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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/20/2026 has been entered.
Claim Interpretation
Claim 7 requires inorganic micro-nano powder, which comprises talc. Specification para [0022] is utilized to interpret claim 7, where it is noted that talc has particle size of less than 2 microns. Any of the required inorganic powders with particle size of less than 2 microns, is interpreted to satisfy the claimed requirement.
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 1-4 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. US 2020/0239683 A1.
Liao teaches polyethylene terephthalate (PET) composite material which is suitable for manufacturing injection molded articles (Abstract).
Regarding claims 1 and 2, Liao teaches (see reference claims 1 and 2) a PET composite which comprises: PET resin, an antioxidant, a processing aid (which corresponds to applicant’s lubricating agent), a nucleating agent and an inorganic filler. Liao teaches organic nucleating agent which can be a long-chain linear saturated sodium carboxylate (reference claim 6, and para [0026]), in an amount of 0.5-2 wt%. Instant specification paras [0022] and [0025] recognizes talc as both an inorganic nucleating agent and inorganic reinforcing material. Lao notes that the inorganic filler can be selected to be talc, which meets the claimed requirement. Liao discloses the amount of inorganic filler to be 3-10 wt%, which overlaps the claimed requirement (and instant claim 2). In the case where the 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).
Liao does not specify the use of equal amounts of an organic nucleating agent and inorganic nucleating agent, but notes that modification and variations are within the scope of the invention (para [0045]). It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized 2 wt% of organic nucleating agent and 10 wt% of talc, where 2 wt% talc serves the dual role of role of inorganic reinforcing material and inorganic nucleating agent for the same application of creating injection molded PET based articles as that of instant specification (para [0001]), and result in the required ratio 1:1 of the organic and inorganic nucleating agents. This would lead to an effective amount of nucleating agent of 4wt% which is slightly shy of the required limitation. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the polyester based composition disclosed, the close range of the prior art’s nucleating agent is sufficient to support an obviousness rejection.
Applicant’s attention is also directed to: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 A.
Regarding claim 3, Liao teaches (reference claim 1) a virgin PET with intrinsic viscosity of 0.65-0.9 dL/g, which meets the claimed requirement.
Regarding claim 4, Liao teaches example 2 (page 3, Table 1) with 87.2 wt% PET, meeting the claimed requirement.
Regarding claim 8, Liao teaches processing aid (applicant’s lubricant) polyethylene wax which can be present in an amount 0.1-1 wt%, which meets the claimed requirement (reference claims 1 and 5).
Regarding claim 9, Liao teaches a phenolic antioxidant, pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate, in an amount of 0.1 to 0.5 wt%, meeting the claimed requirement (reference claims 1 and 4).
Regarding claim 10, Liao teaches (para [0035]) an injection molding temperature of 80-100 oC for the PET composite material, overlapping the claimed requirement. In the case where the 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. US 2020/0239683 A1, as applied to claim 1 above and in view of Li et al. CN 101070421A.
Regarding claim 6, as discussed when addressing claim 1, Liao teaches organic nucleating agent which can be a long-chain linear saturated sodium carboxylate (reference claim 6, and para [0026]). However, Liao fails to mention specific permutation of the suitable long-chain linear saturated sodium carboxylate, and one of ordinary skill in the art would take guidance from related disclosures to ascertain what might be used in that capacity. Analogous reference Li teaches PET based composites where a long chain linear saturated sodium carboxylate, sodium stearate is highlighted as the nucleating agent of choice(para [0004] and [0009]). Advantageously, Li provides the motivation to utilize sodium stearate as the preferred nucleating agent since it provides improved crystallization rate and nucleation degree to the PET composite (para [0005]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized sodium stearate as the long chain saturated sodium carboxylate as taught by Li, in the PET composition of Liao, for the same application of creating PET molding composition with improved crystallization and nucleation degree.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. US 2020/0239683 A1, as applied to claim 1 above and in view of Asai et al. JP10-292097A.
Regarding claim 7, Liao teaches (reference claims 1 and 2) talc, which can serve the dual role of an inorganic filler and as applicant’s inorganic nucleating agent. However, Liao fails to mention the particle size of talc. One of ordinary skill in the art would take guidance from related disclosures to ascertain what size of talc might be used as a suitable nucleating agent. Analogous reference Asai teaches PET based composition with improved crystallization and excellent heat degradation resistance. (para [0004]). Asai also suggests the use of combination of inorganic and organic nucleating agents (crystallization promoters, para [0012]). Advantageously, Asai provides the motivation to utilize nano talc with particle size of 5-8000 nm, to achieve both fast crystallization rate and excellent crystallinity (para [0003]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized a nano talc (such as 100 nm, which is within Asai’s disclosed range) as taught by Asai, in the PET composition of Liao, for the same application of creating PET molding composition with fast crystallization rate and excellent crystallinity.
Claims 1-4 and 7-10 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. US 2020/0239683 A1 and further in view of Asai et al. JP10-292097A .
Liao teaches polyethylene terephthalate (PET) composite material which is suitable for manufacturing injection molded articles (Abstract).
Asai discloses polyethylene terephthalate (PET) based composition and molded articles with excellent crystallinity and appearance (para [0003]).
Regarding claims 1 and 2, Liao teaches (see reference claims 1 and 2) a PET composite which comprises: PET resin, an antioxidant, a processing aid (which corresponds to applicant’s lubricating agent), a nucleating agent and an inorganic filler. Liao teaches organic nucleating agent which can be a long-chain linear saturated sodium carboxylate (reference claim 6, and para [0026]), in an amount of 0.5-2 wt%. Instant specification para [0022] recognizes talc as an inorganic nucleating agent. Liao notes that the inorganic filler can be selected to be talc in an amount of 3-10 wt%.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized 2 wt% of an organic nucleating and 3 wt% talc resulting in 5 wt% of total nucleating agent, with a ratio of organic to inorganic nucleating agent of 1:1.5, which is slightly different from the claimed ratio. In the absence of showing of the criticality of the claimed 1:1 ratio of organic and inorganic nucleating agents and owing to the closeness of the disclosed polyester based composition, the similar ratio of the nucleating agents is sufficient to support an obviousness rejection. Merely selecting proportions and ranges is not patentable absent a showing of criticality. Applicant’s attention is brought to: In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical), See MPEP 2144.05 I.
Liao is silent on fibrous or whisker shaped inorganic reinforcing material, but notes many modifications and variations are possible in light of the teachings (para [0045]). One of ordinary skill in the art would take guidance from related disclosures such as Asai to further optimize the PET composition. Asai recommends inclusion of fibrous reinforcing agents which include glass fiber in the amount of 0.05 to 30 parts by weight per 100 parts by weight of polyester resin (para [0012]), and additionally provides a PET composition example 1 with 15 wt% glass fiber (para [0022], Table 2, Translated page 14). Advantageously, Asai provides the motivation to utilize reinforcing fiber such as glass fiber to manage fluidity, and further achieve excellent mechanical properties and impact resistance (para [0001] and [0013]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized a reinforcing 15 wt% glass fiber as taught by Asai, in the PET composition of Liao, for the same application of creating PET molding composition with excellent mechanical properties.
Regarding claim 3, Liao in view of Asai teach (Liao, reference claim 1) a virgin PET with intrinsic viscosity of 0.65-0.9 dL/g, which meets the claimed requirement.
Regarding claim 4, Liao in view of Asai teach (Liao example 2 (page 3, Table 1) with 87.2 wt% PET, meeting the claimed requirement.
Regarding claim 7, primary reference Liao teaches (reference claims 1 and 2) talc, which can serve the dual role of an inorganic filler and as applicant’s inorganic nucleating agent. However, Liao fails to mention the particle size of talc. Secondary reference Asai teaches PET based composition with improved crystallization and excellent heat degradation resistance. (para [0004]). Asai also suggests the use of combination of inorganic and organic nucleating agents (crystallization promoters, para [0012]). Advantageously, Asai provides the motivation to utilize nano talc with particle size of 5-8000 nm, to achieve both fast crystallization rate and excellent crystallinity (para [0003]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized a nano talc (such as 100 nm, which is within Asai’s disclosed range) as taught by Asai, in the PET composition of Liao, for the same application of creating PET molding composition with fast crystallization rate and excellent crystallinity.
Regarding claim 8, Liao in view of Asai teach processing aid (applicant’s lubricant) polyethylene wax which can be present in an amount 0.1-1 wt%, which meets the claimed requirement (Liao, reference claims 1 and 5).
Regarding claim 9, Liao in view of Asai teach a phenolic antioxidant, pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate, in an amount of 0.1 to 0.5 wt%, meeting the claimed requirement (Liao, reference claims 1 and 4).
Regarding claim 10, Liao in view of Asai teach (Liao, para [0035]) an injection molding temperature of 80-100 oC for the PET composite material, overlapping the claimed requirement. In the case where the 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. US 2020/0239683 A1 and in view of Asai et al. JP10-292097A as applied to claim 1 above, and further in view of Li et al. CN 101070421A.
Regarding claim 6, as discussed when addressing claim 1, Liao in view of Asai, teach organic nucleating agent which can be a long-chain linear saturated sodium carboxylate (Liao: reference claim 6, and para [0026]; Asai: higher fatty acid metal salt, para [0012]). However, both Liao and Asai fail to mention specific permutation of the suitable long-chain linear saturated metal (sodium) carboxylate, and one of ordinary skill in the art would take guidance from related disclosures to ascertain what might be used in that capacity. Analogous reference Li teaches PET based composites where a long chain linear saturated sodium carboxylate, sodium stearate is highlighted as the nucleating agent of choice(para [0004] and [0009]). Advantageously, Li provides the motivation to utilize sodium stearate as the preferred nucleating agent since it provides improved crystallization rate and nucleation degree to the PET composite (para [0005]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized sodium stearate as the long chain saturated sodium carboxylate as taught by Li, in the PET composition of Liao and Asai, for the same application of creating PET molding composition with improved crystallization and nucleation degree.
Response to Arguments
Applicant's arguments filed 03/20/2026 have been fully considered, please see the responses below.
Applicant argues (Remarks, page 7, first para) that reference Liao fails to disclose or teach the technical feature “a ratio of the organic nucleating agent and the inorganic nucleating agent is 1:1” as recited in the currently amended claim. Applicant’s arguments are acknowledged that Liao does not explicitly provide the required ratio of the organic and inorganic nucleating agent. However, the required ratio is rendered obvious where talc functions as both an inorganic nucleating agent and an inorganic reinforcing material. Instant specification paras [0022] and [0025] recognizes talc as both an inorganic nucleating agent and inorganic reinforcing material, as noted above. Although the obvious amount of nucleating agent per Liao’s disclosure is slightly lower than the claimed amount, it is reemphasized that applicant has not demonstrated the criticality of the claimed 5-8 wt% of the nucleating agent. To establish unexpected results in an effort to demonstrate criticality over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Applicant has only provided one data point with 8 wt% of the total nucleating agent (instant specification Example, Table 1), which is insufficient to demonstrate the criticality of the claimed range.
Applicant adds (Remarks, page 7, second para) that secondary reference Li fails to disclose the feature “a ratio of the organic nucleating agent and the inorganic nucleating agent is 1:1". It is highlighted that secondary reference Li is only relied to teach sodium stearate which is a specific permutation of a suitable long-chain linear saturated sodium carboxylate, which is already taught by primary reference Liao. Li is not relied to teach the required ratio of organic and inorganic nucleating agents, since primary reference Liao continues to provide the support for teaching the ratio of organic and inorganic nucleating agents.
In addition, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further notes (Remarks page 7, third para) that reference Asai also fails to disclose the distinguishing technical feature of “a ratio of the organic nucleating agent and the inorganic nucleating agent is 1:1”. While applicant’s arguments are acknowledged that the Asai does not teach the claimed ratio, reference Asai was used as a secondary reference to teach glass fiber as an inorganic reinforcing filler and not the nucleating agents.
Primary reference Liao renders the required amounts of nucleating agents obvious, but with the ratio of nucleating agents which is slightly different than the required 1:1. Applicant has provided only one example with nucleating agent ratio of 1:1 (instant specification Example, Table 1). No comparative tests are conducted to demonstrate the criticality of the claimed 1:1 ratio. The limited exemplified data do not provide adequate basis for concluding that similar ratios (such as 1:1.5 or 1.5:1 or 1:2 etc.) of the organic to inorganic nucleating agents would not achieve the same crystallization behavior as applicant’s example. See MPEP 716.02 (d) I. and 2144.05 I. Applicant’s arguments against reference Liao and the reference combinations are therefore not convincing. Primary reference Liao and secondary references Li and Asai, continue to provide the foundation for maintaining the rejection of the amended claims, as discussed above.
Applicant’s amendment “a ratio of the organic nucleating agent and
inorganic nucleating agent is 1:1” is a distinguishable feature over US 11,421,105B2, and overcomes the double patenting rejection.
Conclusion
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/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
/S.M.D./
Examiner
Art Unit 1765
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