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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-9 and 14 are objected to because of the following informalities:
Claim 1 recites “0.01 wt.%” in line 2. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “0.01 wt%”. Appropriate correction is required.
Claim 2 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 2 recites “75 wt.%” in line 2. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “75 wt%”. Appropriate correction is required.
Claim 3 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 3 recites “20-80 wt.%” in line 2 and “80-20 wt.% in lines 2-3. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “20-80 wt% and 80-20 wt%”. Appropriate correction is required.
Claim 4 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 5 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 6 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
In claim 6, line 2, the quotation marks around “in-situ” should be deleted.
Claim 7 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 8 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 9 recites “The composition of claim 1 wherein” in line 1. This should read “The composition of claim 1, wherein.”
Claim 14 recites “A composition comprising, polycarbonate” in line 1. This should read “A composition comprising polycarbonate.”
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.
Claim 6 recites the limitation "the nucleating agent" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "said recycled poly(ethylene terephthalate" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the recycled poly(ethylene terephthalate" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 5-11, and 13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mueller et al (WO 01/34703 A1, using the machine translation for the citations below).
Regarding Claim 1: Mueller teaches a composition comprising polycarbonate and a polyester comprising polyethylene terephthalate (p.1, line 1), wherein the polyethylene terephthalate preferably consists solely of terephthalic acid as the acid component (p.4, lines 8-10) and therefore is substantially free of isophthalic acid moieties.
Regarding Claim 2: Mueller teaches that the polyethylene terephthalate that is substantially free of isophthalic acid moieties makes up at least 90 wt% of the polyester content (p.4, lines 22-25, up to 10 wt% of the polyethylene terephthalate may be replaced by another polyester).
Regarding Claim 3: Mueller teaches 4-80 parts by weight of polyethylene terephthalate and 10-90 parts by weight of polycarbonate (p.2, line 37 – p.3, line 2), with a working example comprising 40% polycarbonate and 29.2% polyethylene terephthalate (original document, p.34, Table 1).
Regarding Claim 5: Mueller teaches nucleating agents (p.14, lines 24-26).
Regarding Claim 6: “Wherein the nucleating agent is added “is-situ” during the polymerization” is a product-by-process limitation. MPEP § 2113 states that “even 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”. Therefore, the structure implied by the process step of adding the nucleating agent in-situ during the polymerization of the polyethylene terephthalate will be considered when assessing patentability of Claim 6. However, the Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II).
Mueller teaches the inclusion of a nucleating agent in the polycarbonate/polyester composition (p.14, lines 24-26).
Regarding Claim 7: Mueller teaches that the polycarbonate has a weight-average molecular weight of 20,000-35,000 g/mol (p.7, lines 29-32).
Regarding Claim 8: Mueller teaches impact modifiers (p.13, lines 5-17).
Regarding Claim 9: Not disclosed is the Vicat softening temperature of the composition compared to the softening temperature of an otherwise identical composition wherein the polyethylene terephthalate contains isophthalic moieties. However, Mueller teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claims 10-11: Mueller teaches articles such as vehicular body parts (p.16, lines 9-13) and housings for electrical equipment (p.16, lines 29-32).
Regarding Claim 13: Mueller teaches automotive parts (p.16, lines 5-17).
Claim 14 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mueller et al (WO 01/34703 A1, using the machine translation for the citations below).
Mueller teaches a composition comprising polycarbonate and a polyester comprising polyethylene terephthalate (p.1, line 1), wherein the polyethylene terephthalate preferably consists solely of terephthalic acid as the acid component (p.4, lines 8-10) and therefore is substantially free of isophthalic acid moieties.
Not disclosed is the Vicat softening temperature of the composition compared to the softening temperature of an otherwise identical composition wherein the polyethylene terephthalate contains isophthalic moieties. However, Mueller teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 15 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mueller et al (WO 01/34703 A1, using the machine translation for the citations below).
Mueller teaches a polyester comprising polyethylene terephthalate (p.1, line 1), wherein the polyethylene terephthalate preferably consists solely of terephthalic acid as the acid component (p.4, lines 8-10) and therefore is substantially free of isophthalic acid moieties.
Not disclosed is the Vicat softening temperature of the composition compared to the softening temperature of an otherwise identical composition wherein the polyethylene terephthalate contains isophthalic moieties. However, Mueller teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al (WO 01/34703 A1, using the machine translation for the citations below) in view of Feldermann et al (US 2012/0053271 A1).
Mueller teaches the limitations of claim 1, as set forth above. Mueller further teaches that a portion of the polyethylene terephthalate may be replaced with another polyalkylene terephthalate (p.4, lines 22-25), which may comprise isophthalic acid moieties (p.4, line 37 – p.5, line 1).
However, Mueller is silent to the polyalkylene terephthalate being a recycled polyethylene terephthalate.
Feldermann teaches a composition comprising polycarbonate (para. 0021) a polyethylene terephthalate with isophthalic acid moieties (para. 0047) that is preferably a recycled material (para. 0054-0055). Feldermann and Mueller are analogous art because they are directed toward the same field of endeavor, namely impact-modified polycarbonate/polyester compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the isophthalic acid-containing polyalkylene terephthalate in the composition taught by Mueller with a recycled polyethylene terephthalate because it is an environmentally friendly material.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al (WO 01/34703 A1, using the machine translation for the citations below).
Mueller teaches the limitations of claim 11, as set forth above.
Mueller does not teach a vehicle comprising the vehicular body parts (p.16, lines 9-13) set forth above. However, one of ordinary skill in the art could easily envision incorporating the disclosed vehicular body parts into a vehicle and would be motivated to do so because the superior heat resistance of the articles taught by Mueller is crucial for easy paintability (p.2, lines 9-27).
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Light (US 4879355 A) teaches a polyester/polycarbonate composition.
Ubach (Poly(ethylene terephthalate-co-isophthalate) copolyesters obtained from ethylene terephthalate and isophthalate oligomers, 2009, Journal of Applied Polymer Science, Vol 115, Issue 3, p.1823-1830) teaches properties of polyethylene terephthalate with varying amounts of isophthalic acid groups.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767