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
Applicant’s Request for Continued Examination filed on 2/11/2026 is acknowledged. The applicants amended instant claims to include content of second filler, flow improver and HDPE. Claims 1-11, 14, 15, 17-20 are pending. Claims 19 and 20 are withdrawn from examination.
Claim Interpretation
Independent claim 1 requires presence of a first filler which is a masterbatch comprising a thermoplastic resin and carbon material. After careful reconsideration of this limitation following is concluded. Masterbatch, as it is accepted in the art is a concentrate of a filler and polymer. Such master batches are added for various reasons. However, one of the most important reasons is to improve dispersion of the filler within the base resin or polymeric matrix. Consequently, when polymer filled with filler is added to the base polymer and once the composite material is made (composite material is claimed) the first filler is not really a filler as the thermoplastic resin (which can be the same as base resin) is melt blended with base resin and carbon material. The composite is therefore a blend of two polymers with carbon material.
Term carbon material, in its broadest reasonable interpretation may include anything that comprises carbon. This includes carbon containing fillers as well as carbon containing polymers. Scope of the claim is very broad and will be treated as such.
Response to Arguments
In their response dated 2/11/2026 the applicants argued following with respect to the rejection:
Dowe, while utilizing HDPE as impact modifier fails to disclose the amount of it.
Response: The amount was not required during FOAM, and another reference was utilized to teach the amount. Additionally, the claims do not identify HDPE as impact modifier. If they did such is viewed as property and compounds having exactly the same chemical structure are inseparable from their properties.
Dowe teaches use of PVOH but fails to specify the amount.
Response: Similarly with the HDPE, content of PVOH was not disclosed in the independent claims and secondary reference was utilized to meet this limitation.
The applicants further emphasized the use of masterbatch.
Response: Applicants are directed to the claim interpretation above where in the composite the recitation of masterbatch under broadest reasonable interpretation is viewed as presence of another polymer with carbon containing material that can be anything containing carbon. The masterbatch once in a composite is not exactly considered a filler based on the accepted definition of masterbatch itself.
In summary, the rejections of record will be restated to reflect amendments to the prior art. If necessary, additional references will be provided to meet the claims.
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 are
Claims 1-11, 14, 15, 17 and 18 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.
Instant claim 1 recites “high density polyethylene resin” followed by “HMWPE” in parenthesis. The HDPE and HMWPE are not the same. The two polymers differ in the length of the molecular chain. Specifically, HMWPE has longer chains which allows for better toughness and impact resistance. HDPE has lower molecular chains which provides flexibility. The claim is indefinite because it is not clear as to which polyethylene the applicants are claiming.
To further advance the prosecution of the application the examiner will continue to interpret the claims as requiring HDPE, however applicants do need to amend the claims. Easiest amendment would be removing the abbreviation.
Dependent claims inherit the deficiency of the independent claim 1.
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9, 11, 14, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto (WO 2016/0618101; US 2017/0306126 is used as translation) in view of Liao (WO 2018/178128, US 2020/0032010 is utilized for ease of citing paragraphs relied upon).
With respect to claims 1, 7-9 and 11, Miyamoto discloses polyamide composition utilized to make a molded article. The composition comprises following (see claim 1):
Polyamide which meets limitation of base resin,
Carbon black which meets the limitation of carbon material,
Carbon fiber
Glass or talc filler [0086].
Fluidity improver (claim 8)
HDPE [0088]
The flow improver of Miyamoto is utilized in amount of 0.02-10% by weight, preferably 0.08-6% by weight [0084].
Another additive of Miyamoto includes coupling agents [0086] which would act as adhesion promoters between fillers such as carbon fiber and polymeric matrix. Consequently, the claims encompass modification of the carbon fiber in situ.
Consistent with claim interpretation above the masterbatch is interpreted as being the same polymer as base resin, which in this case is polyamide resulting in homogeneous composition with well dispersed carbon black.
Miyamoto’s composition which has good fluidity and impact resistance; however, the content of impact modifier and second filler is not explicitly mentioned.
In the same field of endeavor Liao discloses composition utilized to make molded article having good mechanical properties. The composition is also based on thermoplastic resin with polyamide being preferred and having excellent impact resistance.
To achieve this type of molding material Liao utilizes fiber reinforcement also discloses use of fibers and filler [0097]. Fibers of Liao also include glass fibers and carbon fibers [0026] which is exactly what is disclosed in Miyamoto.
Fillers of Liao include mineral fillers (such as those in Miyamoto) [0031] as well as glass beads, hollow glass beads and titania. Titania is utilized in 2-10% by weight which would also extend to other fillers [0042]. Inorganic fillers of Liao further meet instant claims 7 and 8. The shape of hollow glass beads or glass beads themselves meet the limitation of instant claim 11. LDS additives include metals such as copper or nickel [0039] and meet requirement of instant claim 9.
Both Miyamoto and Liao disclose reinforcing polyamide composition which require good mechanical properties and impact resistance. Both inventions make molded articles and such the knowledge of one having ordinary skill in the art would require not only understanding of polyamides but how different additives influences flowability, moldability and final mechanical properties based on the intended use.
In the light of the above disclosures, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize impact modifiers and fillers of Miyamoto in the amount suggested by Liao and thereby obtain the claimed invention. This is rendered even more obvious because Liao states that the content of these additives should be used in limited amount so that mechanical properties will not be adversely affected.
With respect to claim 2, as it was mentioned above, the content of polyamide as a base resin and the content of the polyamide in masterbatch is cumulative amount because under broadest reasonable interpretation the two polymers can be the same. This is also what is disclosed in Miyamoto [0047, 0085]. The total content of polyamide is in a range of 70-100% by weight [0084]. Examples show the polyamide content as low as 29.72% (see Table 1). This includes the content of the polyamide from the masterbatch.
With respect to claim 3, claim 6 of Miyamoto discloses preferred polyamides as polyamide 6 and polyamide 66. Claim 5 of Miyamoto teaches also polyamide 6/66.
With respect to claim 4, the carbon black utilized in Miyamoto include Ketjen black [0126], carbon black [0125] or acetylene black [0049].
With respect to claims 5 and 6, Miyamoto teaches that the carbon material can be added into the polymer composition as a masterbatch but does not provide any details of the masterbatch itself.
Liao further supplements this by indicating that carbon black can be added in a masterbatch wherein polymer is polyamide 6 and the content of carbon black is 20% [0063]. The content of the masterbatch itself will depend on the required content of the carbon black. Since the overall content of the polyamide 6 overlaps with the content of the instant invention, it also includes polyamide 6 of the masterbatch.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the content of the carbon black in the masterbatch as specified in Liao and thereby obtain the claimed invention. Such a use of masterbatch would improve dispersion of the carbon black within polymeric matrix.
With respect to claim 14, the content of carbon fibers in the composition of Miyamoto is 7.5 to 25% by weight (claim 1).
With respect to claim 17, Miyamoto discloses use of additives, which include heat stabilizers, antioxidants, UV stabilizers, release agents, tackifiers (lubricants) and the like [0086]
With respect to claim 18, which depends on claim 1, while Miyamoto does not recite the physical properties of the instant claim 18 such will be obvious for following reasons:
According to the claims, for Miyamoto to be able to make composition having specific flow index, tensile strength, impact resistance, and EM shielding efficiency, the only components required are: base resin in any amount, masterbatch with any carbon material in any amount, carbon fiber in any amount, any type of second filler in amount of 2-8 % by weight, any type of flow improver in an amount of 2-4 % by weight and HDPE in amount of 2-4% by weight. Miyamoto as modified by Liao met all the required limitations of claim 1.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount as summarized above. Therefore, the claimed effects and physical properties of claim 18 would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto and Liao as applied to claims 1-9, 11, 14, 17 and 18 above, and further in view of Umetsu (6,121,388).
Discussion of Miyamoto and Liao from paragraph 1 of this office action is incorporated here by reference.
With respect to claim 10, Miyamoto discloses several different fillers which affect mechanical properties however, does not fully disclose all possible list which is supplemented by Liao. While Liao does teach inorganic filler, he does not explicitly teach silicon carbide.
Umetsu discloses another polyamide composition for molded articles which require fillers such as glass fibers, carbon fibers, glass beads, glass balloons (hollow beads) as well as silicon carbide (col. 9, l. 50-53).
Silicon carbide is well known for its extreme hardness and high thermal conductivity. When combined with polyamides it enhances its wear resistance, thermal stability and mechanical strength, consequently, silicon carbide with its improvement of mechanical strength is functionally equivalent to the fillers disclosed in Miyamoto and Liao.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize silicon carbide of Umetsu as the filler and thereby obtain the claimed invention. Utilizing silicon carbide would increase the mechanical strength of the polyamide composite.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto and Liao as applied to claims 1-9, 11, 14, 17 and 18 above, and further in view of Dowe (US 2006/0182916).
The discussion of Miyamoto and Liao from paragraph 1 of this office action is incorporated here by reference.
Miyamoto discloses flow improving compounds which include polyhydric alcohols. Polyhydric alcohols include polyhydric alcohols as well as ester derivatives thereof. These alcohols include monomers and polymers.
With respect to claim 15, while the polyhydric alcohols of Miyamoto meet instant claim the reference fails to include polyvinyl alcohol.
Dowe discloses use of polyvinyl alcohol, which is a polyhydric alcohol which can be used as flow improver. Polyvinyl alcohol can also serve as mold release agent, which allows removal of mold from the mold cavity in addition to improving flow of the composition.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the polyvinyl alcohol of Dowe as the polyhydric alcohol of Miyamoto and thereby obtain the claimed invention. Such modification would still improve flow properties of the composition because compounds (PVOH) of the same chemical structure have mutually exclusive properties.
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 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7 of copending Application No. 18/202,574 (‘574). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘574 discloses a polyamide composition comprising polyamide, carbon material (aliphatic amine), inorganic filler, HDPE and polyvinyl alcohol flow improver. Wherein the amount of HDPE and PVOH overlaps with amounts of the instant claim 1.
Claim 4 of the ‘574 teaches that fillers are glass fiber, carbon fiber, mica, talc in any amount. Carbon fiber meets instant carbon fiber, non-carbon fillers are also in any amount. Fillers meet limitations of instant claim 7.
Claim 7 of 574 discloses use of masterbatch, which is not defined, however per MPEP definition of masterbatch can be consulted in specification. Consistent with definition of master batch in the specification starting [0044] masterbatch comprises polyamide and carbon black.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 25, 2026
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