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 .
Specification
The disclosure is objected to because of the following informalities: on page 7, line 5, there is an unnecessary comma following such as.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed towards the use of the material, which is not a statutory category. The applicant must either rewrite the claim to fall into at least one of the statutory categories or cancel the claim. If the claim is rewritten to be a method of using, the applicant is reminded that a positive process step must be included to meet the statutory requirements. Because the claim does not fall within one of the statutory categories, the claim has not been further evaluated on its merits.
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.
Claims 4-6 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation that the polycarbonate comprises at least 80% of bisphenol A polycarbonate, and the claim also recites that it is preferably at least 90% and more preferably at least 99% bisphenol A polycarbonate which is the narrower statement of the range/limitation. Similarly, claim 5 specifies a melt flow rate of 5-40 but then further prefers 15-35 and claim 6 requires a melt flow rate of 5-40 but lists two narrower ranges. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The applicant is required to revise the claim language to distinctly claim the range that the melt flow rate should be as well as the desired amount of bisphenol A polycarbonate required. For the purposes of examination, the broadest ranges will be used.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lakeman (US 20160297963, US patent application reference #1 from IDS dated 6/20/2023).
Regarding Claim 1,
Lakeman teaches a polycarbonate composition that contains 40-98% by weight polycarbonate polymer (Abstract) which overlaps with the range of the instant claim and exemplifies the use of a bisphenol A-based polycarbonate (Paragraph 75), which is an aromatic polycarbonate. Lakeman further teaches that the composition includes 0.1 to 10% by weight of a compatibilizer (Abstract) which overlaps with the range of the instant claim and which contains an olefin which is preferably ethylene (Paragraph 22) which is copolymerized with an acrylate such as glycidyl methacrylate (Paragraph 22). Lakeman also teaches that the composition contains 0.1 to 10% by weight of an olefinic elastomer (Abstract) which overlaps with the range of the instant claim and that the composition may contain additives in amounts of 0.5 to 4% by weight (Paragraph 64) which is contained within the range of the instant claim. While Lakeman does teach that a polyester may be added, Lakeman exemplifies compositions in which no polyester is contained (Table 1, Examples 1 and 2). With regard to the smell of the composition, Lakeman is silent. However, as the compositions taught by Lakeman are comprised of the same components as those of the instant claim in overlapping amounts, it would necessarily follow that the compositions taught by Lakeman would meet the requirement as presented in the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to the overlapping ranges, one of ordinary skill in the art would naturally seek to alter the amount of compatibilizer to obtain a uniform composition and would similarly adjust the amount of elastomer to impart the desired cracking resistance, in particular relative to cleaning solutions as noted by Lakeman (Paragraph 2) which would often be used on automotive parts. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the component being used as an automotive interior article, as this language appears in the preamble and does not require any alteration of the composition, it is considered to be intended use and therefore does not further limit the claim.
Regarding Claim 2,
The instant claim states that an article has its surface area coated by at most 50% of an additional layer, however no lower bound is listed. As such, the lower bound would be interpreted to be 0% coverage, which would indicate no coating. This renders this coating to be an optional embodiment.
Regarding Claim 3,
Lakeman teaches that the composition can be used to obtain an article through a variety of processes, including molding (Paragraph 69), which it would logically follow would including injection molding. As Lakeman teaches that typical polymer processing may be used (Paragraph 69), it would have been obvious prior to the effective filing date of the instant application to have formed an article by any standard process, including injection molding.
Regarding Claims 4 and 5,
Lakeman teaches that polycarbonates derived from bisphenol A are preferred (Paragraph 9) and teaches that melt flow rate is most preferably between 5 and 35 g/10 min measured at 300 °C, 1.2 kg (Paragraph 12), which is contained within the range of the instant claim. Finally, Lakeman teaches the use in examples 1 and 2 (Paragraph 75) of only a bisphenol A polycarbonate, meeting the requirement of bisphenol A polycarbonate content of the instant claim.
Regarding Claim 6,
Lakeman is silent on the melt flow rate of the composition. However, Lakeman does teach that the melt flow rate of the polycarbonate is most preferably between 5 and 35 g/10 min at 300 °C, 1.2 kg (Paragraph 12), that the melt flow rate of the compatibilizer is most preferably between 5 and 30 (Paragraph 25) and finally that the melt flow rate of the olefinic elastomer is most preferably between 5 and 60 (Paragraph 38). As these ranges overlap with the range for the composition of the instant claim, it would logically follow that by mixing components with melt flow rates within the allowable range for the composition that the melt flow rate of the mixture would also fall within this range. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 7,
Lakeman teaches that the olefin elastomer may be comprised of mixtures of two olefins such as ethylene, butene, hexene, and octene (Paragraph 36) which most preferably have densities between 0.867 and 0.880 g/cm3 (Paragraph 38) which is contained within the range of the instant claim and a melt flow rate of most preferably between 5 and 60 g/10 min according to ASTM D-1238 (Paragraph 38). The melt flow rate overlaps with the range of the instant claim. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 8,
Lakeman teaches that additives such as mold release agents, antioxidants, UV and thermal stabilizers, pigments, dyes, and fillers may be added (Paragraph 62).
Regarding Claim 9,
Lakeman teaches that the compatibilizer can be comprised of an olefin which is preferably ethylene (Paragraph 22) and acrylates such as glycidyl methacrylate (Paragraph 22).
Regarding Claims 10, 12, and 14-15,
Claims 10 and 12 are directed towards the type of article that is made from the composition, however the claim language does not specify any alterations to the composition to render it more suitable for use in these applications. Therefore, this language is considered to be intended use. As such, any composition meeting the requirements as laid out in claim 1 would logically be able to be used in these applications. As Lakeman teaches compositions that meet the requirements of claim 1, the composition would be capable of being used in the capacities as described in claims 10 and 12. Further, Lakeman teaches compositions with improved environmental stress cracking resistance (Paragraph 6), which would be valuable in automotive articles which will be exposed to harsh environments, including to chemical cleaners. As such, the ordinarily skilled artisan would be motivated to use such a material for automotive articles and it would therefore have been obvious prior to the effective filing date of the instant application to have used the compositions of Lakeman in automotive articles such as a cladding to utilize the favorable property of environmental stress cracking resistance.
Claims 14 and 15 are directed towards the type of vehicle in which the article is to be used. As the claim language does not describe any alterations that are required to be made to the composition in order to be more suitable for these applications, this language is also considered to be intended use and any composition that meets the requirements as described in claim 1 would be capable of being used in the listed fashion. Further, as Lakeman notes the improved environmental stress cracking resistance of the compositions (Paragraph 6), it would have been obvious prior to the effective filing date of the instant application to have used the composition in an automotive application as such components are often exposed to harsh environmental conditions where such a property would be valuable.
Regarding Claim 11,
Lakeman teaches that the composition has a heat deflection temperature of preferably 125 °C or more (Paragraph 14) and tensile elongation according to ASTM 638 of preferably 100% or more (Paragraph 14). While Lakeman does not list a range for the tensile modulus, Lakeman does demonstrate compositions (Table 1, examples 1 and 2) where the tensile modulus meets the required 2100 MPa minimum. Lastly, while Lakeman does not teach the Izod impact resistance, Lakeman does teach that the notched impact strength is between 10 and 180 kJ/m2 (Paragraph 14). Lakeman is additionally silent on the volatile organic content. However, as the compositions described by Lakeman contain the same components in overlapping amounts, it would logically follow that the compositions of Lakeman would have similar properties to those of the instant application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Handbook of Thermoplastics (Second Edition, 2016, edited by Olabisi and Adewale) in Chapter 10 on page 353 teaches that the melt flow rate of aromatic polycarbonates is typically from 5-35 g/10 min as measured according to the parameters listed in claim 5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765