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 .
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.
Claim 3 is 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. The limitation “about” is indefinite. The metes and bounds are unclear.
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.
Claim(s) 1-10 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) in view of Hermann et al. (3,519,595) and Topoulos (WO 2004/092274).
Regarding claims 1-3, 5-10, 14-16, and 18: Naik et al. teach a flame retardant polymer composition comprising 56 wt% polyamide 66, 24 wt% glass fibers, 13 wt% AlPi (diethyl aluminum phosphate, Exolit OP 1230), and 7 wt% Safire 200 (melamine poly(aluminum phosphate), Safire 400 (melamine poly(zinc phosphate), or Safire 600 (melamine poly(magnesium phosphate) (2.1 materials; Table 1). The total amount of the flame retardant system is 20 wt% (Table 1).
Naik et al. fail to teach a stabilizer.
However, Hermann et al. teach that adding Cu(I)I-2-triphenylphosphine (iodobis(triphenylphosphino) copper) to a polyamide improves the stability of the polyamide (Column 1; Example 3; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iodobis(triphenylphosphino) copper as taught by Hermann et al. to the composition of Naik et al. to improve the stability of the polyamide.
Topoulos teaches adding Irgafos P-EPQ (antioxidant of claim 8) to a polyamide composition provides stability during processing (page 13, lines 20-21; Examples; Tables 1-2). Irgafos P-EPQ has the following structure:
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It would have been obvious to one of ordinary skill in the art before the ffective filing date of the claimed invention to add Irgafos P-EPQ as taught by Topoulos to the composition of Naik et al. to improve stability during processing of the composition.
Since the composition is the same as claimed it will possess the claimed V0 rating and comparative tracking index. The courts have stated 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 4: Naik et al. fail to teach a light stabilizer.
However, Topoulos teaches adding a light stabilizer to a polyamide composition (page 13, lines 17-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a light stabilizer as taught by Naik et al. to the polyamide composition of Naik et al. to improve the stability of the composition.
Regarding claim 17: The composition is free of zinc borate (Table 1).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) Hermann et al. (3,519,595), and Topoulos (WO 2004/092274) as applied to claim 1 above further in view of Endtner et al. (2016/0177060).
Naik et al. fail to teach silicon dioxide.
However, Endtner et al. teach adding 0.01 to 5 wt% [0074] of silicon dioxide as a nucleating agent [0198-0199; 0204] to a polyamide composition.
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to add 0.01 to 5 wt% of silicon dioxide as taught by Endtner et al. to the polyamide composition of Naik et al. to speed up crystallization of the polyamide.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662), Hermann et al. (3,519,595) and Topoulos (WO 2004/092274) as applied to claim 1 above further in view of Watanabe et al. (JP 2004-211083).
Naik et al. fail to teach a lubricant.
However, Watanabe et al. teach adding a partially saponified ester wax of montanic acid (Licowax E or Licowax OP) to reduce mold contamination of a polyamide composition [0025; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Licowax E or Licowax OP as taught by Watanabe et al. to the polyamide composition of Naik et al. to reduce mold contamination.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662), Hermann et al. (3,519,595) and Topoulos (WO 2004/092274) as applied to claim 1 above further in view of Immel et al. (2015/0148468).
Naik et al. fail to teach a semi-aromatic or aromatic polyamide.
However, Immel et al. teach adding a semi-aromatic polyamide [0031] to a polyamide 66 composition to improve resistance to heat distortion [0152].
It would have ben obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a semi-aromatic polyamide as taught by Immel et al. to the composition of Naik et al. to improve the resistance to heat distortion.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662), Hermann et al. (3,519,595) and Topoulos (WO 2004/092274) as applied to claim 1 above further in view of Uchida et al. (2009/0098325).
Naik et al. teach 24 wt% glass fibers (2.1 materials; Table 1), which is very close to 25 wt%”. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Naik et al. is silent on the fiber length.
However, Uchida et al. teach glass fibers for a polyamide resin composition with a fiber length of 0.05 to 5 mm [0115].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a glass fiber length of 0.05 to 5 mm as taught by Uchida et al. as the glass fiber length of the fibers of Naik et al. to use an art tested glass fiber. It is a simple substitution of one known element for another to obtain predictable results.
Claim(s) 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) in view of Hermann et al. (3,519,595) and Topoulos (WO 2004/092274).
Naik et al. teach a flame retardant polymer composition comprising 56 wt% polyamide 66, 24 wt% glass fibers, 13 wt% AlPi (diethyl aluminum phosphate, Exolit OP 1230), and 7 wt% Safire 200 (melamine poly(aluminum phosphate), Safire 400 (melamine poly(zinc phosphate), or Safire 600 (melamine poly(magnesium phosphate) (2.1 materials; Table 1). The total amount of the flame retardant system is 20 wt% (Table 1).
Naik et al. fail to teach a stabilizer.
However, Hermann et al. teach that adding Cu(I)I-2-triphenylphosphine (iodobis(triphenylphosphino) copper) to a polyamide improves the stability of the polyamide (Column 1; Example 3; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iodobis(triphenylphosphino) copper as taught by Hermann et al. to the composition of Naik et al. to improve the stability of the polyamide.
Topoulos teaches adding Irgafos P-EPQ (antioxidant of claim 8) to a polyamide composition provides stability during processing (page 13, lines 20-21; Examples; Tables 1-2).
It would have been obvious to one of ordinary skill in the art before the ffective filing date of the claimed invention to add Irgafos P-EPQ as taught by Topoulos to the composition of Naik et al. to improve stability during processing of the composition.
Since the composition is the same as claimed it will possess the claimed comparative tracking index. The courts have stated 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) in view of Hermann et al. (3,519,595) and Topoulos (WO 2004/092274).
Naik et al. teach a flame retardant polymer composition comprising 56 wt% polyamide 66, 24 wt% glass fibers, 13 wt% AlPi (diethyl aluminum phosphate, Exolit OP 1230), and 7 wt% Safire 200 (melamine poly(aluminum phosphate), Safire 400 (melamine poly(zinc phosphate), or Safire 600 (melamine poly(magnesium phosphate) (2.1 materials; Table 1). The total amount of the flame retardant system is 20 wt% (Table 1).
Naik et al. fail to teach a stabilizer.
However, Hermann et al. teach that adding Cu(I)I-2-triphenylphosphine (iodobis(triphenylphosphino) copper) to a polyamide improves the stability of the polyamide (Column 1; Example 3; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iodobis(triphenylphosphino) copper as taught by Hermann et al. to the composition of Naik et al. to improve the stability of the polyamide.
Topoulos teaches adding Irgafos P-EPQ (antioxidant of claim 8) to a polyamide composition provides stability during processing (page 13, lines 20-21; Examples; Tables 1-2).
It would have been obvious to one of ordinary skill in the art before the ffective filing date of the claimed invention to add Irgafos P-EPQ as taught by Topoulos to the composition of Naik et al. to improve stability during processing of the composition.
Since the composition is the same as claimed it will possess the claimed notched Charpy impact strength and tensile strength. The courts have stated 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
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 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18/312134. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of copending Application No. 18/079030. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The applicant has not filed any arguments. Applicant's lack of arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
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.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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