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 Objections
Claims 11-13 objected to because of the following informalities:
In claim 11, “composition comprises” in line 2, should be “composition possesses”.
In claim 12, “composition comprises” in line 2, should be “composition possesses”.
In claim 13, “composition comprises” in line 2, should be “composition possesses”.
As the composition should not comprise a property, rather than possess a property.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 8, 11-15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Juikar et. al., (US20080161468, herein Juikar), in the view of Boudreaux et. al., (US5208277, herein Boudreaux) and Peng et. al., (US20200140679, herein Peng).
Regarding claims 1, 8, 17, 18, 19, 20, Juikar teaches polyester composition [0001], comprising: polyester, exemplified as polybutylene terephthalate (PBT) [0148], in the range of 60 to 99 weight percent [0019], reads on the semi-aromatic, semi-crystalline polyester, overlaps the claimed range; and poly-alpha-olefins [0113], which is polyolefin, in the range of 0.1 to about 20 parts by weight [0113] overlaps the claimed range; glass fiber [0088].
Based on the ranges taught above, the polyester weight ratio range according to the formula 100x(Wpe/(Wpo+Wpe))=60/(60+20)=75% to 99/(99+0.1)=99.9%, overlaps the claimed range.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ranges of polyester, exemplified as polybutylene terephthalate (PBT) [0148], in the range of 60 to 99 weight percent [0019], reads on the semi-aromatic, semi-crystalline polyester; poly-alpha-olefins [0113], in the range of 0.1 to about 20 parts by weight [0113], into the 100x(Wpe/(Wpo+Wpe))=60/(60+20)=75% to 99/(99+0.1)=99.9%, and furth apply these ranges into the composition formation. Doing so would further achieve the good mechanical properties and good flow properties, in particular flow properties that render the compositions suitable for the molding of large parts such as automobile parts [0133] as taught by Juikar.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Juikar teaches poly-alpha-olefins [0113], but does not explicitly teach the specific polyolefin. In the same field of endeavor, Boudreaux teaches polymers of 4-methyl-1-pentene (4MP1), also called polymethylpentene (PMP), are used [C2; L40]. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Juikar and Boudreaux are both directed to utilize the poly-alpha-olefin to optimize the polyester based composition upon high temperature processing. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to substitute the polymers of 4-methyl-1-pentene (4MP1), also called polymethylpentene (PMP), are used [C2; L40] of Boudreaux and apply into the formulation of Juikar, as Boudreaux recognizes this specific poly-alpha-olefin, respectively, as suitable component with desired melting temperature [C2; L25], and further impart increased clarity, stability, and impact strength to the resultant polymer [C2; L68], as taught by Boudreaux.
Juikar teaches glass fiber [0088], but does not explicitly teach the specific glass fiber. In the same field of endeavor, Peng teaches “a low dielectric constant glass fiber” [0058] with “Dk of less than 5.0 (about 4.5) at a frequency of from 1 megahertz (MHz) to 1 GHz and a Df of less than about 0.002” [0058] encompasses the claimed range. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Juikar and Peng are both directed to utilize the glass fiber to improve the dielectric property of the glass fiber, polyester and poly-alpha-olefin based composition formation toward automotive application. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to substitute the “a low dielectric constant glass fiber” [0058] with “Dk of less than 5.0 (about 4.5) at a frequency of from 1 megahertz (MHz) to 1 GHz and a Df of less than about 0.002” [0058] of Peng within the formulation of Juikar, as Peng recognizes this specific glass fiber, respectively, as suitable filler to impart the desired dielectric property [0058] into the polyester compositions toward automotive applications [0093].
Regarding claims 11-13, Juikar, Boudreaux and Peng collectively teach the polyester composition as set forth in claim 1; Juikar further teaches injection molding [0135]. Regarding the dielectric constant (“Dk”), low dissipation factor (“Df”), notched impact strength of the composition, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Juikar, Boudreaux and Peng teach all of the claimed ingredients, in the claimed amounts, and Juikar teaches the composition as being made by a substantially similar process of injection molding [0135], meets: injection molding [Instant App. US20230357563; 0066]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the dielectric constant (“Dk”), low dissipation factor (“Df”), notched impact strength would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present, wherein, the instant application teaches the article can be molded from the polyester composition, by any process adapted to thermoplastics, via injection molding [Instant App. US20230357563; 0066]. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding claims 14-15, Juikar teaches mobile phone application [0134], meets the specific application.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over
Juikar et. al., (US20080161468, herein Juikar), Boudreaux et. al., (US5208277, herein Boudreaux), Peng et. al., (US20200140679, herein Peng) as applied in claim 1 set forth above, in the view of Peters et. al., (WO2012037214, herein Peters).
Regarding claim 9, Juikar, Boudreaux and Peng collectively teach polyester composition as set forth above. Juikar teaches glass fiber [0088], but does not explicitly teach the specific glass fiber, however, Peters teaches the composite comprising polyester, polybutylene terephthalate, and glass fiber [P10, L21-26], wherein, the glass fiber with Dk of 5.44 - 5.67 and Df of 0.0006 - 0.0031 at 1 MHz [P38; L6], overlap the claimed ranges. Juikar and Peters are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polybutylene terephthalate and glass fiber-based composites formation toward the molded article with advanced mechanical property and improved electrical performance. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Juikar and substitute the teachings of Peters and provide wherein said the specified glass fiber [P10, L21-26], wherein, the glass fiber with Dk of 5.44 - 5.67 and Df of 0.0006 - 0.0031 at 1 MHz [P38; L6] and apply into the composition formation of Juikar. Doing so would further lead to the polybutylene terephthalate and glass fiber-based composites with desired mechanical property [P5; L16] and improved electrical performance (i.e., low dielectric constant, Dk, and/or low dissipation factor, Df) [P5; L4] as taught by Peters.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 10, Juikar teaches polyester composition [0001], comprising polyester, exemplified as polybutylene terephthalate (PBT) [0148], in the range of 60 to 99 weight percent [0019], overlaps the claimed range.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ranges of polyester, exemplified as polybutylene terephthalate (PBT) [0148], in the range of 60 to 99 weight percent [0019], and furth apply into the composition formation. Doing so would further achieve the good mechanical properties and good flow properties, in particular flow properties that render the compositions suitable for the molding of large parts such as automobile parts [0133] as taught by Juikar.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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