DETAILED ACTION
This Office Action is responsive to the amendment filed on 12/29/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
Claims 1, 2, 5, and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al, US4439578.
Kim discloses molding composition comprising 90 to 99 wt% of a thermoplastic molding resin and 1 to 10 wt% of particulate of a liquid crystal polymer (for claim 1) (abstract).
Regarding the claimed polyamide resin (A): Kim teaches that the thermoplastic molding resin used in the prior art composition may be Nylon 6 (Column 14: lines 4-6), corresponding to claimed polyamide (A) (for claims 1, 5). As noted in paragraph 12 of this Action, it is known in the art that Nylon 6 has a melting point in the range of about 210 to 220 °C (for claim 2).
Regarding the claimed polyester fiber (B): As noted above, the prior art composition comprises 1 to 10 wt% (for claim 1) of a particulate of a liquid crystal polymer. As said liquid crystal polymer, Kim teaches the use of copolymers of ethylene terephthalate and hydroxybenzoic acid (Column 4: line 66 to Column 5: line 1), corresponding to the claimed polyester (B) (for claim 1). Kim further teaches that said particulate may be in the form of fibers having a diameter from about submicron to 30 microns, overlapping the claimed range (for claims 9-11) (Column 11: lines 26-31). Further note that Kim teaches that the particulate is characterized by a length ranging from 30 microns to about 0.5 inches (Column 11, lines 1-3)-i.e., about 0.03 to 12.7 mm, overlapping the claimed range (for claims 1,7,8).
Regarding the requirement of a sliding component: The prior art teaches molding the composition into plaques (Column 14: lines 41-42). The phrase “sliding component” implies an article that is capable of sliding against a surface. The prior art composition comprises the same liquid crystal fibers in the same amount as the claimed invention; it is therefore reasonably expected that the prior art plaque would have the same improved sliding characteristics applicant teaches result from the inclusion of liquid crystal fibers (See specification ¶0009). It is therefore reasonably expected that the prior art plaque would be capable of sliding against a surface and therefore would fall within the scope of the phrase “sliding component” (for claim 1).
Regarding the requirement that the fiber is sheared and shredded (for claim 1): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims; In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As noted above, the prior art teaches the production of a composition comprising the same components combined in the same ratio as the claimed invention. Further note that Kim teaches that the prior art composition may be prepared via a process comprising the steps of premixing the liquid crystal particulates with the resin, followed by melt extrusion (Column 11: lines 20-25). Note that applicant’s specification discloses that the inventive examples of the instant application were prepared via a similar process (see specification ¶0030). As the prior art composition 1) comprises the same components combined in the same ratio as the claimed invention and 2) is made via the same process as the claimed invention, it is reasonably expected that its properties would not be materially different from those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed invention would not be met by the composition disclosed by Kim.
Kim does not specifically disclose the production of a composition comprising a polyamide and a liquid crystal polyester fiber having the recited dimensions as recited in the instant claims.
It has been held that the selection of a known material based on its suitability for its intended use supported is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07).
As discussed above, Kim discloses a composition comprising a thermoplastic resin and 1 to 10 wt% liquid crystal particulate fibers, wherein Nylon 6 and copolymers of ethylene terephthalate and hydroxybenzoic acid are specifically taught to be suitable for use as the thermoplastic resin and liquid crystal polymer, respectively. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious at the time the invention was effectively filed to prepare a composition comprising the required polymer components in view of the teachings of Kim, with the reasonable expectation of obtaining a final composition having the improved drip resistance taught by the prior art (for claim 1) (abstract).
Regarding the dimensions of length (for claims 6-8) and diameter (for claims 9-11): It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
As discussed above, Kim discloses a composition comprising liquid crystal polymer fibers, wherein the prior art ranges for the length and diameter of said fiber overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to prepare a composition comprising fibers having the required dimensions in view of the teachings of Kim.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al, US4439578, as applied to claims 1, 2, 5, and 7-11 above, and further in view of Oishi et al, EP0698620.
As discussed earlier in this Action, Kim discloses the production of a molding composition comprising 90 to 99 wt% of a thermoplastic molding resin such as nylon 6 and 1 to 10 wt% of particulate of a liquid crystal polymer. Kim teaches that the prior art composition has improved resistance to melt dripping (abstract).
Kim is silent regarding the production of a bearing, gear, door checker, chain guide, or retainer plate.
Oishi discloses the production of a thermally stabilized composition having improved resistance to melt dripping (page 4: lines 16-17), wherein said composition is based on a thermoplastic resin (abstract; page 12: lines 4-6). Said thermoplastic resin may be a polyamide such as nylon 6 (page 12: line 13). As taught by Oishi, it was known in the art that such compositions were suitable for use in the production of mechanical parts such as gears (for claim 12) (page 14: lines 3-4).
Kim and Oishi both disclose the production of polyamide-based compositions having improved thermal stabilization as evidenced by improved resistance to melt dripping. As taught by Oishi, it was known in the art that such compositions were suitable for use in the production of gears. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to use the composition of Kim in the production of a gear, with the reasonable expectation of obtaining a product having both mechanical utility and improved melt dripping resistance.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive with respect to the rejection over Kim.
Applicant argues that the prior art does not teach or suggest that the polyester fiber is sheared and shredded such that an intermediate layer having lubricity is formed. Note that applicant’s specification merely suggests that the composition is damaged, but does not identify any special process step and/or condition that is required to achieve the effect. As discussed in paragraphs 11 to 12 of this Action, Kim teaches that the prior art composition is made via the same process of premixing the components followed by melt extrusion as exemplified in the instant specification. One of ordinary skill in the art will recognize that melt extrusion is a shear mixing technique, such that the use of an extruder as taught by Kim will subject the prior art composition to shear forces. Given that 1) the prior art process appears to be the same as the process used by applicant, 2) the prior art process is reasonably expected to subject the composition to shear forces during extrusion, and 3) applicant does not identify any factors and/or conditions required to obtain this effect that are not met by the prior art, it is reasonably expected that the prior art composition will meet the claimed property. The burden is therefore shifted to applicant to provide evidence demonstrating an unobvious difference between the claimed invention and the prior art; see In re Fitzgerald cited earlier in this Action. As such evidence has not been provided, applicant’s argument is not persuasive.
Applicant further argues that the claimed invention yields unexpected results, citing the examples provided in the specification.
Evidence of unexpected results must compare the claimed invention to the closest prior art to be effective to rebut a prima facie case of obviousness; see In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) (MPEP § 716.02(e)). As discussed earlier in this Action, Kim teaches a molding composition comprising a particulate of a liquid crystal polymer. Note that the liquid crystal polymer is a required component of the prior art composition (title; abstract; Column 2: lines 8-12; Kim claim 1). In contrast, none of the comparative examples provided in the specification contain a liquid crystal polymer (see specification: Table 2). The data cited by applicant therefore does not compare the claimed invention to the closest prior art as required. Applicants argument that the claimed invention yields unexpected results therefore is not persuasive.
Applicant argues that Kim does not teach the claimed invention because it is directed towards improved dripping resistance, not abrasion characteristics as desired in the claimed invention. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (MPEP § 2144(IV)). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (MPEP § 2112(I)).
As discussed earlier in this Action, Kim renders obvious a composition comprising the same components combined in the same ratio as the claimed invention. Contrary to applicant’s argument, it is not necessary that Kim teach the same results as desired by applicant. It therefore is not persuasive to merely argue that Kim does not teach addition of liquid crystal particulates to the prior art resin composition to achieve the same abrasion properties as desired by applicant.
Applicant’s arguments, see page 4, filed 12/29/2025, with respect to the rejection over Suenaga, EP0438128, have been fully considered and are persuasive. The rejection has been withdrawn in view of the amendment to claim 1.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 571-270-1831. 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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765