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
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.
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.
Claims 16-18, 20-26, 29, 30 and 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0065622 (Minkwitz).
Minkwitz disclose a thermoplastic molding composition comprising:
3 to 91.7 wt.% of at least one polycarbonate (meets Applicant’s polycarbonate (A-3) and overlaps content thereof);
3 to 91.7 wt.% of at least one styrene copolymer such as styrene-acrylonitrile copolymer (B-i) (SAN) [0153] (meets Applicant’s thermoplastic matrix copolymer (A-2) and overlaps content thereof);
3 to 91.7 wt.% of at least one grafted rubber such as acrylate rubber grafted with styrene and acrylonitrile (C-i) [0156] (meets Applicant’s ASA graft copolymer (A-1) and overlaps content thereof);
0.2 to 0.9 wt.% of a stabilizer compound per formula (I) having a dipiperidine structure (meets Applicant’s hindered amine light stabilizer (HALS) (B-2) and overlaps 0.1 to 0.35 wt.% content thereof);
0 to 0.9 wt.% of a stabilizer compound per formula (II) (meets Applicant’s HALS (B-1) and overlaps 0.2 to 0.4 wt.% content thereof); and
0 to 0.9 wt.% of a stabilizer compound per formula (III)-(VI) (meets Applicant’s HALS (B-3) and overlaps 0.55 to 1.5 wt.% content thereof); (e.g., abstract, [0008-0022], examples, claims).
Illustratively, Minkwitz sets forth Example 1 (Table 1) comprising:
(a) 58 wt.% polycarbonate (A-i) (meets Applicant’s polycarbonate (A-3) and content thereof);
(b) 20 wt.% SAN copolymer (B-i) (meets Applicant’s thermoplastic matrix copolymer (A-2) and content thereof);
(c) 20 wt.% acrylate rubber grafted with styrene and acrylonitrile (C-i) (meets Applicant’s ASA graft copolymer (A-1) and content thereof), wherein the sum of components (A-i), (B-i) and (C-i) total 98 wt.% (meets Applicant’s polymer composition (A) content);
(d) 0.5 wt.% Tinuvin 770 (D-i) [0167] (meets Applicant’s exemplified HALS (B-2) [0248] but content exceeds the presently claimed 0.35 wt.% upper limit);
(e) 0.5 wt.% Cyasorb 3853 (E-i) [0170] (meets Applicant’s HALS (B-1) [0247] but content exceeds the presently claimed 0.4 wt.% upper limit); and
(f) 1 wt.% carbon black (H-i) [0177] (meets Applicants’ colorant (C) [0252] and content thereof).
In essence, claim 16 differs from Minkwitz’s examples in requiring (i) lower limits of the Tinuvin 770 (D-i) and Cyasorb 3853 (E-i) and (ii) the presence of an additional HALS (B-3). With respect to the first difference, it is within the purview of Minkwitz’s inventive disclosure, and obvious to one having ordinary skill in the art, to use the Tinuvin 770 (D-i) stabilizer in amounts as low as 0.2 wt.% and falling within the presently claimed 0.2 to 0.35 wt.% range and the Cyasorb 3853 (E-i) stabilizer in amounts as high as 0.9 wt.% and falling within the presently claimed 0.2 to 0.4 wt.% range for their expected additive stabilizing effect. As to the second difference, Minkwitz discloses the further inclusion of up to 0.9 wt.% of a compound per formula (III)-(VI), such as the additional Chimasorb 944 (F-i) [0172] used in Examples 2 and 3 (Table 1) (meets Applicant’s HALS (B-3)). Thus, it would have been obvious to one having ordinary skill in the art, to modify Minkwitz’s Example 1 by decreasing the Tinuvin 770 (D-i) content to ≤ 0.35 wt.% (meets Applicants’ (B-2) content) and the Cyasorb 3853 (E-i) content to ≤ 0.4 wt.% (meets Applicants’ (B-1) content) and further including ≥ 0.55 wt.% of the additional Chimasorb 944 (F-i) (meets Applicants’ (B-3) content) for their expected additive effect and with the reasonable expectation of success. Differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to claim 17, Minkwitz’s exemplified Tinuvin 770 meets the presently claimed structure (II), as evidenced by present specification [0166-01673], the Cyasorb 3853 meets the presently claimed structure (I), as evidenced by present specification [0161-0162], and the Chimasorb 944 meets the presently claimed structure (III), as evidenced by present specification [0170-0171].
As to claim 18, Minkwitz’s exemplified acrylate rubber grafted with styrene and acrylonitrile (C-i) has an average particle size of 624 nm [0159].
As to claim 20, Minkwitz’s exemplified SAN copolymer (B-i) [0153] comprises 81 wt.% styrene (vinylaromatic units) and 19 wt.% acrylonitrile (vinyl cyanide units).
As to claim 21, in Minkwitz’s Example 1 the polymer component of the composition consists of:
- about 59 wt.% (58/98) polycarbonate (A-i) (meets Applicant’s polycarbonate (A-3) and content thereof);
- about 20 wt.% (20/98) SAN copolymer (B-i) having 81 wt.% styrene and 19 wt.% acrylonitrile (meets Applicant’s thermoplastic matrix copolymer (A-2) and content thereof); and
- about 20 wt.% acrylate rubber grafted with styrene and acrylonitrile (C-i) having an average particle size of 624 nm (meets Applicant’s ASA graft copolymer (A-1), particle size thereof and content thereof), wherein the sum of components (A-i), (B-i) and (C-i) total 98 wt.% (meets Applicant’s polymer composition (A) content);
As to claim 22, Minkwitz discloses, and renders obvious to one having ordinary skill in the art, the use of rubber-based graft rubber graft copolymers (C) having a bimodal size distribution [0089] with an average particle size of from 50 to 200 nm and an average particle size of from 200 to 800 nm (inclusive of the presently claimed d50 particle ranges).
As to claim 23, Minkwitz’s Example 2 (Table 1) exhibits a surface gloss of 88 before weatherization and a surface gloss of 78 after 1500 hours of weatherization (above 75%).
As to claim 24, Minkwitz’s Example 2 reveals only a slight color difference after 1500 hours of weatherization.
As to claim 25, Minkwitz’s method for producing the molding composition [0137] involves melt blending the components, e.g., at temperatures in the range from 160 to 400°C which would appear to be above the glass transition point of the components.
As to claim 26, the introductory phrase, "a method for improving weathering resistance" does not serve to patentably distinguish over Minkwitz’s disclosure. This language, in effect, simply states the result of compounding the materials. Thus, it would be expected that compounding the similar-such materials per Minkwitz’s above-modified Example 1 would give rise to the same results.
As to claim 29, Minkwitz’s Example 1 exhibits a gloss level of 93 before weathering (Table 1).
As to claim 30, Minkwitz’s articles are not painted and are used in the outdoor sector [0139].
As to claim 32, it would have been within the purview of Minkwitz’s inventive disclosure, and obvious to one having ordinary skill in the art, to further include 0.05 to 5 wt.% of at least one additive, such as the exemplified triphenyl phosphate (G-i) per Example 3, to Minkwitz’s above-modified Example 1 for its expected additive effect and with the reasonable expectation of success.
As to claims 33 and 34, Minkwitz discloses the same HALS materials per formula (III)-(VI) defining Applicants’ HALS (B-3), e.g., [0073-0081]. Thus, Minkwitz’s HALS materials per formula (III)-(VI) would meet the presently claimed molecular weight.
As to claim 35, Minkwitz’s articles are not painted and have use in production of automotive components. [0037].
Method claims 27 and 28 have not been included in the above 35 USC 103 rejection in that it is not seen that Minkwitz suggests or provides any motivation for reducing mold deposit formation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16-18, 20-30 and 32-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-29 of copending Application No 17/766877. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are directed to compositions comprising the same components and amounts thereof. The present claims do not preclude a mixture of SAN and AMSAN copolymers as component (A-2) or the (B-1) stabilizer in a masterbatch comprising AMSAN.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16-18, 20-30 and 32-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-34 of copending Application No 17/769005. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are directed to compositions comprising the same components and amounts thereof. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments and amendments filed April 08, 2026 are effective in overcoming the 35 U.S.C. 103 rejection over US 2015/0291793 (Minkwitz) and the nonstatutory double patenting over copending Application No 17/768134. Specifically, claim 16 has been amended to preclude the polyamide required by Minkwitz and the polymerized alkyl methacrylate component (A-3) in the copending claims.
Applicant's arguments filed April 08, 2026 have been fully considered but they are not persuasive in overcoming the nonstatutory double patenting rejections over copending Applications 17/766877 and 17/769005.
Applicants’ request to hold the nonstatutory double patenting rejections in abeyance until the claims are found allowable is noted. Per MPEP 804 B.1.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
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 Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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