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 .
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 18-37 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. Claim 18 is indefinite for the following reasons:
Claim 18 recites the limitation "the weight ratio (b1):(b2)" . There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the weight ratio (b):(c)" . There is insufficient antecedent basis for this limitation in the claim.
“wherein: copolymer (a)” is indefinite because it must be changed to ‘the at least one copolymer (a)”. Whenever a component is introduced with the phrase “at least one” preceding it, any further recitation of that component must have “at least one” preceding it. This applies to claims 19, 20 and 29 as well.
Claims 33 and 36 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. The limitation “outdoor application” is indefinite. The metes and bounds of “application” are unclear.
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.
Claim(s) 18-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tabuse et al. (JP 2003-165885A).
Regarding claims 18 and 21-28: Tabuse et al. teach a thermoplastic molding composition comprising the claimed amount [Examples; Table 1] of a copolymer of 50 wt% methyl methacrylate and styrene [0010-0013; Examples], 0.1 parts by weight of B-1 (Tinuvin 770; claimed LMW-HALS) or 0.4 parts by weight of B-2 (Chimassorb 944; claimed HMW-HALS), and 0.05 parts (0.05 wt%) of the UV absorber Tinuvin P [Example 1; Table 1]. Tabouse et al. teach using a mixture of two hindered amine stabilizers [0017].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of 0.1 parts of Tinuvin 770 and 0.4 parts Chimassorb 944 as the hindered amine-based stabilizer in Tabouse et al. It is obvious to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. In re Crockett 126 USPQ 186. See MPEP 2144.06.
The weight ratio of (b1):(b2) is 4:1. Tabouse et al. teach an example using a weight ratio of (b):(c) of 0.1:0.05 or 5:1 [Example 1; Table 1]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of use the same ratio of the UV absorber for the combination of Tinuvin 770 and Chimassorb 944.
Regarding claims 19-20: Tabouse et al. teach a copolymer of 50 wt% methyl methacrylate and 50 wt% styrene [0010-0013; Examples]. The amount of 50 wt% methyl methacrylate is very close to the claimed amount of 49 wt%, and the amount of 50 wt% styrene is very close to the claimed amount of 51 wt% styrene. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claim 29: Tabouse et al. teach a process of mixing the components [Examples].
Regarding claim 30: Tabouse et al. teach injection molding [Examples].
Regarding claim 31: Tabouse et al. teach a shaped article [Examples].
Regarding claims 32 and 35: Since the composition is the same as claimed, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claims 33 and 36: Tabouse et al. teach an article for outdoor applications [0002].
Regarding claims 34 and 37: Tabouse et al. teach an exterior automotive part [0002].
Double Patenting
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 18-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-36 of copending Application No. 18/692186. Although the claims at issue are not identical, they are not patentably distinct from each other,
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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