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 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 therefore anticipate the claimed compositions of claims 1 and 8. Additionally, the inventive examples do not include polyester, and thus the examples comprise 0% polyester, which anticipates the claimed range of “not more than 0.9%” in each of claims 7 and 12.
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 and 4-20 are rejected or 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 p. 7-9, filed April 7, 2024, with respect to the rejection of claims 7 and 12-14 under 35 USC 102 have been fully considered and are persuasive. The 35 USC 102 rejection of claims 7 and 12-14 has been withdrawn.
The applicant’s showing of a side-by-side comparison of masterbatch processes involving a twin-screw vs single-shaft kneader (Example 12.1 vs Comparative Example 14) indicates that the inventive process does lead to a significant and unexpected decrease in surface defects. This is sufficient to demonstrate at least some degree of structure arising from the use of a single-shaft kneader. Either the compounding apparatus or the related structural difference of decreased surface defects should therefore be considered when determining patentability.
Applicant’s arguments, see Applicant’s Remarks p. 9-13, filed April 7, 2024, with respect to the rejections of claims 1-20 under 35 USC 103 in view of Zheng and Pötschke have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Zheng and Sutter, as described above.
Applicant's arguments with regard to allegations of unexpected results have been fully considered but they are not persuasive.
Whether 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. See MPEP 716.02(d).
Importantly, the provided examples which purportedly assert non-obviousness of the surface characteristics (via the improvement of the dispersion of the filler within the claimed masterbatch) consist of formulations whose compositions fall within the claimed compositional limitations. However, the examples illustrate examples of only two of the claimed reinforcing fillers (talc and titanium dioxide, whereas the claim also includes kaolinite, wollastonite, and dolomite). Furthermore, the purportedly-inventive examples comprise only a single sub-category of polycarbonate (linear polycarbonates all based on bisphenol A are included in the examples, see instant Specification at p. 32-39), whereas the claimed composition is open to virtually any polycarbonate resin. Finally, while the claims are open to the incorporation of anywhere between 30 and 70 % by weight of the reinforcing filler, the examples teach only 40, 50, and 60 wt% (c.f. polycarbonate masterbatch examples 2.1, 4.1, 4.2, 6, 8, 10, and 12, found in the instant Specification on pages 39-45). The applicant therefore argues that a showing of unexpected results for a narrow portion of a claimed range would be sufficient to rebut a prima facie case of obviousness.
The applicant need not present evidence for every embodiment falling within the scope of the claims, but the evidence of record is not reasonably representative of the full scope of the claims. No discernible trend can be ascertained from the exemplary data which could reasonably extend to the full scope of the claims. The examples provided are therefore insufficient to overcome a prima facie determination of obviousness.
Conclusion
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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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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762