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 .
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.
Drawings
The drawings are objected to because it contains illegible text. The image shown below is copied from applicant’s Fig. 1.
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Note the dimensions reported in figure. The numbers are blurred and could potentially be either 45 or 46, and the units are not clear.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 7, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goto et al, JP62295936 (Goto’936).
A machine translation of Goto’936 was used to prepare this action.
The examiner notes that the search report obtained from STN Express, a copy of which is provided with this action, is cited as evidence that the prior art teaches the use of palmityldiethanolamine and stearlydiethanolamine.
Goto’936 discloses an antistatic agent used polyolefins, wherein said antistatic agent comprises a C16 alkyldiethanolamine and a C18 alkyldiethanolamine in a weight ratio of 40/60 to 20/80 (abstract).Goto’936 teaches that polyolefins comprising the prior art antistatic agent are used in the production of molded articles (for claims 1, 9) such as sheets (page 2: lines 60-61).
Example 3 of Goto’936 (page 2: lines 61-76; Table 1) discloses a composition made by combining 100 parts polypropylene, corresponding to the claimed polymer resin which is a polyolefin (for claims 1, 2), with 0.5 parts of an antistatic agent, wherein said antistatic agent comprises a blend of 20% C16 alkyldiethanolamine and 80% C18 alkyldiethanolamine.
Goto’936 does not specifically state that the C16 alkyldiethanolamine and C18 alkyldiethanolamine are palmityldiethanolamine and stearlydiethanolamine, respectively; however, it is reasonably expected that these limitations are met by the prior art.
As shown on the attached search report, the prior art was specifically searched using the CAS numbers for palmityldiethanolamine and stearlydiethanolamine as filters (see pages 2-4). Note that Goto’936 was listed as a result of this search (see page 26: answer 45). Because the search was limited based on the specific compounds palmityldiethanolamine and stearlydiethanolamine, it is therefore reasonably expected that the C16 alkyldiethanolamine and C18 alkyldiethanolamine used in Goto’936 are palmityldiethanolamine and stearlydiethanolamine, respectively. The antistatic agent of the prior art example 3 therefore comprises a blend of palmityldiethanolamine and stearlydiethanolamine, wherein the amount of palmityldiethanolamine is 20 parts per 100 parts of their combined total (for claim 1).
Regarding claim 4: As noted above, the composition of Example 3 comprises 0.5 parts of the antistatic agent and 100 parts polypropylene; the composition therefore comprises the antistatic agent in an amount of (0.5/100.5)×100 = 0.5 wt%. Further note that the antistatic agent in turn comprises 20 wt% of the combined alkyldiethanolamines (Table 1). Based on these numbers, it is calculated that the composition of Example 3 comprises about 20% × 0.5 = 0.1 wt% of the combination of alkyldiethanolamines (for claims 4, 10, 11).
Regarding claim 7: As discussed above, the composition of Example 3 comprises a polypropylene, corresponding to the claimed polymer resin 1 which is a polyolefin and an antistatic agent comprising a blend of palmityldiethanolamine and stearlydiethanolamine, wherein the amount of palmityldiethanolamine is 20 parts per 100 parts of their combined total. As the prior art composition comprises the required components in the required amounts, it corresponds to the claimed masterbatch.
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 5, 6, 8, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al, JP62295936, in view of Goto et al, JP63113052 (Goto’052).
A machine translation of Goto’052 was used to prepare this action.
As discussed earlier in this Action, Goto’936 discloses the production of an antistatic composition comprising a polyolefin and an antistatic agent. Said antistatic agent in turn comprises a blend of (A) a mixture of palmityldiethanolamine and stearlydiethanolamine wherein the amount of palmityldiethanolamine is 20 to 40 parts per 100 parts total of (A), overlapping the claimed range (for claims 5, 12-14); (B) a higher alcohol, and (C) a glycerol ester (abstract). Goto’936 teaches that the antistatic agent may be added to the polyolefin, corresponding to claimed polymer resin 2 which is a polyolefin (for claims 5, 12-14), in the form of a master pellet (i.e., a masterbatch) (page 2: lines 58-60).
Goto’936 is silent regarding the use of a master pellet comprising a polymer resin 1 which is a polyolefin or a polyamide.
Goto’052 discloses an antistatic master pellet composition which is used as an additive in polyolefins (abstract), wherein said master pellet comprises a carrier resin which is atactic polypropylene, corresponding to claimed polymer resin 1 which is a polyolefin (for claims 5, 12-14), and an antistatic agent which is a mixture of a alkyldiethanolamine compound (a), higher alcohol (b), and glcyerin ester (c) (abstract). The amount of each component is 1 to 15 wt% of the master pellet composition, overlapping the claimed range (for claims 6, 8, 15-17). As taught by Goto’052, the use of atactic polypropylene helps to uniformly disperse the components of the antistatic agent throughout the polyolefin and that the use of the components (a), (b), and (c) control the migration of the antistatic components to the resin surface (Page 4: lines 9-14).
Goto’936 and Goto’052 are both directed towards the production of antistatic polyolefin compositions which comprise an antistatic agent which comprises a mixture of alkyldiethanolamine, higher alcohol, and glycerin ester. Furthermore, as noted above, Goto’936 teaches that the antistatic agent of JP62295936 may be used in the form of a master pellet. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the master pellet of Goto’936 by using atactic polypropylene, corresponding to claimed polymer resin 1 (for claims 5, 12-4), as the carrier resin and to limit the amount of alkyldiethanolamine to the range of 1 to 15 wt% (or claims 6, 8, 15-17), as taught by Goto’052, with the reasonable expectation of uniformly distributing the antistatic agent within the final polyolefin composition and controlling its migration to the resin surface, as taught by Goto’052.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Narita et al, US2015/0359217.
Narita discloses a molded film, corresponding to the claimed molded body which is a sheet (for claims 1, 3, 9) which comprises a propylene-based polymer, corresponding to the claimed polymer resin which is a polyolefin (for claim 1), and 0.001 to 3 mass% of specific compound 1 (for claims 4, 10, 11) (¶0013, 0048). Said specific compound 1 may be a mixture comprising palmityldiethanolamine (for claim 1) and stearlydiethanolamine (for claim 1) (¶0015). Said propylene-based polymer may be a propylene homopolymer (i.e., polypropylene) (for claim 2) (¶0027).
Regarding the amount of palmityldiethanolamine: As noted above, Narita renders obvious the use of a combination of stearlydiethanolamine and palmityldiethanolamine as the prior art specific compound 1. Additionally, Narita teaches that stearyldiethanolamine may contain a small amount of a C16 alkyldiethanolamine (¶0021); note that palmityldiethanolamine is a C16 alkyldiethanolamine.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; see In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). As noted above, Narita teaches that stearyldiethanolamine used as specific compound 1 may contain “a small amount” of a C16 alkyldiethanolamine. The phrase “a small amount” implies that specific compound 1 may be a composition which comprises palmityldiethanolamine as a minor component (i.e., present in an amount less than 50%) and stearyldiethanolamine as the majority component (i.e., present in an amount greater than 50%). One of ordinary skill in the art would therefore reasonably infer from the cited passage that Narita teaches an embodiment of specific compound 1 which is a blend of stearlydiethanolamine and palmityldiethanolamine wherein the amount of palmityldiethanolamine is less than 50 parts per 100 of the combined compounds, overlapping the claimed range (for claims 1, 5, 7, 12-14).
Regarding the claimed process/masterbatch: Narita teaches that the prior art film may be prepared via a process comprising the steps of 1) preparing a masterbatch (for claims 5, 7, 12-14) of the specific compound 1 and 2) mixing said masterbatch with the propylene-based polymer, corresponding to claimed polymer resin 2 which is a polyolefin (for claims 5, 12-14) (¶0048). Narita further exemplifies the use of polyethylene, corresponding to claimed polymer resin 1 which is a polyolefin (for claims 5, 7, 12-14), as a carrier polymer for said masterbatch and the production of a masterbatch comprising 10 wt% of specific compound 1 (for claims 6, 8, 15-17) (¶0277).
Narita does not specifically disclose the production of a composition comprising both stearlydiethanolamine and palmityldiethanolamine, wherein the amount of palmityldiethanolamine is 2 to 25 parts per 100 parts total of stearlydiethanolamine and palmityldiethanolamine.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
As discussed in the previous paragraphs Narita teaches a molded film comprising a polyolefin and a blend of stearlydiethanolamine and palmityldiethanolamine, wherein the amount of palmityldiethanolamine overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a composition comprising the claimed amount of palmityldiethanolamine in view of the teachings of Narita (for claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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