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 on 5/8/2025 has been entered.
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.
Claims 1-8 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over EP2719729 to Lanxess in view of USPAP 2019/0153221 to Yang.
Claim 1, Lanxess discloses a composition comprising: (A) from 29 to 74% by weight of at least one semi-crystalline aliphatic polyamide, said semi-crystalline aliphatic polyamide resulting from the polycondensation: of at least one C6 to C18, amino acid; or of at least one C6 to C18 lactam; or of at least one C4-C36 diamine Ca with at least one C4-C36 diacid Cb; (B) from 25 to 70% by weight of glass fibers (C) from 1 to 20% by weight of at least one impact modifier, wherein the composition excludes core-shell impact modifiers; and (D) from 0 to 2% by weight of at least one additive, excluding copper chromite, zinc sulfide, titanium dioxide, calcium carbonate and a polyolefin-based colored masterbatch; the sum of the various constituents (A) to (D) being 100% by weight (see entire document including the abstract, [0010]-[0013] and [0045]-[0052]).
Lanxess does not appear to mention a specific glass fiber composition but does disclose the use of S glass fibers [0026]. Yang discloses that it is known in the art to include S glass fibers consisting essentially of silica dioxide (SiO2), aluminum oxide (Al2O3) and magnesium oxide (MgO); said glass fibers (B) consisting of the following composition: from 60 to 66% by weight of SiO2; from 23 to 25% by weight of Al2O3; from 6 to 11% by weight of MgO; from 0 to 9% by weight of calcium oxide (CaO); and from 0 to 1% by weight of other oxides, the total being equal to 100% by weight (see entire document including [0009]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the glass fibers of Lanxess from any suitable glass fiber composition, such as disclosed by Yang, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claims 2, 15 and 16, Lanxess does not appear to mention the polyamide being selected from PA11, PA12, PA1010, PA1012, PA1210 and PA1212 but Yang discloses that it is known in the art to construct polyamide compositions with a variety of polyamides including those claimed ([0019]-[0022]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the polyamide from any suitable polyamide material, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 3, the impact modifier is selected from a polyolefin-based polymer inherently having a flexural modulus less than 100 MPa measured according to standard ISO 178:2010 (23° C RH50) and having a Tg below 0° C (measured according to standard 11357-2:2013 at the inflection point of the DSC thermogram) ([0036]-[0044]).
Claim 4, the impact modifier is a polyolefin, said polyolefin being functionalized or non-functionalized, or a mixture of both ([0036]-[0044]).
Claim 5, the polyolefin is selected from a functionalized polyolefin or a mixture of functionalized and non-functionalized polyolefins ([0036]-[0044]).
Claim 6, the functionalized polyolefin is a polyolefin bearing a function selected from carboxylic acid, maleic anhydride and epoxy functions ([0036]-[0044]).
Claim 7, the additives are selected from fluidifying agents, dyes, catalysts, stabilizers, especially thermal stabilizers, UV stabilizers, light stabilizers, surfactants, whitening agents, antioxidants, chain extenders, lubricants, nucleating agents, waxes, and mixtures thereof [0046].
Claim 8, the impact modifier (C) is present at from 1 to 15% by weight [0036].
Claim 14, the composition comprises from 45 to 70% by weight of glass fibers consisting essentially of silica dioxide (SiO2), aluminum oxide (Al203) and magnesium oxide (MgO) [0010].
Claim 15, the at least one semi-crystalline aliphatic polyamide may exclude a polyamide comprising PA 6 [0010].
Claim 16, the at least one semi-crystalline aliphatic polyamide may exclude a polyamide comprising PA 6.6 [0010].
Response to Arguments
Applicant's arguments filed 5/8/2025 have been fully considered but they are not persuasive.
The applicant asserts that there is no motivation for one skilled in the art to construct the composition of Lanxess with S glass fibers because Lanxess discloses that E glass fibers are particularly preferred [0026]. Applicant’s argument is not persuasive because Lanxess explicitly discloses that S glass fibers may be used and even discloses that S glass fibers are particularly preferable [0026].
All the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art even though the art teachings relied upon are phased in terms of a non-preferred embodiment or even as being unsatisfactory for the intended purpose, In re Boe, 148 USPQ 507 (CCPA 1966); In re Smith, 65 USPQ 167 (CCPA 1945); In re Nehrenberg, 126 USPQ 383 (CCPA 1960); In re Watanabe, 137 USPQ 350 (CCPA 1963). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” Id. at 554, 31 USPQ2d at 1132.). MPEP 2123.
The applicant asserts that the Office overlooks the design differences between Lanxess and Yang and asserts that there is no motivation to construct the glass (S glass) fibers of Lanxess with the S glass fiber composition disclosed by Yang. The examiner respectfully disagrees. Both Lanxess and Yang relate to polyamide compositions that comprise glass fibers. Lanxess does not appear to mention a specific glass fiber composition but does disclose the use of S glass fibers [0026]. Yang discloses that it is known in the polyamide composition art to include S glass fibers consisting essentially of silica dioxide (SiO2), aluminum oxide (Al2O3) and magnesium oxide (MgO); said glass fibers (B) consisting of the following composition: from 60 to 66% by weight of SiO2; from 23 to 25% by weight of Al2O3; from 6 to 11% by weight of MgO; from 0 to 9% by weight of calcium oxide (CaO); and from 0 to 1% by weight of other oxides, the total being equal to 100% by weight (see entire document including [0009]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the glass fibers of Lanxess from any suitable glass fiber composition, such as disclosed by Yang, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
In response, the applicant asserts that this is insufficient motivation to establish prima facie obviousness. The examiner respectfully disagrees. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics, see In re Leshin, 125 USPQ 416. Further, the substitution of known equivalent structures involves only ordinary skill in the art. In re Fout 213 USPQ 532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ 618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR v. Teleflex.
The applicant also asserts that Yang discloses the use of core-shell impact modifiers and therefore Yang teaches away from the claimed invention. Applicant’s argument is not commensurate in scope with the current rejection. The current rejection does not rely on Yang to teach the claimed impact modifier because Lanxess (the primary reference) already teaches the claimed impact modifier. Yang is only relied upon to teach the claimed S-glass fiber composition.
The applicant also asserts that Lanxess fails to teach or suggest the claimed impact modifier because claim 1 excludes core-shell impact modifiers while Lanxess discloses that further preferred impact modifiers are core-shell modifiers [0038]. Applicant’s argument is not persuasive because Lanxess does not require core-shell impact modifiers. On the contrary, Lanxess discloses a variety of impact modifiers and explicitly mentions impact modifiers used with preference that are not core-shell modifiers [0037]. Therefore, Lanxess teaches that core-shell modifiers may be excluded. As stated above, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
The applicant also asserts that Lanxess fails to teach at least one additive that excludes the additives explicitly excluded in claim 1. The examiner respectfully disagrees. Lanxess discloses at least one additive that excludes the additives excluded by claim 1 ([0045]-[0052]) with no teaching or suggestion that any of the claimed excluded additives are required.
Conclusion
Applicant's amendment necessitated any 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 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 ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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