DETAILED ACTION
Applicant’s response of August 5, 2025 has been fully considered. Claims 20-26, 28 and 29 are amended as well as pending.
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 22-26 are objected to because of the following informalities:
Regarding claims 22 and 23, there should be a comma after “claim 20” in line 1 of each claim.
Regarding claim 24, in line 3, there appears to be a closed bracket at the beginning of the line which should be deleted.
Regarding claims 25 and 26, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-26, 28, and 29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 20:
In line 3, the claim recites “the fiber comprising 35 to75wt.% of glass fiber.” However, it is unclear if the fiber component comprises this amount of glass fiber and therefore 25 to 65 wt.% of some other fiber; or if the thermoplastic master batch as a whole contains glass fiber in the amount of 35 to 75 wt.%. For the purpose of further examination, this limitation will be interpreted as the thermoplastic master batch as a whole comprising 35 to 75 wt.% of glass fiber.
Claim 20 recites the limitation "the fiber" in line 5. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation refers to the fiber in general, which is different from the glass fiber, or the glass fiber specifically. For the purpose of further examination, this limitation will be interpreted to be the glass fiber.
In lines 7 and 8, the claim recites that the polymer phase comprises 35 to 75 wt.% thermoplastic polymer comprising vinyl chloride and 10 to 35 wt.% of chlorinated polyethylene. However, it is unclear if these amounts are based on the total amount of the polymer phase or based on the thermoplastic master batch as a whole. For the purpose of further examination, these amounts will be interpreted as based on the thermoplastic master batch as a whole.
Claim 20 recites the limitation "the interfacial modifier" in line 9. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as the organometallic interfacial modifier referenced above.
Claim 20 recites the limitation "the fiber" in line 9. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation refers to the fiber in general, which is different from the glass fiber, or the glass fiber specifically. For the purpose of further examination, this limitation will be interpreted as the glass fiber.
Regarding claim 22, the wording of this claim is unclear as it makes the thermoplastic master batch have a length, diameter, and aspect ratio instead of the glass fiber. For the purpose of further examination, this claim will be interpreted as “The thermoplastic mater batch of claim 20, wherein the glass fiber has a length…”.
Regarding claim 26, claim 26 recites the limitation "the organometallic interfacial modifiers" in lines 2 and 3. The issue is that this references more than one modifier and there has not previously been a plurality of modifiers. Therefore, there is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “a mixture of organometallic interfacial modifiers,”.
Also, claim 26 recites the limitation "the fiber" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as the glass fiber.
Regarding claim 28, in line 3, the claim recites “an organometallic interfacial modifier.” It is unclear if this modifier is the same one referenced in claim 20 or if it is different. For the purpose of further examination, this limitation will be interpreted as “the glass fiber and organometallic interfacial modifier.”
Regarding claims 21, 23-25, and 29, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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.
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 20-26, 28, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Bartel et al. (US 2021/0054184) in view of Frey et al. (US 4,113,805).
Regarding claims 20-23, 25, and 26, Bartel et al. teaches a composite (master batch) comprising about 10 to 90% by weight of a continuous phase (polymer phase) comprising the polymer with about 10 to 90% by weight of a discontinuous phase (fiber phase) comprising the glass fiber/calcium silicate fiber blend, which comprises about 8 to 50% by weight of the calcium silicate fiber and about 45 to 87% by weight of a glass fiber (45 to 87% of glass fiber in 10 to 90% by weight of the fiber phase will produce an amount of glass fiber within the composite that overlaps with the claimed range of 35 to 75% by weight; see calculation below in the rejection of claims 28 and 29) (¶20; claim 1). The glass fibers have a diameter greater than about 0.8 microns, a length of greater than about 1 mm, and an aspect ratio greater than about 100 (claim 1). The fibers are coated with an interfacial modifier that can be an organo-metallic material, or mixtures thereof (¶38, 39, 41) in an amount of 0.005 to 8% by weight (¶43). The polymer in the continuous phase can be a polyvinyl chloride homopolymer (¶53, 78).
Bartel et al. does not teach that the master batch composition contains 10 to 35% by weight of chlorinated polyethylene in the polymer phase. However, Frey et al. teaches a blend of 70 to 95% by weight of vinyl chloride polymers and 5 to 30% by weight of chlorinated polyethylene with a chlorine content of from 38 to 42% by weight (Col. 2, lines 41-48). Bartel et al. and Frey et al. are analogous art because they are from the same field of endeavor as the instant invention, namely that of polyvinyl chloride compositions used for molded articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 5 to 30% by weight of chlorinated polyethylene, as taught by Frey et al., to the master batch composition, as taught by Bartel et al., and would have been motivated to do so because the addition of chlorinated polyethylene to vinyl chloride polymers produces products with improved transparency and improved impact resistance (Col. 2, lines 28-33).
Regarding the master batch limitation of claim 20, a master batch is interpreted as a composition for the purpose of searching the prior art. If a reference or combination of references teaches the composition as claimed, then the composition should be able of performing as a master batch. In other words, using the claimed composition as a master batch is an intended use of the claimed composition. Therefore, because the limitations as claimed are met by the references, this limitation is also met.
Regarding claim 24, Bartel et al. additionally teaches that the composite has a flexural modulus of greater than 700,000 psi (0.7 Mpsi) (claim 1). Bartel et al. does not teach that the master batch and a composite therefrom has a COTE of 0.5 to 1.5 in/in/°F, or a room temperature impact resistance of about 200 to 1000 ft-lb-in-1. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a COTE of 0.5 to 1.5 in/in/°F and a room temperature impact resistance of about 200 to 1000 ft-lb-in-1, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claims 28 and 29, Bartel et al. teaches that the glass fiber is present in the fiber phase in an amount of 45 to 87% by weight and that the fiber phase is present in from 10 to 90% by weight of the composition (¶20; claim 1). Therefore, the glass fiber can be present within the composition as a whole in from 4.5 to 78.3% by weight (calculated by Examiner; 0.45*0.1*100 = 4.5% and 0.9*0.87*100 = 78.3%). This range overlaps with claimed ranges of these claims. Frey et al. teaches that the chlorinated polyethylene is present in from 5 to 30% by weight (Col. 2, line 45). This range overlaps with the claimed ranges of these claims.
Bartel et al. additionally teaches that the composition may be used to make articles such as a rail (¶69). The rail being used in a fence is an intended use of the rail. The rail of Bartel et al. is capable of being used in a fence since other articles of manufacture are a post or a decking member.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, and 12 of U.S. Patent No. 11,479,665 (“the ‘665 patent”) in view of Frey et al. (US 4,113,805).
Regarding claims 20, 21, 23, and 25, claims 1 and 4 of the ‘665 patent teaches a thermoplastic composite comprising about 90 to 10% by volume of a discontinuous fiber phase dispersed in about 10 to 90% by volume of a continuous polymer phase (the disclosed volume percent overlaps with the claimed weight percent); the discontinuous fiber phase comprises a mixed fiber comprising about 45 to 87% by weight of a silica fiber (glass fiber) having a length greater than about 1 mm, a diameter greater than about 0.8 microns, and an aspect ratio greater than about 100, the mixed fibers having about 0.1 to 5% by weight of an exterior coating comprising an organometallic interfacial modifier; the continuous polymer phase comprising a vinyl chloride polymer, which can be a polyvinyl chloride homopolymer.
The ‘665 patent does not teach that the composite comprises 10 to 35% by weight of chlorinated polyethylene. However, Frey et al. teaches a blend of 70 to 95% by weight of vinyl chloride polymers and 5 to 30% by weight of chlorinated polyethylene with a chlorine content of from 38 to 42% by weight (Col. 2, lines 41-48). The ‘665 patent and Frey et al. are analogous art because they are from the same field of endeavor as the instant invention, namely that of polyvinyl chloride compositions used for molded articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 5 to 30% by weight of chlorinated polyethylene, as taught by Frey et al., to the master batch composition, as taught by the ‘665 patent, and would have been motivated to do so because the addition of chlorinated polyethylene to vinyl chloride polymers produces products with improved transparency and improved impact resistance (Col. 2, lines 28-33).
Regarding the master batch limitation of claim 20, a master batch is interpreted as a composition for the purpose of searching the prior art. If a reference or combination of references teaches the composition as claimed, then the composition should be able of performing as a master batch. In other words, using the claimed composition as a master batch is an intended use of the claimed composition. Therefore, because the limitations as claimed are met by the references, this limitation is also met.
Regarding claim 22, claim 12 of the ‘665 patent teaches that the silica fiber (glass fiber) has a length of about 0.1 to 20 mm, a diameter of about 5 to 20 microns, and an aspect ratio greater than about 100.
Regarding claim 24, claim 1 of the ‘665 patent teaches that the composite has a flexural modulus of greater than 700,000 psi at 72 °F (greater than 0.7 Mpsi). The ‘665 patent does not teach that the master batch and a composite therefrom has a COTE of 0.5 to 1.5 in/in/°F, or a room temperature impact resistance of about 200 to 1000 ft-lb-in-1. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a COTE of 0.5 to 1.5 in/in/°F and a room temperature impact resistance of about 200 to 1000 ft-lb-in-1, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 26, claim 6 of the ‘665 patent teaches using about 0.1 to 3% by weight of the interfacial modifier.
Response to Arguments
Applicant’s arguments, see pages 4-7, filed August 5, 2025, with respect to the rejection of claims 20-26, 28, and 29 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made under 35 U.S.C. 103 over Bartel et al. (US 2021/0054184) in view of Frey et al. (US 4,113,805).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767