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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 5-8, and 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988).
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
(A) The breadth of the claims
Claim 1 has been amended to require that “the styrene-base resin comprises one or more selected from the group consisting of … a heat resistant styrene-based resin (c).” Additionally, the claims have been amended to exclude styrene-based resins which consist of an aromatic vinyl compound and a vinyl cyanide compound.
(B) The nature of the invention; (E) The level of predictability in the art
The invention is chemical in nature, dealing with thermoplastic resin compositions containing mixtures of polymeric materials (B – nature of the invention). As discussed in MPEP 2164.03, chemistry is recognized as an unpredictable art (E – level of predictability in the art).
(C) The state of the prior art
Thermoplastic resin compositions are generally known in the art. However, claim 1 requires that the composition contains a styrene-based resin comprising one or more including a heat resistant styrene-based resin (c) (emphasis added).
“Heat resistance” is a property that is certainly recognized by the prior art, as polymeric materials differ in terms of stability in the presence of differing levels of heat. Glass transition temperatures, melt temperatures, and decomposition temperatures are all heat-related transitions which are directly linked to the concept of “heat resistance.” Furthermore, materials science instrumentation/characterization methods include many “heat resistance” relevant techniques including dynamic mechanical analysis, rheology, tensile testing, differential scanning calorimetry, thermogravimetric analysis, etc. However, there is no generally agreed upon threshold or denotative difference between a “heat resistant” and a non-“heat resistant” material or monomer. By contrast, heat resistance is a spectrum and favorable or dis-favorable heat resistance will generally be a relative evaluation based on the intended application.
One of ordinary skill in the art would not be properly appraised of heat resistance requirements by the mere recitation of the term “heat resistance.”
(D) The level of one of ordinary skill
One of ordinary skill in the art has a bachelor’s or master’s degree and 5 years or less of work experience (NC State Science and Research – Polymer Chemist, 2021, p. 1-6). This allows one of ordinary skill to conduct routine experimentation under the guidance and direction of individuals with significantly higher levels of education and/or experience exceeding the level of ordinary skill in the art. One of ordinary skill in the art would lack sufficient experience and education to make an informed decision about what monomers to include in a polymer pursuant to heat resistance, when selecting from the wide array of viable monomers known within polymer science and, more narrowly, within the synthetically relevant polymerization scheme.
(F) The amount of direction provided by the inventor; (G) The existence of working examples
The applicant has provided a detailed description of the invention recited in the instant claims. The description includes working examples illustrating embodiments of the purported inventions of said claims.
With respect to the aforementioned “heat resistance” characteristic, the applicant has only provided that the “heat-resistant styrene-based resin (c)” may be a styrene-based resin including a heat-resistant monomer, and is preferably an α-methylstyrene-vinyl cyanide compound copolymer. The applicant provides specific, more detailed examples of this, however no controlling definition for “heat resistance” or what qualifies as a heat-resistant monomer is provided (see instant Specification at [78]-[89]).
Claim 1 has been amended to exclude copolymers consisting of an aromatic vinyl compound and a vinyl cyanide compound. The only heat-resistant styrene-based resins (c) described in the Specification consist of aromatic vinyl and vinyl cyanide compounds; no other suitable monomers are listed. No direction has been provided as to heat resistant styrene-based resins currently falling within the scope of the claims.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
In order to practice the invention as claimed, one of ordinary skill in the art would be required to independently identify, characterize, and qualify a collection of relevant monomers to establish heat resistant monomers which may be used to produce polymers exhibiting “heat resistance.”
Given the unpredictable nature of the art; the level of ordinary skill in the art; and the lack of direction in either the written description or working examples, it is clear than an undue quantity of experimentation would be required for one of ordinary skill in the art to practice the claimed invention. Therefore, the claims fail to comply with the enablement requirement.
Response to Arguments
Applicant’s arguments are moot in view of the new ground of rejection presented above.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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