.60 dl/g, the resultant molded product tends to be deteriorated in mechanical properties, especially impact resistance. On the other hand, when the intrinsic viscosity of the polyethylene terephthalate is more than 1.30 dl/g, the resultant composition tends to be deteriorated in moldability (para 91). One of ordinary skill in the art would have been motivated to modify the PET to have an intrinsic viscosity of 0.6 to 1.3 dL/g in order to make a product with better mechanical properties.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Vollenberg et al. (US 20080023887 A1) in view of Na et al (KR 101008928 B1) in further view of Ou et al (US 20230151178 A1).
Regarding Claims 9: Modified Vollenberg teaches all of the requirements of claim 1, as seen above. However, Vollenberg is silent on a foam material made from the copolyetherester.
Ou teaches a multiblock copolyester ether thermoplastic elastomer foam (abstract). Ou and Vollenberg are analogous art as they are directed towards the same field of endeavor, namely polyester elastomers comprising of PET and polyalkylene ether glycols. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the copolyetherester of Vollenberg with the foaming of Ou. Ou discloses that thermoplastic polyether ester elastomer can be foamed to produce the midsole of a shoe (para 5). One of ordinary skill in the art would have been motivated to foam the copolyetherester of Vollenberg to create new commercial products, such as the midsole of a shoe.
Response to Arguments
Applicant's arguments filed September 8, 2026 have been fully considered but they are not persuasive.
A) Applicants argue that Na et al (KR 101008928 B1) cannot be suitably combined with the primary reference as Na teaches away from a polyester elastomer with PTMEG as the soft segment and instead teaches a copolyester ester with a polyester diol soft segment. Applicants argues that one of ordinary skill in the art seeking to incorporate the teachings of Na would be motivated to replace the PTMEG with a dimer fatty acid-derived polyester diol leading to a product that is different from the polyester elastomer cited in claim 1. This argument is not persuasive as only the additive pentaerythritol branching agent, not the specific polyester elastomer, taught by Na is incorporated into the teachings of the primary reference. Both references are directed towards TPEEs and the pentaerythritol would serve the same function in the copolyetherester of Vollenberg as the polyester elastomer of Na without the need for the soft segments too be substituted. Na teaches suitable motivation for the addition of pentaerythritol as it would result in increased melt viscosity. Additionally, Na discloses favorable properties of PTMEG soft segments including water resistance and low-temperature properties (abstract). It would have been obvious for one of ordinary skill in the art to add the pentaerythritol of Na to the copolyetherester of Vollenberg while retaining the PTMEG soft segment leading to a copolyester that reads on all the limitations of Claim 1.
B) Applicants argue that the polyester elastomer taught by Hung does not meet the amended claim 1 limitation of a polyester elastomer that is free of an amide group. Applicants argues that Hung teaches a preparation of a polyether ester that requires a monoamino alcohol leading to the formation of an amide-group-containing polyether-ester material. Applicants argument (b) is moot as the new grounds of rejection does not rely on Hung as a reference.
Applicants arguments for claim 1 are not persuasive therefore the same arguments are not persuasive for claims 2-9 that are dependent on claim 1.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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/T.J.B./Examiner, Art Unit 1767
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
