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 .
Response to Amendment
1. Applicant’s amendment and accompanying remarks filed 12/29/25 have been fully considered and entered. Claims 1 and 8-10 have been amended as requested. Claim 7 has been canceled. Applicant’s amendments are not found sufficient to overcome the cited prior art of record and Applicant’s arguments are not found persuasive of patentability.
Response to Arguments
2. Applicants argue a lack of motivation to combine references on the grounds that while the secondary reference of Uekusa et al., US 2012/0220728 teach the claimed nucleating agent of 2,2-methylenebis(4,6-di-t-butylphenyl) sodium phosphate (Uekusa et al., title, abstract, paragraph 0262), the resins used in the examples of Uekusa all have melting points of 250 °C or lower, and no description is provided regarding their thermal decomposition temperatures. Accordingly, Applicants submit that Uekusa et al., neither discloses nor suggests the requirement and effect of the claimed invention; namely, using a resin (A) having a high melting point and thus requiring a high molding temperature in combination with an aromatic cyclic phosphate ester represented by formula (1) as a foaming nucleating agent (B).
In response, it is respectfully pointed out that the primary reference of Shiotsuki et al., was relied upon to teach a resin composition comprising a fluororesin (A) and a filler (X) and a nucleating agent (B) (title, abstract, 0057 and 0063-0065). Said resin can include a fluororesin but can also include the claimed thermoplastic resins of polyetheretherketones (PEEK) and polyphenylene sulfide (PPS) resins (paragraph 0078). The Examiner is of the position that the (PEEK) resin which is a species of PAEK type resins and/or a PPS resin would have the claimed dielectric constant value, pyrolosis temperature and melting point temperatures as set forth in claims 1,2 and 4. Applicants are invited to prove otherwise. The secondary reference of Uekusa et al., was relied upon to teach a resin composition that can be foamed and molded comprising the claimed nucleating agent of 2,2-methylenebis(4,6-di-t-butylphenyl) sodium phosphate (title, abstract, paragraph 0262). Uekusa et al., teach that nucleating agents further improve moldability (paragraphs 0262 and 0393). The Examiner maintains that based on the combined disclosures of Shiotsuki et al., and Uekusa et al., a person of ordinary skill in the art would recognize that the nucleating agent of Uekusa et al., can be used as the nucleating agent in the composition of Shiotsuki et al., to further improve the moldability. Uekusa et al., was not relied upon to teach the claimed resin (A). It is also noted that Applicants do not claim that resin (A) has a “high” melting point and thus requiring a “high molding temperature”. The Examiner is of the position that Applicants arguments are not commensurate in scope with the claimed subject matter. Further, the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA)
As such, the Examiner maintains that it would be obvious to a person of ordinary skill in the art to formulate the resin composition of Shiotsuki et al., with the nucleating agent of 2,2-methylenebis(4,6-di-t-butylphenyl) sodium phosphate as taught by Uekusa et al. The modification involves the mere substitution of one nucleating agent with another nucleating to further improve moldability and would yield a predictable variation whose application is well within the skill of the art.
For these reasons, the Examiner maintains that the combination of cited prior art renders the rejected claims obvious.
Claim Rejections - 35 USC § 103
3. 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.
4. Claim(s) 1-6 and 8-16 stand rejected under 35 U.S.C. 103 as being unpatentable over Shiotsuki et al., US 2004/0198886 in view of Uekusa et al., US 2012/0220728.
The published patent application issued to Shiotsuki et al., teach a resin composition comprising a fluororesin (A) and a filler (X) and a nucleating agent (B) (title, abstract, 0057 and 0063-0065). Said resin can include a fluororesin but can also include the claimed thermoplastic resins of polyetheretherketones (PEEK) and polyphenylene sulfide (PPS) resins (paragraph 0078). The Examiner is of the position that the (PEEK) resin which is a species of PAEK type resins and/or a PPS resin would have the claimed dielectric constant value, pyrolosis temperature and melting point temperatures as set forth in claims 1,2 and 4. Applicants are invited to prove otherwise. Shiotsuki et al., further teach that other components may also be a sulfonic or phosphonic acid or a salt thereof, and such acid or salt includes free acid and salt forms of totally or partially fluorinated aliphatic sulfonic and phosphonic acids optionally having cycloalkyl groups and/or ether oxygens as well as free acid and salt forms of aromatic sulfonic and phosphonic acids whose aromatic ring may optionally have a substituted alkyl, fluorine-containing alkyl and/or hydroxyl group(s) (paragraph 0081). Shiotsuki et al., teach that the foamed composition can be used as a covering to insulate wiring (paragraph 0147).
With regard to the claimed phosphoric acid ester and salts and complexes as set forth in claims 1 and 6-10, Shiotsuki et al., teach adding nucleating agents and phosphonic acid and salts thereof, but fails to explicitly teach the claimed phosphoric acid ester and salts and complexes.
The published patent application issued to Uekusa et al., teach a resin composition that can be foamed and molded comprising the claimed nucleating agent of 2,2-methylenebis(4,6-di-t-butylphenyl) sodium phosphate (title, abstract, paragraph 0262). Uekusa et al., teach that nucleating agents further improve moldability (paragraphs 0262 and 0393).
It would be obvious to a person of ordinary skill in the art to formulate the resin composition of Shiotsuki et al., with the nucleating agent of 2,2-methylenebis(4,6-di-t-butylphenyl) sodium phosphate as taught by Uekusa et al. The modification involves the mere substitution of one nucleating agent with another nucleating to further improve moldability and would yield a predictable variation whose application is well within the skill of the art.
With regard to the claimed molding ratio set forth in claims 12 and 14, the combination of cited prior art does not explicitly teach this limitation. The Examiner is of the position that absent unexpected results it would be obvious to optimize the foaming ratio of the molded body and/or covering as function of desired final intended use. It has been held that the determination of the optimum or workable ranges of said variable that might be characterized as routine experimentation is not patentable. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)
Double Patenting
5. 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 1-16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 14, 17, 24 and 25 of co-pending Application No. 18/158748(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is encompassed by subject matter of co-pending Application No. 18/158748.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
6. THIS ACTION IS MADE FINAL. 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 LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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