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
1. Applicant’s amendments and accompanying remarks filed 7/10/25 have been fully considered and entered. Claims 1, 17(withdrawn),19, 20 and 24 have been amended, claims 14 and 23 are canceled. Applicant’s amendments are found sufficient to overcome the 112 2nd paragraph rejections of claims 1, 20 and 23 as set forth in the Action dated 4/10/25. As such, these rejections are hereby withdrawn. With regard to the rejections of claim(s) 1-4, 7-13, 15-16 and 19-24 rejected under 35 U.S.C. 103 as being unpatentable over Lustiger et al., US 2009/0130443 A1 in view of WO Peltola et al., 2013/14421, Applicant’s amendments are found sufficient to overcome this rejection. As such, the obviousness rejection made over the combination of Lustiger et al., US 2009/0130443 A1 in view of WO Peltola et al., 2013/14421 is hereby withdrawn. However, with regard to the rejections made over of WO Peltola et al., 2013/14421 in view of KR document 20120065547 (claims 1-2, 7-13 and 15-16) and further in view of JP 2013099945 (claim 6), the rejections of claim(s) 1-4, 7-13, 15-16, 19-20 and 22-24 rejected over WO Peltola et al., 2013/14421 in view of Lustiger et al., US 2009/0130443 A1 and the rejections of claim(s) 5-6 are rejected over WO Peltola et al., 2013/14421 in view of KR document 20120065547, WO Peltola et al., 2013/14421 in view of Lustiger et al., US 2009/0130443 A1 as applied to claim 1 and further in view of EP 1250995 A1, Applicant’s amendments and accompany remarks are not found sufficient and persuasive to withdrawn these rejections for reasons set forth below. In addition, Applicant’s amendments further necessitated the following new ground of 112 2nd paragraph rejections set forth herein below.
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 1-13,15-16, 19-22 and 24 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.
4. With specific regard to claims 1, 17 (withdrawn) and 19 said claims are considered indefinite because it is not clear what is meant by the limitation of “at least one profile surface formed on the base and as an outside of the extrusion profile”. Specifically, it is not clear what is meant by a “profile surface”. Do Applicants intend to form a two-layer composite (e.g., a base and a surface layer) or does the surface of the base visible to the outside have the claimed mixture of plastic and mica? It is further unclear what delineates the base from the surface? In other words, it is not clear how much of the base comprises the surface since Applicants have not defined what constitutes the surface profile other than comprising the mixture of plastic and mica (e.g., separate layer? specific thickness? different material from the base?) and further has not limited the base to any particular structure, thickness and/or material. As presently claimed the base and the “surface” profile can both comprise the claimed mixture of plastic and mica as Applicants have not limited the base to include or exclude any materials. It also appears that Applicants are attempting to claim an extrusion profile comprising a base layer and surface layer wherein the surface layer is comprised of/limited to consisting of the mixture of the plastic and mica, however, Applicants claim language fails to capture the scope of such an embodiment. For purposes of examination the Examiner will construe the claimed extrusion profile to having a base comprising at least a “surface” profile comprising the claimed mica and plastic (e.g., mica and plastic present or visible on the outer surface). Furthermore, since Applicants have not limited the “surface” profile to a separate layer and/or distinguished the base from the “surface” profile in any limiting way, the Examiner is also of the position that a base comprising the mixture of plastic and mica (or any other filler) would also read the claimed “surface” profile comprising the claimed mixture of plastic and mica. Claims 2-13, 15-16, 20-22 and 24 are rejected for their dependency on claims 1 and 19.
Claim Rejections - 35 USC § 103
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
6. Claim(s) 1-2,7-13 and 15-16 stand rejected under 35 U.S.C. 103 as being unpatentable over WO Peltola et al., 2013/14421 in view of KR document 20120065547.
The published WO application issued to Peltola et al., teach resin composition comprising a resin, cellulose fibers and mineral filler (abstract, page 5, 5-30, page 8, 25-page 9, 20). Peltola et al., teach using PVC in amount of at least 50 wt. % (page 9, 10). Peltola et al., teach several fillers such as calcium carbonate, talcum or titanium dioxide (page 9, 5-20). Peltola et al., further teach that more than one of these fillers can used/combined in the resin composition (page 9, 5-20). These fillers meet the limitations of a mineral and additive. The Examiner is also of the position that talc or titanium dioxide meets the limitation of a pigment. Peltola et al., teach using 20-80 wt. % of the resin material (page 9, 5-20). With regard to the amount of filler, Peltola teaches using from 0-20 wt. % (page 9, 20). The combination of filler or additive with the resin would amount to the claimed 95 wt. %. With regard to the cellulose, Peltola et al., teach using from 5-80 wt. % (page 9, 20). With regard to the claimed “surface” profile, Peltola et al., illustrates in figure 1e, a composite plastic part having a surface layer (12) and a base layer (13). Said surface layer (12) comprises a thermoplastic polymer and cellulose particles (see abstract). Peltola et al., further teach that the surface layer can further comprise mineral fillers such as titanium dioxide and talcum and colorants and further may comprise several fillers in combination (page 9, 15-25). The Examiner is of the position that such a two-layer structure meets the limitation of the claimed base and the claimed “surface profile”. Peltola et al., teach using the resin composition to extrusion mold windows (page 1, 15 and page 3, 10).
Peltola et al., does not teach the claimed mica filler.
The published KR document teach forming a resin composition comprising synthetic resin and filler materials such as mica (abstract). The published KR document teach an environmentally friendly synthetic resin composition for fittings comprises 100 parts by weight of thermoplastic resin which includes acrylic rubber, 3-10 parts by weight of organic filler, and 1-10 part by weight of fibrous reinforcing agent. The fibrous reinforcing agent is more than one or two kinds which is selected from glass fiber, wallastonite, sepiolite, and mica. The inorganic filler is one or two kinds which is selected from calcium carbonate (CaCO3), kaolin, clay, silica, and talc. An average diameter of the inorganic filler is 2-15 micro meters and pH is 7-9. The Examiner is also of the position that mica meets the limitation of a pigment. Said composition is used to form window frames (title).
Based on the combination of teachings, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to formulate the resin composition in the first surface layer (12) of the Peltola et al., composite part with mica as the filler (colorant, pigment) as taught by the published KR document. The Examiner considers both cited prior art references analogous on the grounds that both references are concerned with forming filled resin compositions used to form window frames. Moreover, both cited references teach adding the same types of fillers (pigments) to each of the resin compositions. Motivation to specifically employ Mica is found in the desire to employ a mineral filler that also exhibits a shimmery appearance on the surface layer (12).
With regard to claim 10, the Examiner is the position that a person of ordinary skill in the art would recognize that any type of pigment color can be selected depending on desired color. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1395 (2007). The selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199, 125 USPQ 416, 418 (CCPA 1960).
7. Claim(s) 6 stands rejected under 35 U.S.C. 103 as being unpatentable over WO Peltola et al., 2013/14421 in view of KR document 20120065547 as applied to claim 1 and further in view of JP 2013099945.
Modified Peltola et al., does not teach the claimed magnesium silicate mineral additive.
The published JP application teach a resin body used to form a window that comprises magnesium silicate. Said magnesium silicate improves thermal conductivity and tracking resistance (see translated document). Therefore, motivated by the desire to improve thermal conductivity and tracking resistance of the resin composition it would have been obvious to add magnesium silicate as the mineral additive to the composition modified Peltola et al., as taught by the published JP application.
8. Claim(s) 1-4, 7-13, 15-16, 19-22 and 24 stand rejected under 35 U.S.C. 103 as being unpatentable over WO Peltola et al., 2013/14421 in view of Lustiger et al., US 2009/0130443 A1.
The published WO application issued to Peltola et al., teach a resin composition comprising a resin, cellulose fibers and mineral filler (abstract, page 5, 5-30, page 8, 25-page 9, 20). Peltola et al., teach using PVC in amount of at least 50 wt. % (page 9, 10). Peltola et al., teach several fillers such as calcium carbonate, talcum or titanium dioxide (page 9, 5-20). Peltola et al., further teach that more than one of these fillers can used/combined in the resin composition (page 9, 5-20). These fillers meet the limitations of a mineral and additive. The Examiner is also of the position that talc or titanium dioxide meets the limitation of a pigment. Peltola et al., teach using 20-80 wt. % of the resin material (page 9, 5-20). With regard to the amount of filler, Peltola teaches using from 0-20 wt. % (page 9, 20). The combination of filler or additive with the resin would amount to the claimed 95 wt. %. With regard to the cellulose, Peltola et al., teach using from 5-80 wt. % (page 9, 20). With regard to the claimed “surface” profile, Peltola et al., illustrates in figure 1e, a composite plastic part having a surface layer (12) and a base layer (13). Said surface layer (12) comprises a thermoplastic polymer and cellulose particles (see abstract). Peltola et al., further teach that the surface layer can further comprise mineral fillers such as titanium dioxide and talcum and colorants and further may comprise several fillers in combination (page 9, 15-25). The Examiner is of the position that such a two-layer structure meets the limitation of the claimed base and the claimed “surface profile”. Peltola et al., teach using the resin composition to extrusion mold windows (page 1, 15 and page 3, 10).
Peltola et al., does not teach the claimed mica filler or claimed pigmented cellulose.
The published patent application issued to Lustiger et al., teach forming a fiber reinforced polypropylene composite used to form molded articles such as those used in automotive parts. Said fiber reinforced polypropylene composite comprises a base polypropylene in amount ranging from 5-70 wt. % (paragraph 0082), synthetic organic fiber pellets and inorganic filler such as mica in an amount ranging from 0-60 wt. % (claims 26 and 44). It appears that such fillers influence the stiffness, impact resistance and/or flexural modulus (paragraph 0094). Mica is also known a mineral filler to impart a shimmery appearance (pigment). With regard to claim 13, Lustiger et al., also teach adding other additives such as a lubricant and/or waxes (paragraph 50 and claims 5, 26 and 30). With regard to claim 15, Lustiger et al., teach the claimed metering processes (claim 37). With regard to claim 21, Lustiger et al., teach that colorant fiber can alternatively be made from acrylic, nylon or polyester (paragraph 0087). The Examiner is of the position that it is within the skill of a person in the art to substitute the cellulose particles/fiber of Peltola et al., with colorant fibers made from acrylic, nylon or polyester. Such an embodiment would be cellulose free.
Based on the combination of teachings, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to formulate the resin composition in the first surface layer (12) of the Peltola et al., composite part with mica as the filler (colorant, pigment) and/or the colored fibers made of acrylic, nylon or polyester as taught by Lustiger et al. The Examiner considers both cited prior art references analogous since both references are concerned with forming filled resin compositions used to mold and manufacture interior and exterior automotive parts (Lustiger et al., paragraph 0096). The Examiner further considers a window frame or profile an interior or exterior automotive part.
With regard to claims 3-4,19-20, 22 and 24, Lustiger et al., further teaches adding a colorant fiber to the fiber reinforced resin composition (claims 26 and 36). Said colorant fiber can be a cellulose fiber and can be added to the resin composition in amount ranging from 1-25 wt. % (claim 36). Lustiger et al., teach that the base polypropylene can be colored a light grey and the colorant pigment added to the cellulose fiber can be a dark grey (paragraph 0090-0091). With regard to the specific claimed colorants set forth in claims 10, 19 and 24, the Examiner is the position that a person of ordinary skill in the art would recognize that any type of pigment color can be selected depending on desired color. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1395 (2007). The selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199, 125 USPQ 416, 418 (CCPA 1960). With regard to claim 22, Lustiger et al., teach iron oxide (paragraph 0090).
Therefore, motivated by the desire to mold and manufacture an automotive part/window frame etc., having a decorative appearance and/or feel it would have been obvious to a person of ordinary skill in the art to substitute the cellulose particles/fibers of Peltola et al., with the colorant cellulosic fibers of Lustiger et al. The modification involves the mere substitution of one cellulosic type particle/fiber (non-pigmented) with another material known pigmented cellulosic fiber for its suitability coloring agent and would yield a predictable variation whose application is well within the skill of the art.
Moreover, both cited references teach adding the same types of fillers (pigments and/or minerals) to each of the resin compositions. Motivation to specifically employ the specifically claimed minerals and/or pigments is found in the desire to provide an article that exhibits a specifically desired shimmery or color appearance (pigment) and/or impart stiffness and strength to the resin compositions.
9. Claim(s) 5-6 stand rejected under 35 U.S.C. 103 as being unpatentable over WO Peltola et al., 2013/14421 in view of KR document 20120065547or WO Peltola et al., 2013/14421 in view of Lustiger et al., US 2009/0130443 A1 as applied to claim 1 above and further in view of EP 1250995 A1.
Lustiger et al., Peltola et al., and the published KR document teach several of the claimed mineral fillers but fails to teach the mineral fillers of claims 5 and/or 6.
The published EP application teach a thermoplastic (PVC-paragraph 0066) composite material comprising several various fillers such as dolomite and several various pigments and molded articles thereof (paragraphs 0073, 0087, 0088). As set forth above, the cited prior art teach that these fillers are used as either pigments and/or agents to impart mechanical or thermal properties to the molded article. Though, the published EP application does not teach the claimed magnesium silicate as set forth in claim 6, the Examiner is of the position that based on the teachings of the cited prior art it would be within a skilled worker in the art to select a known filler as a function of desired aesthetics, mechanical and/or thermal properties as the filler used in the cited prior art references set forth above. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1395 (2007). The selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199, 125 USPQ 416, 418 (CCPA 1960).
Response to Arguments
10. With regard to the rejections of claims 1-13, 15-16, 19-22 and 24, Applicant’s amendments are not found sufficient to overcome the obviousness type rejections based on the combination of WO Peltola et al., 2013/14421 in view of KR document 20120065547 and/or WO Peltola et al., 2013/14421 in view of Lustiger et al., US 2009/0130443 A1 and Applicant’s arguments are not found persuasive of patentability. Applicants amended claims 1, 17 (withdrawn) and 19 to recite the limitation of a “base” and “at least one surface profile formed on said base” wherein further the at least mineral is limited to “at least one surface profile”. As set forth above, these limitations raise 112 2nd paragraph issues. Further, Applicants argue that the prior art of Peltola et al., does not teach these limitations. Rather, Applicants submit that the cited prior art references of Peltola et al., and Lustiger et al., teach that the fillers/pigments/particles/fibers are evenly distributed throughout the resin. In response, the Examiner has evidenced that Peltola et al., does teach a surface layer and a base layer. As such, this argument is not found persuasive. Applicants further submit that such fillers etc., reduce the strength of the strength of the profile. To avoid this strength reduction Applicants extrusion process includes the application of thin layer wherein the cellulose/pigments/filler/pigmented cellulose is limited to that layer. In response, the Examiner is of the position that Applicants arguments are not considered commensurate in scope with the claims. Applicants are not claiming an “extruded thin layer”. Rather, Applicants claim a “base” and at least one “surface profile” comprising the mixture of the plastic and mica. Applicants have also not limited the base to any particular material and/or limited the base to consisting of any specific materials. In other words, while the “surface profile” is limited to comprising the mixture of plastic and mica, the base is not limited to any specific materials and does not exclude or include the presence of fillers/pigments and/or additives. Applicants are also not claiming an extrusion profile having any specific mechanical or strength properties. For these reasons and in combination with the 112 2nd paragraph rejections set forth above, the Examiner is of the position that Applicants arguments are not persuasive and commensurate in scope with the claimed invention. The Examiner maintains that the combination of cited prior art still renders the rejected claims obvious.
Conclusion
11. THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789