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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/2025 has been entered.
Election/Restriction
Claim 2 remains withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimoda et al. (US 2018/0037732) in view of Mimura et al. (USPN 5,306,772) or Miyoshi et al. (JP 2013124364).
In ¶’s 59, 79 and 80 and claims 1 and 4, Shimoda et al. teach a molding polyacetal resin composition containing
100 parts by weight of polyacetal, exemplified by a copolymer made by copolymerizing 96.7 weight % trioxane and 3.3 weight % 1,3-dioxolane (See ¶ 62),
0.1-1 part by weight of a hindered phenolic antioxidant,
0.1-1 part by weight of a fatty acid compound,
0.5-5 parts by weight of silicone oil, and
0.1-1 part by weight of calcium carbonate;
wherein the calcium carbonate has an average particle size of at most 1 μm, and the calcium carbonate is exemplified by Brilliant-1500 (manufactured by Shiraishi Kogyo Co., Ltd.), which is a light calcium carbonate not subjected to a surface treatment.
Shimoda et al. differs from the claimed invention in that they do not cite the fatty acids as the fatty acid lubricant compound. However, it is well known in the art to use fatty acids, in order to serve as lubricants in such polyacetal resin molding compositions, such as taught by Mimura et al. or Miyoshi et al., below.
In col. 2, lines 24-28, col. 3, lines 1-13, col. 4, lines 24-26 and col. 6, lines 15-17, Mimura et al. teach a polyacetal molding composition, exemplified by commercially available polyacetals containing stabilizer such as hindered phenol antioxidants, combined with amorphous inorganic fillers such as calcium carbonate, and 0.1 to 5% of lubricants preferably selected from a small group including higher fatty acids, preferably including lauric acid or stearic acid (See col. 5, lines 20-25).
In claims 1, 3, 5-6, and ¶’s 39 and 50 and the abstract, Miyoshi et al. teach a polyacetal molding composition containing
a polyacetal resin,
a light calcium carbonate having a number average particle diameter of at most 1 μm, and
less than 3 parts by mass, based on 100 parts of the polyacetal resin, of a saturated fatty acid, with stearic acid being more desirable, and indicates that the calcium carbonate is preferably not surface treated.
Therefore, it would have been obvious for one having ordinary skill in the art at the time the invention was made, to use on of the claimed fatty acids as the lubricant in the polyacetal molding composition of Shimoda et al., in order to obtain the advantages taught by Mimura et al. or Miyoshi et al. of its use as a lubricant in such polyacetal molding compositions, motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that Shimoda et al. do not teach the fatty acids and teach using fatty acid esters, it is noted that the secondary references do teach using the claimed fatty acids as the lubricants in similarly polyacetal compositions. The fact that the inventor may have recognized another advantage which would flow naturally from following the suggestion of the combined prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Even in applicant’s arguments of unexpected results comparing their Examples with the Comparative Examples, applicant’s arguments of unexpected results are not commensurate in scope with the limited range of components in the present claims. Applicant’s arguments of unexpected results are not persuasive as the recited examples are all at least only limited to polyacetal copolymer formed by copolymerizing 96.7% by mass of trioxane and 3.3% by mass of 1,3-dioxolane, while claiming every possible copolymer range of combinations for trioxane and 1,3-dioxolane not represented in the examples. The claimed polyacetal is simply not commensurate in scope with the examples purported to show unexpected results.
Thus, the 103 rejections are maintain.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE