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 .
Response to Amendment
The amendment filed June 03, 2025 has been entered.
The 112(d) rejection set forth in the previous Office Action is no longer applicable and, thus, withdrawn because Claim 3 was amended to further limit the masterbatch to an amount of “0% to 4% by weight”. Written descriptive support for this amendment is found in the Claims and Specification [Page 2, Line 10] as originally filed. Since the applied art of record suggest this limitation within the meaning of 35 USC 103 (a), the rejection of record over Thiem in view of Daisuke is maintained and has been elaborated to explain how this comes about.
Accordingly, this action is made FINAL.
The Claim 20 objection set forth on Page 11, ¶ 2 of the previous Office Action is also no longer applicable and thus withdrawn because the applicants provided the same with proper claim status.
In response to the Drawing and Specification objections set forth on Page 3, ¶ 1 and Page 10, ¶ 4, respectively, of the previous Office Action, the Applicant amended figure labels and Pages 3, 21 and 24 to correct informalities. Thus, these objections are withdrawn.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Thiem et al., (US 20160009870 A1; hereafter as “Thiem”) in view of Daisuke et al., (JP2004307834A (A); English translation incorporated herewith; hereafter as “Daisuke”).
This rejection is adequately set forth in Pages 12-17 of the previous Office action mailed March 11, 2025, and is incorporated herein.
Regarding newly amended Claim 3, Thiem teaches up to 2 to 100 parts by weight of Compound B [Claim 1], including Compound B1 graft polymers [Claim 1; Paragraph 0076], corresponding to other masterbatch constituents of Claim 3. The amount taught by Thiem (2-100 parts by weight) overlaps with the claimed range of 0% to 4% by weight. See MPEP section 2144.05.
Response to Arguments
Applicant's arguments filed June 03, 2025 have been fully considered but they are not persuasive for the following reasons.
Applicant argues on Page 10 of their Remarks that the Claim 10 is not missing an essential step.
In further consideration of applicant’s arguments at Pages 10 of their Remarks, the 112(b) rejection set forth in the previous Office Action is no longer applicable and thus, withdrawn.
Applicant argues on Pages 11-12 of their Remarks that Thiem teaches a different method than what is claimed in independent Claim 1 and therefore does not teach or suggest the claimed masterbatch.
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., components are contacted with water in a dip tank, silo or mixer and stored for at least 24 h; components contacted with the water having an specific internal moister content are produced; the components are melted and kneaded in the molten state and/or the components are mixed with remaining components and the mixture is melted and kneaded again) are not recited in the rejected claim(s). Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 11-12 of their Remarks that Thiem is silent to the continuous single-shaft kneader of Claim 1 and only discloses the general process of kneading or the use of a twin-shaft extruder.
However, Daisuke teaches a single-screw hybrid continuous kneading/extrusion apparatus [¶ 0012] which reads on the continuous single-shaft kneader of Claim 1. Daisuke also teaches their method for producing thermoplastic copolymer including the step of using the claimed continuous single-shaft kneader, results in a product with high heat resistance and high transparency [¶ 0012, ¶ 0019]. Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date to modify the molding compound of Thiem by using a single-shaft hybrid continuous kneading / extruding machine as taught by Daisuke. This modification would expectedly make a product with high heat resistance and high transparency, thereby improving the final product and arriving at the invention.
Applicant argues on Pages 12-13 of their Remarks that Daisuke does not teach mineral fillers required of Claim 1.
While Daisuke does not disclose all the features of the claimed invention, it is utilized as a teaching reference and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention. Rather, this reference teaches a certain concept, i.e., the use of the claimed single-shaft kneader, and in combination with Thiem, which teaches, among other things, the use of talc (corresponding to the claimed mineral filler), suggest the presently claimed invention. It follows that this argument is not convincing at this time.
Applicant argues on Page 11 of their Remarks that the instant Specification [US PG Pub 2022/0396675A1, ¶ 0051] demonstrates that applicant’s claimed invention results in an improved dispersion with the highest possible total content of fillers without increasing the temperature of the polymer molding compound during compounding in the twin-screw extruder.
However, the applicants do not refer to any factual evidence to support this statement. Paragraph [0051] of applicants’ published application merely states current issues in the field of art but does not quantify said improved dispersion over the prior art. Thus, it is well established that neither applicants’ mere conclusory statement in the Specification nor arguments of counsel can take place of objective evidence.
Furthermore, prior art need not realize the benefit of or teach the claimed invention. Thiem and Daisuke are only required to teach the claimed steps of the instantly claimed invention. Since Thiem in view of Daisuke teach the same steps, ingredients and amounts for producing a molding composition, the process would have expectedly produced the same improved dispersion with the same total content of fillers without increasing the temperature of the polymer molding compound. Thus, applicants’ argument is not persuasive at this time.
Applicants argue on Page 13 of their Remarks that continuous single-shaft kneaders had not previously been known to have a particular dispersive mixing effect, so their use had not been expected to result in significantly improved dispersion.
However, to show the claimed invention produced an unexpectedly improved dispersion, Applicants must show data that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. No such experimental data was provided.
Furthermore, the instant Specification [US PG Pub 2022/0396675A1, ¶ 0049] lists a multitude of kneaders and mixers that can be used in the claimed process including “the group made up of continuous single-shaft kneaders, multishaft extruders”, and explicitly list “twin-screw extruders or ring extruders, planetary roller extruders, ram kneaders, and internal mixers” as particularly preferred. Applicant does not even disclose the claimed continuous single-shaft kneader as a preferred embodiment which implies said embodiment and its respective mixing effect may not even be significantly notable. Thus, applicant’s argument is not persuasive at this time.
The double patenting rejection based on the claims of U.S. Application No. 17/774036 (US PG Pub 2022/0380596) set forth in the previous Office action is no longer applicable and withdrawn since applicants submitted a terminal disclaimer on June 03, 2025.
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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/HANNAH J PAK/Primary Examiner, Art Unit 1764