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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Devici (WO 2015/071075).
Regarding claim 1, Devici teaches a process for mixing pigments in a polymer suitable for end use (Abstract), wherein the polymer is preferably polypropylene (p. 18, lines 10-13), and the pigment is preferably carbon black (p. 20, line 2). In some embodiments, the pigment comprises between 10 and 45 wt% of the composition (p. 47, line 14), which encompasses the claimed range of “18% to 27%,” establishing a prima facie case of obviousness.
Devici teaches the extrusion of the pigment and polymer composition, including an optionally co-rotating twin screw extruder equipped with a hopper (p. 20, line 28 – p. 21, line 5). The extruder equipment taught by Devici therefore reads on the claimed “mixing device having a hopper and a mixing chamber,” and the claimed limitation of “wherein the mixing chamber of the device comprises at least one co-rotating double rotor.”
Devici further teaches the addition of the polymer and carbon black into the hopper (p. 21, lines 21-24).
Devici teaches the extrusion of the composition at a temperature range of 180 to 240°C (p. 21, lines 7-9), which overlaps the claimed range of “240°C to 330°C,” and teaches that the feed rate of the composition ranges from 0.1 to 80 tons per hour (equivalent to a range of about 90.7 to 72,574.8 kg per hour, p. 21, lines 8-9), which overlaps the claimed range of “at least 500 kg/hr.” In each case, a prima facie case of obviousness is established.
Devici further teaches that the melt flow rate of the polyethylene preferably ranges from 0.1 to 10 g/10min (p. 19, lines 14-15), and teaches polyethylene and polypropylene as alternatively suitable polymers for the inventive composition (p. 8, lines 15-16). 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 select a polypropylene with a melt flow of 0.1 to 10 g/10 min, as Devici teaches this melt flow rate as suitable for enacting the inventive process. The range of 0.1 to 10 g/10min overlaps the claimed range of “10 g/10 min to 90 g/10min,” establishing a prima facie case of obviousness.
Devici is silent with regard to the claimed surface resistivity characteristic. Nevertheless, Devici as applied above results in a polypropylene composition that is structurally identical to the claimed “injection-molded chip,” which contains all of the same components in all of the same compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed surface resistivity characteristic will therefore necessarily be present in Devici as applied above.
Regarding claims 2-4, Devici teaches the blending of polymer and filler (p. 3, line 30 – p. 4, line 2), and teaches that the filler may be carbon black (p. 20, line 2). Devici differs from claims 2-4 because it is silent with regard to the filler retaining 80%, 90%, or 95% of its structure after solidifying the molten composition, as measured by transmission electron microscopy (TEM). Nevertheless, the formulation of Devici is identical to that of the product made by the claimed process, incorporating the same materials and undergoing the same processes of production. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art formulations are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed structure retention of the filler will therefore necessarily be present in Devici as applied above.
Regarding claim 5, Devici teaches the solidification of the molten extrudate (p. 3, line 31 – p. 4, line 2) and teaches the formation of pellets from the solidified extrudate (p. 30, lines 8-10).
Regarding claim 10, Devici teaches the use of conductive carbon black to produce conductive carbon black products (p. 6, line 18, p. 27, line 7).
Claims 8, 11-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Devici (WO 2015/071075) in view of Yu (Journal of Applied Polymer Science 2005, Volume 98, pages 1799-1805).
Regarding claim 8, Devici as modified teaches all of the limitations of claim 1 as described above. Devici as modified differs from claim 8 because it is silent with regard to the carbon black having an aciniform structure.
In the same field of endeavor, Yu teaches the blending of polymers and a conductive filler (page 1800, Experimental section), wherein the conductive filler is a highly-structured carbon black material (page 1800, Experimental section) which has an aggregated, grape-like structure (p. 1799, Introduction section), which therefore reads on the claimed “aciniform structure.” 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 incorporate the aciniform carbon black taught by Yu for the carbon black within the formulation of Devici, as Yu recognizes aciniform carbon blacks as suitable for compounding with polymer blending.
Regarding claims 11-13, Yu teaches that the carbon black filler has an oil absorption number of 169 cc/100g (page 1800, Experimental section), which falls within the claimed ranges of “at least 100cc/100g,” “100cc/100g to 250cc/100g,” and “100cc/100g to 180cc/100g,” establishing a prima facie case of obviousness.
Regarding claim 15, Yu teaches that the carbon black filler has an average particle size of 21 nm (page 1800, Experimental section), which falls within the claimed range of “20 nm to 60 nm,” establishing a prima facie case of obviousness.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Devici (WO 2015/071075) in view of Thielen (US 20030013797 A1).
Regarding claim 14¸ Devici teaches all of the limitations of claim 1 as described above. Devici teaches the use of a carbon black filler, however Devici differs from claim 14 because it is silent with regard to the carbon black having the claimed oil absorption number (OAN) ranging from 100cc/100g to 180cc/100g, statistical thickness surface area (STSA) ranging from 50 m2/g to 150 m2/g or the claimed nitrogen surface area (NSA) of 50m2/g to 210 m2/g.
In the same field of endeavor, Thielen teaches a conductive polymer composition (Abstract) which may comprise polypropylene ([0043]) and fillers ([0039]), and which also includes carbon black ([0032]). Thielen further teaches that the carbon black useful for the application has a DBPA ranging from 50 to 300 cc/100g ([0022]), as measured by ASTM 3493-86 (corresponding to the same test cited within the instant specification at [0027]) which encompasses the claimed Oil Absorption Number of “100 cc/100g to 180 cc/100g,” an STSA value ranging from about 10 to about 200 m2/g (Abstract), which encompasses the claimed range of “50 m2/g to 150 m2/g,” and a nitrogen surface area (NSA) of at least 125 to 200 m2/g ([0005]), which overlaps the claimed range of “50 m2/g to 210m2/g.” In each case, the ranges which encompass or overlap the claimed values establish prima facie obviousness. Furthermore, it is prima facie obvious to select a known material based on its suitability for its intended purpose (see MPEP 2144.07). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to select the carbon black of Thielen for use in the formulation of Devici for the purpose of crafting a conductive polymer composite.
Regarding claim 16, Thielen teaches that the carbon black has an average particle size of 14 to 250 nm (Abstract), which encompasses the claimed range of “40 nm to 50 nm,” establishing a prima facie case of obviousness.
Claims 36 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Devici (WO 2015/071075) in view of Esseghir (US Patent No. 6,565,784 B1).
Regarding claims 36 and 37, Devici teaches all of the limitations of claim 1, as described above. Devici teaches that any conventionally used melt extruder may be employed for the compounding process, including counter- and co-rotating twin-screw extruders (p. 20, lines 28-31), but differs from claims 36 and 37 because it is silent with regard to the particular use of intermeshing double rotors of the claimed rotor combinations.
In the same field of endeavor, Esseghir teaches a process for preparing a thermoplastic composition, involving the mixing of a polyolefin and a carbon black in an extruder (Abstract), wherein the polyolefin may be polypropylene (col. 2, line 38). Esseghir teaches the specific use of FarrelTM and KobeTM counter-rotating non-intermeshing twin rotor mixers, and teaches the specific use of 7/7 rotors, 7/15 rotors, and 15/15 rotors (col. 8, lines 28-56).
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06) and, as described above, Devici is open to the usage of virtually any melt extruder. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the FarrelTM and/or KobeTM counter-rotating and non-intermeshing extruders taught by Esseghir within the process taught by Devici, as Esseghir recognizes these extruders as suitable for the formation of polypropylene/carbon black composites.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
Applicant first argues that the melt flow rate of Devici differs from the claimed melt flow rate, on the basis that Devici teaches a melt flow rate at 190°C and under 5kg of load. Applicant states hat the claimed melt flow index, which is claimed as “measured according to ASTM D1238” is “conducted at 230°C with a 2.16 kg load.” However, ASTM D1238 does not require this specific set of testing conditions. While ASTM D1238 does suggest 230°C and 2.16 kg of force (c.f. ASTM D1238, p. 18, Table X4.1), these conditions are merely suggested/possible conditions (p. 5, section 9.1); furthermore, ASTM D1238 specifically states that material specifications can be relied upon for choosing temperature and load conditions, and suggests choosing conditions which result in flow rates ranging from 0.15 to 50 g/10 min (p. 5, section 10.1), which includes the value of 10 g/10 min which is referenced above within the teachings of Devici for the purpose of reading on the claimed composition. Therefore, while Devici does not specifically teach the specific conditions contemplated by the instant Specification, the polypropylene of Devici nonetheless meets the claimed limitation of “10 g/10 min to 90 g/10 min as measured according to ASTM D1238” (emphasis added).
Applicant next states that MFR values for polyethylene and polypropylene are not comparable and cannot be assumed as equivalent, but provides no supporting evidence for said assertion. As described above and in previous Office Actions, Devici teaches polyethylene and polypropylene as alternatively suitable polymers for the inventive composition (p. 8, lines 15-16). A prima facie case of obviousness has therefore been shown. Per the MPEP, if a prima facie case is established, the burden shifts to applicant to come forward with rebuttal evidence or argument to overcome the prima facie case (See MPEP 2144.08.II.A.).
Applicant next contends that the majority of Devici’s preferred melt flow rate range falls below the claimed range, and asserts that a person of ordinary skill in the art would select a polymer “having a low MFR well within Devici’s preferred range.” However, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Devici therefore teaches the claimed value of 10 g/10 min, which overlaps the claimed range, despite preferring different values. It would have been obvious to one having ordinary skill in the art to utilize the full range of values taught by Devici, regardless of which sub-ranges thereof are preferred.
Applicant next argues that Devici strongly prefers polyethylene over polypropylene, and states that the Office has not articulated a reason for a person having ordinary skill in the art to select polypropylene over polyethylene and “polypropylene with a dramatically higher melt flow index than any polymer specifically described in Devici;” however, as stated above, Devici specifically states that polypropylene is a suitable alternative to polyethylene; and, Devici teaches a range of MFR which overlaps the claimed range. The assessment that the melt flow rates contemplated by the instant disclosure are “high” is subjective; meanwhile, the numerical range of melt flow rate provided by Devici overlaps the range as claimed, and thus a prima facie case of obviousness has been properly established.
The Applicant states that “the present application, in contrast, specifically teaches… a polypropylene with a high melt flow index,” however the instant claims include an MFR ranging as low as 10 g/10 min. It is therefore reasonably assumed that 10 g/10 min fits within the Applicant’s own subjective assessment of a “high” melt flow rate – and thus, the value of 10 g/10 min, taught by Devici, which meets the claimed limitation requiring testing “according to ASTM D1238,” falls within the polymer contemplated by the instant disclosure.
Applicant contends that Devici is concerned with the dispersion of pigment within polyethylene, and not concerned with the retention of filler structure to achieve conductivity properties within polypropylene compounds. However, it is not necessary that the prior art suggest the claimed combination for the purpose of achieving the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant next argues that the processing temperature within Devici is specifically stated for polyethylene only. However, as described above, Devici teaches polypropylene as a suitable alternative for the inventive composition. Therefore prima facie it would have been obvious to one having ordinary skill in the art to utilize the same processing temperature range for polypropylene as polyethylene. While much of the claimed range lies above the range of Devici, the existence of a portion of the claimed range which is not present in the prior art does not rebut the existence of a portion of the claimed range which is present in the prior art.
Applicant contends that “nothing in Devici teaches or suggests that increasing the processing temperature beyond the upper end of its range would be desirable or beneficial,” however this is not a rationale which is relied upon within the rejection of-record. Devici teaches a range which overlaps the claimed range, and therefore the claimed range is prima facie obvious.
Applicant’s arguments next culminate in a rebuttal to the inherency rejection of record; Applicant states that the claimed surface resistivity value will not be inherently present within the composition of Devici for the reasons described. However, as explained above, the melt flow and processing temperatures within Devici overlap the respectively claimed ranges. Applicant additionally argues that Devici teaches twin-screw extruders and not the specific mixing device described in claim 1. However, the mixing device within claim 1 is broadly recited to comprise “at least one co-rotating double-rotor.” A twin-screw extruder reads on a mixer containing a “co-rotating double-rotor” – additionally, the instant Specification contemplates that said device may be an extruder (see [0061], sentence 3, which specifically states that the mixing chamber comprises “at least one co-rotating double-rotor extruder” [emphasis added]).
Applicant next argues that Devici includes a conductive carbon black product, but not a conductive carbon black; however, Devici specifically references related prior art wherein conductive carbon black is specifically responsible for the conductivity of the final product (p. 1, lines 30-31), and the conductive end-product within Devici is not mentioned as gaining said property from any additional component. The phrase “conductive carbon black” used to describe the composition of the prior art, within Devici (p. 2, lines 30-31), directly mirrors the phrasing with respect to a “conductive carbon black product” described within the inventive composition of Devici (e.g., p. 27, line 7). Therefore, when properly read in-context, the term “conductive carbon black product” most parsimoniously refers to a composition containing a conductive carbon black material, as opposed to an otherwise conductive composition containing a carbon black which is unrelated to said property, as suggested by the Applicant.
Applicant next turns to the teachings of Yu, stating that Yu’s processing conditions are dramatically different from those as claimed; however, Yu is not relied upon for said processing conditions, but merely for the particular type of carbon black material having an aciniform structure. Applicant asserts that the different processing conditions would preclude the use of Yu’s carbon black within the composition of Devici, however Yu teaches said carbon black as suitable for blending with polymers. Prima facie, it is obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Yu’s assessment of processing conditions within its invention does not constitute a teaching away from any particular processing conditions (such as those within Devici). Applicant states that the Examiner has not shown the motivation of one having ordinary skill in the art to combine the references; importantly, however, the obviousness of a combination constitutes motivation. It is not necessary for a prior art reference to specifically motivate a person having ordinary skill in the art to make a combination if said combination is prima facie obvious.
These arguments likewise apply to the Applicant’s assertion that sufficient motivation in combining prior art reference Thielen with Devici has not been established. Furthermore, Thielen teaches a conductive polymer composition which is plainly relevant to the instant Application because it concerns the use of carbon black within a polymer composition. Importantly, and contrary to the Applicant’s assertions, in order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous to the claimed invention (not necessarily to other prior art references, see MPEP 2141.01(a).I.). A reference is analogous to the claimed invention if the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem (see MPEP 2131.01(a).I.). In this case, the compositions of all of the prior art references concern carbon black compounded in polymeric compositions; the same field of endeavor as the instant application (see instant Specification at [0002]).
These arguments likewise apply to the Applicants assertions that sufficient motivation in combining prior art reference Esseghir with Devici has not been established. As stated above, the obviousness of a particular selection (e.g., the type of melt extruder taught by Esseghir) constitutes sufficient motivation to combine (i.e., using the extruder of Esseghir within the process of Devici). Applicant argues that the generic substitution rationale does not account for the Applicant-identified advantage of the claimed rotor configurations; however as stated above, 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). The combination of prior art documents is therefore proper despite neither document recognizing the rotor configuration advantages appreciated by the Applicant.
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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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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