DETAILED ACTION
Summary
Applicant’s amendment dated 12 March 2026 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
New grounds of rejection are set forth below due to the rejoinder of claims that were previously withdrawn. For this reason, this action has been made final.
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 .
Election/Restrictions
Claim 1 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), Claims 14 and 22, directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104. Claims 21 and 24-26, directed to the invention(s) of a method for improving the vibration damping properties of a thermoplastic resin do not require all the limitations of an allowable product claim, and have NOT been rejoined.
Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement between groups I and II as set forth in the Office action mailed on 18 October 2024 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claims 14 and 22 are objected to because of the following informalities:
In Claim 14, please either enclose “Grafting from” with quotation marks, or capitalize “From”, or both, so that it is clear that “Grafting From” is the name of the method.
In Claim 22, please replace “a thermoplastic resin composition” with “the thermoplastic resin composition”.
Appropriate correction is required.
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.
Claims 14 and 22 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.
Claim 14 recites “a polymer graft chain” (multiple times), “a particle surface” (multiple times) and “a thermoplastic resin”. Claim 14 depends upon, and therefore includes, Claim 1. Claim 1 already recites “a polymer graft chain”, “a particle surface” and “a thermoplastic resin”. Also step 1 of Claim 14 recites “a polymerization initiating group” and step 2 also recites “a polymerization group”. It is not clear whether these recitations using “a” are new instances of these components or if they are referring back to the previously recited instances. Claim 22 is also rejected because it depends upon, and therefore includes, Claim 14. Note that Claim 22 has a similar issue with “a thermoplastic resin composition” but it is not indefinite because it is in the preamble. See the objection above. Examiner recommends using “the” to set up appropriate antecedency for all previously recited components if that is what is intended.
Allowable Subject Matter
Claims 1, 4-5, 7-10 and 29 are allowed.
Claims 14 and 22 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for indicating allowable subject matter:
The arguments are persuasive and the rejections set forth in the previous office action are withdrawn.
The closest prior art, BENICEWICZ-'990 (US-20150266990-A1), cited in a previous office action teaches grafted silica particles in a thermoplastic resin with the recited graft monomer characteristics and graft density, but BENICEWICZ-'990 does not teach that its grafted particles have a dispersed particle diameter of 5-50 microns as is recited by Claim 1 and Claim 29.
HAN (WO-2008062975-A1), cited in a previous office action, teaches grafted particles with the recited graft density in a thermoplastic resin with a size that overlaps the recited range, but HAN teaches graft monomers which are conjugated dienes which are excluded by Claim 1 and polymeric particles which are excluded by Claim 29.
HISHIKAWA (US-20150038643-A1), cited in the previous office action, teaches grafted silica particles in a thermoplastic resin with graft monomers with the recited characteristics and generally teaches a size which overlaps the recited range, but HISHIKAWA does not teach a graft density and does not exemplify a graft particle size within the recited range. There is insufficient evidence that particles with a graft density within the recited range are an inherent characteristic of the particles taught by HISHIKAWA.
FUKUDA (JP2006316169-A) teaches grafted probe silica particles with the recited size, graft density and graft monomer characteristics ([0034] Example 4), but FUKUDA teaches its grafted particles as part of a lubricant and not in a thermoplastic resin composition as is recited by Claim 1 and Claim 29.
Response to Arguments
Applicant’s arguments have been fully considered and are persuasive. The prior art rejections in the previous office action have been withdrawn.
Claims 14 and 22 have been rejoined. New rejections under 35 USC 112(b) and an objection have been set forth above because proper antecedency is not used for several of the recited components.
Conclusion
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 DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE L 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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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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