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 .
Election/Restrictions
Applicant’s election with traverse of species of magnesium oxide filed on 3/9/2026 is acknowledged. The traversal is on the ground(s) that claim 15 encompasses an embodiment with magnesium hydroxide in combination with magnesium oxide, the argument is not persuasive because 1) if species magnesium oxide is elected, then claim 14 is examined which excludes the species of a combination of magnesium hydroxide with magnesium oxide; 2) if species magnesium hydroxide is elected, then claim 15 is examined which automatically includes the species of a combination of magnesium hydroxide with a metal oxide when species magnesium hydroxide is found allowable; 3) moreover, claim 15 recites “such as” which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The limitation was interpreted as those limitations are not part of the claim invention when Non-Final Rejection was issued.
The requirement is still deemed proper and is therefore made FINAL.
Response to Amendment
The amendment of claims 1-14, 16-20 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 3/9/2026. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
Claim 20 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 pre-AIA the applicant regards as the invention.
Claim 20 recites “an acid resistance of greater than 30 cycles to maintain 75% tensile stress and greater than 10 cycles to maintain 35% tensile stress”. What does it mean? It is noted that GM test GMW 18052 is not a published standard. What does “maintain xx tensile stress” mean? If the original strength is 100% tensile stress, shouldn’t it be “an acid resistance of greater than 10 cycles to maintain 75% tensile stress and greater than 30 cycles to maintain 35% tensile stress”?
Claim Rejections - 35 USC § 103
Claims 1-14, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al (US 2021/0095112) in view of Gelbin (US 6,277,907).
Claim 1, 7-8, 10, 12-14, 16-17: Arai teaches a composition comprising a polyacetal copolymer, a hindered phenol antioxidant Irganox 1010, magnesium oxide, polyalkylene glycol (examples). Arai teaches the composition may further comprises other stabilizers [0047]. The polyacetal copolymer has a content of hemiformal end group of 0.8 mmol/kg or less. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Arai does not teach a combination of stabilizer.
However Gelbin teaches a stabilizer mixture shows improved oxidative stabilization for thermoplastic resins compared to using a hindered phenol antioxidant alone (1:5-10, 3:20-35). The stabilizer mixture comprises a secondary amine antioxidant, a hindered phenol antioxidant and a thioether (3:50-65). The thermoplastic resin can be polyacetal (claim 1). The secondary amine antioxidant is 4,4'-bis(.alpha.,.alpha.-dimethylbenzyl)diphenylamine (claim 4). The hindered phenol antioxidant is tetrakis{methylene(3,5-di-t-butyl-4-hydroxy-hydrocinnamate)}methane (claim 17). The thioether is distearylthiodipropionate (claim 19). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize the stabilizer mixture of Gelbin in the composition of Arai to improve oxidative stabilization.
Claim 2: the polyacetal copolymer has a content of hemiformal end group of 0.8 mmol/kg or less. It is noted that the limitation “about 0.85” is interpreted as ±5%, which is 0.8075-0.8925. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim 3-6, 9, 11: Gelbin teaches the ratio of hindered phenol to secondary amine is 10:1 to 1:10, and the ratio of secondary amine to thioether is 10:1 to 1:10. The combined amount of the mixture is 0.5-5 wt% (12:55-13:7). The ratios overlap the claimed range.
Claim 18: the composition is used in a conventional molding method such as injection molding etc. [0049]. A lubricant is a known additive for composition for such an application.
Claim 19: the melt index of the polyacetal is 0.5-80 g/10min [0020]. The amount of polyacetal can be 92wt% (examples).
Claim 20: Arai is silent with respect to the properties of the composition. However, the combination of teachings from Arai and Gelbin have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding unexpected results, the data have been fully considered, however, they are insufficient to establish unexpected results given that 1) it is unclear if the hemiformal content difference is the only difference for the polyoxymethylene copolymers in samples 1-2; 2) the data is not reasonably commensurate in scope with the scope of claims. The inventive data only contains a polyoxymethylene copolymer having hemiformal end groups of 0.88 as compared to the claimed greater than 0.8, and the inventive data only contains specific compounds of each components as compared to the claimed genus. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WENWEN CAI/
Primary Examiner, Art Unit 1763
Prosecution Insights