DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 14-17 and 27-29; “a composition”) in the reply filed on 04/24/2026 is acknowledged. The applicants at pages 4 and 5 of their Remarks filed 04/24/2026 argue that the restriction requirement is not proper because the PCT proceeding that the Examiner did not require a lack of unity between the original claims and believed there was a separate invention, and the claims as amended do make a contribution over Kohno et al. of record as Kohno et al. do not teach or would have suggested a composition comprising the claimed matting agent.
Restriction is ultimately determined by the USPTO’s application of § 371 and MPEP § 802.01, not solely by the PCT’s international phase outcome. Thus, the Examiner is not bound by the results of the PCT proceeding. Moreover, the claims originally when the restriction requirement was mailed out on 02/24/2026 did not require a polystyrene matting agent and its particular amount. In any event, Kohno et al. do suggest the addition of a polystyrene, which according to paragraph [0061] of the present specification, is capable of being used as the claimed matting agent, for the purposes of obtaining a thermoplastic composition having excellent mechanical properties (Paragraphs [0150] and [0151]). Thus, it would have been obvious to one of ordinary skill in the art to add an optimum or workable amount of the claimed polystyrene as the matting agent in the composition with a reasonable expectation of successfully obtaining excellent mechanical properties as suggested by Kohno et al. Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 17-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 04/24/2026.
4. It is also noted that the applicants request rejoinder of non-elected claims (see Page 4 of Applicants’ Remarks filed 04/24/2026). However, the request for rejoinder is moot since the instant claims are not deemed allowable for the reasons set forth below. According to MPEP § 821.04 [R-3], “Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.” Since no allowable subject matter is currently present, the applicants’ request for rejoinder is not granted at this time.
Response to Claim Amendment filed 04/24/2026
5. Claim 14 was amended to include a limitation supported at paragraphs [0061] and [0062] of the specification as originally filed.
New claims 27-29 were also added, which are supported at paragraph [0061] of the specification as originally filed.
Thus, no new matter is present.
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.
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.
6. Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2020/0223561 (hereinafter referred to as “WO ‘356”).
As to Claims 14-17: WO ‘356 teaches a thermoplastic composition for molded articles (Paragraph [0001]), comprising a thermoplastic elastomer including, for example, at least one selected from polyurethane-based thermoplastic elastomers (corresponding to the claimed thermoplastic polyurethane or TPU) such as polyester thermoplastic polyurethane and polyether thermoplastic polyurethane (Paragraphs [0011], [0031], and [0051]-[0057]) and a compound having a 9,9-bisarylfluorene backbone represented by the following formula (1) and useful for melt fluidity of the composition:
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wherein Z1 and Z2 represent an aromatic hydrocarbon ring, m1 and m2 are zero, p1 and p2 are 1, X1 and X2 are [(OA)n-Y], where n is zero and Y is a hydroxyl group or the like, and k represents 0 (Paragraphs [0010]-[0017] see also abstract), corresponding to the claimed flow enhancer when R is OR1 and R1 is a hydrogen. WO ‘356 also teaches that these fluorene compounds (flow enhancer) can be used in an amount of 0.1-50 parts by mass (Paragraphs [0018] and [0148]), which overlaps with the claimed amount of 0.1-5 wt.%. See MPEP section 2144.05 (“The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.”).
Moreover, WO ‘356 teaches the addition of a polystyrene (which according to paragraph [0061] of the present specification, is capable of being used as the claimed matting agent) for the purposes of obtaining a thermoplastic composition having excellent mechanical properties (Paragraphs [0150] and [0151]). However, WO ‘356 does not specify the particular amount of the polystyrene (corresponding to the claimed matting agent) as required by the claims (i.e., 4-10 wt. %). Nevertheless, WO ‘356 does teach employing the claimed polystyrene matting agent for the purposes of obtaining a thermoplastic composition having excellent mechanical properties (Paragraphs [0150] and [0151]). Thus, it would have been obvious to one of ordinary skill in the art to add an optimum or workable amount of the claimed polystyrene as the matting agent in the composition with a reasonable expectation of successfully obtaining excellent mechanical properties as suggested by WO ‘356. See MPEP section 2144.05, IIB.
7. Claims 14-17 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2020/022356 (hereinafter referred to as “WO ‘356”) in view of Park et al. (WO 2018/038573; utilized US 2019/0185655 as its English equivalent).
It is noted that Park et al. (WO 2018/038573) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely, US 2019/0185655 because WO 2018/038573 is in Korean.
As to Claims 14-17 and 29: WO ‘356 teaches a thermoplastic composition for molded articles (Paragraph [0001]), comprising a thermoplastic elastomer including, for example, at least one selected from polyurethane-based thermoplastic elastomers (corresponding to the claimed thermoplastic polyurethane or TPU) such as polyester thermoplastic polyurethane and polyether thermoplastic polyurethane (Paragraphs [0011], [0031], and [0051]-[0057]) and a compound having a 9,9-bisarylfluorene backbone represented by the following formula (1) and useful for melt fluidity of the composition:
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409
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wherein Z1 and Z2 represent an aromatic hydrocarbon ring, m1 and m2 are zero, p1 and p2 are 1, X1 and X2 are [(OA)n-Y], where n is zero and Y is a hydroxyl group or the like, and k represents 0 (Paragraphs [0010]-[0017] see also abstract), corresponding to the claimed flow enhancer when R is OR1 and R1 is a hydrogen. WO ‘356 also teaches that these fluorene compounds (flow enhancer) can be used in an amount of 0.1-50 parts by mass (Paragraphs [0018] and [0148]), which overlaps with the claimed amount of 0.1-5 wt.%. See MPEP section 2144.05 (“The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.”).
However, WO ‘356 does not specifically mention the addition of a matting agent comprising polystyrene and polyacrylate or polyethylene, and its particular amount as required by claims 14 and 29.
Nevertheless, Park et al. teach employing 0.1-10 parts by mass of a matting agent including polystyrene and polyacrylate or polyethylene to provide a thermoplastic resin composition with good properties in terms of fluidity, weather resistance, and impact resistance suitable for molded articles (Paragraphs [0042]-[0048] and [0057]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed amount of matting agent including polystyrene and polyacrylate or polyethylene taught by Park et al. in the composition of WO ‘356, with a reasonable expectation of successfully obtaining good properties in terms of fluidity, weather resistance, and impact resistance suitable for molded articles.
8. Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2020/022356 (hereinafter referred to as “WO ‘356”) in view of Park et al. (WO 2018/038573; utilized US 2019/0185655 as its English equivalent) as applied to claims 14-17 and 29 above, and further in view of Sugita et al. (US 2017/0103828).
The disclosures with respect to WO ‘356 and Park et al. in paragraph 7 are incorporated here by reference. However, they do not specifically mention the addition of inorganic materials such as silica in the matting agent as required by claims 27 and 28.
Nevertheless, Sugita et al. disclose the use of a matting agent including inorganic compounds such as silica and polystyrene to a thermoplastic polyurethane for molded articles (Paragraph [0044] and see also abstract).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the matting agent including inorganic compounds such as silica and polystyrene taught by Sugita et al. to a thermoplastic polyurethane of the composition suggested by WO ‘356 and Park et al., with a reasonable expectation of successfully using the same for molded articles.
Correspondence
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 10/23/2024.
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