DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. The amendment filed by Applicant on January 23, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of CaO content in glass fibers being 0-1%wt. This limitation was not previously presented and was taken from instant specification ([0018] of instant specification). In light of the amendment filed by Applicant, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1, 4-6, 21-22, 30-31, 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US 2004/0204528) in view of Mori et al (US 5,958,808), Yoshida et al (US 2011/0281484), Tsuchigane et al (US 2020/0079919) and Yuan Li et al (CN1927938, based on machine translation),
as evidenced by
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and
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In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
4. Saito et al discloses a composite resin composition comprising:
A) 100 pbw of a polypropylene-based resin;
B) 0.1-50 pbw of organized clay ([0011]) comprising phyllosilicates including montmorillonite ([0016], as to instant claim 5), having thickness of 30-500 A (3-50 nm) and major axis diameter of 100 nm or below ([0062], [0063]); specifically exemplified clay comprising a plurality of layers, each layer having thickness of 1 nm and length of 100 nm ([0153]);
C) 1-100 pbw of glass fiber ([0044]),
wherein the composite is infiltrated to obtain a resin foam with targeted foaming scale of 1.1-3 times ([0068]).
5. The composition is having excellent mechanical properties ([0007]) and is used for making molded bodies ([0174], [0172]).
6. The composite may also comprise other thermoplastic resins such as polyesters ([0056]).
7. Since the composite is infiltrated to obtain a resin foam with targeted foaming scale of 1.1-3 times ([0068]), i.e. the composite is expanded/increased in volume in 1.1 to as much as 3 times, therefore, said composite will intrinsically and necessarily have, or would be reasonably expected to have a porosity of at least 10%vol, or in the range of 10-50%vol as well (as to instant claim 6). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. Saito et al does not specify the composition of the used glass fibers, component C), specifically the content of B2O3 and CaO in said glass fibers, and said glass fibers having permittivity of less than 5 and a dielectric loss tangent of less than 0.002 at 1 GHz.
9. However,
1) Mori et al discloses low dielectric constant glass fibers comprising 20-30%wt of B2O3 and 0-5%wt of CaO (Abstract); specifically exemplified glass fibers are having the content of B2O3 of 26%wt and the content of CaO of 1%wt, further having dielectric constant of 4.20 or 4.31 and dielectric loss tangent of 8.4x10-4 (0.00084) or 7.7x10-4 (0.00077) at 1 MHz (Examples 1 and 2 of Table 1, as to instant claims 1, 30, 31).
It is noted that, as evidenced by:
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and
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Permittivity is also called dielectric constant and dissipation factor is also called a dielectric loss tangent, as shown below:
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115
841
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73
651
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:
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Mori et al recites the glass fibers having the following composition:
50-60%wt of SiO2;
10-20%wt of Al2O3;
20-30% of B2O3;
0-5%wt of CaO;
0-4%wt of MgO;
0-0.5%wt of Li2O+Na2O+K2O
0.5-5%wt of TiO2 (Abstract).
2) Yoshida et al discloses a glass fiber/resin composite comprising glass fibers and propylene-containing resin (Abstract, [0037], [0007]), wherein the preferred glass fibers are NE-glass having the glass composition of:
50-60%wt of SiO2;
20-30%wt of B2O3;
10-20%wt of Al2O3;
0-6%wt of CaO;
0-4%wt of MgO
0-0.5% of R2O (R is alkali metal);
0.5-5%wt of TiO2,
wherein such glass composition has low permittivity and superior transparency (Table 1 and [0029]-[0030] of Yoshida et al).
3) Thus, by comparing the glass fiber compositions of Mori et al and Yoshida et al, it would have been obvious to a one of ordinary skill in the art that the glass fiber composition of Mori et al is the same as the glass composition of Yoshida et al, wherein Yoshida et al refers to such composition as NE-glass; therefore, the glass composition of Mori et al is NE-glass fiber as well (as to instant claims 35-37). Further, Yoshida et al explicitly teaches that such NE-glass fiber is having low permittivity and superior transparency and is preferably used in resin-based composites, including propylene-containing resins.
Though Mori et al recites the dielectric loss tangent at 1 MHz, and not 1 GHz, as required by instant claims, since the glass composition of Mori et al is essentially the same as that claimed in instant invention, is NE-glass fiber, and is having dielectric loss tangent at 1 MHz of as low as 0.00077, therefore, it would have been reasonably expected that the dielectric loss tangent measured at 1 GHz will be less than 0.002 as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
4) Tsuchigane et al discloses glass-fiber reinforced resin molded articles having high tensile strength and high impact strength in combination with a low dielectric constant and low dissipation factor comprising:
10-90%wt of glass fiber having a low dielectric constant and a low dissipation factor;
and
90-10%wt of a resin comprising polypropylene (Abstract, [0065], [0067]), wherein the
used glass fibers are having length of 30-5000 micron (Abstract, as to instant claims 4, 22, 30).
Thus, Tsuchigane et al teaches that the glass fibers that are used in resin composites including polypropylene, are having length of as high as 5 mm.
10. Since both Saito et al and Tsuchigane et al are related to composites based on polypropylene and glass fibers, used for making molded articles having improved strength, and thereby belong to the same field of endeavor, wherein i) Tsuchigane et al teaches that the glass fibers that are used in said resin composites including polypropylene, are having length of as high as 5 mm, and further ii) Mori et al discloses glass fibers having 1%wt of CaO, 26%wt of B2O3, also having low dielectric constant and low dielectric loss tangent, and that belong to NE-glass and ii) Yoshida et al teaches such NE-glass fibers having not only low permittivity, but also superior transparency, and are used in resin composites, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Saito et al, Tsuchigane et al, Mori et al and Yoshida et al, and to use, or obvious to try to use the NE-glass fibers having the composition as taught by Mori et al and Yoshida et al, including the glass fibers having CaO content of 1%wt, as the component C) in the composite of Saito et al, since such glass fibers are having low dielectric constant, low dissipation factor and superior transparency, and further to prepare such glass fibers having length of about 5 mm, as taught by Tsuchigane et al, since the glass fibers having such length are taught in the art as being used in polypropylene-based resin composites for molded articles with high tensile strength, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
11. Saito et al does not specify the composition further comprising a plurality of clay rods.
12. However, Yuan Li et al discloses nanocomposites comprising a polyester with 0.1-10%wt of clay in the form of rods with a size of 10-500 nm ([0008]), specifically having diameter of 5-50 nm and length of 100-1000 nm ([0030])-[0031]).
The nanocomposite comprises high tensile strength, increased breaking strength and improved flexural modulus ([0071], [0076]).
13. Thus, Yuan Li et al explicitly teaches that addition of clays in the form of rods having nanosize to thermoplastic resin matrix, such as polyester, provides nanocomposites with high tensile strength, increased breaking strength and improved flexural modulus.
14. Since both Saito et al and Yuan Li et al are related to nanocomposites comprising thermoplastic resin matrix, such as polyester or polypropylene, and nanoclay, and thereby belong to the same field of endeavor, wherein Yuan Li et al teaches the addition of clay in the form of rods further increases tensile strength and flexural modulus of the composites, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Yuan Li et al and Saito et al, and to include, or obvious to try to include, at least partially and in a minor amount such as 0.1%wt, the clay in the form of rods having nano- size into the composition of Saito et al in view of Tsuchigane et al, Mori et al and Yoshida et al, or alternatively to include the nanocomposite of Yuan Li et al comprising both polyester and clay nanorods into the composition of Saito et al in view of Tsuchigane et al, Mori et al and Yoshida et al, so to further increase tensile strength and flexural modulus of the composite of Saito et al in view of Tsuchigane et al, Mori et al and Yoshida et al and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. Since the composite of Saito et al in view of Tsuchigane et al, Mori et al, Yoshida et al and Yuan Li et al is substantially the same as that claimed in instant invention, i.e. comprises polypropylene matrix; NE-glass fibers having the amount of B2O3 of more than 12%wt and the amount of CaO of 1%wt, and wherein their properties are as claimed in instant invention; further both clay platelets and clay rods, wherein all components are used in the substantially the same amounts as those claimed in instant invention, or in amounts with ranges overlapping with those claimed in instant invention, therefore, the composite of Saito et al in view of Tsuchigane et al, Mori et al, Yoshida et al and Yuan Li et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties including coefficient of thermal expansion and level of porosity, having values the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention (as to instant claims 6, 30, 33). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
16. It is further noted that:
1) Example 7 of instant specification discloses the use of E Glass fibers (Tables 1, 4 of instant specification), wherein E Glass fibers are cited in instant specification as being traditional glasses, having 5-10%wt of boric acid and 16-25%wt of CaO (see [0018] of instant specification), which ranges for amounts of the boric acid and CaO are outside of claimed ranges; thus Example 7 of instant specification appears to be a comparative example and thereby is having the value of coefficient of expansion outside of the claimed range.
2) Further, the scope of instant claims is significantly broader than the specific examples provided in instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
17. Claims 1, 4-6, 21-22, 30-31, 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US 2004/0204528) in view of Mori et al (US 5,958,808), Yoshida et al (US 2011/0281484), Tsuchigane et al (US 2020/0079919) and BYK-MAX CT 4270 flyer, 2019, as evidenced by BYK New Strategy for low Density Bumper Fascia flyer, 2020;
as evidenced by
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and
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In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
18. Saito et al discloses a composite resin composition comprising:
A) 100 pbw of a polypropylene-based resin;
B) 0.1-50 pbw of organized clay ([0011]) comprising phyllosilicates including montmorillonite ([0016], as to instant claim 5), having thickness of 30-500 A (3-50 nm) and major axis diameter of 100 nm or below ([0062], [0063]); specifically exemplified clay comprising a plurality of layers, each layer having thickness of 1 nm and length of 100 nm ([0153]);
C) 1-100 pbw of glass fiber ([0044]),
wherein the composite is infiltrated to obtain a resin foam with targeted foaming scale of 1.1-3 times ([0068]).
19. The composition is having excellent mechanical properties ([0007]) and is used for making molded bodies ([0174], [0172]).
The composite may also comprise other thermoplastic resins such as polyesters ([0056]).
20. Since the composite is infiltrated to obtain a resin foam with targeted foaming scale of 1.1-3 times ([0068]), i.e. the composite is expanded/increased in volume in 1.1 to as much as 3 times, therefore, said composite will intrinsically and necessarily have, or would be reasonably expected to have a porosity of at least 10%vol, or in the range of 10-50%vol as well (as to instant claim 6). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
21. Saito et al does not specify the composition of the used glass fibers, component C), specifically the content of B2O3 and CaO in said glass fibers and said glass fibers having permittivity of less than 5 and a dielectric loss tangent of less than 0.002 at 1 GHz.
22. However,
1) Mori et al discloses low dielectric constant glass fibers comprising 20-30%wt of B2O3 and 0-5%wt of CaO (Abstract); specifically exemplified glass fibers are having the content of B2O3 of 26%wt and the content of CaO of 1%wt, further having dielectric constant of 4.20 or 4.31 and dielectric loss tangent of 8.4x10-4 (0.00084) or 7.7x10-4 (0.00077) at 1 MHz (Examples 1 and 2 of Table 1, as to instant claims 1, 21, 30-31).
It is noted that, as evidenced by:
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and
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Permittivity is also called dielectric constant and dissipation factor is also called a dielectric loss tangent, as shown below:
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115
841
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73
651
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:
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Mori et al recites the glass fibers having the following composition:
50-60%wt of SiO2;
10-20%wt of Al2O3;
20-30% of B2O3;
0-5%wt of CaO;
0-4%wt of MgO;
0-0.5%wt of Li2O+Na2O+K2O
0.5-5%wt of TiO2 (Abstract).
2) Yoshida et al discloses a fiber/resin composite comprising glass fibers and propylene-containing resin (Abstract, [0037], [0007]), wherein the preferred glass fibers are NE-glass having the composition of:
50-60%wt of SiO2;
20-30%wt of B2O3;
10-20%wt of Al2O3;
0-6%wt of CaO;
0-4%wt of MgO
0-0.5% of R2O (R is alkali metal);
0.5-5%wt of TiO2,
wherein such composition has low permittivity and superior transparency (Table 1 and [0029]-[0030] of Yoshida et al).
3) Thus, by comparing the glass fiber compositions of Mori et al and Yoshida et al, it would have been obvious to a one of ordinary skill in the art that the glass fiber composition of Mori et al is the same as the glass composition of Yoshida et al, wherein Yoshida et al refers to such composition as NE-glass; therefore, the glass composition of Mori et al is NE-glass fiber as well (as to instant claims 35-37). Further, Yoshida et al explicitly teaches that such NE-glass fiber is having low permittivity and superior transparency and is preferably used in resin-based composites, including propylene-containing resins.
Though Mori et al recites the dielectric loss tangent at 1 MHz, and not 1 GHz, as required by instant claims, since the glass composition of Mori et al is essentially the same as that claimed in instant invention, is NE-glass fiber, and is having dielectric loss tangent at 1 MHz of as low as 0.00077, therefore, it would have been reasonably expected that the dielectric loss tangent measured at 1 GHz will be less than 0.002 as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
4) Tsuchigane et al discloses glass-fiber reinforced resin molded articles having high tensile strength and high impact strength in combination with a low dielectric constant and low dissipation factor comprising:
10-90%wt of glass fiber having a low dielectric constant and a low dissipation factor;
and
90-10%wt of a resin comprising polypropylene (Abstract, [0065], [0067]), wherein the
used glass fibers are having length of 30-5000 micron (Abstract, as to instant claims 4, 22, 30).
Thus, Tsuchigane et al teaches that the glass fibers that are used in resin composites including polypropylene, are having length of as high as 5 mm.
23. Since both Saito et al and Tsuchigane et al are related to composites based on polypropylene and glass fibers, used for making molded articles having improved strength, and thereby belong to the same field of endeavor, wherein i) Tsuchigane et al teaches that the glass fibers that are used in said resin composites including polypropylene, are having length of as high as 5 mm and further ii) Mori et al discloses glass fibers having 1%wt of CaO, 26%wt of B2O3, also having low dielectric constant and low dielectric loss tangent, and that belong to NE-glass and ii) Yoshida et al teaches such NE-glass fibers having not only low permittivity, but also superior transparency, and is used in resin composites, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Saito et al, Tsuchigane et al, Mori et al and Yoshida et al, and to use, or obvious to try to use the NE-glass fibers having the composition as taught by Mori et al and Yoshida et al as the component C) in the composite of Saito et al, since such glass fibers are having low dielectric constant, low dissipation factor and superior transparency, and further to prepare such glass fibers having length of about 5 mm, as taught by Tsuchigane et al, since the glass fibers having such length are taught in the art as being used in polypropylene-based resin composites for molded articles with high tensile strength, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
24. Saito et al does not specify the composition further comprising a plurality of clay rods.
25. However, BYK-MAX CT 4270 flyer teaches the commercial additive based on an organo-modified phyllosilicate to provide ultra-efficient reinforcement to thermoplastic compounds, specifically polyolefins, wherein BYK-MAX CT 4270 is based on mixed morphology clay technology which dramatically aids in compounding and dispersion, is added to polyolefins in amount of less than 10%wt, leading to increasing tensile strength (see the flyer).
26. As evidenced by BYK New Strategy for low Density Bumper Fascia flyer, the mixed morphology clay from BYK has a combination of clay platelets and clay rods located between the layers/platelets as shown on figure A below (see p. 6 of the flyer).
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Figure A
27. It is further noted that BYK-MAX CT 4270 is used in examples of instant specification as the clay component (Table 1 of instant specification); therefore, BYK-MAX CT 4270 will intrinsically and necessarily comprise both clay rods and clay platelets having the sizes/dimensions as those claimed in instant invention as well.
28. Since BYK-MAX CT 4270 based on mixed morphology clay technology, including combination of clay rods and clay platelets, dramatically aids in compounding and dispersion, specifically designed to be added to polyolefins in amount of less than 10%wt, leading to increasing tensile strength, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of BYK-MAX CT 4270 flyer and Saito et al in view of Tsuchigane et al, Mori et al and Yoshida et al, and to choose and use BYK-MAX CT 4270 mixed morphology clay as the clay component B) in the composite of Saito et al in view of Tsuchigane et al, Mori et al and Yoshida et al, so to further increase tensile strength of the composite of Saito et al in view of Tsuchigane et al, Mori et al and Yoshida et al and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
29. Since the composite of Saito et al in view of Tsuchigane et al, Mori et al, Yoshida et al and BYK-MAX CT 4270 flyer is substantially the same as that claimed in instant invention, i.e. comprises polypropylene matrix; NE-glass fibers having the amount of B2O3 of more than 12%wt and the amount of CaO of 1%wt, and further their properties as claimed in instant invention; further comprising both clay platelets and clay rods, such as the commercial product BYK-MAX CT 4270, all components used in the substantially the same amounts as those claimed in instant invention, or in amounts with the ranges overlapping with those claimed in instant invention, therefore, the composite of Saito et al in view of Tsuchigane et al, Mori et al, Yoshida et al and BYK-MAX CT 4270 flyer will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties including coefficient of thermal expansion and level of porosity, having values the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention (as to instant claims 1, 6, 30). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
30. It is further noted that:
1) Example 7 of instant specification discloses the use of E Glass fibers (Tables 1, 4 of instant specification), wherein E Glass fibers are cited in instant specification as being traditional glasses, having 5-10%wt of boric acid and 16-25%wt of CaO (see [0018] of instant specification), which ranges for amounts of boric acid and CaO are outside of claimed ranges; thus Example 7 of instant specification appears to be a comparative example and thereby is having the value of coefficient of expansion outside of the claimed range.
2) Further, the scope of instant claims is significantly broader than the specific examples provided in instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
31. Claims 1, 3-7, 21-22, 30-31, 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US 2004/0204528) in view of Mori et al (US 5,958,808), Yoshida et al (US 2011/0281484), Tsuchigane et al (US 2020/0079919) and Yuan Li et al (CN1927938, based on machine translation), in further view of Niki et al (US 5,656,691),
as evidenced by
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and
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In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
32. The discussion with respect to Saito et al (US 2004/0204528) in view of Mori et al (US 5,958,808), Yoshida et al (US 2011/0281484), Tsuchigane et al (US 2020/0079919) and Yuan Li et al (CN1927938, based on machine translation), set forth in paragraphs 3-16 is incorporated here by reference.
33. Though Saito et al does not explicitly recite the polypropylene resin A) being a copolymer of propylene with 1-5%mol of ethylene, and the composite further comprising wollastonite,
Niki et al discloses a polypropylene composition comprising:
A) 50-90%wt of polypropylene and
B) 5-40%wt of inorganic filler (col. 2, lines 1-10), wherein the inorganic filler comprises glass fibers, clay and wollastonite used in combination (col. 4, lines 25-30, as to instant claim 7) and
wherein the polypropylene component A) is cited as being a propylene homopolymer or propylene/ethylene copolymer comprising up to 20%mol of ethylene (col. 3, lines 60-66, as to instant claim 3), wherein the composition is having excellent impact strength (Abstract) and is used for making molded articles (col. 7, lines 5-14).
34. Since both Niki et al and Saito et al are related to polypropylene/clay/glass fiber compositions having high strength and used for making molded articles, and thereby belong to the same field of endeavor, wherein Niki et al teaches the used polypropylene being a propylene homopolymer of a copolymer with up to 20%mol of ethylene, and the composition further comprising wollastonite, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Saito et al and Niki et al, and to use, or obvious to try to use the copolymer of propylene with up to 20%mol of ethylene as the polypropylene component A) in the composition of Saito et al in view of Mori et al, Yoshida et al, Tsuchigane et al and Yuan Li et al, and further add, at least partially, wollastonite to further increase impact strength, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
35. Claims 1, 3-7, 21-22, 30-31, 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (US 2004/0204528) in view of Mori et al (US 5,958,808), Yoshida et al (US 2011/0281484), Tsuchigane et al (US 2020/0079919) and BYK-MAX CT 4270 flyer, 2019, in further view of Niki et al (US 5,656,691),
as evidenced by BYK New Strategy for low Density Bumper Fascia flyer, 2020;
as evidenced by
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and
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29
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In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
36. The discussion with respect to Saito et al (US 2004/0204528) in view of Mori et al (US 5,958,808), Yoshida et al (US 2011/0281484), Tsuchigane et al (US 2020/0079919) and BYK-MAX CT 4270 flyer, 2019, set forth in paragraphs 17-30 above is incorporated here by reference.
37. Though Saito et al does not explicitly recite the polypropylene resin A) being a copolymer of propylene with 1-5%mol of ethylene, and the composition comprising wollastonite,
Niki et al discloses a polypropylene composition comprising:
A) 50-90%wt of polypropylene and
B) 5-40%wt of inorganic filler (col. 2, lines 1-10), wherein the inorganic filler comprises glass fibers, clay and wollastonite in their combination (col. 4, lines 25-30, as to instant claim 7) and
wherein the polypropylene component A) is cited as being a propylene homopolymer or propylene/ethylene copolymer comprising up to 20%mol of ethylene (col. 3, lines 60-66, as to instant claim 3), wherein the composition is having excellent impact strength (Abstract) and is used for making molded articles (col. 7, lines 5-14).
38. Since both Niki et al and Saito et al are related to polypropylene/clay/glass fiber compositions having high strength and used for making molded articles, and thereby belong to the same field of endeavor, wherein Niki et al teaches the used polypropylene being a propylene homopolymer of a copolymer with up to 20%mol of ethylene, and further wollastonite, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Saito et al and Niki et al, and to use, or obvious to try to use the copolymer of propylene with up to 20%mol of ethylene as the polypropylene component A) in the composition of Saito et al in view of Mori et al, Yoshida et al, Tsuchigane et al and BYK-MAX CT 4270 flyer, and further add, at least partially wollastonite, so to improve impact strength of the composition, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Response to Arguments
39. Applicant's arguments filed on January 8, 2026 and January 23, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee 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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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