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 .
Status of Claims
Claims 1-17, 19, and 21-22 are pending. Claims 1-15 are withdrawn.
Priority
Instant application 18/057,814, filed 11/22/2022 claims priority as follows:
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Information Disclosure Statement
All references from IDS(s) received 03/11/2026 have been considered unless marked with a strikethrough.
Response to Amendment/Arguments
The amendment filed 02/26/2026 has been entered. Applicant has amended claim 16. Claims 21 and 22 are new.
Claims 16 was previously objected to for a typographical error. In view of the amendment to claim 16, applicant has overcome the objection. Therefore, the previous objection to claim 16 is withdrawn.
Claim Interpretation
Claim 22 recites a fiber-reinforced molded-in-color composite consisting of:
(i) 1,2,2,6,6-pentamethylpiperidin-4-yl methacrylate (“MPMP”) in an amount between about 0.1 phr and 5 phr;
(ii) a polyester resin;
(iii) a styrene solution; and
(iv) carbon black.
The remainder of the claim recites characteristics or the process by which the MPMP is prepared.
The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. See MPEP 2111.03. Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See MPEP 2111.02.
In claim 22, the preamble recitation “fiber-reinforced” is being interpreted as requiring that the “consisting of” composition in claim 22 requires some sort of fiber (e.g. carbon fiber, glass fiber, natural fiber, etc.) as an ingredient in the composition in addition to ingredients (i) - (iv) set forth in the body of the claim.
New claim 21 is almost identical to claim 16, but instead of the transitional phrase “comprising”, claim 21 recites the transitional phrase “consisting essentially of.”
Note that MPEP 2111.03 states:
“For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.").”
The instant specification and claims do not define the phrase “consisting essentially of”, nor do the specification or claims clearly identify what is excluded from the claimed composition by the phrase “consisting essentially of”. Accordingly, in claim 21, the phrase is being interpreted as equivalent to “comprising”.
The above interpretation is relevant to the rejections below.
Claim Objections - New
Claims 16 and 21-22 are objected to because of the following informalities: all three claims recite “wherein the purified [MPMP] is characterized by a GC-MS spectra as shown in Figure 4.” However, FIG. 4 is not a GC-MS spectrum. FIG. 4 is an IR spectrum. See the Figure caption, which reads: “IR Spectral Overlay”. Accordingly, the recitation of “GC-MS spectra” in claims 16 and 21-22 is being interpreted as a typographical error. Appropriate correction is required.
Applicant is advised that should claim 16 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103 - Maintained
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.
Claims 16-17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (Journal of Elastomers & Plastics, vol. 46, no. 6, Oct. 2014, pp. 569–76); in view of Liu (Polymers for Advanced Technologies, vol. 13, no. 3–4, Mar. 2002, pp. 247–53); and further in view of Coleman (Applied Plastics Engineering Handbook (Second Edition), 2017, pp. 489–500); as evidenced by ASTM Int’l ("Standard Practice for Operating Xenon Arc Lamp Apparatus for Exposure of Materials”, ASTM G155-21, ASTM International, 2021).
The instant claims are drawn to a fiber-reinforced molded-in-color composite comprising 1,2,2,6,6-pentamethylpiperidin-4-yl methacrylate (as a UV stabilizer) and a base bulk molding compound comprising a polyester resin, a styrene solution, and carbon black, wherein the composite exhibits certain gloss retention properties when compared with a composite lacking MPMP.
Shin discloses polymerizable ultraviolet stabilizers for unsaturated polyester-based bulk molding compounds (title, abstract). In particular, Shin discloses the combination of monomeric UV stabilizers, including 4-acryloyloxy-1,2,2,6,6-pentamethylpiperidine (APMP, Fig. 1) with polyester-based bulk molding compounds (Table 1).
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Shin further discloses preparing (molding) a glass fiber-reinforced composite using the resultant BMC formulation (Table 1 and page 572, “Molding of BMC”). Note that the bulk molding compound of Shin comprises an unsaturated polyester resin which also comprises styrene: “MP 712 (Sewon Chemical, Daejon, Korea) was used as an unsaturated polyester resin and contained a 40 wt% of styrene” [Materials and Instruments, page 570].
Therefore, Shin discloses a fiber-reinforced molded-in-color composite comprising a base bulk molding compound comprising a polyester resin and a styrene solution, and the UV stabilizing amine APMP. With respect to the amount of APMP in the bulk molding compound, Shin teaches that the UV stabilizer, which is present in an amount of 3% (Table 1), comprises a range of 0% to 10% for APMP (Table 3, page 574). Therefore, at the low end of the range taught by Shin, the composite produced according to Table 1 would 0% APMP, and at the high end, the composite produced according to Table 1 would comprise 0.3% APMP.
With respect to claims 16, Shin fails to disclose a composite comprising 1,2,2,6,6-pentamethylpiperidin-4-yl methacrylate (MPMP). However, APMP disclosed in Shin merely differs from MPMP by the presence of a methyl group. Further, APMP and MPMP are known in the prior art as functional equivalents (UV stabilizing monomers).
For example, Liu discloses reactive hindered amine light stabilizers (“Reactive-HALS”) to be used in UV-curable compositions, and discloses both APMP and MPMP and the preparation thereof (Abstract, Introduction, Scheme 1):
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Further, Liu discloses that both APMP and MPMP provide a photo stabilizing effect and performed better than that of commercial Tinuvin 770 and Tinuvin 292 (page 252-253, “Photostabilizing effect of r-HALS”).
Finding of prima facie obviousness
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. See MPEP 2143.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Applying KSR example rationale (B), it would have been prima facie obvious to substitute APMP in the composite disclosed by Shin with MPMP taught by Liu. A skilled artisan would have reasonably predicted that substituting APMP with MPMP would result in a composite with analogous UV stability. The result of the substitution is a composite comprising MPMP, a polyester resin, and a styrene solution.
Neither Shin nor Liu disclose carbon black in the bulk molding compound. However, Carbon black is a known additive for bulk molding compounds and can be used as a black pigment, UV stabilizer, to enhance electrical conductivity, or as a reinforcing filler. For example, Coleman is drawn to a review of plastics additives [title, introduction] and discloses common fillers [28.1 Fillers, pages 494-496]. In particular, Coleman teaches that carbon black provides a black color that protects many thermoplastic polymers from the damaging effects of sunlight (UV) by absorbing the damaging energy. Further, Coleman teaches that carbon blacks can function as antioxidant (AO) materials, or as jet black pigments, or as conductive fillers for EMI shielding [page 495, left side, second paragraph].
Applying KSR example rationale (A) and/or (G), it would have been prima facie obvious to add carbon black to the bulk molding compound in the composite taught by Shin in view of Liu. A skilled artisan would have been motivated to add carbon black because it is a common plastics additive which is routinely used as a black pigment, an antioxidant, a UV stabilizer, or as a conductive filler.
With respect to the amount of MPMP in the composite taught by Shin, Liu, and Coleman, it would have been prima facie obvious to add MPMP according to the amounts of APMP taught by Shin. The amount taught by Shin ranges from 0% to 0.3%, which overlaps with the range of 0.1 parts per hundred resin (%) to 5 parts per hundred resin (%) recited by the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Moreover, differences in result-effective variables will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the value of the result-effective variable is critical. See MPEP 2144.05. In the instant case, the concentration of MPMP in the composite is considered a result-effective variable that impacts, for example, the composite’s ability to resist degradation by UV radiation. Absent a showing of that the recited range is critical, optimizing result-effective variables is deemed routine optimization.
With respect to the limitation specifying a 4-fold increase in % gloss retention, the composite taught by Shin, Liu, and Coleman comprises the UV stabilizer MPMP, and therefore a person having ordinary skill in the art would reasonably expect said composite to exhibit improved gloss retention properties after accelerated weathering when compared with a composite having no MPMP. Further, as noted above, the concentration of MPMP in the composite is considered a result-effective variable that impacts the composite’s ability to resist degradation by UV radiation; and by extension, the % gloss retention at 1000 hours after accelerated weathering. Absent a showing that the recited MPMP concentration range is critical, optimizing result-effective variables is deemed routine optimization. The evidentiary reference ASTM Int’l is cited to show that the ASTM G155 standard practice was previously known as a test for accelerated weathering of materials; in particular for evaluating the UV stability of materials.
With respect to the “product-by-process” limitation reciting the preparation of MPMP, the composite taught by Shin, Liu, and Coleman comprises 1,2,2,6,6-pentamethylpiperidin-4-yl methacrylate (MPMP). Neither Shin nor Liu disclose the GC-MS spectrum for MPMP. However, Liu discloses MPMP having the identical chemical structure as that disclosed by applicant, and discloses purification of the compounds by vacuum distillation (page 251, left column). Techniques for purifying organic compounds are also generally known to the skilled artisan.
As noted in MPEP 2112.01, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” Additionally, MPEP 2112.01 notes that “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.
Absent evidence that the MPMP disclosed by Liu does not necessarily have the same GC-MS profile disclosed by Applicant, the MPMP disclosed by Liu is considered to read on the limitations of claim 20 by virtue of its identical chemical structure.
Also note MPEP 2144.04, which states: “[i]n the case of product-by-process claims, if a first prior art process is improved to enhance the purity of the product produced by the process, and if the purified product has no structural or functional difference from the products produced by other prior art processes, then the improvement in the first process that improves the purity of the product does not give rise to patentability.”
The purified MPMP disclosed in the instant application is not considered to have a structural or functional difference from the MPMP disclosed by Liu.
Please also note MPEP 2113, which states: "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
With respect to claim 17, the composite taught by Shin comprises a “second additive” including a low-profile additive, aluminum hydroxide, curing initiator, mineral pigment, glass fiber, and mold-releasing agent [Shin, Table 1].
With respect to claim 19, the composite taught by Shin comprises the MPMP in an amount ranging from 0% to 0.3%, which fails to read on the recited limitation of “2.2 phr”. However, differences in result-effective variables will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the value of the result-effective variable is critical. See MPEP 2144.05. In the instant case, the concentration of MPMP in the bulk molding compound used to produce the composite of claim 16 is considered a result-effective variable that impacts, for example, the UV stability of the composite. Absent a showing that the recited value is critical, optimizing result-effective variables is deemed routine optimization.
With respect to claims 21, absent any indication in the specification or claims of the characteristics excluded by the phrase “consisting essentially of”, the phrase is being interpreted as equivalent to “comprising”. Therefore, the composite taught by Shin, Liu, and Coleman, which reads on claim 16, is being interpreted as also reading on claim 21.
Therefore, in view of the foregoing, claims 16-17, 19, and 21 are obvious over Shin in view of Liu and Coleman.
Response to Arguments
Applicant's arguments filed 02/26/2026 have been fully considered but they are not persuasive.
Applicant repeats unpersuasive arguments which have been addressed previously (see Non-Final Rejection dated 10/29/2025, pages 11-14), the response to those arguments being incorporated by reference herein.
Applicant characterizes the rationale of the rejection (Remarks 02/26/2026, page 10) as substituting “the copolymer of HABP, BTEM, and APMP with 1,2,2,6,6-penamethylpiperidin-4-yl methacrylate”. Applicant’s argument has been fully considered but is not found persuasive. Applicant appears to be mischaracterizing or misunderstanding the rationale of the rejection. The rationale in the rejection relies on substituting APMP with MPMP. Claims 16 and 21 do not exclude HABP and BTEM. Therefore claims 16 and 21 remain rejected.
Applicant argues that the Office did not provide a reasoned evidentiary basis that the claimed MPMP product appears to be the same as the prior art MPMP product. Applicant’s argument has been fully considered but is not found persuasive. A molecule of MPMP produced by one process is chemically identical to a molecule of MPMP produced by a different process. Liu teaches purifying the MPMP by distillation. Claim 16 states that the MPMP is “purified” but no purity threshold is recited except for a reference to an IR spectrum (FIG. 4), which shows that MPMP produced by applicant’s process is identical to toll-manufactured MPMP produced by a prior art process.
Applicant argues that “[t]he Office attempts to discount Applicant’s evidence by asserting that FIG. 4 merely shows that MPPM [sic] produced by Applicant’s process is identical to the MPPM [sic] produced by a prior art process” (Remarks, page 12) Applicant’s argument is not persuasive.
First, FIG. 4 is not a GC-MS spectrum. Figure 4 is an IR spectrum. Second, the examiner’s characterization of FIG. 4 is consistent with the Specification’s characterization of FIG. 4. The caption of FIG. 4 states that it is an overlay of an MPMP produced by applicant’s method versus a toll manufactured MPMP produced by a prior art method. The specification’s own characterization of FIG. 4 is that the outputs (of both processes) are identical. FIG. 4 merely demonstrates that applicant’s method produces the same compound. The specification states (para. [0058]): “the reproducibility of the reaction scheme and purify of the reacted product are demonstrated by a GC-MS overlay indicating identical outputs for different products [sic].” Applicant’s statement that “this overlay supports Applicant’s position that the claimed purified product is not merely presumed identical to the prior art compound” is therefore unpersuasive.
Applicant annotated FIG. 4 to circle the region ranging between 2000-2200 (Remarks, page 13). Applicant asserts that this overlay “supports the Applicant’s position that the claimed purified product is not merely presumed identical to the prior art compound”. Applicant (i) has not identified how the circled region represents any practical or significant difference to the MPMP produced by the toll-manufactured process; (ii) the specification does not disclose this toll-manufactured process; and (iii) critically, Applicant’s characterization of FIG. 4 in the Remarks filed 02/26/2026 are in contradiction with the Specification’s own characterization of FIG. 4, which indicates “identical outputs”.
In the context of their argument that MPMP produced by applicant’s process is different from MPMP produced by a prior art process, applicant further argues that “The specification provides objective, comparative performance testing” (Remarks, page 12). Applicant points to the table at para. [0065] in the specification:
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Applicant characterizes the above table as evidence that “the application includes comparative weathering/gloss retention testing expressly including ‘commercially available UV stabilizer’ comparator categories” (Remarks, page 12) Applicant also states “when the commercially available product and [MPMP] produced by the claimed process are compared, the inventive [MPMP] is significantly better than a commercially available [MPMP]…We have shown both a material difference between the inventive [MPMP] and a commercially available product and a functional difference” (Remarks, page 14).
Applicant appears to be mischaracterizing the data reported in the above table. The “commercially available UV stabilizer” in the experiment above is not MPMP produced by a different process. The “commercially available UV stabilizer” in the above experiment is BASF Tinuvin 292®. See para. [0064] directly preceding the above experiment:
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As previously identified in the Non-Final Rejection dated 10/29/2025 (see page 13, para. 2-3 and footnote), Tinuvin 292® is a product consisting of a combination of a) bis (1,2,2,6,6-pentamethyl-4-piperidyl) sebacate & b) methyl 1,2,2,6,6 pentamethyl-4-piperidyl sebacate; and does not comprise any MPMP. See the BASF technical datasheet for Tinuvin® 292 enclosed. Therefore, applicant’s representation of the evidence in para. [0065] above as “objective evidence” that Applicant’s product MPMP differs from MPMP produced by a different process is unpersuasive.
Moreover, as noted in the rejection above, the prior art (Liu) teaches that MPMP, and APMP, are superior to Tinuvin® 292 (the “commercially available UV stabilizer used in Applicant’s comparisons). Therefore, applicant’s comparison data are consistent with the teachings of Liu, which indicate that APMP and MPMP provide a photo stabilizing effect and performed better than that of commercial Tinuvin 770® and Tinuvin 292® (Liu, page 252-253, “Photostabilizing effect of r-HALS”).
Therefore, in view of the foregoing arguments, the rejection under 35 U.S.C. 103 is still deemed proper and is maintained.
Allowable Subject Matter
Claim 22 would be allowed if the objection over the typographical error was resolved. While the closest prior art (Shin) teaches the copolymer of HABP, BTEM, and APMP as a UV stabilizer, and Liu teaches MPMP as a functional equivalent of APMP; the prior art fails to teach, suggest, or otherwise provide any motivation to (i) substitute APMP for MPMP and (ii) remove HABP and BTEM from Shin’s composition.
Conclusion
Claims 16-17, 19, and 21 are rejected. Claim 22 is objected to.
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 Kyle Nottingham whose telephone number is (571)270-0640. The examiner can normally be reached M-F from 10:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.N./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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