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 .
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 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.
Claims 39-60 are pending. Applicant’s previous election of Group I, still applies and no claims are currently withdrawn.
Response to Amendment
Applicant’s amendment of 08/17/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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(s) 58 and 60 is/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 pre-AIA the applicant regards as the invention.
Claim 58 recites normal temperature and pressure and then recites a non-room temperature such that it is unclear how to measure the property.
Claim 60 recites that the composition includes the iv ingredient but then recites that the optional v ingredient may substituted completely for the iv ingredient such that it is unclear if the iv ingredient is also optional. It would appear remedial to recite something like “0.1 to 6 parts of the iv and/or v ingredients” (which seems to have the intended claim scope without ambiguity).
Claim 60 recites “such as” which makes it unclear if that limitation is optional or required.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
Claim Rejections - 35 USC § 103
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 39-60 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moody (U.S. 4,265,801) in view of Allen (U.S. 4,663,378) in view of Kenichi (JP 2009-144003, see machine translation) in view of Decker et al. (CN 1751106, see machine translation) in view of Smetana (U.S. 2014/0243452) in view of David (U.S. 2016/011529) with evidence from Adsorption and Desorption of Stearic Acid Self-Assembled Monolayers on Aluminum Oxide (2006).
Regarding claims 39-60, Moody teaches a composition (inherently capable of being using in molding) comprising a thermoplastic resin and a solid/branched (as in claim 57) polysiloxane additive with a number average MW overlapping claim 41, and with hydroxyl groups as claimed (also without solvent being part of the polysiloxane as in claim 58), and with phenyl or methyl/phenyl organic groups as claimed, and also disclosing that the silicone resin provides fire retardant properties such that the amount is also obvious (besides just overlapping ranges) based on the result effective optimization of the amount of siloxane to optimize the art-recognized effect of improving flame retardant properties, as well as alpha aluminum oxide filler (thermally conductive inorganic particulate as claimed) (and hydroxides/hydrates thereof and chemically treated versions thereof, i.e., surface treated), as in claims 39, 55, 56, having a size and amount overlapping claim 51, as well as an inherently high thermal conductivity (higher than the thermoplastics suggested in Moody, within the scope of claim 49), as well as titanates, and with the amount of filler being obvious to adjust as an art-recognized result effective variable (to within the ranges of claims 46 and 51) in order to optimize the degree of enhanced fire retardant properties (col. 2, lines 5-10, col. 4, line 35-col. 6, line 5, col. 7, line 40-col. 8, line 20).
Moody also teaches a co-agent for crosslinking which is considered a type of curing synergist as in claim 54 (col. 8, line 65-col. 9 line 5). Further curing synergists are obvious in view of David below.
Moody does not disclose the Tg of the silicone resin, the thermoplastic resins as claimed, or the properties of claims 39 and 52 and 58. However, Allen, Kenichi, and Decker, in combination with Moody, render these aspects obvious.
Allen is also directed to a silicone additive for high temperature properties (heat resistance, like the fire retardant property in Moody) and teaches that such crosslinked (i.e., crosslinks forming branches with multiple branches forming a “cage”) silicone additives may be phenyl functional as in Moody and also teaches that such silicone resins have particularly good effect in polyetherimides (e.g., flow improvement for molding, compatibility and impact strength improvement) and also suggests amounts overlapping the claimed ranges (of claims 39, 42, and 53, taking into account the other ingredients disclose in Moody to arrive at the amount of thermoplastic in claim 42) (see abstract col. 5, lines 10-col. 6, lines 40). Thus, it would have been obvious to have used polyetherimide as the thermoplastic in Moody because Allen teaches that such plastics have superior physical and chemical properties (col. 1, lines 10-30) (as in claims 44 and inherently a Tg within claim 43) and especially because the type of phenyl silicone resins in Moody are disclosed in Allen as providing improvement for flow during molding, compatibility, and impact strength for polyetherimide at amounts overlapping the claimed range (such that the amounts from Allen are obvious to use for the silicone in Moody).
Kenichi is also directed to branched ([0020], when m1+m2+n=1, with multiple branches forming a “cage”) silicone additives for high temperature (e.g., flame retardant) applications and teaches that such silicone resins should be phenyl functional (as in Allen and Moody), be used in an amount overlapping the claimed range, have hydroxyl functionality (as already taught by Moody), have a MW overlapping the claimed range, and a Tg within the range of claim 40 ([0019]-[0021], [0025], [0035], [0059], [0077], [0088], [0092], the Tg used in the examples would be obvious to apply to the general silicone resin in Kenichi, not just the particular ones in the examples, because the examples show it is a suitable Tg for the silicone resin in Kenichi). Thus, Kenichi renders further obvious the phenyl functionality, amount, hydroxyl functionality, and MW already taught by Moody and also makes it obvious to use the claimed Tg for the silicone resins in Moody (Moody does not disclose any Tg values) because Kenichi teaches that such Tg is suitable for a silicone resin that provide flame retardant properties (as sought by Moody).
Decker is also directed to silicone resins with high heat resistance that may be used with thermoplastic (e.g., polyester) resins, and suggests that such heat resistant silicone resin should have a Tg above 45C, phenyl functionality, and hydroxyl functionality (as already suggested by the references cited above) and specifically suggests the Silres series of additives (including 603 and 604) as a known commercially available type of silicone resin that provides such heat resistant properties ([0024]-[0027]). Thus, it would have been obvious to have used the Silres products from Decker for the heat resistant silicone resin called for in modified Moody (i.e., based on the teachings of Moody, Allen, and Kenichi) because the product is disclosed as providing the desired properties (heat resistance) and is commercially available (i.e., does not need to be synthesized). Based on the present disclosure, Silres 603 and/or 604 have all the claimed refractive index (as in claim 39 and 59), Tg, MW, and phenyl/hydroxyl functionalities and branched/caged structures as claimed.
In addition to the claimed amount of polysiloxane being overlapped based on Allen above, this amount is also obvious to adjust (including to values within the claimed ranges) as an art recognized result effective variable based on Allen (for flow improvement for molding, compatibility and impact strength improvement) and/or Kenichi (as a flame retardant) and/or Decker (for heat resistance).
Regarding the claimed particulate and silsesquioxane (as in claims 47 and 50), as indicated above, Moody already suggests hydroxyl surface modified aluminum oxide but does not disclose the claimed silsesquioxanes. However, Smetana is also directed to compositions into which aluminum oxide particulate is dispersed and teaches that a combination of polyhedral oligomeric silsesquioxane and a hydroxyl fatty acid may be used with unexpected/synergistic improvements in viscosity, particulate content, flow and leveling (see abstract, [0014]-[0022] disclosing the same silsesquioxane as in claim 50 and 60, and [0025]-[0034]). Smetana also discloses that the hydroxyl fatty acid (e.g., 12-hydroxystearic acid) includes a portion that has an affinity/anchors onto the particulate and another portion that has an affinity for the non-aqueous medium ([0025]) such that the hydroxyl fatty acid would be bound/anchored onto the particulate, thereby imparting the particulate with a C-O-H group (a type of OH group as claimed, with OH groups already having been taught generally in Moody, see above) (also see as evidence, the NPL document, page 2448, FIG. 4, showing that the carboxylic group would bond to the aluminum oxide so the hydroxyl group at the 12 position would remain functional). Thus, it would have been obvious to have used the silsesquioxane and fatty acid dispersants from Smetana in the composition of modified Moody in order to improve viscosity, particulate content, flow and leveling. Smetana also discloses a range of ratios of the silsesquioxane and fatty acid dispersants to the particulate (see claim 13) with the amount of the combined silsesquioxane and fatty acid dispersants being obvious to adjust as part of optimizing the degree of dispersing effect (as well as the improved properties discussed above), including to values within the claimed ranges of claims 39, 47, and 60.
Regarding claims 45, 46, 48, modified Moody teachers all the above subject matter but does not disclose these limitations. However, David is also directed to high temperature (flame retardant) compositions and teaches (see Table 15, pages 8-11) that titanates may be included as internal lubricant, process aid, and mold release agent, (such that the amount of such ingredients is obvious to adjust to within the range of claims 45-46 as an art recognized result effective variable in order to optimize lubricant, process aid, and mold release agent, properties), and also teaches that biphenol may be included to increase Tg, and improve UV and light resistance (such that the amount of such ingredients is obvious to adjust to within the range of claim 48 as an art recognized result effective variable in order to optimize Tg, and UV/light resistance properties) and also teaches that suitable aluminum hydroxide particulate may be Puralox K-160 which is the same one mentioned in the present application and inherently meets the limitations of claims 51, 55, and 59 (i.e., gamma aluminum oxide, zeta potential and size) as suspension aid, flow aid, high temperature resistance, and hydrolytic stability (such that the amount of such ingredients is obvious to adjust to within the range of claim 51 as an art recognized result effective variable in order to optimize suspension/flow properties, high temperature resistance, and hydrolytic stability, and also with such an amount already being overlapped by Moddy).
David also teaches that silicon dioxide (inherently having Si-OH functionality as claimed) may be included as a reinforcing agent (bottom of page 11), with the amount of such a particulate being obvious to adjust, including to values within the claimed range (as in claim 60), in order to optimize the reinforcing effect.
Thus, it would have been obvious to have included such additives, i.e., titanate/zirconate, bisphenol, Puralox K160, and/or silica, in the composition of modified Moody for the respective benefits disclosed by David (internal lubricant, process aid, and mold release agent for the titanate/zirconate, increase Tg, and improve UV and light resistance for the bisphenol, suspension aid, flow aid, high temperature resistance, and hydrolytic stability for the aluminum oxide, and reinforcing for the silica). Moody also already discloses that a suitable size for such particulate (either the aluminum oxide discussed above or silica filler like discussed above from David) overlaps the claimed range of claim 51 (see above).
David also teaches various additives that would crosslink with the hydroxyl groups of the siloxane polymer discussed above and therefore are curing synergists as in claim 54 (e.g., coupling agents, page 12, which are obvious to use in modified Moody to promoter mechanical strength as taught by David).
Based on the above teachings from the combined references, the properties of claims 39, 52 and 58-59 are inherently present in the silicone resins that have overlapping Tg, MW, and phenyl/hydroxyl functionalities (and OH content) compared to the overlapped teachings of the present application (i.e., the branched silicone resins as taught by Moody in view of Allen and Kenichi) and also are inherently present in the more specific Silres resins (obvious to use in view of Moody, Allen, Kenichi, and Decker) because these are the same silicone resins used with the same type of thermoplastics as compared to the present application. The polysiloxanes taught by of Moody, Allen, Kenichi, and Decker also do not include solvent.
Furthermore, based on the overlapping amount and types of ingredients rendered obvious for the composition of modified Moody, the Tg and coefficient of thermal explanation and optical properties of such a molding composition are inherently the same as the overlapped embodiments in the present specification (as in claims 39, 59, and 60).
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
On pages 13-14, Applicant summarizes the cited references. For Allen, Applicant asserts that the characterization of Allen in the office action is overly simplified and ignores differences with Moody “as will be explained below” but it does not appear that such explanation was provided. There do not seem to be any over simplifications of Allen or differences between Allen and Moody to render the combination non-obvious. For Kenichi, Applicant just summarizes the reference. For Decker, Applicant refers to a supposed US equivalent which seems similar but does not appear to technically have any priority connection to the cited Chinese patent. In any case, Applicant just summarizes the teachings of Decker. Applicant then summarizes Smetana I and II (with Smetana being the name that should have been given to the above David reference when published, but the Examiner will stick to the printed name in the upper left of the PGPub for reference).
Applicant then concludes based on the above summaries that the six references do not teach the specific elements of claims 39, 59 or 60. However, there is no explanation as to which limitation is missing from the prior art, nor any explanation as to how the combination is non-obvious or lacking of proper motivation to combine. It appears that every limitation as claimed is taught in the prior art with a compelling motivation and thus constitutes a proper prima facie case of obviousness. There is no limit on the number of references cited in a rejection and it is noted that Decker is not even technically required to meet the claim limitations (as noted above, the claimed limitations of the polysiloxane are addressed by Moody in view of Allen and Kenichi with Decker providing an obvious reason to use the more specific Silres resins from the present specification/examples). In any case, even with Decker, there is nothing improper about citing 6 references to reject the claims.
Applicant then argues that the claims are commensurate in scope with the examples such that there are unexpected results. However, the claims still appear to be far broader than the examples in numerous significant ways. First, the type of thermoplastic resin, the ingredient included in the largest amount, is unlimited in most of the claims. Even the narrowest dependent claim (claim 44) includes types that do not appear to have been used in the examples. Second, it is difficult to parse from the specification what each tradenamed ingredient used in the example corresponds to in the claims (if recited in the claims at all) for the purposes of comparing the amount of ingredients in the claims to the examples. This also makes it difficult to determine if the type of ingredient in the examples is commensurate with the type in the claims. It is also unclear which aspect in the claims is shown to be critical through comparing the comparative examples and the inventive examples. Regardless, from what the Examiner can glean from the examples, it appears that numerous other aspects of the claims are far broader, in terms of type and amount of ingredients, than the examples such that the claims are still not commensurate in scope.
Applicant then argues that the rejection fails to provide motivations amongst the six references to arrive at the claimed subject matter and must be based on hindsight but Applicant is simply ignoring the provided motivation, which comes from the prior art, not hindsight.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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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 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights