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 .
Rejections
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 1-20 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. The instant claim 1 recites “2 to less than 50 wt% of a poly(ester) composition comprising
greater than 20 to less than 50 wt% of poly(ethylene terephthalate), or
2 to less than 50 wt% of a poly(ester) different from poly(ethylene terephthalate), or
a combination of 1-49 wt% of poly(ethylene terephthalate) and 1-49 wt% of a
poly(ester) different from poly(ethylene terephthalate);”.
It is not clear what the remainder is required to be for each of the claimed “poly(ethylene terephthalate), poly(ester) different from poly(ethylene terephthalate), or
a combination of 1-49 wt% of poly(ethylene terephthalate) and 1-49 wt% of a
poly(ester) different from poly(ethylene terephthalate)” because the component or components which make up the remainder of the poly(ester) compositions is/are not particularly pointed out and distinctly claimed as required by the above cited statute. It is noted that the amounts of each of the recited poly(ester) compositions add up to less than 100 wt% which implies that other components are required to be present. The scope of the instant claims 2-20, including claims 12 and 13, due to their dependence from claim 1. The scope of the instant claims is therefore not clear.
It is not clear if the claim language is intended to mean that one may choose (1) 2 to less than 50 wt% of greater than 20 to less than 50 wt% of poly(ethylene terephthalate), or (2) 2 to less than 50 wt% of 2 to less than 50 wt% of a poly(ester) different from poly(ethylene terephthalate), or (3) 2 to less than 50 wt% of a combination of 1-49 wt% of poly(ethylene terephthalate) and 1-49 wt% of a poly(ester) different from poly(ethylene terephthalate).
The latter lack of clarity results from the claims not particularly pointing out and distinctly claiming the basis of the percentages of the instant claims, e.g. the entire composition adding up to 100%, the portion of the composition referenced adding up to 100%, or some other basis.
The scope of the instant claims is therefore not clear.
For examination purposes any of the above claim interpretations will be used to apply prior art.
B. 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 3 recites the broad recitation “a C1-10 hydrocarbyl”, and the claim also recites the narrower limitation following “such as”, which is the narrower statement of the range/limitation. The claim is 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.
C. 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 20 recites the broad recitation “handheld electronic device housing”, and the claim also recites the narrower limitation following “such as”, which is the narrower statement of the range/limitation. The claim is 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.
D. It is not clear what is required by “isoterephthalic acid” of the instant claims 12 and 13. Since “terephthalic acid” is recited next, it is assumed that isophthalic acid was intended. The scope of the claims is not clear because “isoterephthalic acid” of the instant claims 12 and 13 is undefined and is not a conventional term in the art. It appears to be a typographical error.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3110886 Chen et al.
Regarding claims 1, 3-6, 8-10, 12, and 16-17:
Chen discloses a polycarbonate composition containing poly(carbonate-co-monoarylate ester) in amounts of 5 to 50 weight percent which includes amounts thereof which fall within the scope of the instant claims 1, 3, 4-6, and 8-10.
See Chen, paragraphs [0003], noting the block polyester carbonate and the structure thereof, [0006], [0044], of which the structure s therein fall within the scope of the instant claim 3, except for the X:Z ratio, [0045], [0046], noting the various amount ranges, [0056], and [0063], noting Table 1, noting the amounts of carbonate and ester units of ITR-PC1 and ITR-PC2, which fall within the scope of the instantly claimed X:Z ratios. These ratios give the particulars of the instant claims 5 and 6 with the bonding of the resorcinol ester units to the carbonate units necessarily giving some resorcinol carbonate units within the amounts of the instant claims 5, 6, and 16. See MPEP 2112.
Chen discloses compositions containing polyesters falling within the scope of the instantly claimed poly(ester) compositions at paragraphs [0006], [0030]-[0042], and [0056]. Chen discloses using these polyesters in amounts of 5 to 35 weight percent of the total composition, which falls within the scope of the instantly claimed amounts thereof by one of the interpretations of the instantly claimed amounts discussed in paragraph 2.A. above.
Additionally, the amounts of the block polycarbonate-polysiloxanes of Chen fall within the scope of any additional ingredients and amounts thereof of the instantly claimed poly(ester) compositions because the additional ingredients are not specified.
The polyesters of Chen which are different than poly(ethylene terephthalate) fall within the scope of the instant claims 8-9 and 17.
Chen discloses compositions containing homopolycarbonate of the instant claims at paragraphs [0006], [0007], noting “polymer or copoplymer” which indicates that “polymer” means “homopolymer”, [0008]-[0009], [0010], of which “at least 90 percent” includes homopolymers, [0056], [0057], [0060], and [0063], noting Table 1. These polycarbonates of Chen do not require further units and therefore fall within the scope of the instantly claimed homopolycarbonates.
Chen discloses using these polycarbonates in amounts of 5 to 50 weight percent of the composition at paragraphs [0013] and [0056], which falls within the scope of the amounts of homopolycarbonates of the instant claims 1.
Chen discloses using homopolycarbonates falling within the scope of those of the instant claims 10 and 12 at paragraph [0011], noting that the lower molecular weight polycarbonate of paragraphs [0010] and [0011] falls within the scope of the instant claim 10 and the other polycarbonate is encompassed by the open language of the instant claim 10.
The additional polymers of Chen are encompassed by the open language of the instant claims.
Regarding claim 2:
Chen, paragraph [0001], describes polycarbonates as giving good heat resistance. Chen describes their compositions as maintaining the impact strength and heat resistance of polycarbonates. The compositions of Chen are similar to those of the instant claims. The good heat resistance and impact resistance of Chen indicates that their products have the heat deflection temperature of the instant claim 2. Similar compositions are expected to have similar properties. The compositions of Chen are therefore expected to necessarily and inherently have the heat deflection temperature and gloss value of the instant claim 2. See MPEP 2112.
Regarding claims 7 and 11:
The instant claims 7 and 11 further describe the poly(aliphatic ester-carbonate) of claim 1 but does not require it to be chosen. The above compositions of Chen therefore fall within the scope of the instant claims even if they do not contain this poly(aliphatic ester-carbonate) of claims 7 and 11.
Regarding claims 14-15 and 19-20:
Chen discloses making molded articles from their polycarbonate compositions which fall within the scope of the instant claims 14-15 and 19-20. See Chen, paragraph [0058], noting the articles and molding processes. Based on Chen, paragraph [0001], particularly the discussion of housing parts therein, it is expected that the articles of Chen, paragraph [0058], are intended to include the housings of the instant claim 20.
Regarding claim 18:
Chen does not disclose their compositions as being useful for making the automotive components of the instant claim 18. The broad recitation of “consumer electronic devices” includes car stereos and other electronic components that are used inside cars.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the plastic compositions of Chen in making consumer electronic devices for use inside automobiles because they are encompassed by Chen’s broad disclosure and such electronic devices would have been expected to have the benefits of Chen’s compositions, including the benefits explicitly discussed by Chen and the benefits inherently possessed by Chen’s compositions.
Regarding claims 1-11 and 14-20:
The remaining components of the instant claims are optional and therefore not required though the additives and organophosphorus flame retardants and their amounts are encompassed by Chen.
Chen does not disclose the inventions of the instant claims 1-11 and 14-20 with sufficient specificity to anticipate the instant claims.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the instantly claimed compositions from the disclosure of Chen and to make the instantly claimed articles from those compositions of Chen because they are encompassed by Chen, as discussed above, and would have been expected to have the benefits of Chen’s compositions, including the benefits explicitly discussed by Chen and the benefits inherently possessed by Chen’s compositions.
5. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2015/0197633 van der Mee et al. in view of EP 3110886 Chen et al.
Regarding claims 1, 3-13, and 16:
Mee discloses polycarbonate compositions which may contain poly(carbonate-bisphenol arylate ester), which encompasses the instantly claimed poly(carbonate-co-monoarylate ester) comprising bisphenol A carbonate units, ester units derived from isophthalic acid or terephthalic acid, and resorcinol and resorcinol carbonate units. See Mee, paragraphs [0021], [0041], noting the poly(carbonate-aryl ester) and the isophthalic acid and/or terephthalic acid, [0042], [0043], the poly(carbonate-co-monoarylate ester) and the ratio of carbonate to ester groups therein falling within the scope of those of the instant claims 1, 3-6, 12-13, and 16, [0045], [0047], noting the poly(carbonate)-co-(monoaryl arylate ester) and the ratios of carbonate to ester groups which fall within the scope of those of the instant claim 3, [0048], and [0049].
Mee’s polycarbonate compositions may also contain poly(aliphatic ester-carbonate), which encompasses the instantly claimed poly(aliphatic ester)-polycarbonate copolymers. See Mee, paragraphs [0021], noting “and a combination comprising at least one of the foregoing”, and [0052], noting the preferred poly(aliphatic ester)-polycarbonate copolymer comprising bisphenol A sebacate ester units and bisphenol A carbonate units in a molar ratio falling within the scope of the instant claim 7. This poly(aliphatic ester-carbonate) falls within the scope of the instant claims 1, 7, 11, 12, and 13. The molecular weight of Mee, paragraph [0053], falls within the scope of the instant claim 11.
Mee’s polycarbonate compositions may also contain bisphenol A homopolycarbonate. See Mee, paragraphs [0021], noting “and a combination comprising at least one of the foregoing”, [0023], noting Mee’s definition of polycarbonates as requiring bisphenol A carbonate, [0025], [0026], [0027], noting the bisphenol A, [0040], noting the bisphenol A polycarbonate homopolymer which falls within the scope of the instant claims 1, 12, and 13.
Mee, paragraph [0142], Table 2A, Components PC1, PC2, and PC5 fall within the scope of the instant claim 10.
Mee does not disclose the combinations of the above noted polycarbonates with sufficient specificity to anticipate them.
Mee does not specify the instantly claimed amounts of the above discussed polycarbonates. The amounts thereof in the combinations thereof broadly disclosed by Mee are therefore not limited and encompass all amounts of the above discussed polycarbonates.
Mee, paragraph [0074], discloses using other polymers in their polycarbonate compositions. The other polymers may be used in amounts of less than 30 wt% of the total composition (Mee, paragraph [0074]). The instantly claimed polyesters are not described.
Chen discloses using the polyesters of the instant claims 1, 8, 9, 12, 13, and 17 in similar polycarbonate compositions as those of Mee. See Chen,
Chen discloses compositions containing polyesters falling within the scope of the instantly claimed poly(ester) compositions at paragraphs [0006], [0030]-[0042], and [0056]. Chen discloses using these polyesters in amounts of 5 to 35 weight percent of the total composition, which falls within the scope of the instantly claimed amounts thereof by one of the interpretations of the instantly claimed amounts discussed in paragraph 2.A. above.
Additionally, the amounts of the block polycarbonate-polysiloxanes of Chen fall within the scope of any additional ingredients and amounts thereof of the instantly claimed poly(ester) compositions because the additional ingredients are not specified.
The polyesters of Chen which are different than poly(ethylene terephthalate) fall within the scope of the instant claims 1, 8-9, 12-13, and 17.
Regarding claim 2:
Mee, paragraph [0006], describes their polycarbonate compositions as giving good mechanical properties, including high stiffness, high strength, good impact, and good processability. The compositions of Mee are similar to those of the instant claims. The good mechanical properties of Mee and the similarity of their compositions to those of the instant claims indicates that their products have the heat deflection temperature of the instant claim 2. Similar compositions are expected to have similar properties. The compositions of Chen are therefore expected to necessarily and inherently have the heat deflection temperature and gloss value of the instant claim 2. See MPEP 2112.
Regarding claims 14-15 and 18-20:
The articles of Mee, paragraph [0140], fall within the scope of the instant claims 14 and 18-20. Note the interior lining of Mee, paragraph [0140], which falls within the scope of a fascia of the instant claim 19. Note the bezel of Mee, paragraph [0140], which falls within the scope of a headlamp assembly and a rear lamp assembly, because both can have bezels, of the instant claim 19. Note the seat components of Mee, paragraph [0140], which falls within the scope of the seating system of the instant claim 19. Note the hood of Mee, paragraph [0140], which falls within the scope of the hood of the instant claim 19. Note the monitor of Mee, paragraph [0140], which is taken as meaning monitor housing, which falls within the scope of the instant claim 20. Trains fall within the scope of automotives. Therefore, the parts of Mee, paragraph [0140], fall within the scope of the instant claim 18.
The molding method of Mee, paragraph [0146], falls within the scope of the instant claim 15.
Regarding claims 1-20:
Mee does not describe the instantly claimed compositions though they broadly encompass them.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the instantly claimed compositions from the disclosure of Mee in view of Chen because Mee discloses mixing the instantly claimed polycarbonates in combination in unlimited amounts and discloses adding other polymers in amounts of the instantly claimed polyesters, Chen discloses using the instantly claimed polyesters in the instantly claimed amounts in similar polycarbonate compositions as those of Mee, and using the instantly claimed amounts of the instantly claimed polycarbonates and polyester would have been expected to give a composition having the properties of the above discussed polycarbonates of Mee in proportion to the amounts thereof used coupled with the properties that the polyesters of Chen in the instantly claimed polyester amounts gives to the compositions of Chen.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the articles of the instant claims 14 and 18-20 by the molding method of the instant claim 15 using the compositions of the above obviousness statement because such articles and methods of making them are encompassed by Mee and the resulting articles would have been expected to have the properties of the above discussed compositions of Mee in view of Chen.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762