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.
Claims 7 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Volkers (US 2007/0232739 A1) in view of Zheng (US 20140357769 A1) and Sutter (US 3,552,722).
Regarding claims 7 and 12, the claims are recognized as product-by-process claims. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps (See MPEP 2113.I.). In other words, a product-by-process claim refers to a product (in the instant case, a masterbatch), which is limited by its structure and the structure implied by the steps which produce its structure, and not by the process steps themselves.
Volkers teaches a thermoplastic composition containing polycarbonate, and a mineral filler (Abstract), and teaches a series of inventive example masterbatch compositions containing 54.3% polycarbonate, 45.7% filler (which is talc, and which is a “reinforcing filler” [0090]) and amounts of other components (Acid and stabilizer) which comprise more than 0% and less than 5% of the composition ([0145], Table 3). The amounts of each component overlap the claimed amounts within the compositions of claims 1 and 8, establishing prima facie cases of obviousness. Additionally, the inventive examples do not include polyester, and thus the examples comprise 0% polyester, which falls within the claimed range of “not more than 0.9%” in each of claims 7 and 12, establishing prima facie cases of obviousness.
Volkers differs from claims 7 and 12 because it is silent with regard to the incorporation of titanium dioxide as the reinforcing filler. Volkers does however specifically include titanium dioxide as a viable component within the formulation (c.f. [0120] where Volkers includes titanium dioxide as a colorant).
In the same field of endeavor, Zheng teaches blended thermoplastic compositions (Abstract), comprising reinforcing fillers including talc and titanium dioxide ([0217]). The formulations of Zheng are also directed to polycarbonate compositions (Abstract), and it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the titanium dioxide filler of Zheng in place of the talc within the inventive composition of Volkers, as Zheng teaches titanium dioxide as a suitable alternative to talc as a filler within thermoplastic polycarbonate compositions.
Volkers teaches that the inventive compositions may be powdered materials and may be manufactured by any methods generally available in the art ([0141]), but ultimately differs from claims 7 and 12 because it is silent with regard to the use of a single shaft kneader for the production of the inventive masterbatch compositions.
In the same field of endeavor, Sutter teaches a continuous mixing and kneading apparatus for uniformly blending powdered plastics (Abstract). The apparatus of Sutter reads on the claimed “single-shaft kneader” because the instant Specification states that the extruders disclosed by DD 71190A (which is a German equivalent of Sutter as referenced herein) are suitable for the claimed process (see instant Specification at p. 16, final paragraph). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to produce the masterbatch taught by Volkers using the single shaft-kneader taught by Sutter, as Sutter recognizes its kneader as suitable for the mixing and kneading of powdered plastics.
Regarding claim 13, Volkers teaches the injection molding of the inventive composition after pelletization ([0147]), and does not require any further processing after injection molding, which therefore reads on the claimed “injection molding without further processing.”
Regarding claim 14, Volkers teaches molded articles comprising the inventive polycarbonate compositions ([0142]).
Claims 1-2, 5-10, 12-14, and 18-20 are rejected or are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Zheng (US 20140357769 A1) in view of Sutter (US 3,552,722).
Regarding claim 1, Zheng teaches blended thermoplastic compositions (Abstract), which read on the claimed “masterbatch,” comprising:
About 30 to about 75 wt% of a polycarbonate ([0006]) which overlaps the claimed range of ”70% to 25% by weight of polycarbonate,” establishing a prima facie case of obviousness.
About 1 to about 20 wt% of a polyester ([0006]).
About 25 to about 60 wt% of a reinforcing filler ([0006]), which may include talc, clay, wollastonite, and titanium dioxide ([0217]), and which therefore reads on the claimed list of reinforcing fillers. The range of amounts of the reinforcing filler overlaps the claimed range of “30% to 70% by weight of a reinforcing filler,” establishing a prima facie case of obviousness.
A series of optional additives ([0237]). Since the additives are optionally included, the formulation of Zheng includes, at minimum, the incorporation of 0 wt% of the optional additives, which falls within the claimed range of “0% to 5% by weight of other masterbatch constituents,” establishing a prima facie case of obviousness.
All of the components of the formulation of Zheng add up to 100 wt%, and all components’ amounts are provided in percentages based on the total weight of the composition ([0006]). Zheng further teaches that the composition may be compounded in commercial melt compounding equipment ([0252]), and contemplates powdered formulations because it teaches that the polycarbonate (in addition to the other materials) may be powdered ([0256]) but differs from claim 1 because it is silent with regard to the specific use of a continuous single-shaft kneader.
In the same field of endeavor, Sutter teaches a continuous mixing and kneading apparatus for uniformly blending powdered plastics (Abstract). The apparatus of Sutter reads on the claimed “single-shaft kneader” because the instant Specification states that the extruders disclosed by DD 71190A (which is a German equivalent of Sutter as referenced herein) are suitable for the claimed process (see instant Specification at p. 16, final paragraph). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to produce the masterbatch taught by Zheng using the single shaft-kneader taught by Sutter, as Sutter recognizes its kneader as suitable for the mixing and kneading of powdered plastics.
Zheng teaches that the amount of polyester within the composition is between about 1 and about 20% by weight ([0006]) but is silent with regard to the amount of polyester being not more than 0.9% by weight. Nevertheless, Zheng teaches a composition which contains an approximate range of polyester (i.e., “about” 1 to “about” 20 weight percent of a polyester ([0006])) whose boundaries lie very close to the claimed upper limit of “0.9% by weight.” In cases where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists (See MPEP 2144.05.I.). Further, in re Banner, 778 F. 2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), adjudicated precedent exists in a case where a larger compositional difference of 0.14% (corresponding to a 17.5% relative increase in Nickel concentration within a prior art formulation (0.94% Nickel) versus that of the claimed formulation (0.8% Nickel)) was found to be prima facie obvious.
Regarding claim 2, as described above, Zheng teaches that the reinforcing filler may be included in amounts ranging from about 25 to about 60 wt% ([0006]), and that the polycarbonate may be included in amounts ranging from about 30 to about 75 wt% ([0006]). In both cases, the ranges taught by Zheng overlap the claimed ranges, establishing prima facie cases of obviousness. Furthermore, all of the components of the formulation of Zheng add up to 100 wt%, and all components’ amounts are provided in percentages based on the total weight of the composition ([0006]).
Regarding claim 4, Zheng teaches the incorporation of a reinforcing filler ([0006]), which may include talc, clay, wollastonite, and titanium dioxide ([0217]), which reads on the claimed listing of “reinforcing filler” components.
Regarding claims 5 and 6, Zheng as modified by Sutter teaches the compounding of the formulation in a mixing apparatus which reads on the claimed “single-shaft kneader.” Furthermore, Zheng teaches a specified range of melt temperatures within the extruder ([0252]), and teaches that the components may be added into mixing extruders as a pre-blended powder, which reads on the claimed limitation of “wherein the reinforcing filler is added either before the polycarbonate has melted or after the polycarbonate as melted, or both before and after the polycarbonate has melted.”
Regarding claim 7, Zheng teaches a polymer composition containing all of the limitations of the composition of claim 1 as described above.
Regarding claim 8, Zheng teaches blended thermoplastic compositions (Abstract), which read on the claimed “masterbatch,” comprising:
About 30 to about 75 wt% of a polycarbonate ([0006]) which overlaps the claimed range of ”99.5% to 22.5% by weight of polycarbonate,” establishing a prima facie case of obviousness.
About 1 to about 20 wt% of a polyester ([0006]).
About 25 to about 60 wt% of a reinforcing filler ([0006]), which may include talc, clay, wollastonite, and titanium dioxide ([0217]), and which therefore reads on the claimed list of reinforcing fillers. The range of amounts of the reinforcing filler falls within the claimed range of “0.5% to 60% by weight of a reinforcing filler,” establishing a prima facie case of obviousness.
A series of optional additives ([0237]). Since the additives are optionally included, the formulation of Zheng includes, at minimum, the incorporation of 0 wt% of the optional additives, which falls within the claimed range of “0% to 5% by weight of other masterbatch constituents,” establishing a prima facie case of obviousness.
All of the components of the formulation of Zheng add up to 100 wt%, and all components’ amounts are provided in percentages based on the total weight of the composition ([0006]). Zheng further teaches that the composition may be compounded in commercial melt compounding equipment ([0252]), and contemplates powdered formulations because it teaches that the polycarbonate (in addition to the other materials) may be powdered ([0256]) but differs from claim 1 because it is silent with regard to the specific use of a continuous single-shaft kneader.
In the same field of endeavor, Sutter teaches a continuous mixing and kneading apparatus for uniformly blending powdered plastics (Abstract). The apparatus of Sutter reads on the claimed “single-shaft kneader” because the instant Specification states that the extruders disclosed by DD 71190A (which is a German equivalent of Sutter as referenced herein) are suitable for the claimed process (see instant Specification at p. 16, final paragraph). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to produce the masterbatch taught by Zheng using the single shaft-kneader taught by Sutter, as Sutter recognizes its kneader as suitable for the mixing and kneading of powdered plastics.
Zheng teaches that the amount of polyester within the composition is between about 1 and about 20% by weight ([0006]) but is silent with regard to the amount of polyester being not more than 0.9% by weight. Nevertheless, Zheng teaches a composition which contains an approximate range of polyester (i.e., “about” 1 to “about” 20 weight percent of a polyester ([0006])) whose boundaries lie very close to the claimed upper limit of “0.9% by weight.” In cases where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists (See MPEP 2144.05.I.). Further, in re Banner, 778 F. 2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), adjudicated precedent exists in a case where a larger compositional difference of 0.14% (corresponding to a 17.5% relative increase in Nickel concentration within a prior art formulation (0.94% Nickel) versus that of the claimed formulation (0.8% Nickel)) was found to be prima facie obvious.
Regarding claim 9, as described above, Zheng teaches that the reinforcing filler may be included in amounts ranging from about 25 to about 60 wt% ([0006]), and that the polycarbonate may be included in amounts ranging from about 30 to about 75 wt% ([0006]). In both cases, the ranges taught by Zheng overlap the claimed ranges, establishing prima facie cases of obviousness. Furthermore, all of the components of the formulation of Zheng add up to 100 wt%, and all components’ amounts are provided in percentages based on the total weight of the composition ([0006]).
Regarding claim 10, as described above, Zheng teaches that the additional additives are optional ([0237]), and thus may comprise 0% of the formulation. Furthermore, all of the components of the formulation of Zheng add up to 100 wt%, and all components’ amounts are provided in percentages based on the total weight of the composition ([0006]).
Regarding claim 11, Zheng teaches the incorporation of a reinforcing filler ([0006]), which may include talc, clay, wollastonite, and titanium dioxide ([0217]), which reads on the claimed listing of “reinforcing filler” components.
Regarding claim 12, Zheng teaches that the extruded formulation may subsequently be used for molding ([0253]).
Regarding claim 13, Zheng teaches that the composition may be injection molded ([0262]), and does not require any further processing after injection molding, which therefore reads on the claimed “injection molding without further processing.”
Regarding claim 14, Zheng teaches the production of a molded article from the inventive formulation ([0262]).
Regarding claims 15-17, Zheng teaches the incorporation of a reinforcing filler ([0006]), which may include talc and titanium dioxide ([0217]).
Regarding claims 18-20, as described above, Zheng teaches that the reinforcing filler may be included in amounts ranging from about 25 to about 60 wt% ([0006]), the polycarbonate may be included in amounts ranging from about 30 to about 75 wt% ([0006]), and that the additives are optional ([0237]), and may therefore be included at 0 wt%. In each case, the ranges taught by Zheng overlap the claimed ranges, establishing prima facie cases of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed September 30, 2025, with respect to the rejection(s) of claim(s) 7 and 12-14 under 35 USC 103 in view of Volkers and further in view of Sutter have been fully considered and are persuasive in view of the amended claims. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 103 in view of Volkers, and further in view of Zheng and Sutter.
Applicant's remaining arguments with respect to rejections of claims 1-2, 5-10, 12-14, and 18-20 under 35 USC 103 in view of Zheng, and further in view of Sutter have been fully considered but they are not persuasive.
Applicant argues that prior art documents Zheng and Sutter fail to teach the claimed range of 35-70% mineral filler in the form of titanium dioxide, as recited in the newly amended claim 1. However, as recited in the rejection above, Zheng teaches the incorporation of from 25 to 60 wt% of a reinforcing filler ([0006]), which overlaps the claimed range, establishing a prima facie case of obviousness. Furthermore, Zheng specifically teaches the use of titanium dioxide as the reinforcing filler ([0217]).
Applicant next argues that Zheng and Sutter fail to teach the use of a continuous single-shaft kneader. However, as recited in the rejection above, Sutter teaches a continuous mixing and kneading apparatus for uniformly blending powdered plastics (Abstract). Stutter is also the United States equivalent of the German document DD 71190A, which is specifically referenced in the instant Specification at p. 16, final paragraph, as being suitable for the claimed process.
Applicant states that there is no evidence of record why one having ordinary skill in the art would use mineral fillers in the quantities as claimed out of “numerous alternatives disclosed in Zheng.” Zheng does teach multiple ranges of filler quantities (e.g., 25 to 60 wt% at [0044], 30 to 55 wt% at [0045], and 30 to 50 wt% at [0046]), however the presence of multiple ranges within the prior art does not rebut the existence of a particular range (such as the one cited in the rejections, above), and does not rebut the fact that it would have been prima facie obvious to one having ordinary skill in the art to choose the cited range. Furthermore, all of the ranges cited above within Zheng at [0044]-[0046] overlap the newly claimed ranges of “35% to 70% by weight” (as in claim 1), “35% to 60% by weight” (as in claim 8), and “35% to 50% by weight” (as in claim 9). In each case, all of the ranges of Zheng establish prima facie cases of obviousness with respect to the amount of reinforcing filler within the claimed composition.
Applicant argues that there is no evidence of record as to why one of ordinary skill in the art would use the teachings of Sutter simultaneously with the mineral filler quantities disclosed in Zheng to arrive at the claimed composition. However, as described in the rejections above, it would have been obvious to one having ordinary skill in the art to produce the masterbatch taught by Zheng using the single shaft-kneader taught by Sutter, as Sutter recognizes its kneader as suitable for the mixing and kneading of powdered plastics. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06).
Applicant finally contends that single-shaft kneaders were not previously known to have a particular dispersive mixing effect. Firstly, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, 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 the Applicant. See MPEP 2144(IV). Therefore, it is not necessary that the prior art references recognize the dispersive mixing effect, which has been appreciated by the instant Application, in order to read on the claimed process and/or composition. Secondly, Sutter specifically recognizes that the inventive mixing devices are advantageous in overcoming the tendency of materials to separate during extrusion (c.f. Sutter col. 1, lines 11-19).
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.
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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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