863DETAILED 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 Amendments and Arguments
Applicant’s amendments and arguments, filed August 20, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Hintzer and Shah (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that Hintzer expressly teaches that the compatibilizer is tailored to promote the interaction between glass microspheres and the polymer matrix, which is distinct from the instantly claimed “polymer adhesive configured to adhere the conductive network of linked nanostructures to the polymer matrix” due to the disparate physical characteristics of glass microspheres and carbon nanostructures. However, the impact modifier or a compatibilizer (Abstract) which may be a polymeric substance comprising functional groups which may be a maleic anhydride modified polypropylene ([0059]) of Hintzer is recognized within the art as adhering carbon nanotubes/nanostructures to polypropylene matrices (see evidence provided by Prashantha et al., Multi-walled carbon nanotube filled polypropylene nanocomposites based on masterbatch route: Improvement of dispersion and mechanical properties through PP-g-MA addition, Express Polym. Lett., 2008, 2, 735-735, hereinafter referred to as “Prashantha”). Prashantha provides evidence that polypropylene (i.e., polyolefin)/carbon nanotube composites exhibit increased interfacial strength upon addition of a polypropylene grafted maleic anhydride (PP-g-MA) as the PP-g-MA serves as an adhesive between the nanotubes and polypropylene matrix (Abstract). Therefore, it is the position of the Examiner that the impact modifier/compatibilizer (Abstract) which may be a polymeric substance comprising functional groups, such as maleic anhydride functional groups ([0058]), which may be a maleic anhydride modified polypropylene ([0059]) of Hintzer inherently meets the claimed “configured to adhere the conductive network of linked nanostructures to the polymer matrix” as Prashantha provides evidence that adhesion occurs by virtue of mixing the PP-g-MA (analogous to the maleic anhydride modified polypropylene of Hintzer) and carbon nanostructures.
Applicant further argues that Shah teaches an applied shear that “breaks crosslinks to form fractured carbon nanotubes” and therefore does not teach the conductive network of linked nanostructures. While Shah contemplates “breaking” of crosslinks via shear as a means to disperse carbon nanostructures within a polymer matrix (see, e.g., [0035] of Shah), Shah also teaches that other forms of linkages (i.e., related to the claimed “network of linked nanostructures”) remain after shear-induced breaking of the crosslinks, such as branches and sharing of common walls (Abstract and Fig. 1A-C of Shah). Shah also explicitly contemplates that this shear process may improve thermal/electrical conductivity ([0036]) and mechanical strength of the composite ([0050]). Shah also discloses that the carbon nanotubes of the invention exhibit a “network” morphology as a result of branching, crosslinking, and shared wall motifs ([0086]). Based on (1) the explicit disclosure of Shah that the composites are intended to exhibit electrical conductivity and (2) the explicit disclosure of Shah that the carbon nanotubes of the invention exhibit a “network” morphology as a result of branching, crosslinking, and shared wall motifs ([0086]), the Examiner maintains that the structure for the carbon nanostructures taught by Shah meet the claimed “conductive network of linked nanostructures” as construed by the definition provided within the instant specification para. [0022].
Applicant argues that because neither Hintzer nor Shah recognize the problem to be solved by the claimed invention, these references cannot render the outstanding claims obvious. “In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls” (see MPEP 2141 III). In the instant case, it is the position of the Examiner that Hintzer as modified by Shah meets all of the instantly claimed structural limitations even if the problem solved by the references differs from the intended use of the invention of the instant application and thus render the claimed composition obvious.
Applicant’s arguments and amendments are considered fully responded to within the comments above and the rejections below.
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.
Claims 1-10 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hintzer et al. (US2019/0002678, hereinafter referred to as “Hintzer”) in view of Shah et al. (US2014/0094541, hereinafter referred to as “Shah”).
As to Claim 1: Hintzer teaches a polyolefin composition comprising hollow glass microspheres suitable for injection molding ([0010]) comprising:
a polyolefin which may be polypropylene copolymer ([0023]),
glass microspheres ([0031]),
carbon nanotubes ([0074]) (the instant specification para. [0008] teaches that the claimed conductive network of linked nanostructures comprises carbon nanotubes), and
additives including an impact modifier or a compatibilizer (Abstract) which may be a polymeric substance comprising functional groups, such as maleic anhydride functional groups ([0058]), that interact with materials dispersed within the polymer matrix ([0057]), which reads on the claimed polymer adhesive configured to adhere the conductive network to the polymer matrix.
Hintzer is silent towards crosslinking of the carbon nanotubes which read on the claimed nanostructures.
Shah teaches related composite materials formed from a plurality of carbon nanotubes that are crosslinked to form nanostructures (Abstract), wherein said carbon nanotubes/nanostructures may be dispersed in a polymer matrix which may be polypropylene ([0057]). Hintzer and Shah are considered analogous art because they are directed towards the same field of endeavor, namely, polymer composites. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use crosslinked carbon nanotubes (i.e., a conductive network of linked nanostructures) for the nanotubes of Hintzer and the motivation would have been that Shah teaches that dispersing crosslinked carbon nanotubes (i.e., nanostructures) within polymer matrices can improve, inter alia, conductivity of composites formed thereof ([0036]).
As to Claim 2: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the polyolefin which may be polypropylene is present in an amount of up to 79% by weight of the composition ([0021]), which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hintzer suggests, that the overlapping portion is a useable range for an amount of a polypropylene polymer matrix within a composite composition for injection molding which exhibits good material properties (e.g., impact strength) ([0011]).
As to Claim 3: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the composition comprises hollow glass microspheres in an amount of 0.2 to 49% by weight of the composition ([0014]), which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hintzer suggests, that the overlapping portion is a useable range for an amount of a glass microspheres within a composite composition for injection molding which exhibits good material properties (e.g., impact strength) ([0011]).
As to Claim 4: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the carbon nanotubes may be present in an amount of 0 to 5 percent by weight of the composition ([0074]-[0075]), which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hintzer suggests, that the overlapping portion is a useable range for an amount of a reinforcing filler, such as carbon nanotubes, within a composite composition for injection molding which exhibits good material properties (e.g., impact strength) ([0011]).
Hintzer is silent towards crosslinking of the carbon nanotubes which read on the claimed nanostructures.
Shah teaches related composite materials formed from a plurality of carbon nanotubes that are crosslinked to form nanostructures (Abstract), wherein said carbon nanotubes/nanostructures may be dispersed in a polymer matrix which may be polypropylene ([0057]). Hintzer and Shah are considered analogous art because they are directed towards the same field of endeavor, namely, polymer composites. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a crosslinked carbon nanotube (i.e., a conductive network of linked nanostructures) for the nanotubes of Hintzer and the motivation would have been that Shah teaches that dispersing crosslinked carbon nanotubes (i.e., nanostructures) within polymer matrices can improve, inter alia, conductivity of composites formed thereof ([0036]).
As to Claim 5: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the polyolefin polymer matrix may comprise a homopolymer including a blend of polypropylene (i.e., a homopolymer) and polypropylene copolymers ([0022]), but is silent towards wherein the polymer matrix comprises a recycled homopolymer. However, the claimed “recycled homopolymer” is construed to refer to a virgin homopolymer that has undergone a recycling process to derive the material from another source (e.g., bottle caps or seals, see the instant specification para. [0020]). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Hintzer teaches a polymer matrix which may comprise a homopolymer ([0023]), and there is no evidence that the source of said homopolymer (i.e., from a recycled source vs. virgin material) would materially affect the structure of the final product.
As to Claim 6: Hintzer and Shah teach the material of claim 5 (supra).
Hintzer further teaches that the polyolefin which may be a polypropylene homopolymer is present in an amount of up to 79% by weight of the composition ([0021]), which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hintzer suggests, that the overlapping portion is a useable range for an amount of a polypropylene polymer matrix within a composite composition for injection molding which exhibits good material properties (e.g., impact strength) ([0011]).
As to Claim 7: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the polyolefin polymer matrix may comprise a blend of polypropylene copolymers and other copolymers, e.g., polyethylene ([0022]), but is silent towards wherein the polymer matrix comprises a recycled copolymer. However, the claimed “recycled copolymer” is construed to refer to a virgin copolymer that has undergone a recycling to derive the material from another source (e.g., bottle caps or seals, see the instant specification para. [0020]). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Hintzer teaches a polymer matrix which may comprise copolymers ([0023]), and there is no evidence that the source of said homopolymer (i.e., derived from a recycled source vs. virgin material) would materially affect the structure of the final product.
As to Claim 8: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the polyolefin which may be a polypropylene or polyethylene copolymer is present in an amount of up to 79% by weight of the composition ([0021]), which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hintzer suggests, that the overlapping portion is a useable range for an amount of a polypropylene polymer matrix within a composite composition for injection molding which exhibits good material properties (e.g., impact strength) ([0011]).
As to Claim 9: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the composition may comprise additives including flow agents ([0076]), which reads on the claimed melt flow enhancer.
As to Claim 10: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the composition may comprise additives including, inter alia, talc or calcium carbonate ([0074]), which read on the claimed nucleator.
As to Claim 13: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the composition may comprise additives including wollastonite ([0074]).
As to Claim 14: Hintzer and Shah teach the material of claim 13 (supra).
Hintzer further teaches that functional fillers, including wollastonite ([0074]), may be present in an amount of 0 to 10% by weight, which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hintzer suggests, that the overlapping portion is a useable range for an amount of fillers such as wollastonite within a composite composition exhibiting sufficient material properties (e.g., impact strength) while being suitable for injection molding ([0011]).
As to Claim 15: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the composition may comprise stabilizers including antioxidants ([0072]).
As to Claim 16: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches embodiments wherein the composition is free of talc ([0075]).
As to Claim 17: Hintzer and Shah teach the material of claim 1 (supra).
Hintzer further teaches that the composition may comprise carbon nanotubes ([0074]).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hintzer et al. (US2019/0002678, hereinafter referred to as “Hintzer”) in view of Shah et al. (US2014/0094541, hereinafter referred to as “Shah”) and further in view of Ding et al. (US2003/0207984, hereinafter referred to as “Ding”).
As to Claim 11: Hintzer and Shah teach the material of claim 1 (see above).
Hintzer is silent towards the composition comprising magnesium oxysulfate fibers.
Ding teaches a related composite material comprising a polyolefin resin matrix comprising functionalized and non-functionalized polypropylene homo- and co-polymers ([0011] and [0046]) wherein the composition is suitable for injection molding procedures ([0081]). Ding further teaches that the composition may comprise fillers including fibrous magnesium oxysulfate ([0067]). Hintzer and Ding are considered analogous art because they are directed towards the same field of endeavor, namely, polypropylene-based polymer composites. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a magnesium oxysulfate fibers within the composition of Hintzer because Hintzer teaches that the composition may comprise a filler, and Ding teaches that magnesium oxysulfate is recognized within the art as a suitable filler for polypropylene-based composite compositions ([0067]).
As to Claim 12: Hintzer, Shah, and Ding teach the material of claim 11 (supra).
Hintzer is silent towards the composition comprising magnesium oxysulfate fibers.
Ding teaches a related composite material comprising a polyolefin resin matrix comprising functionalized and non-functionalized polypropylene homo- and co-polymers ([0011] and [0046]) wherein the composition is suitable for injection molding procedures ([0081]). Ding further teaches that the composition may comprise fillers including fibrous magnesium oxysulfate, wherein said fillers are present in an amount of 0.1 to 75 parts by weight, which overlaps with the claimed range ([0067]). Hintzer and Ding are considered analogous art because they are directed towards the same field of endeavor, namely, polypropylene-based polymer composites. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used magnesium oxysulfate fibers within the composition of Hintzer in an overlapping portion of the claimed range, such as that taught by Ding, and the motivation to have done so would have been, as Ding suggests, that the overlapping portion is a useable range for a fibrous magnesium oxysulfate filler within a polypropylene-based polymer composite to enhance mechanical properties, dimensional stability, or reduce costs of materials comprising the same.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hintzer et al. (US2019/0002678, hereinafter referred to as “Hintzer”) in view of Shah et al. (US2014/0094541, hereinafter referred to as “Shah”).
As to Claim 18: Hintzer teaches a polyolefin composition comprising hollow glass microspheres suitable for injection molding ([0010]) comprising:
a polyolefin which may be polypropylene copolymer ([0023]),
glass microspheres ([0031]),
wollastonite ([0074]),
carbon nanotubes ([0074]) (the instant specification para. [0008] teaches that the claimed conductive network of linked nanostructures comprises carbon nanotubes), and
additives including an impact modifier or a compatibilizer (Abstract) which may be a polymeric substance comprising functional groups, such as maleic anhydride functional groups ([0058]), that interact with materials dispersed within the polymer matrix ([0057]), which reads on the claimed polymer adhesive configured to adhere the conductive network to the polymer matrix.
Hintzer is silent towards crosslinking of the carbon nanotubes which read on the claimed nanostructures.
Shah teaches related composite materials formed from a plurality of carbon nanotubes that are crosslinked to form nanostructures (Abstract), wherein said carbon nanotubes/nanostructures may be dispersed in a polymer matrix which may be polypropylene ([0057]). Hintzer and Shah are considered analogous art because they are directed towards the same field of endeavor, namely, polymer composites. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a crosslinked carbon nanotube (i.e., a conductive network of linked nanostructures) for the nanotubes of Hintzer and the motivation would have been that Shah teaches that dispersing crosslinked carbon nanotubes (i.e., nanostructures) within polymer matrices can improve, inter alia, conductivity of composites formed thereof ([0036]).
Hintzer further teaches that the polyolefin polymer matrix may comprise a homopolymer including a blend of polypropylene (i.e., a homopolymer) and polypropylene copolymers ([0022]), but is silent towards wherein the polymer matrix comprises at least one of a recycled homopolymer and a recycled copolymer. However, the claimed “recycled homopolymer” and “recycled copolymer” are construed to refer to a virgin polymer that has undergone a recycling process to derive the material from another source (e.g., bottle caps or seals, see the instant specification para. [0020]). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Hintzer teaches a polymer matrix which may comprise a homopolymer ([0023]), and there is no evidence that the source of said homopolymer (i.e., from a recycled source vs. virgin material) would materially affect the structure of the final product.
As to Claim 19: Hintzer and Shah teach the material of claim 18 (supra).
Hintzer further teaches embodiments wherein the composition is free of talc ([0075]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hintzer et al. (US2019/0002678, hereinafter referred to as “Hintzer”) in view of Shah et al. (US2014/0094541, hereinafter referred to as “Shah”).
As to Claim 20: Hintzer teaches a polyolefin composition comprising hollow glass microspheres suitable for injection molding ([0010]) comprising:
a polyolefin which may be polypropylene copolymer ([0023]),
glass microspheres ([0031]),
wollastonite ([0074]),
carbon nanotubes ([0074]) (the instant specification para. [0008] teaches that the claimed conductive network of linked nanostructures comprises carbon nanotubes), and
additives including an impact modifier or a compatibilizer (Abstract) which may be a polymeric substance comprising functional groups, such as maleic anhydride functional groups ([0058]), that interact with materials dispersed within the polymer matrix ([0057]), which reads on the claimed polymer adhesive configured to adhere the conductive network to the polymer matrix.
Hintzer is silent towards crosslinking of the carbon nanotubes which read on the claimed nanostructures.
Shah teaches related composite materials formed from a plurality of carbon nanotubes that are crosslinked to form nanostructures (Abstract), wherein said carbon nanotubes/nanostructures may be dispersed in a polymer matrix which may be polypropylene ([0057]). Hintzer and Shah are considered analogous art because they are directed towards the same field of endeavor, namely, polymer composites. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a crosslinked carbon nanotube (i.e., a conductive network of linked nanostructures) for the nanotubes of Hintzer and the motivation would have been that Shah teaches that dispersing crosslinked carbon nanotubes (i.e., nanostructures) within polymer matrices can improve, inter alia, conductivity of composites formed thereof ([0036]).
Hintzer further teaches that the polyolefin polymer matrix may comprise a homopolymer including a blend of polypropylene (i.e., a homopolymer) and polypropylene copolymers ([0022]), but is silent towards wherein the polymer matrix comprises at least one of a recycled homopolymer and a recycled copolymer. However, the claimed “recycled homopolymer” and “recycled copolymer” are construed to refer to a virgin polymer that has undergone a recycling process to derive the material from another source (e.g., bottle caps or seals, see the instant specification para. [0020]). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Hintzer teaches a polymer matrix which may comprise a homopolymer ([0023]), and there is no evidence that the source of said homopolymer (i.e., from a recycled source vs. virgin material) would materially affect the structure of the final product.
Hintzer further teaches embodiments wherein the composition is free of talc ([0075]).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767