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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 6-11, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoerold et al. (2018/0072873) in view of Furukawa et al. (JP 2008-038149A).
Regarding claims 1-4, 6, 17: Hoerold et al. teach a composition comprising 49.55 wt% polyamide, 30 wt% glass fibers, 14 wt% DEPAL, 3 wt% PHOPAL, and 3 wt% phosphazene [Examples; Table 1]. Hoerold et al. teach that the polyamide is preferably selected from a finite list of thirteen possible polyamides [0077]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select PA9T as the polyamide in the example of Hoerold et al. It is a simple substitution of one know element for another to obtain predictable results.
Herold et al. teach using 25 to 35 wt% glass fibers [0062].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 35 wt% glass fibers in the example of Hoerold et al. to provide the desired reinforcement. 35 wt% glass fibers in the Example of Herold et al. will reduce the polyamide to 45.55 wt% polyamide.
Hoerold et al. fail to teach a viscosity number for their PA9T.
However, Furukawa et al. teach in an analogous composition that when a PA9T has a viscosity number of 70 to 150 ml/g, that it improves the processability and flame retardance of the composition [0027; Examples]. Furukawa teaches an example of PA9T with a viscosity number of 100 ml/g [0106].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a PA9T with a viscosity number of 100 ml/g as taught by Furukawa et al. as the viscosity number for the PA9T in Hoerold et al. to improve the processability and flame retardance of the composition.
Since the composition is the same as claimed, and is almost identical to the instant examples E2 and E3, it will possess the claimed tensile strength. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 7: Hoerold et al. teach a ratio of 14:3 [Examples; Table 1]
Regarding claims 8, 9 and 18: Hoerold et al. teach the claimed phosphazine [0119; Examples].
Regarding claims 10 and 19: Hoerold et al. teach glass fibers with a diameter of 10 microns and a length of 4.5 mm [0224; Examples].
Regarding claims 11 and 20: Since the composition is the same as claimed it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive.
The Applicant has alleged that slight differences in compositions yield significant differences in properties, and alleges that Hoerold et al. in view of Furukawa et al. does not possess the claimed tensile strength. This is not persuasive because C7 and C8 are not comparable to Hoerold et al. in view of Furukawa et al. Examples C7 and C8 do not comprise a phosphazene and comprise other components instead.
Since the composition of Hoerold et al. in view of Furukawa et al. is the same as claimed, and is almost identical to the instant examples E2 and E3, it will possess the claimed tensile strength. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." The Applicant has not provided convincing evidence to the contrary.
The Applicant makes an argument that Hoerold teaches examples with a different matrix resin. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The Applicant has made the argument that Hoerold does not teach or disclose any requirement for tensile properties. 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) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
The Applicant has alleged that there is no motivation for using PA9T in Hoerold. This is not persuasive because PA9T is one of only thirteen preferred polyamides in Hoerold [0077]. It is obvious to select a preferred polyamide from a short, finite list. It is a simple substitution of one known element for another to obtain predictable results.
The Applicant has alleged that Furukawa discloses that the PA9T would only improve processability in a composition comprising a polyphenylene ether and a phosphinic acid salt. This is not persuasive because the viscosity number of a matrix polymer will clearly affect the viscosity, and therefore the processability, of a composition.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763