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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Groote et al (US 20170218192 A1) in view of Eiji et al (JP 2004210933 A, machine translation is referenced herein).
Regarding claims 1-8, Groote teaches dynamic cross-linked polymer compositions (or DCNs) by curing pre-dynamic cross-linked polymer compositions [0036, 0045]. The pre-dynamic cross-linked polymer composition comprises polyesters including poly(butylene terephthalate) (PBT) [0055], which is art recognized as a polycondensate of terephthalic acid and 1,4-butanediol.
The examiner submits that the PBT reads on the claimed polyester unit as specified in claim 3: terephthalic acid reading on the claimed polyvalent carboxylic acid component (A); 1,4-butanediol reading on the claimed polyhydric alcohol component (B).
The polyesters also includes aliphatic polyester prepared from the polycondensation of glycol and aliphatic dicarboxylic acids such as sebacic acid [0063]. Sebacic acid reads on the recited saturated aliphatic dicarboxylic acid having 5 to 20 carbon atoms in claim 4, as evidence by the applicant [0066 spec.].
Groote teaches that the composition comprises silica powders as a filler [0096], which read on the claimed silica particles recited in claim 2.
Groote does not teach that the diol unit in the polyester further comprises at least one selected from the group consisting of neopentyl glycol, cyclohexanedimethanol, diethylene glycol, 2,2-diethyl-1,3-propanediol, 2-n-butyl-2-ethyl-1,3-propanediol, 2,2-isopropyl-1,3-propanediol, 2,2-di-n-butyl-1,3-propanediol, and hexanediol as specified in claim 5.
In the same field of endeavor, Eiji teaches a dynamically crosslinked thermoplastic resin composition comprising a thermoplastic polyester type polymer and a functionalized addition polymerization-based block copolymer [0009]. The thermoplastic polyester type polymer includes polybutylene terephthalate-based resin (PBT) [0033]. Besides 1,4-butanediol, the diol unit in the polyester can include neopentyl glycol and cyclohexanedimethanol [0037]. The functionalized addition polymerization-based block copolymer includes epoxy groups [0028].
It would have been obvious to one of ordinary skill in the art at the time of filing to select neopentyl glycol and cyclohexanedimethanol as the diol unit in Groot’s polyester composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Neopentyl glycol and cyclohexanedimethanol read on the claimed polyhydric alcohol component (B) in claim 5.
Groote teaches that the composition comprises a transesterification catalyst [0037], as recited in claim 6.
Thus, Groote in view of Eiji teaches the same product of a crosslinked polyester resin as specified in claims 2-6.
The recited “the crosslinked polyester resin having covalent bond exchange properties at a temperature of 150° C. or higher and having a gel fraction of 80% by mass or higher” in claim 1 is a property of the product. Similarly, the recited “having a Young's modulus of 50 MPa or higher, the Young's modulus being calculated from a gradient of a stress-strain curve at 2% elongation” in claim 7 and the recited “having a tensile strength of 10 MPa or higher” in claim 8 are properties of the product. “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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited properties are expected to be present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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