DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
2. Claims 1-2, 4-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nodera et al (US 2002/0099116).
3. Nodera et al discloses a composition comprising ([0016]):
- 100 pbw of:
A) 30-100%wt of a polycarbonate resin, specifically an aromatic polycarbonate
([0029]) (corresponding to component (C) of instant claim 1) and
B) 0-70%wt of a styrenic resin, specifically a rubber-modified styrenic resin
produced through polymerization of rubber-like polymers with styrene; specifically
ABS produced through polymerization of polybutadiene with acrylonitrile and
styrene ([0036]) (corresponding to component (A) of instant claim 1);
-1-50 pbw of C) a flame retardant;
- 1-20 pbw of D) a methyl methacrylate polymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 ([0052], as to instant claim 2) and specifically, commercial products Metablen P 530 and P531 ([0052]); and
further optionally
- 1-30 pbw of F) a rubber-like elastomer, specifically styrene-butadiene rubber (corresponding to component (B) of instant claim 1) and
- 2-30 pbw of G) an inorganic filler (Abstract, [0066], as to instant claim 4).
4. The specifically exemplified component D) of Nodera et al is a commercial product Metablen P-530A (MMA P-530A) having Mw of 3,000,000 ([0086], as to instant claims 1 and 2).
5. Specifically exemplified compositions include 80 pbw of an aromatic polycarbonate, 20 pbw of HIPS, providing the total amount of both polycarbonate and HIPS of 100pbw, and based on the 100 pbw of the sum of the polycarbonate and HIPS, of 3-6 pbw of MMA P-530A (Table 1 of Nodera et al).
6. The composition is used for producing molded articles by molding and foaming ([0069]).
7. It is further noted that the limitation “for foam molding” of claim 1 and “for use in core-back foam injection molding” of claim 5 are intended use limitations. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
8. In the alternative, all ranges in the composition of Nodera et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
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.
9. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nodera et al (US 2002/0099116) in view of Muraki et al (WO 2010/016556, based on machine translation).
10. The discussion with respect to Nodera et al (US 2002/0099116) set forth in paragraphs 2-8 above, is incorporated here by reference.
11. Though Nodera et al discloses the composition being used for making molded articles by injection molding and foaming ([0069]), Nodera et al does not recite said composition comprising a chemical foaming agent and the molding being a core-back foam injection molding.
12. However, Muraki et al discloses a composition for foam molding comprising:
A’) 10-90%wt, preferably 50-70%wt, of a polycarbonate resin, specifically an aromatic
polycarbonate (p. 5, lines 20-26, 38-43 of the translation);
B1) 5-90%wt of a rubber-reinforced resin consisting of a graft copolymer obtained by
polymerizing an aromatic vinyl compound b2) and vinyl cyanide comonomer (p. 8,
lines 9-20 of the translation) in the presence of a rubber polymer b1);
specifically ABS resin (p. 7, lines 32-37 of the translation);
B2) 0-85%wt of a vinyl resin consisting of a copolymer obtained by polymerizing an
aromatic vinyl compound b3);
C’) 0.05-5 pbw, based on 100 pbw of the components A’), B1) and B2), of a chemical
foaming agent (as to instant claim 3);
D’) 0.1-18 pbw, relative to 100 pbw of components A’), B1) and B2), of talc (p. 2, lines
8-22 of the translation),
wherein such composition is used for making foam molded articles by core-back injection foam molding (p. 3, lines 30-36 of the translation).
13. Thus, Muraki et al discloses substantially the same composition as that of Nodera et al, but further teaches said compositions being used for making molded articles by core-back injection foam molding.
14. Since both Nodera et al and Muraki et al are related to substantially the same resin compositions based on a major amount of an aromatic polycarbonate resin, minor amounts of rubber-modified styrenic copolymers such as ABS, used for making molded articles by injection molding and foaming, and thereby belong to the same field of endeavor, wherein Muraki et al teaches such compositions further comprising chemical foaming agents, and being used in core-back foam injection molding process for making said molded articles, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Muraki et al and Nodera et al, and to use, or obvious to try to use the composition of Nodera et al for making molded articles by a core-back foam injection molding process, and further include a chemical foaming agent into the composition of Nodera et al, as taught by Muraki et al so to ensure a desired level of expansion of said composition during said molding process, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al (WO 2010/016556, based on machine translation) in view of Nodera et al (US 2002/0099116).
16. Muraki et al discloses a composition for foam molding comprising:
A’) 10-90%wt, preferably 50-70%wt, of a polycarbonate resin, specifically an aromatic
polycarbonate (p. 5, lines 20-26, 38-43 of the translation);
B1) 5-90%wt of a rubber-reinforced resin consisting of a graft copolymer obtained by
polymerizing an aromatic vinyl compound b2) and vinyl cyanide comonomer (p. 8,
lines 9-20 of the translation) in the presence of a rubber polymer b1);
specifically ABS resin (p. 7, lines 32-37 of the translation);
B2) 0-85%wt of a vinyl resin consisting of a copolymer obtained by polymerizing an
aromatic vinyl compound b3);
C’) 0.05-5 pbw based on 100 pbw of the components A’), B1) and B2) of a chemical
foaming agent (as to instant claim 3);
D’) 0.1-18 pbw relative to 100 pbw of components A’), B1) and B2) of talc (p. 2, lines
8-22 of the translation, as to instant claim 4),
wherein such composition is used for making foam molded articles by core-back injection foam molding (p. 3, lines 30-36 of the translation, as to instant claims 5-7).
17. Muraki et al does not recite the composition further comprising a high molecular weight resin having Mw of greater than or equal to 2,000,000.
18. However, Nodera et al discloses a composition comprising ([0016]):
- 100 pbw of:
A) 30-100%wt of a polycarbonate resin, specifically an aromatic polycarbonate
([0029]) (corresponding to component (C) of instant claim 1) and
B) 0-70%wt of a styrenic resin, specifically a rubber-modified styrenic resin
produced through polymerization of rubber-like polymers with styrene; specifically
ABS produced through polymerization of polybutadiene with acrylonitrile and
styrene ([0036]) (corresponding to component (A) of instant claim 1);
-1-50 pbw of C) a flame retardant;
- 1-20 pbw of D) a methyl methacrylate polymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 ([0052], as to instant claim 2) and specifically commercial products Metablen P 530 and P531 ([0052]); and
further optionally
- 1-30 pbw of F) a rubber-like elastomer, specifically styrene-butadiene rubber (corresponding to component (B) of instant claim 1) and
- 2-30 pbw of G) an inorganic filler (Abstract, [0066], as to instant claim 4),
wherein Nodera et al explicitly teaches that when the methyl methacrylate polymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 (component D)) is dispersed in the polycarbonate composition through kneading, it improves the melt elasticity of the composition ([0052]).
19. The specifically exemplified component D) of Nodera et al is commercial product Metablen P-530A having Mw of 3,000,000 ([0086], as to instant claims 1 and 2).
20. Specifically exemplified compositions include 80 pbw of an aromatic polycarbonate, 20pbw of HIPS, providing the total amount of both polycarbonate and HIPS of 100pbw, and based on the 100 pbw of the sum of the polycarbonate and HIPS, of 3-6 pbw of MMA P-530A (Table 1 of Nodera et al).
21. The composition is used for producing molded articles by molding and foaming ([0069]).
22. Since both Nodera et al and Muraki et al are related to substantially the same resin compositions based on a major amount of an aromatic polycarbonate resin, minor amounts of rubber-modified styrenic copolymers such as ABS, used for making molded articles by injection molding and foaming, and thereby belong to the same field of endeavor, wherein Nodera et al further teaches such compositions comprising a minor amount of methyl methacrylate polymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 to improve the melt elasticity of the composition, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Muraki et al and Nodera et al, and to include, or obvious to try to include, at least partially, the methyl methacrylate polymer having a weight average molecular weight of preferably 1,500,000-5,000,000, such as a commercial product Metablen P-530A having Mw of 3,000,000, into the composition of Muraki et al, so to improve the melt elasticity of the composition of Muraki et al used for molding as well, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764