DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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.
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.
Claim(s) 1-13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeishi et al. (US 2014/008244, “Takeishi”) in view of Monsheimer et al. (US 2006/0189784, “Monsheimer”).
Regarding claims 1 and 16, Takeishi teaches the inclusion of a copolymer of a polyamide resin composition (e.g., [0012] – [0020]) that may include amide units ([0007], [0012] – [0015]) in an amount of from 20 to 80% by mass ([0025]), may include from 2 to 30% of hollow glass reinforcement ([0007], [0046]), and may include additional additives such as a silane coupling agent or other fillers (e.g., [0008], [0047]). Takeishi additionally teaches that such a resin may be used to make an injection molded article ([0050]). Takeishi additionally teaches that the resin may include olefin copolymers ([0026], [0027]), but fails to specifically teach that the polyamide is a polyetheramide (i.e., that it includes a unit that is a polyether unit). In the same field of endeavor of polyamide compositions for molded articles (e.g., [0001] – [0005]), Monsheimer teaches to include an ether component in a polyamide resin to form a polyetheramide for use in resin compositions for making molded articles ([0033] – [0035], [0043], [0022]) and that such polyetheramide compositions may have improved impact resistance when compared with conventional polyamide compositions ([0043], [0033]). It therefore would have been obvious to the ordinarily skilled artisan at the time of filing to have substituted the polyetheramide of Monsheimer for the resin of Takeishi or else to have included ether components as described by Monsheimer in the polyamide resin of Takeishi for the benefit of the improved impact resistance when compared with conventional polyamide compositions ([0043], [0033]).
Regarding claim 2, Takeishi additionally teaches that the amide unit may be obtained from at least one lactam ([0012]).
Regarding claim 3, modified Takeishi additionally teaches that the polyether units may comprise, for example, polyethylene glycol (Monsheimer, [0050], ethylene oxide, i.e., ethylene glycol).
Regarding claim 4, ,Takeishi additionally teaches that the resins may have a density of greater than 1 (i.e., greater than 1 g/cm^3, [0046], polyamide resin).
Regarding claim 5, modified Takeishi teaches that the density of the composition is highly manipulable based on adjustments to the amounts of resin and filler in the composition (see [0046], [0037] – [0039]) and Monsheimer further teaches that it is known for such a resin-based article to have a density of less than 1 g/cm^3 (see Monsheimer, [0049]). It therefore would have been obvious to have adjusted the density of the overall composition to less than 1 by increasing the amount of hollow microparticles in order to reduce the weight of the composition (Takeishi, [0037]; Monsheimer, [0049]).
Regarding claim 6, Takeishi additionally teaches the amount of hollow microparticles may read on the claimed range of from 5 to 25% by weight ([0046]).The Examiner notes that in the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Regarding claim 7, Takeishi additionally teaches that the hollow glass reinforcement may be hollow glass microparticles (i.e., beads, [0046]).
Regarding claim 8, Takeishi additionally teaches that the glass microparticles may have a diameter on the range of from 10 to 70 micrometers ([0035]).
Regarding claim 9, Takeishi additionally teaches that the glass microparticles may have a density on the range of less than 0.65 g/cm^3 (e.g., [0037] - [0039]).
Regarding claim 10, ,Takeishi additionally teaches that the glass microparticles may have a compressive strength of greater than 50 MPa ([0038]).
Regarding claims 11 and 12, Takeishi additionally teaches that the resin may include polyamide 11 ([0018]).
Regarding claim 13, Takeishi additionally teaches that the resin may include various fillers ([0047]).
Response to Arguments
Applicant's arguments filed 2/10/26 have been fully considered but they are not persuasive.
Applicant argues that one of ordinary skill in the art would not seek to modify the composition of Takeishi with the polyetherimide of Monsheimer because Monsheimer is directed to a different polymer used in a different method of molding. The Examiner respectfully disagrees. First, both Takeishi and Monsheimer are directed broadly to the molding of polymer compositions to form various products, for example, parts for use in automobile applications (e.g., Takeishi, [0050], [0051]; Monsheimer [0081]). Takeishi teaches a multitude of molded products (e.g., [0050] and thus need not be considered limited to injection molding). Further, Monsheimer teaches its polymers may be used in melt flow moldings (e.g., [0065]). Therefore, the Examiner maintains that the ordinarily skilled artisan would have been interested in improvements to resins for use in molded products generally, as described by Monsheimer. In response to applicant's argument that Monsheimer or Takeishi are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as described above, both Takeishi and Monsheimer are drawn to the same field of endeavor of molded articles (e.g., Takeishi, [0050], [0051]; Monsheimer [0081]). The Examiner notes, with regard to the whether the applied art is analogous, "[t]he field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’" (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016)). Applicant appears to try to distinguish Takeishi and Monsheimer by arguing that Takeishi includes glass microparticles. But Monsheimer also teaches that its polymer may include glass particle fillers and thus the Examiner disagrees (Monsheimer, e.g., [0060]). Therefore, the Examiner maintains the position that the ordinarily skilled artisan would have been interested in the teachings of Monsheimer for the benefit of improved impact resistance when compared with conventional polyamide compositions ([0043], [0033]). In response to applicant's argument that Monsheimer is directed to laser sintered molding applications, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the present case the Examiner maintains that it would have been obvious to the ordinarily skilled artisan at the time of filing to have substituted the polyetheramide of Monsheimer for the resin of Takeishi or else to have included ether components as described by Monsheimer in the polyamide resin of Takeishi for the benefit of the improved impact resistance when compared with conventional polyamide compositions ([0043], [0033]).
Applicant argues that using including the polyetheramides of Monsheimer in the resin of Takeishi would lead to increased shear stress during compounding. The Office notes Applicant has not presented any evidence in the record, for example a declaration, in support of the arguments of counsel. The arguments of counsel cannot take the place of evidence in the record. MPEP §§ 716.01(c), 2145. Applicant has not presented any evidence in the record supporting the argument that the inclusion of polyetheramides of Monsheimer would render the resin of Takeishi unsatisfactory for its purpose.
The applicant asserts that unexpected results overcome the obviousness rejection. The examiner respectfully disagrees. Although the applicant appears to have shown that the results are preferred, the applicant has failed to show that the results are necessarily unexpected and unexpected to a degree sufficient to overcome obviousness. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. Please see MPEP §716.02. The burden is on the applicant to establish results are unexpected and significant. The evidence relied upon should establish that the differences in results are in fact unexpected, unobvious, commensurate in scope with the claims, and of both statistical and practical significance. See MPEP §716.02(b) and §716.02(d). The applicant is reminded that an affidavit or declaration must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP §716.02(e).
Applicant argues that claim 2 is separately patentable because the prior art does not teach the polyetheramides that are obtained from amino acids, lactams, or diamine/dicarboyxilc acid units. The Examiner respectfully disagrees. Takeishi teaches the inclusion of an amide unit may be obtained from at least one lactam ([0012]). But further, the polyetheramide of Monsheimer appears to include blocks including dicarboxylic acids reacted with diamines ([0047], see also [0019], [0034]). Thus the polyetherimide included in the resin of modified Takeishi would include such a feature.
Therefore, claims 1-13 and 16 are rejected as described above.
Conclusion
Applicant's amendment necessitated the 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 ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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