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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-13 in the reply filed on November 7, 2025 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 7, 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 1, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
The information disclosure statement (IDS) submitted on April 29, 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Claim Rejections - 35 USC § 103
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Inagaki et al. (JP2009269996, English translation provided for citations, hereinafter referred to as “Inagaki”) in view of Arita et al. (JP2008145713, English translation provided for citations, hereinafter referred to as “Arita”).
As to Claim 1: Inagaki teaches a polyacetal resin composition comprising a polyacetal resin, an olefin-based resin which may be polyethylene ([0006]), and carbon black ([0005]). Inagaki further teaches that the composition may comprise a curing additive which may be triphenylphosphine ([0035]), which reads on the claimed tertiary aromatic phosphine. Inagaki teaches an exemplary composition comprising the polyacetal resin (A) in an amount of 100 parts relative to 126.1 parts by weight of the total composition or 79% by mass, which is within the claimed range (Table 1, pg. 17 of foreign reference document, Example 7). Inagaki further teaches an exemplary composition where triphenylphosphine is present in an amount of 0.5 parts by mass relative to 126.1 parts by weight of the total composition or 0.39% by mass (Table 1, pg. 17 of foreign reference document, Example 7), which is within the claimed range for the sum of a tertiary aromatic phosphine and tertiary aromatic phosphine oxide (i.e., wherein the tertiary aromatic phosphine oxide is not required by the instant claim and 0.39% by mass + 0.0 % by mass = 0.39% by mass).
Inagaki is silent towards wherein the composition comprises a reaction product of oxazoline and carbon black as represented by the claimed formula (1).
Arita teaches a polymer-grafted fine particles which may be carbon black ([0029]). Arita further teaches that the polymer-grafted microparticles comprise a graft polymer comprising a segment (A) having a group reactive to a functional group on the surface of a microparticle ([0113]), wherein segment (A) may be an oxazoline group ([0027]) which may be isopropenyl oxazoline ([0247]) the polymerized product of which forms the claimed a1 unit, and a segment (B) having a different structure from that of segment (A), wherein said segment (B) may be polystyrene ([0121]), which reads on the claimed PM. Arita further teaches that the carbon black may be surface treated by reaction with a graft polymer having an oxazoline group through the mechanism shown on pg. 17 of the foreign reference document:
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the resultant structure reads on the claimed reaction product of an oxazoline group-containing polymer represented by formula (1) having a b1 unit. Inagaki is considered analogous art because it is directed towards the same field of endeavor, namely, conductive polyacetal resin compositions. Arita is considered analogous art because it is directed towards the same field of endeavor, namely, polymer grafting/functionalization of carbon black and also reasonably pertinent to the problem of achieving adequate dispersibility of carbon black. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a polymer-grafted carbon black, such as that of Arita which reads on the claimed formula (1), as an alternative to the carbon black component of Inagaki and the motivation would have been that Arita teaches that surface-grafting carbon black in such a manner imparts improved dispersibility, rheological properties, and electrical properties (i.e., conductivity) to said carbon black ([0067] and [0119]).
As to Claim 2: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki is silent towards wherein the composition comprises a reaction product of oxazoline and carbon black as represented by the claimed formula (1).
Arita teaches components which correspond to the claimed a1 and b1 units (see above), but does not teach a value for the relative amounts of unreacted oxazoline in the polymer chain (a1) or oxazolines having undergone reaction with carbon black (b1).
However, Arita does teach that the segment (A) which may be an oxazoline group ([0027]) such as isopropenyl oxazoline ([0247]) may have a molecular weight within the range of 300 to 100,000 g/mol ([0147]). Accounting for the repeat unit weight of the exemplary isopropenyl oxazoline (111.14 g/mol), this yields a degree of polymerization of segment (A) of about 2 to about 900. This value is construed to represent the maximum number of oxazoline units present before reaction with a carbon black and thus correspond to the claimed a1 + b1 (i.e., the sum of unreacted oxazoline units (a1) and oxazoline units having undergone reaction with organic functional groups present on the surface of carbon black (b1), as understood from the instant specification para. [0019]-[0021]). This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Arita suggests, that the overlapping portion is a useable range for the maximum number of oxazoline units present before reaction with a carbon black (correspond to the claimed a1 + b1 (i.e., the sum of unreacted oxazoline units (a1) and oxazoline units having undergone reaction with organic functional groups present on the surface of carbon black, as understood from the instant specification para. [0019]-[0021])) such that grafting efficiency is maximized ([0147]).
Arita does not explicitly teach the amount of functional groups per chain that have undergone reaction with carbon black (i.e., corresponding to the claimed b1).
However, a person having ordinary skill in the art at the time of the invention would have recognized that the amount of oxazoline/carbon black adduct reaction product per chain (corresponding to the claimed b1) would control the grafting density of oxazoline at the surface of carbon black and the properties resulting therefrom (improved dispersibility ([0067] and [0119])). As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05(II). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the amount of oxazoline functional groups per chain having reacted with carbon black through routine experimentation, and the motivation to have done so would have been, as Arita suggests, to ensure a sufficient number of reactive sites on the carbon black are functionalized to form a surface coating while also maintaining a sufficiently low number of reacted functional groups per polymer chain to prohibit macroscopic gelation ([0188]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a polymer-grafted carbon black, such as that of Arita which reads on the claimed formula (1), as an alternative to the carbon black component of Inagaki and the motivation would have been that Arita teaches that surface-grafting carbon black in such a manner imparts improved dispersibility, rheological properties, and electrical properties (i.e., conductivity) to said carbon black ([0067] and [0119]).
As to Claim 3: Inagaki and Arita teach the composition of claim 1 (supra).
Arita teaches a polymer-grafted fine particles which may be carbon black ([0029]). Arita further teaches that the polymer-grafted microparticles comprise a graft polymer comprising a segment (A) having a group reactive to a functional group on the surface of a microparticle ([0113]), wherein segment (A) may be an oxazoline group ([0027]), and a segment (B) having a different structure from that of segment (A), wherein said segment (B) may be polystyrene ([0121]).
As to Claim 4: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki further teaches that the triphenylphosphine component may be present in an amount of 0.05 to 10 parts by mass per 100 parts by mass of the polyacetal resin ([0035]). While Inagaki does not teach an exemplary composition comprising the triphenylphosphine component in an amount of 0.3% by mass or less, a person having ordinary skill in the art would recognize the broader range for the triphenylphosphine component as a usable amount for the same, which would yield an overlapping amount of triphenylphosphine with the claimed range. For example, the broader range disclosed by Inagaki at para. [0035] supports an amount of 0.1 parts by weight of triphenylphosphine. Using such an amount within Example 7 of Inagaki yields a mass% of triphenylphosphine of:
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which is within the claimed range (Table 1, pg. 17 of foreign reference document, Example 7). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Inagaki suggests, that the overlapping portion is a useable range for an amount of triphenylphosphine curing additive for use in polyacetal resin compositions.
As to Claim 5: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki further teaches an exemplary composition where the olefin resin which may be polyethylene (D) ([0006]) is present in an amount of 10 parts by mass relative to 126.1 parts by weight of the total composition or 7.9% by mass, which is within the claimed range (Table 1, pg. 17 of foreign reference document, Example 7).
As to Claim 6: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki further teaches an exemplary composition where the carbon black component (B) is present in an amount of 9 parts by mass relative to 126.1 parts by weight of the total composition or 7.1% by mass, which is within the claimed range (Table 1, pg. 17 of foreign reference document, Example 7).
As to Claim 7: Inagaki and Arita teach the composition of claim 1 (supra).
Claim 1, from which claim 7 depends does not select or require a tertiary aromatic phosphine oxide. Accordingly, Inagaki teaches that the composition comprises an aromatic phosphine, which reads on the alternative to the tertiary aromatic phosphine oxide recited in claim 1.
As to Claim 8: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki further teaches that the carbon black has a dibutyl phthalate oil absorption of 350 mg/100 g or more ([0005]), which is within the claimed range.
As to Claim 9: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki further teaches that the composition may comprise a fatty acid component ([0005]).
As to Claim 10: Inagaki and Arita teach the composition of claim 1 (supra).
Inagaki further teaches that the composition may comprise a fatty acid component ([0005]) which may be cetyl myristate ([0030]).
As to Claim 11: Inagaki and Arita teach the composition of claim 9 (supra).
Inagaki further teaches an exemplary composition wherein the cetyl myristate component (E) is present in an amount of 3 parts by mass relative to 126.1 parts by weight of the total composition or 2.3% by mass, which is within the claimed range (Table 1, pg. 17 of foreign reference document, Example 7).
As to Claim 12: Inagaki and Arita teach the composition of claim 9 (supra).
Inagaki further teaches that the composition comprises graphite ([0005]).
As to Claim 13: Inagaki and Arita teach the composition of claim 12 (supra).
Inagaki further teaches an exemplary composition wherein the graphite component (C) is present in an amount of 3.9 parts by mass relative to 127.5 parts by weight of the total composition or % by mass, which is within the claimed range (Table 1, pg. 17 of foreign reference document, Example 8).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767