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 3, 4, 10, 12, and 15 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. It is unclear what is intended by the instantly claimed “application of” and “used in” of the instant claim 15. “[A]pplication” is a synonym of “use” and appears to have the same meaning in the instant claim 15. “[A]pplication” and “used” are not definite process steps. “[U]sed in” of the instant claim 15 could mean that it is used to make the claimed articles or is actually placed inside of them. The alternative meanings make the scope of the claim unclear.
See MPEP 2173.05(q) "Use" Claims [R-10.2019], particularly
“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
I. A "USE" CLAIM MAY BE REJECTED UNDER 35 U.S.C 101 AND/OR 112
It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. For failure to recite a claim within one of the statutory classes under 35 U.S.C. 101, the appropriate form paragraph is 7.05.01. For indefiniteness under 35 U.S.C. 112(b), the appropriate form paragraph is 7.34.01.”
B. It is not clear if the requirements of the instant claim 3 are a Markush group of alternatives, if some combinations of the requirements are required, or if the claim has some other meaning. The requirements cannot possibly be done simultaneously. The claim language does not make it clear where one Markush group begins and another ends. There is no recitation of “or” which indicates where one alternative ends and another begins. The claim is therefore not clear.
A similar lack of clarity is present in claim 4 because the recited limitations cannot be present simultaneously. The scope of claim 4 is unclear.
For examination purposes, the claim is taken as reading on a list of alternatives which may be singly used or used in combinations.
C. The formula of the instant claim 10 is illegible to the extent that it is not clear what is being claimed. The scope of the claim is therefore not clear.
D. The instant claim 12 recites “the processing stabilizer”. Claim 12 depends from claim 1. There is not antecedent basis in the instant claims 12 or 1 for “the processing stabilizer”. It is therefore not clear if the instantly claimed “the processing stabilizer” is referencing the stabilizer of claim 1 or requires the addition of another type of stabilizer. The scope of the claim is therefore not clear.
Claim Rejections - 35 USC § 101
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the instantly claimed “application of” and “used in” are not among the statutory categories of patentable inventions. It is noted that “application of” is taken as meaning “use of” in the instant claim 15 because “application” is synonymous with “use”.
See MPEP 2173.05(q) "Use" Claims [R-10.2019], particularly “"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."” and
“I. A "USE" CLAIM MAY BE REJECTED UNDER 35 U.S.C 101 AND/OR 112
It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. For failure to recite a claim within one of the statutory classes under 35 U.S.C. 101, the appropriate form paragraph is 7.05.01. For indefiniteness under 35 U.S.C. 112(b), the appropriate form paragraph is 7.34.01.”
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over CN 105492536 Thomas et al., the machine English translation provided by the examiner being referenced below unless otherwise noted, in view of US Pat. Application Publication No. 2019/0300709 Sparks et al. and WO 95/08011 Reichmann,
Regarding claims 1-13:
Thomas discloses a high-strength and high-heat resistant polyamide composition which may only require components falling within the scope of the instant claim 1, noting the recitation of “consisting” therein. Note the polyamide and amounts thereof which fall within the scope of the instantly claimed polyamide amounts. Note the amounts of filler, which are reinforcement, which fall within the scope of the instantly claimed reinforcement, the amounts of rare earth compound, the amounts of antioxidant, the amounts of compounds that act by free radical scavenging, and the amounts of compounds that act as stabilizers which fall within the scope of the instantly claimed ingredients. The reinforcement fillers of Thomas will necessarily give the high-strength required by the instant claims. Thomas, page 2, lines 11-12 discloses the high-heat-resistance of the instant claims. See Thomas, page 2, lines 1-6, page 3, lines 1-23, noting the cerium compounds and the effects of free radical scavengers on polyamide compositions, page 4, lines 1-12, 5, lines 1-23, noting lines 22-23, page 6, lines 1-10, noting the rare earth compounds, page 8, lines 13-23, page 9, lines 1-22, noting the amounts of stabilizers which fall within the scope of the instantly claimed stabilizers and amounts thereof, page 10, lines 1-23, page 13, lines 1-23, noting the carbon nanotubes of line 6, which fall within the scope of a portion of the instantly claimed heat-conducting masterbatch according to the instant specification, paragraph [0027], and the remainder of the document.
The reinforcing fillers of Thomas, page 8, lines 22-23, fall within the scope of the instant claims 5-6. It is noted that these fillers of Thomas are not required to contain alkali or moisture which fall within the amounts of the instant claim 6. Since glass fibers are expected to have similar properties, it is expected that the glass fibers of Thomas necessarily and inherently have the properties of the instant claim 6. See MPEP 2112.
The compounds of Thomas, page 6, lines 1-10, falls within the scope of the instant claims 7-8.
Thomas does not disclose the instantly claimed bio-based polyamide and does not disclose the carbon nanotubes in the form of the instantly claimed heat conducting masterbatch or the amounts thereof. Thomas also does not exemplify the instantly claimed combinations of ingredient and amounts thereof or disclose them with sufficient specificity to anticipate the instant claims.
The instantly claimed “polyamide resin slice”, particularly “slice” is not seen as distinguishing the instantly claimed compositions over those of the prior art because the intermediate form of the polyamide is not seen as making the final compositions different from those of the prior art. See MPEP 2112 and 2113.
It is clear from the instant specification, paragraph [0027], that the bio-based polyamides of the instant claims are commercially available polyamides which fall within the scope of the instant claims 1-4.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the known, commercially available polyamides, including the bio-based polyamides disclosed in the instant specification as the polyamides of Thomas, the first claim of page 20, line 20 to page 21, line 4, noting that the use of the pentanediamine could be done in any fraction of any of the polyamides of the disclosure of Thomas so as to encompass the polyamides and amounts thereof of the instant claims 1-4, and the use of these polyamides would have been expected to give compositions with the properties of the known, commercially available polyamides coupled with the strength and stability of the compositions of Thomas.
Reichmann discloses the combination of cuprous iodide and potassium iodide as a polyamide antioxidant combination in which the potassium iodide is a synergist at the abstract, page 2, lines 1-4, which shows the combination to be polyamide antioxidants, page 4, lines 23-30, page 7, lines 18-20, page 8, Table 1 noting the amounts of copper and potassium iodide and the entirety of the document.
It is clear from Reichmann that the instantly claimed copper salt antioxidant combination is known for giving antioxidant stabilization to polyamide compositions. This antioxidant stabilization effect would have been expected in the polyamide compositions of Thomas.
Sparks, paragraph [00211] describes the halide additive as synergistically mitigating free radical oxidation of polyamides. The entirety of the document encompasses amounts of the instant claim 9.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed copper salt antioxidant combination and its amounts of the instant claims 1 and 9 in the compositions of Thomas because such stabilizers are encompassed by Thomas and the ordinary skilled artisan reading the teachings of Reichmann and Sparks would have expected the combination of properties of the cuprous iodide and potassium iodide to give the stabilization and synergy the combination of Reichmann and Sparks teach to the compositions of Thomas.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed free radical scavengers of the instant claims 1 and 10 in the instantly claimed amounts thereof because they are encompassed by the disclosure of Thomas to use various free radical stabilizers, the instantly claimed free radical stabilizers appear to be known, commercially available free radical stabilizers according to the instant specification, paragraph [0027] and these known, commercially available free radical stabilizers would have been expected to contribute their known properties to the compositions of Thomas in proportion to the amounts thereof.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed heat-conducting masterbatch compositions of the instant claims 1 and 11 in the instantly claimed amounts because they are encompassed by the broad disclosure to use carbon nanotubes in the compositions of Thomas, the instant specification, paragraph [0027], shows these nanotube masterbatches to be commercially available products, and the known, commercially available single walled nanotube masterbatches of the instant specification would have been expected to give their known properties to the compositions of Thomas in proportion to the amount thereof.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed stabilizer of the instant claim 12 and the amounts thereof in the compositions of Thomas because stabilizers in these amounts are generally encompassed by Thomas’ broad disclosure, the instantly claimed stabilizer appears to be a known, commercially available stabilizer from the instant specification, including paragraph [0027], and the properties of the known, commercially available stabilizer would have been expected in the compositions Thomas.
The instant claim 13 further defines the dispersant but does not require it to be present. The instant claim 1 allows 0% dispersant. Thomas therefore reads on the instant claim 13.
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 of the instant claims 1-13 from the disclosures of Thomas in view of Sparks and Reichmann because such compositions are generally encompassed by this combination of prior art, as discussed above and would have been expected to give high-strength and high-heat-resistant polyamide compositions having the properties of the known bio-based polyamides and the stability provided by the above discussed combinations of stabilizers and amounts thereof.
Regarding claim 14:
The method steps of Thomas, page 14, lines 14-18 are the general process steps of the instant claim 14. Thomas does not require any moisture to be present which reads on the moisture content of the instant claim 14.
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 which are discussed above by the process of the instant claim 14 because such a process is encompassed by Thomas and would have been expected to arrive at the instantly claimed compositions having the ingredients intimately mixed into the polyamide.
Regarding claim 15:
It would appear that the uses of Thomas, page, 14, lines 3-9, noting the automotive uses, cooling chamber uses, manifold uses and similar uses of Thomas. It is not clear what specifically the instantly claimed application and “used” require.
However, making these components of Thomas from the above discussed compositions of Thomas in view of Reichmann and Sparks would appear to be such an instantly claimed application of the prior art compositions which meets the requirements of the instant claim 15.
Conclusion
7. 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