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 Arguments
Applicant's arguments filed 9/3/2025 have been fully considered but they are not persuasive.
Applicant argues that Tomoda does not describe the glass fiber with a sodium content of less than 800 ppm as claimed. Applicant argues that the sodium contents listed on Tomoda Table 1 include only the sodium from the PPS polymer, not the total sodium content of the PPS polymer and the added fillers. Applicant notes on the 132 declaration that the sodium content in Table 1 is the same as the total sodium content of only the PPS polymers. Applicant also argues that the fillers could not simply have zero or low sodium concentration because in over 80 types of glass fiber tested by Applicant, the lowest sodium content was 300 ppm.
Examiner disagrees. Applicant has not presented sufficient evidence that the particular fiber used in the cited Tomoda Example 13 does not meet the claimed sodium concentration. Tomoda is clear that the sodium content listed in Table 1 is the total sodium content of the resin composition including both the polymer and the filler, see [0102], “The total sodium content of the resin composition was determined by ICP emission spectrometry ( ICP - AES ).” In summary of [0101]-[0102], the PPS polymer and the filler are mixed together, pelletized, dried, and then the total sodium content of the polymer/fiber composition is tested and listed on Table 1. It is clear throughout Tomoda that the total sodium content of the resin should be low, see for example [0022]. Although Applicant has cited examples of mica fillers which contain sodium, Applicant has not provided any evidence that the particular glass fibers in the cited example 13 Tomoda does not have the zero or low sodium concentrations as described in the cited references. Applicant references previously submitted experimental analyses with respect to Kim, however these analyses were provided via hyperlinks and could not be accessed. Since no copies of these experimental analyses have been made of record, they cannot be fully considered.. Any relevant information contained in hyperlinks or on websites should be downloaded and added to the record so that they can be accessed in perpetuity.
Additionally, Applicant argues that a person of skill in the art outside of hindsight would not look to Yeager because Yeager teaches a thermosetting compound as opposed to the claimed thermoplastic compound which Applicant alleges is a different field of endeavor. Applicant notes the difference in characteristics and behavior of thermosetting and thermoplastic materials, for example, the ability to be made into pellets.
This is not found to be persuasive. While Examiner does agree that Yeager does not disclose PPS, Yeager does disclose a composition for use in an injection molded part, see [0118]-[0119]. Yeager also discloses polymers, glass fibers, and coupling agents, see [0009], [0082], and [0073], respectively. Both the fact that Yeager is within the field of injection molding and uses similar materials make it an analogous reference and a reference that a person of skill would consult to determine suitable coupling agents in an injection molding composition. Yeager is not cited as teaching any of the pelleting or extruding steps.
Claim Interpretation
Claims 1 and 7-9 describe methods of testing the sodium or iodine content of the claimed injection molded part. Since the claims are directed to a product, the process by which the characteristics of the component are measured are not patentably distinct when the structure of the product is the same. These claims will be interpreted such that only the claimed values of the claimed characteristics are given patentable weight. The manner in which those characteristics are determined is not given patentable weight.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-2, 4, 7-10, 12 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2019/0144609, made of record on the IDS dated 1/10/2024) modified by Yeager (US 2002/0177027) or alternatively, Kim as modified by Yeager and Tomoda (US 2018/0265701).
Regarding claim 1, Kim meets the claimed, An injection molded part comprising a composition (Kim [0042], [0055], [0057], and Table 2 describe Example 2 of injection molding a part) comprised of : a. polyarene sulfide (PAS) in an amount of between 50 wt% and 90 wt%; (Kim Table 2 Example 2 uses 59.2 wt% of polyphenylene sulfide or PPS, a type of PAS) b. glass fibers in an amount of between 10 wt% and 50 wt%; (Kim Table 2 Example 2 shows 40 wt% glass fibers) (c} a coupling agent in an amount of between 0.1 wt% and 1.0 wt%, with respect to the total weight of the composition, (Kim Table 2 Example 2 and [0031] describe a mercaptosilane agent at 0.3 wt%.) wherein the composition has a sodium content of at most 2000 ppm as measured by Inductively coupled plasma atomic emission spectroscopy (ICP-AES) (Kim Table 4 Example 2 and [0068] describes the composition is injection molded into a sample and that sample is subjected to testing detected by ICP-AES to determine a sodium content of less than 5 ppm.)
Kim [0055] describes the iodine content of the PPS 2 resin used in Example 2 is 200 ppm which gives a total of 118 ppm iodine in the composition and is not explicitly in the range of, and wherein the composition has a iodine content of at most 100 ppm as measured by X-ray fluorescence (XRF) and wherein the weight percentage and ppm is with respect to the total weight of the composition, however the proportions are so close, fractions of a wt% of the total weight of the composition, that prima facie one skilled in the art would have expected them to have the same properties, see MPEP §2144.05 (I). Additionally, Kim [0023] and [0038] describe PAS with iodine content as low as 10 ppm which suggests that a person of ordinary skill in the art could select a PAS with a lower iodine content.
Kim does not describe the claimed coupling agent and does not meet the claimed, wherein the coupling agent is selected from the group consisting of γ -aminopropyltriethoxvsilane, γ- aminopropyltrimethoxysilane, y-aminopropylmethyldiethoxysilane, γ - aminopropylmethyldimethoxysilane, N-β(aminoethyl)-v- aminopropyltriethoxysilaneN-β(aminoethyl)-y-aminopropyl-trimathoxysilane, N- p(aminoethyl)- γ aminopropylmethyldiethoxysilane, N-β(aminoethyl)- γ - aminopropylmethyldimethoxysilane, N-phenyl- γ -aminopropyltriethoxvsilane and N-phenyl- γ -aminopropyltrimethoxysilane.
Yeager also discloses a composition made with a polymer, glass fibers, and a coupling agent for injection molding purposes and meets the claimed, wherein the coupling agent is selected from the group consisting of γ -aminopropyltriethoxvsilane, γ- aminopropyltrimethoxysilane, y-aminopropylmethyldiethoxysilane, γ - aminopropylmethyldimethoxysilane, N-β(aminoethyl)-v- aminopropyltriethoxysilaneN-β(aminoethyl)-y-aminopropyl-trimathoxysilane, N- p(aminoethyl)- γ aminopropylmethyldiethoxysilane, N-β(aminoethyl)- γ - aminopropylmethyldimethoxysilane, N-phenyl- γ -aminopropyltriethoxvsilane and N-phenyl- γ -aminopropyltrimethoxysilane (Yeager [0085] describes aminopropyltriethoxysilane which meets the claimed.)
The courts have held that substituting one known element for another, such as the coupling agent of Kim for the couple agent of Yeager, according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the mercaptosilane agent in Kim with the aminopropyltriethoxysilane in Yeager in order to improve the adhesion with the fillers, see Yeager [0085].
Kim meets the claimed, wherein the glass fibers have a sodium content of at most 800 ppm with respect to the total weight of the glass fibers; (Kim Table 4 Example 2 and [0068] describes the composition is injection molded into a sample and that sample is subjected to testing detected by ICP-AES to determine a sodium content of less than 5 ppm in the entire composition, since the glass fibers are 40% of the composition, the glass fibers also have less than 800 ppm sodium content.)
Alternatively, Tomoda also discloses a composition of PPS and glass fibers using ICP-AES to measure the total sodium content of the composition and also meets the claimed, wherein the glass fibers have a sodium content of at most 800 ppm with respect to the total weight of the glass fibers; (Tomoda [0101]-[0102] and Table 1 Example 13 describes a composition made of 100 parts by weight PPS and 40 parts by weight glass fiber wherein the total sodium content of the entire composition including both the fiber and the PPS is 5 ppm meaning that the concentration of sodium in the glass fiber is also less than 800 ppm.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the glass fibers of Kim with the low-sodium glass fibers of Tomoda in order to ensure that the weld strength of the composition does not deteriorate, see Tomoda [0097].
Regarding claim 2, Kim meets the claimed, The injection molded part according to claim 1, wherein the amount of PAS is between 60 wt% and 80 wt%, (Kim Table 2 Example 2 teaches 59.2 wt% PPS which is close enough to the claimed range that one of skill in the art would expect them to have the same properties) and the amount of glass fibers is between 20 wt% and 40 wt%, wherein the weight percentage is with respect to the total weight of the composition (Kim Table 2 Example 2 describes 40 wt% glass fibers.)
Regarding claim 4, Kim meets the claimed, The injection molded part according to claim1, wherein the PAS has a sodium content of at most 500 ppm with respect to the total weight of the PAS (Kim Table 4 Example 2 and [0068] describes the sodium content of the total composition detected by ICP-AES is less than 5 ppm which is less than ~9 ppm relative to the total weight of the PPS.)
Regarding claim 7, Kim does not explicitly meet the claimed, The injection molded part according to claim 1, wherein the PAS has a crystallization temperature of at least 230 °C measured by DSC according to the method of ISO 11357-1/3 (2009) with a scan rate of 10 °C/min heating the composition to 320 °C, and keeping the composition for 3 mins at 320 °C under nitrogen, and subsequently cooling the composition at the same scan rate to record the cooling crystallization temperature in the first cooling cycle, however since Kim Table 2 Example 2 describes a component made from the same composition as claimed, it must have the same properties, including the crystallization temperature, see MPEP §2112.01.
Regarding claim 8, Kim meets the claimed, The injection molded part according to claim 1, wherein the composition has a tensile strength on an injection molded tensile bar with 4 mm thickness of at least 160 MPa, measured according to ISO 527-1A 5 mm/min at 23 °C, after an exposure to water vapor in an autoclave at a temperature of 110 °C during 1000 hours (Kim Tale 4 Example 2 describes the tensile strength was 1,620 kgf/cm2 which is ~158 MPa which is nearly identical to the claimed range. A person of ordinary skill in the art would recognize that 158 MPa is substantially similar to the claimed range of 160 MPa and would expect them to have generally the same properties and generally perform in a similar manner, see MPEP §2144.05 (I).)
Regarding claim 9, Kim does not explicitly describe the elongation at break and does not explicitly meet the claimed, The injection molded part according to claim 1, wherein the composition has an elongation at break on an injection molded tensile bar with 4 mm thickness of at least 1.2%, measured according to ISO 527-1A 5 mm/min at 23 °C, after an exposure to water vapor in an autoclave at a temperature of 110 °C during 1000 hours, however since Kim Table 2 Example 2 as modified by Yeager describes a component made from the same composition as claimed, it must have the same properties, including the elongation on at break, see MPEP §2112.01.
Regarding claim 10, Kim meets the claimed, The injection molded part according to claim1, wherein the polyarylene sulfide is polyphenylene sulfide (Kim Table 2 Example 2 uses PPS, see also [0055].)
Regarding claim 12, Yeager meets the claimed, The injection molded part according to claim 11, wherein the coupling agent is aminoalkoxylsilane, γ-aminopropyltriethoxysilane and/or γ- aminopropyltrimethoxysilane (Yeager [0085] describes aminopropyltriethoxysilane.)
Regarding claim 17, Kim meets the claimed, The injection molded part according to claim 8, wherein the tensile strength on an injection molded tensile bar of the composition is at least 165 MPa (Kim Tale 4 Example 2 describes the tensile strength was 1,620 kgf/cm2 which is ~158 MPa which is very close claimed range. A person of ordinary skill in the art would recognize that 158 MPa is substantially similar to the claimed range of 165 MPa and would expect them to have generally the same properties and generally perform in a similar manner, see MPEP §2144.05 (I). Additionally, other examples shown in Table 4 with very similar materials yield up to 1,880 kgf/cm2 which is ~184 MPa.)
Regarding claim 18, Kim meets the claimed, The injection molded part according to claim 8, wherein the tensile strength on an injection molded tensile bar of the composition is at least 170 MPa. (Kim Tale 4 Example 2 describes the tensile strength was 1,620 kgf/cm2 which is ~158 MPa which is very close to the claimed range. A person of ordinary skill in the art would recognize that 158 MPa is substantially similar to the claimed range of 170 MPa and would expect them to have generally the same properties and generally perform in a similar manner, see MPEP §2144.05 (I). Additionally, other examples shown in Table 4 with very similar materials yield up to 1,880 kgf/cm2 which is ~184 MPa.)
Regarding claim 19, Kim does not explicitly describe the elongation at break and does not explicitly meet the claimed, The injection molded part according to claim 9, wherein the elongation at break on an injection molded tensile bar of the composition is at least 1.3% however since Kim Table 2 Example 2 as modified by Yeager describes a component made from the same composition as claimed, it must have the same properties, including the elongation on at break, see MPEP §2112.01.
Regarding claim 20, Kim does not explicitly describe the elongation at break and does not explicitly meet the claimed, The injection molded part according to claim 9, wherein the elongation at break on an injection molded tensile bar of the composition is at least 1.4% however since Kim Table 2 Example 2 as modified by Yeager describes a component made from the same composition as claimed, it must have the same properties, including the elongation on at break, see MPEP §2112.01.
Regarding claim 21, Kim does not explicitly describe the elongation at break and does not explicitly meet the claimed, The injection molded part according to claim 9, wherein the elongation at break on an injection molded tensile bar of the composition is at least 1.5% however since Kim Table 2 Example 2 as modified by Yeager describes a component made from the same composition as claimed, it must have the same properties, including the elongation on at break, see MPEP §2112.01.
Regarding claim 22, Kim does not explicitly describe the elongation at break and does not explicitly meet the claimed, The injection molded part according to claim 9, wherein the elongation at break on an injection molded tensile bar of the composition is at least 1.6% however since Kim Table 2 Example 2 as modified by Yeager describes a component made from the same composition as claimed, it must have the same properties, including the elongation on at break, see MPEP §2112.01.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2019/0144609, made of record on the IDS dated 1/10/2024) or alternatively Kim modified by Tomoda (US 2018/0265701).
Regarding claim 24, Kim meets the claimed, A method for preparing a composition comprising polyarylene sulfide and glass fibers, (Kim Table 2 Example 2 shows a composition comprising polyphenylene sulfide, PPS, and glass fibers) wherein the composition has a sodium content of at most 2000 ppm as measured by Inductively coupled plasma atomic emission spectroscopy (ICP-AES) (Kim Table 4 Example 2 and [0068] describes the sodium content of the total composition detected by ICP-AES is less than 5 ppm) the method comprising the steps of (i) heating the PAS to a temperature above its melting temperature with an extruder to obtain a melt of the PAS, (Kim [0057]-[0058] describes the preparation of Example 2 by melting at 280°C to 300°C in an extruder) and subsequently (ii) adding glass fibers to the melt of the PAS to thereby obtain a mixture of the glass fibers and the melt of the PAS, (Kim [0058] describes the glass fiber is fed after the initial feeder) (iii) cooling the mixture to obtain a cooled solidified mixture of the glass fibers and PAS, (Kim [0058] describes extruding the composition, it is inherent that once the composition is not exposed to heat that it begins to cool) and then (iv) optionally pelletizing the cooled solidified mixture.
Kim [0055] describes the iodine content of the PPS 2 resin used in Example 2 is 200 ppm which gives a total of 118 ppm iodine in the composition and is not explicitly in the range of, and wherein the composition has a iodine content of at most 100 ppm as measured by X-ray fluorescence (XRF), and wherein the weight percentage and ppm is with respect to the total weight of the composition however the proportions are so close, fractions of a wt% of the total weight of the composition, that prima facie one skilled in the art would have expected them to have the same properties, see MPEP §2144.05 (I). Additionally, Kim [0023] and [0038] describe PAS with iodine content as low as 10 ppm which suggests that a person of ordinary skill in the art could select a PAS with a lower iodine content.
Kim meets the claimed, and wherein the glass fibers have a sodium content of at most 800 ppm with respect to the total weight of the glass fibers, (Kim Table 4 Example 2 and [0068] describes the composition is injection molded into a sample and that sample is subjected to testing detected by ICP-AES to determine a sodium content of less than 5 ppm, since the glass fibers are 40% of the composition, the glass fibers also have less than 800 ppm sodium content)
Alternatively, Tomoda also discloses a composition of PPS and glass fibers using ICP-AES to measure the total sodium content of the composition and also meets the claimed, and wherein the glass fibers have a sodium content of at most 800 ppm with respect to the total weight of the glass fibers, (Tomoda [0101]-[0102] and Table 1 Example 13 describes a composition made of 100 parts by weight PPS and 40 parts by weight glass fiber wherein the total sodium content of the entire composition including both the fiber and the PPS is 5 ppm meaning that the concentration of sodium in the glass fiber is also less than 800 ppm.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the glass fibers of Kim with the low-sodium glass fibers of Tomoda in order to ensure that the weld strength of the composition does not deteriorate, see Tomoda [0097].
Claims 25 is rejected under 35 U.S.C. 103 as being unpatentable over modified Kim as applied to claims 24 above, and further in view of Yeager (US 2002/0177027.)
Regarding claim 25, Kim Example 2 describes a mercaptosilane being added to the fibers and PAS and meets the claimed, The method according to claim 14, wherein the step (ii) comprises dosing at least one coupling agent to the PAS together with the glass fibers, but does not describe the specific coupling agents and does not meet the claimed, wherein a coupling agent is selected from the group consisting of aminoalkoxylsilane, γ-aminopropyltriethoxysilane and γ- aminopropyltrimethoxysilane
Yeager meets the claimed, being aminoalkoxylsilane, γ-aminopropyltriethoxysilane and/or γ- aminopropyltrimethoxysilane is dosed to the PAS together with the glass fibers (Yeager [0085] describes aminopropyltriethoxysilane.)
The courts have held that substituting one known element for another, such as the coupling agent of Kim for the couple agent of Yeager, according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the mercaptosilane agent in Kim with the aminopropyltriethoxysilane in Yeager in order to improve the adhesion with the fillers, see Yeager [085].
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over modified Kim as applied to claim 1 above, and further in view of Uchigata (US 10,737,427, made of record on the IDS dated 1/10/2024.)
Regarding claim 23, Kim does describe the component for use in various applications including the automotive field but does not specify a fuel cell and does not meet the claimed, A fuel cell comprising the injection molded part according to claim 1.
Uchigata also describes a composition made with PPS and glass fibers and meets the claimed A fuel cell comprising the injection molded part according to claim 1 (Uchigata col. 16 lines 65- col. 17 line 60 describe Examples of PPS and glass fibers in similar proportions to the claimed invention being used in a fuel cell.)
The courts have held that combining prior art elements, such as the composition of Kim and the fuel cell of Uchigata, according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to combine the composition disclosed in Kim with the fuel cell disclosed in Uchigata in order to achieve increased moldability and temperature resistance at high temperature applications such as fuel cells, see Uchigata col. 16 lines 48-67.
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 VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
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, Sam Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.B./Examiner, Art Unit 1744
/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744