DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-2,5, 8, 9, 12 and 14-18 (all pending claims) 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. There is no support in the original disclosure for the claimed limitation “wherein when the metal part is in contact with or is not more than 10 cm away from the plastic part, there is a reduction in corrosion on a surface thereof, such that after corrosion exposure, the metal part only exhibits a corroded surface area of from about 1% to about 30%, wherein the corrosion exposure is performed by placing a metal part, in the form of 1 carbon steel rod having a diameter of 5 mm and a length of approximately 150 mm, and a plastic part, in the form of 3 polyacetal wherein 1 carbon steel rod, 3 POM-tensile bars comprising the carbodiimide, cut in half into a 50 mL of saturated aqueous KCl solution in a corrosion chamber for 50 hours at 90C; wherein the reduction in corrosion is relative to a metal part that is in contact with or is not more than 10cm away from a plastic part containing polyacetal but no carbodiimide polymer.” There is no support in the specification for the limitation “wherein the reduction in corrosion is relative to a metal part that is in contact with or is not more than 10cm away from a plastic part containing polyacetal but no carbodiimide polymer.” Rather, the specification states the control was a jar with no POM. Furthermore, the test in the specification has the POM placed 2mm from the metal-thus, the specification does not support the limitation wherein when the metal part is in contact with or is not more than 10 cm away from the plastic par. Additionally, the specifics of the corrosion tests are not claimed (E.g. the picture and software utilized to determine corrosion) and the findings of table 1 cannot be extrapolated to other compositions within the scope of the claimed invention (e.g. other POMs, other carbodiimides, compositions containing filler and/or additives, components at different distances, different metal substrates, etc.).
Furthermore, the cited disclosure in specification does not agree in scope with the proposed claim language and cannot clearly be extrapolated to all embodiments covered by the proposed claims. For example, the examples in the specification are directed to a single carbon steel substrate and cannot clearly be extrapolated to other carbon steel rods. Furthermore, the examples in the specification are directed to samples comprise 100% POM and cannot extrapolated to other compositions containing filler or additives. Additionally, the disclosure in the specification of corrosion decrease is not evidence for all compositions claimed regardless of the carbodiimide utilized.
With regards to claim 8, there is no support in the original disclosure for the claimed invention wherein “when the metal part is in contact with or is not more than 10cam away from the plastic part, the metal part exhibits a reduction in corrosion on a surface of the metal parts relative to a metal part that is in contact with or is not mor tan 10cm away from a plastic part containing polyacetal but no carbodiimide polymer” for the same reasons as set forth with regards to claim 1 above.
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, 2, 4-9, 11, 12, and 14-18 (all pending claims) 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. Specifically, it is unclear how the determination of “reduction in corrosion” in claims 1 and 8 is made; must the inventive and comparative embodiments be the same distance apart, comprise the same polyacetal and/or contain the same optional additives and fillers as the inventive embodiment to which it is being compared? How is the reduction in corrosion determined-there is no objective standard set forth in the specification for making said determination.
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.
Claims 1-2, 5, 8-9, and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al (US 5,559,180) in view of a) EP 0970994 (herein referred to as “Imashiro”) and b) Cano Sierra et al (US 2011/0112230) as evidenced by US 2012/0277353.
Takahashi teaches an assembly comprising a polyacetal plastic part and a metal part; specifically, Takahashi teaches it is known that polyacetal compositions are used in plastic wear systems and may be used in conveyor chains wherein the links are made of polyacetal and the pins connecting the link and the guided rails which are in in contact with the chain links, may each be made of stainless steel. Additionally, the gears may also be made of polyacetal (see Background of the Invention). Herein, the stainless steel rails of Takahashi are understood to read on the claimed stainless steel rods of claim 15 as the terms “rods” and “rails” are synonyms (see e.g. ttps://www.macmillanthesaurus.com/us/rod).
Takahashi does not teach the polyacetal should consists of the claimed polyacetal composition. However, Imashiro teaches a polyacetal composition consisting of polyacetal homopolymer and a polycarbodiimide compound (abstract). The polyacetal may be a homopolymer (0010) of formaldehyde (0014). The carbodiimide is present in amounts of 0.01-5parts by weight of the composition (0037-herein understood to read on the claimed between 0.01 to 0.3 wt%, based on the weight of the plastic part).). Said compositions exhibit improved high- temperature water resistance of the composition (0005). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the polyacetal composition of Imashiro consisting of polyacetal and polycarbodiimide in place of Takahashi’s polyacetal composition. The motivation for doing so would have been to improve the high-temperature water resistance of said assembly.
While Imashiro teaches a composition consisting of polyacetal and polycarbodiimide, said reference does not teach the claimed carbodiimide polymer. However, Cano Sierra teaches a polyacetal composition (0036) comprising polyacetal and carbodiimide polymer (0014). Cano Sierra teaches the carbodiimide is polymeric (0014) having the claimed formulas wherein the n number may be 1-5000 (0014-herien understood to read on the claimed polymeric carbodiimide with a molecular weight of greater than 700). Said carbodiimide helps prevent the generation of formaldehyde (abstract; 0014). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add the polymeric carbodiimide as taught in Cano Sierra as the polycarbodiimide of the polyacetal composition of Imashiro as Cano Sierra teaches such carbodiimide polymers are known and effective additives for polyacetal compositions for reducing formaldehyde.
With regards to the limitations “wherein metal rods when exposed to polyacetal containing carbodiimide formulation for 50 hours at 90C , the total% corroded area decreased from about 30% to about 1%....” and “wherein metal parts in contact with or in proximity to polyacetal resin showed reduced corrosion,” none of the references explicitly teaches said limitations. However, Cano Sierra teaches a polyacetal composition comprising carbodiimide helps prevent the generation of formaldehyde (abstract; 014). Furthermore, polyacetals are known to have a tendency to degrade and emit formaldehyde when heated and are inherently unstable in an oxidative atmosphere or in an acidic or alkaline environment. The formaldehyde is known to adversely affect metallic components that may be placed in association with the polymer. For example, formaldehyde readily oxidizes to formic acid which can corrode metals or cause discoloration (see US 2012/0277353 @0003). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amount of carbodiimide which is added to the polyacetal composition in order to reduce/minimize the amount of corrosion on metal components in association with same polyacetal composition. The motivation would have been because carbodiimides are known to help prevent the generation of formaldehyde in polyacetal compositions and formaldehyde is known to lead to corrosion of metals associated with polyacetal compositions.
With regards to claim 2, Imashiro teaches the plastic part has a polymer content that is at least 50 wt% polyacetal (0037).
With regards to claim 5, Imashiro teaches the carbodiimide content in the polyacetal is between 0.05-5pbw (herein understood to read on the claimed between 0.025 to 0.2 wt%, based on the weight of the plastic part).
With regards to claim 8, Cano Sierra teaches the carbodiimide is of the general formula RN=C=NR (0014, wherein the R radicals are the same or different and are independently selected from aliphatic and aromatic radicals.
With regards to claim 9, Cano Sierra teaches the carbodiimide has aromatic R radicals (0014).
With regards to claim 14, Takahashi teaches the metal may be made of stainless steel.
With regards to claim 15, Takahashi teaches it is known that polyacetal compositions are used in plastic wear systems and may be used in systems wherein gears are made of polyacetal and the pins and the guided rails which are in in contact with the gears, may each be made of stainless steel. (see Background of the Invention).
With regards to claims 16-18, Imashiro teaches the composition consists of polyacetal and carbodiimide.
Response to Arguments
Applicant’s arguments filed 12/15/2025 have been fully considered but are not persuasive.
Issues under 35 U.S.C. § 112(a)
With regards to the rejection of claims 1, 2, 4 - 9, 11, 12, 14 and 15 under 35 U.S.C. 112(a) for
failing to comply with the written description requirement, Applicant respectfully traverses the
rejection. Specifically, applicant argues the limitation, "wherein metal rods when exposed to polyacetal containing carbodiimide formulation for 50 hours at 90°C, the total% corroded surface decreased from
30% to about 1%... wherein the metal is carbon steel" is explicitly supported in the specification found on pages 6, lines 26 - 29, page 7, lines 1 - 27, and page 8, lines 1 – 25. The examiner respectfully disagrees for reasons of record. Specifically, the test standard as claimed differed in scope from the examples in the specification relied upon for support of the claimed test method. Applicant has amended the claim to state that “wherein when the metal part is in contact with or is not more than 10 cm away from the plastic part, there is a reduction in corrosion on a surface thereof, such that after corrosion exposure, the metal part only exhibits a corroded surface area of from about 1% to about 30%,
wherein the corrosion exposure is determined by placing a metal part, in the form of 1 carbon steel rod having a diameter of 5 mm and a length of approximately 150 mm, and a plastic part, in the form of 3 polyacetal tensile bars comprising the carbodiimide, cut in half into 50 mL of saturated aqueous KCl
solution in a corrosion chamber for 50 hours at 90°C, wherein the reduction in corrosion is relative to a metal part that is in contact with or is not more than 10 cm away from a plastic part containing
polyacetal but no carbodiimide polymer.” Said amendment is an attempt to make claim 1 commensurate in scope with the corrosion property seen by the working examples. Said argument is noted but is not persuasive for the reasons noted in the rejection statements above.
Applicant respectfully notes that the Examiner's assertion that the working examples only demonstrate compositions containing 100% POM seems inconsistent with the five working examples in the specification comprising polyacetal and a range of carbodiimide of 0.025 wt.% - 0.2 wt.%, based on the polyacetal. Said argument is noted but not persuasive as the examples do not include any filler or additives; thus, said compositions (which are within the scope of the claims) are not supported by the examples in the specification. Applicant further argues the claim limitation "wherein metal rods when exposed to polyacetal containing carbodiimide formulation 50 hours at 90°C, the total% corroded surface decreased from about 30% to about 1%", is explicitly recited in paragraphs [0036] and
in the description of Table 1. The examiner notes neither citation seems to explicitly recite the claimed limitation. Furthermore, as noted by the rejection, the examples are supported by the original disclosure but said finding cannot be extrapolated to other compositions. Since the claimed invention is broader than the examples in the specification, the examiner maintains the position that the claimed invention is rejected under 35 U.S.C. 112(a) for the reasons set forth herein.
Issues under 35 U.S.C. § 112(b)
With regards to the rejection of claims under 35 U.S.C. 112(b) for being indefinite for
failing to particularly point out and distinctly claim the subject matter which the inventor regards
as the invention because it is unclear what is meant by "wherein metal parts in contact with or in proximity to polyacetal resin showed reduced corrosion,” Applicant respectfully traverses the rejection.
Specifically, applicant argues the claims have been amended to make it clear that the reduction in corrosion is relative to a metal part that is not in contact with the plastic part of the present invention. Said argument is noted but is not persuasive for the reasons set forth in the rejection statement above.
Issues under 35 U.S.C. § 112(d)
With regards to the rejection of Claim 16 under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends, applicant has amended Claim 16 to clarify that optional components filler and additive are not present. Said amendment is sufficient to overcome the previously applied rejection.
Prior Art Based Rejections
With regards to the rejection of claims 1, 2, 4- 9, 11, 12, and 14 - 16 under 35 U.S.C. 103 as being
unpatentable over Takahashi et al. (U.S. 5,559,180) in view of Mulholland (US2012/0277353) and
Mitsubishi (JP 2013-100393), as evidenced by US 2012/0277353, applicant argues Mitsubishi describes a polyacetal composition prepared by blending carbodiimide, a hydrazide compound in an amount of 0.01 to 5 parts by mass, and polyacetal resin. Applicant respectfully submits that one of ordinary skilled in the art would not have been motivated to incorporate the carbodiimide compound of Mitsubishi in insolation, and that Mitsubishi explicitly teaches that suppression of formaldehyde generation requires both a carbodiimide compound and a hydrazide compound. Applicant argues, however, the closed "consisting of" language expressly excludes the presence of the hydrazide compound required by Mitsubishi. Therefore, even if the Examiner's modification were attempted, the resulting composition would neither include all required components of Mitsubishi nor achieve the same function or result. Accordingly, the claimed invention cannot be derived from the cited references without relying on impermissible hindsight. Said arguments are moot in view of the new grounds of rejections set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN R KRUER/Primary Examiner, Art Unit 1787