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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/17/2026 has been entered.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sim (WO 2019/078464) in view of Weber (US 2007/0161746) taken in view of the evidence given by Sanyo (Pelectron web article).
It is noted that when utilizing WO 2019/078464 in the above paragraph, the disclosures of the reference are based on US 2020/0354561 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2019/078464 are found in US 2020/0354561.
Re claims 1, 2, 4, 7, 10, Sim discloses a thermoplastic resin composition comprising 100 parts by weight of a base resin comprising about 60 wt.% to about 90 wt.% rubber-modified aromatic vinyl copolymer (A) and about 10 wt.% to about 40 wt.% polyamide resin (B), about 1 to about 15 parts by weight of poly(ether ester amide) block copolymer, and about 1 to about 20 parts heat resistant vinyl copolymer [11, 25]. The rubber-modified aromatic vinyl copolymer (A) comprises about 20 wt.% to about 50 wt.% rubber-modified aromatic vinyl graft copolymer (A1) that is a core-shell polymer comprising a butadiene rubber core and a styrene-acrylonitrile shell [28-30 and 32-34] and about 50 wt.% to about 80 wt.% aromatic vinyl copolymer (A2) comprising styrene acrylonitrile copolymer [38-42]. It is calculated that there is present 18 to 30 wt.% (0.2*90 – 0.5*60) rubber-modified aromatic vinyl graft copolymer (A1) and 30 to 72 wt% (0.5*30 - 0.8*90) aromatic vinyl copolymer (A2). Although there is no disclosure of the crystallization temperature of the poly(ether ester amide) block copolymer, Sim uses poly(ether ester amide) block copolymer known under the tradename Pelectron AS [96] which as evidenced by Sanyo (see page 11) has a crystallization temperature of 123 C.
Sim discloses the use of a maleimide-aromatic vinyl (styrene)-vinyl cyanide (acrylonitrile) copolymer but does not disclose a maleic anhydride-aromatic vinyl (styrene)-vinyl cyanide (acrylonitrile).
Weber discloses thermoplastic resin composition comprising polyamide, rubber-based graft copolymer, and rubber-free copolymer (Abstract) which is maleimide-styrene-acrylonitrile copolymer as well as a maleic anhydride-styrene-acrylonitrile [95, 97, 102-107].
In light of the disclosure of the equivalence and interchangeability of using maleimide-styrene-acrylonitrile copolymer with using maleic anhydride-styrene-acrylonitrile disclosed by Weber as set forth above, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use maleic anhydride-styrene-acrylonitrile as the heat resistant vinyl copolymer of Sim and thereby arrive at the claimed invention.
Given that the materials and amounts are the same, all properties (to the specimen) not explicit are inherent.
Re claim 3, Sim discloses the core-shell polymer has average particle diameter of 0.05 to 6 microns [31].
Re claim 5, Sim discloses that the aromatic vinyl copolymer comprises 20-90 wt% styrene and 10-80 wt.% acrylonitrile [41, 43, 46].
Re claim 6, Sim discloses that the aromatic vinyl copolymer has weight average molecular weight of 10,000-300,000 [47].
Re claim 8, Sim discloses the polyamide includes polyamide 6, polyamide 11, etc. [51].
Re claim 9, Sim discloses the poly(ether ester amide) block copolymer is made by reacting components including aminocarboxylic acid, lactam or diamine-dicarboxylic acid salt having 6 or more carbon atoms and C4-C20 dicarboxylic acid [56].
Re claim 11, Sim discloses the use of additives including flame retardant, antioxidant, etc. [78].
Response to Arguments
Applicant argues the current amendments are not taught; however, they are inherent. See Mpep 2141.02: V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY "In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency. Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112
Applicant acknowledges the teachings of PMI-SAN of Sim but argues there is no motivation to replace the PMI-SAN of Sims with an MAH based copolymer to improve heat resistance and antistatic properties. However, that is the reason the motivation is to improve heat resistance and antistatic properties. The argument regarding the PMI-SAN are not found convincing as (A) there is no objective test results submitted in a declaration; (B) the argument is not commensurate in scope with claim 1; and (C) further note, applicant while relying upon examples and comparative examples, must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). As set forth in MPEP 2144.05, in the case where the claimed range “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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al. (US 2023/0133698) discloses thermoplastic resin composition comprising butadiene-based rubber-modified aromatic vinyl cyanide graft copolymer, aromatic vinyl-vinyl cyanide copolymer, polyamide resin and poly(ether ester amide) block copolymer.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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