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 1, 2, 4, and 5 are objected to because of the following reasons:
With respect to claim 1, the use of different terms to refer to refer to a formula is improper. For instance, both “General Formula (1)” and “[chem. 1]” are used to refer to the first formula.
With respect to claim 2, the use of different terms to refer to refer to a formula is improper. For instance, “General Formula (2)” and “[chem. 2]” are used to refer to the first formula. The second and third formulas are similarly improper.
With respect to claim 4, the use of different terms to refer to refer to a formula is improper. Specifically, “General Formula (3)” and “[chem. 5]” are used.
With respect to claim 5, the use of different terms to refer to refer to a formula is improper. For instance, “General Formula (5)” and “[chem. 6]” are used to refer to the first formula.
Appropriate correction is required.
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 of this title, 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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sukigara (JP 2014-240473, machine translation) in view of Ayabe (US 2015/0353710).
With respect to claims 1-3 and 6, Sukigara discloses a sealing resin sheet containing a polyolefin resin (paragraph 0014) such as polypropylene resin (paragraph 0024). The exemplified formulations are prepared from a masterbatch comprising 90 parts by mass of polyolefin resin, 2.5 parts by mass of a light stabilizer that is bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate (a hindered amine compound), 2.5 parts by mass of an antioxidant that is n-octadecyl-3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate (reads on claimed formula (2) when n = 1 and R has 18 carbon atoms), and 5 parts by mass of a UV absorber (paragraph 0156). Based on 100 parts by mass polyolefin, the total amount of exemplified light stabilizer (i.e., light stabilizer, antioxidant, and UV absorber) is 11 parts by mass.
While Sukigara discloses light stabilizers that are piperidine compounds including monopiperidine such as 4-benzoyloxy-2,2,6,6-tetramethylpiperidine (paragraph 0065), it does not disclose a hindered amine light stabilizer of claimed formula (1).
Ayabe discloses a polyolefin resin composition comprising hindered amine light stabilizers including both bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate (exemplified by Sukigara) as well as preferred
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and
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inter alia (paragraph 0041).
Given that Sukigara discloses utilizing piperidine-based light stabilizers in its polyolefin composition and further given that Ayabe discloses that piperidine light stabilizer of claimed formula (1) when R6 has 15 or 17 carbon atoms are preferred in polyolefin compositions as a hindered amine light stabilizer, it would have been obvious to one of ordinary skill in the art to utilize the claimed hindered amine light stabilizer of Ayabe in the polyolefin composition of Sukigara.
With respect to claim 4, Sukigara teaches that the antioxidant can be 1,3,5-tris(3′,5′-di-tert-butyl-4′-hydroxybenzyl)-s-triazine-2,4,6-(1H,3H,5H)trione which reads on claimed formula (3) when R is t-butyl (4 carbon atoms) as an alternative to exemplified n-octadecyl-3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate (paragraph 0072).
In view of Sukigara’s recognition that n-octadecyl-3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate and 1,3,5-tris(3′,5′-di-tert-butyl-4′-hydroxybenzyl)-s-triazine-2,4,6-(1H,3H,5H)trione are equivalent and interchangeable as antioxidants in polyolefin compositions, it would have been obvious to one of ordinary skill in the art to substitute n-octadecyl-3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate with 1,3,5-tris(3′,5′-di-tert-butyl-4′-hydroxybenzyl)-s-triazine-2,4,6-(1H,3H,5H)trione. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
With respect to claim 5, Sukigara teaches uses other monophenol-based antioxidants (paragraph 0069), however, it fails to disclose a hydroxybenzoate as in formula (5).
Ayabe discloses a polyolefin resin composition comprising a hydroxybenzoate of formula
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wherein R3 is an alkyl group having 8-30 carbon atoms (abstract) and teaches that this compound in combination with a hindered amine-based light stabilizer which suppresses initial coloration and has excellent weather resistance (paragraph 0008).
Given that Sukigara is open to the use of a plurality of light stabilizers such as phenol based antioxidants and further given that the claimed compound of formula (3) is particularly useful in polyolefins when used with hindered amines as taught by Ayabe, it would have been obvious to one of ordinary skill in the art to add an additional light stabilizer to the polyolefin composition taught by Sukigara to further improve claimed weather resistance properties.
With respect to claim 7, Sukigara disclose nucleating agents can be added (paragraph 0076).
Therefore, it would have been obvious to one of ordinary skill in the art to add a nucleating agent to the masterbatch.
With respect to claim 8, preferred hindered amine light stabilizers
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taught by Ayabe are the same as the ones used in Applicant’s examples and therefore has a melting point of 80°C or lower.
With respect to claim 9, In Table 2 of the original document in Japanese, this exemplified masterbatch (
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) is added in an amount of 4.0 parts by mass per 100 parts by mass of polyolefin. Which provides for an amount of light stabilizer (includes hindered amine, phenolic antioxidant, and UV absorber) is 0.4 parts by mass per 100 parts by mass of polyolefin.
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/030,581 in view of Sukigara (JP 2014-240473, machine translation).
US appl ‘581 claims a polyolefin-based resin composition comprising a polypropylene-based resin, a light stabilizer having claimed Formula (1) and phenol-based antioxidant having claimed Formula (2) when n = 1.
US appl ‘581 fails to claim a masterbatch having an amount of light stabilizer in an amount of more than 10 parts by mass per 100 parts by mass of the polypropylene-based resin.
Sukigara discloses a sealing resin sheet containing a polyolefin resin (paragraph 0014) such as polypropylene resin (paragraph 0024) prepared from an exemplified light stabilizer masterbatch 90 parts by mass of polyolefin resin, 2.5 parts by mass of a light stabilizer that is bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate (reads on claimed formula (1) when R has 10 carbon atoms), 2.5 parts by mass of an antioxidant that is n-octadecyl-3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate (reads on claimed formula (2) when n = 1 and R has 18 carbon atoms), and 5 parts by mass of a UV absorber (paragraph 0156). Based on 100 parts by mass polyolefin, the total amount of exemplified light stabilizer (i.e., light stabilizer, antioxidant, and UV absorber) is 11 parts by mass.
Given that the claims of US appl ‘581 comprise a polypropylene-based resin and a combination of hindered amine light stabilizer and a phenol-based antioxidant having claimed formula (2) and further given that Sukigara discloses that similar compositions are prepared with a masterbatch comprising 11 parts by mass stabilizers in a polyolefin resin, it would have been obvious to one of ordinary skill in the art to utilize the polyolefin composition of US appl ‘581 in a masterbatch formulation like taught by Sukigara.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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