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:
The various percent (%) components of the anti-corrosion and anti-ultraviolet material, are not specified as either weight (or mass) or volume percentages.
Appropriate correction is required.
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 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 1 and all the dependent claims 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.
Dependent claims 2-8 recite the limitation "an anti-corrosion and anti-ultraviolet material". There is lack of antecedence with each dependent claim, since claim 1 introduces “an anti-corrosion and anti-ultraviolet material” and therefore all the dependent claims should be revised to recite "the anti-corrosion and anti-ultraviolet material”.
Regarding claims 1-4, require various % of components but do not specify weight (or mass) or volume percentages, and therefore the claim language is unclear.
Regarding claim 1, requires 5 % to 10% of styrene and polystyrene, it is unclear if the claim requires that the total amount of (styrene + polystyrene) should be 5% to 10% or each component styrene and polystyrene separately should be 5% to 10%, thus totaling 10% to 20%. Similarly claims 2-4 are unclear, as there is a doubt that the required amount of styrene and polystyrene is for the total amount (of styrene + polystyrene) or for each styrene and polystyrene component.
Regarding claim 5, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
While claim 6, is a product-by-process claim, it is noted that the claim requires the formation of an unsaturated polyester resin by polycondensation of dibasic acid and diol. Dibasic acid and diol include saturated dibasic acids and saturated diols, a polycondensation reaction of a saturated dibasic acid and a saturated diol would not result in an unsaturated polyester.
Claim Interpretation
The claimed % are interpreted to be weight or wt%.
The required % of styrene and polystyrene, is interpreted to be total wt% combined amount of styrene and polystyrene.
In the absence of the definition of “rock powder” in the specification, any inorganic mineral filler powder is interpreted to satisfy the claimed limitation.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al CN-104072679-A.
Li teaches unsaturated polyester molding compound based compositions which have high storage stability (extended shelf life) under high temperature environment conditions which are suitable for the manufacture of structural members used in the field of electric insulation, instruments and transportation (paras [0002] and [0006]).
Regarding claims 1 and 5, Li teaches that the unsaturated polyester molding composition comprises: 100 parts by weight of a mixture of unsaturated polyester resin and low-shrinkage additives (which contains 58-65 % unsaturated polyester by mass, with the remainder being low-shrinkage additive which can be a combination of polystyrene and styrene (additive B1, page 40: para [0044])), 1.0-1.5 parts by weight of an initiator (curing agent), 180-230 parts by weight of filler powder material which can be either aluminum hydroxide or calcium carbonate, 5-6 parts by weight of a release agent (instant claim 5), 6-8 parts by weight of pigment paste, and 60-85 parts by weight of chopped glass fibers which are 3 to 12 mm in length (translated paras [0007], [0009], [0011], [0014] and [0017]). Thus, Li discloses each of the required components of the anti-corrosion and anti-ultraviolet material.
The various component part by weight ranges of Li’s unsaturated polyester molding are presented in the table below, and the corresponding wt% ranges are calculated. The parts by weight of the unsaturated polyester and the low-shrinkage additive (polystyrene +styrene) are maintained to be 100 parts in all the compositions.
Table: Li’s ranges of components for the polyester molding composition.
Molding composition
part by weight
part by weight
Lowest Wt%
Highest wt%
Unsaturated polyester
58
65
58/(58+42+85+230+15.5)= 13.5 wt%
65/(65+35+60+180+12)= 18.5 wt%
Polystyrene+styrene
42
35
35/(35+65+85+230+15.5)= 8.1 wt%
42/(42+58+60+180+12)= 11.9 wt%
Glass fiber
60
85
60/(60+100+230+15.5) = 14.8 wt%
85/(85+100+180+12) = 22.5 wt%
Filler (rock) powder
180
230
180/(100+85+180+15.5) = 47.3 wt%
230/(230+60+100+12) = 57.2 wt%
Other reagent (initiator+mold release+pigment)
12
15.5
12/(12+100+85+230) = 2.8 wt%
15.5/(15.5+100+60+180)= 4.4 wt%
The amount of calculated range of Li’s unsaturated polyester meets the claimed requirement of the unsaturated polyester resin, while that of amounts of polystyrene and styrene, glass fiber and other reagents (which include initiator, mold release agent and pigment), overlap the claimed limitations. 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).
The filler (rock) powder as disclosed by Li is slightly higher than the claimed requirement. 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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.") See MPEP 2144.05 I.
Regarding claim 2, as discussed when addressing claim 1, Li teaches the required components of the anti-corrosion and anti-ultraviolet material. While the claimed amount of other reagent overlaps with the calculated range of Li’s compositions (see Table above), the amounts of the other required components are lower than the Li’s calculated ranges.
Li however discusses the properties of excellent corrosion, water and heat resistance for the composite materials which are used for various appliances, machinery and other sectors (para [0004]), which are similar end use application of an aerator machine as the instant specification (para [0003]). Li adds that improvements and adjustments can be made to the present invention by those skilled in the art (para [0045]), and thus it would have been obvious for a person having ordinary skill in the art to optimize the polyester based composites to the desired component levels in order to achieve the same property benefits.
Applicant’s experimental data does not demonstrate the criticality of the required amounts of each components i.e,10% of unsaturated polyester resin, 5% of styrene and
polystyrene, 10% of glass fiber, 35% of rock powder and 3% of other reagent. Applicant presents data for embodiments which have a range of: 10% to 20% of unsaturated polyester resin, 5% to 10% of styrene and polystyrene, 10% to 20% of glass fiber, 35% to 45% of rock powder and 3% to 5% of other reagent. It is unclear what exact percentage of each component was utilized to generate the composition for which the data was measured (instant specification paras [0017]- [0018]). Applicant’s attention is brought 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, as discussed when addressing claim 1, Li teaches the required components of the anti-corrosion and anti-ultraviolet material. While the claimed amount of unsaturated polyester resin, glass fiber and other reagent overlap with the calculated range of Li’s compositions (see Table above), the required amounts of styrene and polystyrene and the rock powder components are however lower than the Li’s calculated ranges.
The combination of polystyrene and styrene as disclosed by Li (lowest calculated amount of 8.1 wt%) is slightly higher than the claimed requirement. 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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.") See MPEP 2144.05 I.
Li additionally discusses the properties of excellent corrosion, water and heat resistance for the composite materials which are used for various appliances, machinery and other sectors (para [0004]), which are similar end use application of an aerator machine as the instant specification (para [0003]). Li adds that improvements and adjustments can be made to the present invention by those skilled in the art (para [0045]), and thus it would have been obvious for a person having ordinary skill in the art to optimize the polyester based composites to the desired rock powder level to achieve the same property benefits.
Applicant’s experimental data does not demonstrate the criticality of the required amounts of each components i.e., 15% of unsaturated polyester resin, 7% of styrene and polystyrene, 15% of glass fiber, 40% of rock powder and 4% of other reagent and especially 40% rock powder). Applicant presents data for embodiments which have a range of: 10% to 20% of unsaturated polyester resin, 5% to 10% of styrene and polystyrene, 10% to 20% of glass fiber, 35% to 45% of rock powder and 3% to 5% of other reagent. It is unclear what exact percentage of each component was utilized to generate the composition for which the data was measured (instant specification paras [0017]- [0018]). Applicant’s attention is brought 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 4, as discussed when addressing claim 1, Li teaches the required components of the anti-corrosion and anti-ultraviolet material. While the claimed amount of glass fiber, combined styrene and polystyrene, overlap with the calculated range of Li’s compositions (see Table above). 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).
The unsaturated polyester, the filler (rock) powder and other reagent as disclosed by Li are close to the required amounts. 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) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.") See MPEP 2144.05 I.
Regarding claims 6-8, as discussed when addressing claim 1, Li discloses the unsaturated polyester, polystyrene and glass fiber and meet the product requirement. Applicant is reminded that instant claims 6-8 are product-by-process claims and are therefore are not limited to the manipulations of the recited steps, but only the final structure. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. See MPEP 2113. I.
Claims 1-8 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Xia et al CN-101575444-A.
Xia teaches polyester molding composition with improved mechanical properties (paras [0001]-[0007]).
Regarding claims 1 and 4-5, Xia teaches that the polyester molding composition comprises: 50-70 parts by weight of an unsaturated polyester resin, 30-50 parts by weight of low-shrinkage additives (which is a combination of polystyrene and styrene (para [0013])), 8-10 parts by weight of liquid pigment, 1.0-2.0 parts by weight of a curing agent, 5-6 parts by weight of release agent (instant claim 5), 1-1.5 parts by weight thickener (which is a calcium hydroxide powder, (para [0017])), 40-60 parts by weight of calcium carbonate powder, 60-80 lightweight filler (which is silica nanopowder, para [0019]) and 60-100 parts by weight of glass fiber (translated paras [0010], [0011], [0013], [0017], [0019]). Xia’s calcium hydroxide thickener powder, light weight filler which can be silica nanopowder and calcium carbonate powder, all combined together, correspond to the recited rock powder. Thus, Xia discloses each of the required components of the anti-corrosion and anti-ultraviolet material.
The various component part by weight ranges of Xia’s unsaturated polyester molding are presented in the table below, and the corresponding wt% ranges are calculated.
Table: Xia’s ranges of components for the polyester molding composition.
Molding composition
part by weight
part by weight
Lowest Wt%
Highest wt%
Unsaturated polyester
50
70
50/(50+50+100+141.5+18)=14 wt%
70/(70+30+60+101+14)= 25%
Polystyrene+styrene
30
50
30/(30+70+100+141.5+18)= 8 wt%
50/(50+50+60+101+14)= 14 wt%
Glass fiber
60
100
60/(60+70+50+141.5+18)= 18 wt%
100/(100+50+30+101+14)= 34 wt%
Filler (rock) powder
1+40+60=101
1.5+60+80=141.5
101/(101+70+50+100+18)= 30 wt%
141.5/(141.5+50+30+60+14)= 48 wt%
Other reagent (curing +mold release+pigment)
1+5+8= 14
2+6+10= 18
14/(14+70+50+100+141.5)=3.7 wt%
18/(18+50+30+60+101)= 7 wt%
The calculated range amounts of Xia’s unsaturated polyester, combined polystyrene and styrene, rock powder (which include calcium hydroxide powder, light weight filler silica nanopowder and calcium carbonate powder), glass fiber and other reagents (which include curing agent, release agent and pigment), overlap the claimed limitations (instant claims 1 and 4). 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).
Regarding claim 2, as discussed when addressing claim 1, Xia teaches the required components of the anti-corrosion and anti-ultraviolet material. While the claimed amount of rock powder, overlaps with the calculated range of Xia’s compositions (see Table above), the amounts of the other required components are lower than the Xia’s calculated ranges.
Applicant’s experimental data does not demonstrate the criticality of the required amounts of each components i.e,10% of unsaturated polyester resin, 5% of styrene and
polystyrene, 10% of glass fiber, 35% of rock powder and 3% of other reagent. Applicant presents data for embodiments which have a range of: 10% to 20% of unsaturated polyester resin, 5% to 10% of styrene and polystyrene, 10% to 20% of glass fiber, 35% to 45% of rock powder and 3% to 5% of other reagent. It is unclear what exact percentage of each component was utilized to generate the composition for which the data was measured (instant specification paras [0017]- [0018]). Applicant’s attention is brought 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, as discussed when addressing claim 1, Xia teaches the required components of the anti-corrosion and anti-ultraviolet material. While the claimed amount of unsaturated polyester, rock powder and other reagent, overlap with the calculated range of Xia’s compositions (see Table above), the amounts of the other required components are lower than the Xia’s calculated ranges.
Applicant’s experimental data does not demonstrate the criticality of the required amounts of each components i.e,15% of unsaturated polyester resin, 7% of styrene and
polystyrene, 15% of glass fiber, 40% of rock powder and 4% of other reagent. Applicant presents data for embodiments which have a range of: 10% to 20% of unsaturated polyester resin, 5% to 10% of styrene and polystyrene, 10% to 20% of glass fiber, 35% to 45% of rock powder and 3% to 5% of other reagent. It is unclear what exact percentage of each component was utilized to generate the composition for which the data was measured (instant specification paras [0017]- [0018]). Applicant’s attention is brought 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 claims 6-8, as discussed when addressing claim 1, Xia discloses the unsaturated polyester, polystyrene and glass fiber and meet the product requirement. Applicant is reminded that instant claims 6-8 are product-by-process claims and are therefore are not limited to the manipulations of the recited steps, but only the final structure. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. See MPEP 2113. I.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765