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 Amendments and Arguments
Applicant’s amendments and arguments, filed December 16, 2024, with respect to the rejection(s) under 35 U.S.C. 103 in view of Huang et al. and Nichols et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite a “resin composition obtained by blending a resin (S) containing a polyarylene ether (A) modified with a functional group and a thermoplastic resin (B), and a carbon fiber (C), wherein the carbon fiber (C) is not a carbon member containing a polyarylene ether modified with a functional group.” Applicant argues that the disclosure of Huang is related to a composition comprising a reinforcing agent having a surface coating of a polar group functionalized polyarylene ether, which would not read on the claimed carbon fiber (C) that is not a carbon member containing a polyarylene ether modified with a functional group. The Examiner recognizes that the teachings of Huang are limited to wherein the polar group functionalized polyarylene ether is applied as a surface coating to a reinforcing agent, however, Nichols contemplates that polar group functionalized polyarylene ether are known as suitable within the art for both surface coating reinforcing agents (col. 11, ln. 43-55) and also for incorporation via blending with other resins and reinforcing agents (col. 13, ln. 1-12). Accordingly, a person having ordinary skill in the art would recognize both methods of incorporating polar group functionalized polyarylene ether to compositions comprising reinforcing agents as suitable for improving compatibility of said reinforcing agents with thermoplastic resins.
Applicant’s arguments and amendments are considered fully responded to within the rejections below.
Claim Rejections - 35 USC § 112
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.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: a recitation of a component which the claimed composition does not contain. As it is unclear what component is intended to be excluded from the composition, the claim cannot be meaningfully searched and compared to the prior art.
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.
Claims 1 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 5,426,171, hereinafter referred to as “Huang”) in view of Nichols et al. (US 6,063,872, hereinafter referred to as “Nichols”).
As to Claim 1: Huang teaches a resin composition comprising a thermoplastic resin and a solid reinforcing agent, which includes the claimed carbon fiber (column 2, lines 4-10), said reinforcing agent having a surface coating of a polar group-functionalized polyarylene ether (Abstract) including polyphenylene ethers comprising a functional group (column 3, lines 22-25). Huang does not explicitly teach the amounts for the functionalized polyarylene ether and carbon fiber components. However, Huang teaches that the solid reinforcing agent (which may be comprised of carbon fiber and a surface coating of a polar group functionalized polyarylene ether) comprises 1 to 75 parts by weight of the composition and the thermoplastic resin comprises 25 to 99 parts by weight of the composition (Abstract), and further teaches wherein the surface coating comprises 0.001 to 10 wt% of the uncoated reinforcing agent weight (column 3, lines 1-5). Thus, based on the disclosed ranges and relative amounts for the thermoplastic resin and reinforcing agent having a surface coating of a polar group-functionalized polyarylene ether combined with the teaching of the amount of surface coating relative to the uncoated reinforcing agent weight, Huang necessarily teaches an overlapping range for an amount of the claimed modified polyphenylene ether. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Huang suggests, that the overlapping portion is a useable range for an amount of a functionalized polyarylene ether relative to a thermoplastic resin.
Huang is silent towards the polyarylene ether being a fumaric acid-modified polyphenylene ether, however, Huang contemplates the functionalization of polyarylene ethers with polar groups having reactive unsaturation (i.e., ethylenic unsaturation) in addition to the desired polar group functionality and teaches that the functional group is preferably maleic anhydride (column 1, lines 43-51).
Nichols teaches a related molding composition comprising a syndiotactic monovinylidene aromatic polymer (Abstract) which may be styrene (column 2, lines 5-15) (i.e., a thermoplastic resin), a reinforcing agent which may be carbon fiber (column 10, lines 26-30), and further comprising a polyarylene ether that may be a polar group functionalized polyarylene ether with polar groups including maleic anhydride (column 11, lines 1-24) or fumaric acid (Claim 17 of Nichols). Huang and Nichols are considered analogous art because they are directed towards the same field of endeavor, namely, compositions comprising at least a thermoplastic resin, a reinforcing agent, and a polar group functionalized polyarylene ether. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the maleic anhydride functionalized polyarylene ether of Huang with the fumaric acid functionalized polyarylene ether of Nichols based on the teaching of Nichols that maleic anhydride and fumaric acid are equivalent polar groups for modifying polyarylene ethers known within the art to improve compositions thereof by acting as compatibilizers to improve adhesion between a reinforcing agent and a thermoplastic polymer (column 11, lines 34-38).
Huang teaches that the reinforcing agent has a surface coating of a polar group-functionalized polyarylene ether (Abstract) and blends comprising the same, but does not explicitly teach wherein the reinforcing agent/carbon fiber member is not a carbon member containing a polyarylene ether modified with a functional group.
Nichols contemplates that polar group functionalized polyarylene ether are known as suitable within the art for both surface coating reinforcing agents (col. 11, ln. 43-55) and also for incorporation via blending with other resins and reinforcing agents (col. 13, ln. 1-12). Accordingly, it would have been obvious to a person having ordinary skill in the art would to alternatively blend the polyarylene ether modified with a functional group of Huang with a reinforcing agent and the motivation would have been that Nichols teaches that both pre-coating the reinforcing agent with a polyarylene ether modified with a functional group and blending the polyarylene ether modified with a functional group with a reinforcing agent and other resins are known within the art as suitable for improving compatibility of said reinforcing agents with thermoplastic resins. Furthermore, as both Huang and Nichols contemplate the addition of polar group functionalized polyarylene ethers for the same purpose (i.e., compatibilizer for reinforcing agent additives for resins), blending the respective components of Huang as opposed to using a reinforcing agent with a surface coating of a polar group-functionalized polyarylene ether would not appear to render the invention of Huang inoperable, but would instead align with the goal of Huang (i.e., improved compatibility between a reinforcing additive and thermoplastic resin).
As to Claims 5-6: Huang and Nichols teach the composition of claim 1 (supra).
Huang further teaches that the solid reinforcing agent (which may be comprised of carbon fiber and a surface coating of a polar group functionalized polyarylene ether) comprises 1 to 75 parts by weight of the composition and the thermoplastic resin comprises 25 to 99 parts by weight of the composition (Abstract), and further teaches wherein the surface coating comprises 0.001 to 10 wt% of the uncoated reinforcing agent weight (column 3, lines 1-5). Thus, based on the disclosed ranges and relative amounts for the thermoplastic resin and reinforcing agent having a surface coating of a polar group-functionalized polyarylene ether combined with the teaching of the amount of surface coating relative to the uncoated reinforcing agent weight, Huang necessarily teaches an overlapping range for an amount of carbon fiber. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Huang suggests, that the overlapping portion is a useable range for an amount of carbon fiber reinforcing agent for a thermoplastic resin composition.
As to Claims 7 and 8: Huang and Nichols teach the composition of claim 1 (supra).
Huang further teaches that the thermoplastic resin may include polycarbonates, homopolymers and copolymers of styrene (i.e., polystyrene based resin), or polyamides (column 2, lines 24-42).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (US 5,426,171, hereinafter referred to as “Huang”) in view of Nichols et al. (US 6,063,872, hereinafter referred to as “Nichols”) and further in view of Nomura et al. (US20180134856, hereinafter referred to as “Nomura).
As to Claim 9: Huang and Nichols teach the composition of claim 1 (see above).
Huang does not teach the source of the carbon fiber component.
Nomura teaches a composite material including carbon fibers, a polyamide-based resin (i.e., thermoplastic resin), and a polyarylene ether-based resin (Abstract of Nomura) optionally containing carboxylic acid functional groups ([00145]). Nomura further teaches that the carbon fibers may be PAN-based, pitch based, phenol based, or vapor grown carbon fibers ([0088]). Huang and Nomura are considered analogous art because they are directed to the same field of endeavor, namely resin compositions comprising polyarylene ethers, thermoplastics, and carbon fibers. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use PAN-based, pitch based, phenol based, or vapor grown carbon fibers within the composition taught by Huang because Nomura teaches that these are useable carbon fiber types for functionalized polyarylene ether thermoplastic composites.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7, and 8 of copending Application No. 18/022,964 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the copending application are drawn to resin compositions comprising at least a thermoplastic resin, carbon fibers, and a polyarylene ether modified with a functional group wherein the polyarylene ether functionality recited in both the instant application (claim 1) and the copending application (claims 7 and 8) is the same (i.e., a dicarboxylic acid-modified polyarylene ether wherein the dicarboxylic acid-modified polyarylene ether is a fumaric acid-modified polyarylene ether). The instant application claims a polyarylene ether modified with a functional group (claim 1) in an overlapping amount with the claimed range in the copending application (claim 1). Further, the instant application recites a composition wherein the thermoplastic resin may be polystyrene based (claims 7 and 8), while the copending application recites that the thermoplastic resin comprises a polystyrene-based resin or syndiotactic polystyrene (claims 1 and 2), which reads on the instantly claimed polystyrene-based resin.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767