DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/25/25 has been entered.
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 1 and 9-13 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.
Claim 1, which all claims depend upon, contains the limitation “a styrene-based copolymer” and also contains the contradictory limitation “0 wt% to 30 wt% of a styrene-based copolymer”. The first limitation implies that a styrene-based copolymer must be present, however the second limitation suggests that it is optionally not present via the end point at “0 wt%”. Which limitation is controlling? Is the “styrene-based copolymer” required or optional?
Claim Rejections - 35 USC § 103
Claim(s) 1 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/103519 (herein Ryoo) in view of US 2017/0306151 (herein Sakata) as evidenced by the Matweb Search Results (2025, herein Matweb), the LC875 Technical Data Sheet by Lg (2021, herein TDS), the Matweb LC875 data sheet (2025, herein Matweb Datasheet) and US 2017/0292017 (herein Jung).
In setting forth the instant rejection, the US equivalent, US 2020/0239682, has been relied upon as the English translation. The citations below refer to the US publication.
Note that in certain circumstances, references cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. Such facts include the characteristics and properties of a material or a scientific truism. In the instant case, the reference is utilized to show that the claimed term elastomer naturally flows from the product LC875.
As to claims 1, 9-10 and 12, Ryoo exemplifies a resin composition and molded articles thereof (see example 4 in table 1)
a base resin comprising:
45 wt% of (B), which is a butadiene based graft copolymer ER 400, reading on a first graft copolymer. It should also be noted that ER400 is the same first graft copolymer utilized in the examples of the instant invention. Ryoo discloses that the second graft copolymer (reading on the first graft copolymer) has 5 to 30 wt% of a rubbery core (paragraph 22). Ryoo discloses that the vinyl cyan based monomer to the aromatic vinyl based monomer is 30:70 to 50:50, which is present in 70 to 95 wt% (see paragraph 37 and 22). Thus, the wt% of vinyl cyan based monomer unit is deduced to be 21 to 47.5 wt% and the aromatic vinyl based monomer is deduced to be 35 to 66.5 wt%. Moreover, Ryoo discloses that the graft copolymer is ER400, which applicant admits is 11 wt% rubber core, 18 wt% vinyl cyan monomer and 71 wt% vinyl aromatic monomer.
10 wt% of (A), which is a butadiene based graft copolymer DP 270, reading on a second graft copolymer. It should also be noted that DP270 is the same second graft copolymer utilized in the examples of the instant invention. Ryoo discloses that the first graft copolymer (reading on the second graft copolymer) has 40 to 70 wt% of a rubbery core (paragraph 22). Ryoo discloses that the vinyl cyan based monomer to the aromatic vinyl based monomer is 30:70 to 50:50, which is present in 30 to 60 wt% (see paragraph 37 and 22). Thus, the wt% of vinyl cyan based monomer unit is deduced to be 9 to 30 wt% and the aromatic vinyl based monomer is deduced to be 15 to 42 wt%. Moreover, Ryoo discloses that the graft copolymer is DR270, which applicant admits is 60 wt% rubber core, 10 wt% vinyl cyan monomer and 30 wt% vinyl aromatic monomer.
25 wt% of (C), an alpha-styrene (aromatic vinyl monomer) acrylonitrile (vinyl cyanide monomer) copolymer 98UHM, reading on the styrene based copolymer of claim 5. See table 1.
15 wt% (D), which is phenylmaleimide-styrene copolymer MS_NB by Denka, reading on a maleimide based copolymer. MS-NB by Denka is a copolymer of N-phenylmaleimide (maleimide monomer), styrene (aromatic vinyl monomer) and maleic anhydride. See paragraph 66 of Jung for evidence. It should also be noted that MS-NB is the same maleimide copolymer utilized in the examples of the instant invention.
3 wt% of (3-3), which is an ethylene-1-butene copolymer, reading on polyolefin elastomer. While Ryoo doesn’t disclose that the ethylene butene copolymer by LG is an elastomer, Ryoo states that the Tg is -53 oC and the Tm is 57 oC. Lg only sells one ethylene-1-butene copolymer with those Tg and Tm, which is a polyolefin elastomer. See Matweb, Matweb Datasheet and TDS for evidence. Therefore, one seeking the claimed ethylene-butene copolymer by LG of the properties of Ryoo would use the claimed polyolefin elastomer. It should also be noted that LC875 is the same polyolefin elastomer utilized in the examples of the instant invention.
2 wt% of (2), which is an ethylene-SAN copolymer A1401, reading on polyolefin graft copolymer. It should also be noted that A1401 is the same polyolefin graft copolymer utilized in the examples of the instant invention. Note that this is an abbreviation for a polyethylene based acrylonitrile styrene copolymer of claim 8.
Further, see paragraph 19, 22, 41, 51 and 63 of the broader disclosure, which also teaches each of the components.
Thus, the difference between Ryoo and the claimed invention, is that Ryoo is silent on the wax.
However, Ryoo is open to additional materials such as lubricants, etc. See paragraph 70. Further, Ryoo seeks to reduce noise and sound (paragraphs 2, 5 and 9). The compositions of Ryoo are to be molded into articles such as car (automotive) parts, housing for refrigerators (home-appliance parts), etc. See paragraph 76.
Sakata teaches similar resin compositions comprising graft copolymers, which are utilized to form molded articles. See paragraph 41 and examples. The resin molded article can be used for various products and half-finished goods in wide fields of automobile parts, home-appliance parts, sundry goods, and the like because of excellent surface physical property modifying effects. See paragraph 55. Sakata discloses that the use of a polyethylene (polyolefin) wax provides excellent anti-scratch properties and reduction in squeak noise. See paragraph 7, 12 and examples.
Therefore, it is evident that Ryoo and Sakata are analogous art to the instant invention being in the same field of endeavor (graft copolymer compositions for molding into automotive parts, and other household/appliance parts) and reasonably pertinent to the problem which the inventor is concerned (reduction of friction noise).
Therefore, it would have been obvious at the time of the invention to have modified the composition of Ryoo with polyolefin wax as suggested by Sakata because one would want to improve anti-scratch properties and reduce squeak noises when the composition is molded into consumer goods such as automotive parts and household appliances. See paragraph 7, 12 and examples of Sakata.
As to claim 11, the composition has a heat deflection temperature (thermal deformation temperature) of 100oC or higher. See examples in table 4. the RPN (same test and conditions) is 1 to 3. See paragraph 72-73 and examples. Moreover, the compositions are identical and therefore would have the same properties because the properties naturally flow from having the same ingredients in the same amounts.
As to claim 13, the styrene based copolymer (referred to as (C) in Ryoo) is present in 15 to 85 wt% in Ryoo. See paragraph 35. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts at 15 wt% within the scope of the instant claims.
Response to Arguments
Applicant's arguments and declaration have been fully considered but they are not persuasive.
Applicant continues to argue that the declaration shows unexpected results of utilizing polyolefin wax over other waxes.
In response, the examiner disagrees. MPEP 716.02(b) states that the burden is on applicant to establish that the results are unexpected and significant. Applicant has the burden of explaining proffered data. Again, the declaration is summarized below:
Polyolefin Wax Example 1
Paraffin Wax Comp. Ex. 1
Microcrystalline Wax Comp. Ex. 2
Fischer-Tropsch Wax
Comp. Ex. 3
Impact Strength
(J/m)
120
110
120
110
Tensile Strength
(MPa)
46
43
42
44
The declaration also clarifies that the error in impact strength is about 5% and tensile strength is about 2%.
However, as noted in the previous action, the skilled artisan would recognize that there would be some difference in properties, since they are the not the same material. The question is whether one would find the results above as unexpected, surprising and significant. Applicant has not addressed why the results are unexpected outside of conclusory statements. Especially considering that microcrystalline wax has the same impact strength as the “unexpected” values of polyethylene wax. How can a property that is identical to another wax be unexpected? Similary with the tensile strength, a 2 MPa change is a few percent difference, which it seems reasonable the that skilled artisan would expect a minor change like that.
It is not understood how an about 5% (2 MPa) improvement in tensile strength is unexpected or surprising. While small percent improvements in some fields may be unexpected, applicant has not explained why in the instant case. This is especially noteworthy because the comparable examples in table 2 of the originally filed specification vary from 51 to 43 MPa, which is about a 18.6% different in the tensile strength. Considering the high variance of up to about 20% in the tensile strength depending on the material utilized, why would one consider a 5% change unexpected?
Lastly, it is noted again that Sakata recognizes that compatibility is critical (paragraph 5) in yielding improved properties. It is noted that applicant argues that this is directed towards other properties. Nevertheless, US 5,109,066 (col. 3, lines 18-25), which states that “Poor compatibility in a blend is apparent to those skilled in the art, and often evidences itself in poor tensile strength or other physical properties”. Moreover, US 5,532,317 (col. 2, lines 40-50) states that when “the compatibility with other components tends to be poor, whereby the falling weight impact strength is likely to be low”. Therefore, it is reasonable to take the position that the skilled artisan would expect polyolefin wax to be more compatible because the composition comprises e.g. polyolefin (“like dissolves like”) elastomer.
Applicant argues that one would have no reason to add polyolefin wax of Ryoo because Ryoo achieves a RPN of 3 without using polyolefin wax.
In response, the RPN mentioned in paragraph 5 is in the background section and is discussing a JP document. The RPN mentioned in paragraph 36 of Ryoo suggests that a low RPN may be achieved. However, Ryoo does not mention more about what is achieved. Nevertheless, the "normal desire of scientists or artisans to improve upon what is already generally known” provides motivation for further improving the RPN. See In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). In the instant case, one would have been motivated to add surface modifier to further reduce noise and to further optimize the composition.
Applicant appears to argue that the first or second copolymer are different.
However, applicant does not specifically address the rejections. Moreover, the commercial polymers utilized in Ryo are identical to those utilized in the examples of the instant application.
Applicant argues that paragraph 41 of Sakata is not consistent with paragraph 58 because the polyethylene wax is not heated above the melting point.
In response, patents are relevant for all they contain. A patent may have multiple embodiments and examples In the instant case, Sakata motives one to utilize polyethylene wax in order to reduce noise. One could select the appropriate process conditions (e.g. temperature) thereafter from the disclosure of Sakata.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764