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 .
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 1-16 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.
Claims 1 and 13, which all dependent claims depend upon, state that the Polyethylene terephthalate (PET) can comprise butanediol. If the PET comprises butanediol, is it also considered polybutylene terephthalate (PBT)? PBT also comprises units of butanediol (B) and terephthalate (T). How does that affect the weight ranges? There are multiple ways to interpret this. 1) the PET comprising butanediol is separate than PBT. 2) the PET comprising butanediol is included in the PBT weight percent, 3) PET with butanediol is PET and not PBT under some arbitrary amount of butanediol. However, the claim nor the specification clarifies this issue.
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.
Claim(s) 1-3, 6, 8-9 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2007-0055051 (herein Park) in view of KR 10-2021-0051773 (herein Yang)
In setting forth the instant rejection, the machine translations supplied with the IDS filed 7/6/23 is relied upon for both KR documents.
As to claims 1-3, 6, 8, and 13-14, Park discloses a polyester resin composition and a method of mixing the composition comprising 33 to 75 wt% polybutylene terephthalate (PBT, see abstract and examples), 10 to 40 wt% polyethylene terephthalate (PET, see abstract and examples) and 10 to 60 wt% filler including (page 10/13) a reinforcing fiber such as a glass fiber (page 6/13) and clay /mica/kaol (reading on layered clay material, see page 6/13). The PET comprises butanediol, 1,4-cyclohexanediol and/or isophthalic acid (see page 7/13).
The difference between Park and the claimed invention is that the amounts overlap the claimed range and more specifically that the claim requires the combination of fiber and clay in specific amounts, while Park teaches that both fiber and clay is suitable and broadly teaches 10 to 60 parts total of them both. However, Park exemplifies 32 wt% PBT (deduced from 45 parts), 28 wt% PET (deduced from 39 parts) and 29 wt% (deduced from 40 parts) fiber. See specifically example 4 and all working examples in general. Thus, all amounts are within the claimed range except for not comprising clay material. However, again, page 10/13 teaches clay and teaches that the amounts are added to improve mechanical properties and heat resistance and too much adversely affect surface gloss.
Therefore, it would have been obvious at the time of the invention to have added appropriate amounts of clay to the compositions of Park because one would want to improve heat resistance, mechanical properties, while balancing gloss, etc.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Moreover, Yang teaches similar compositions. See abstract and examples. Yang teaches that a weight ratio of mica to fiber is balanced to control dimensional stability, fire resistance, and impact resistance. See page 8 of Yang.Therefore, it would have been obvious at the time of the invention to have modified the composition and method of Park with a blend of mica (clay) and fiber as suggested by Yang in amounts within the claimed range because one would want to balance control dimensional stability, fire resistance, and impact resistance. See page 8 of Yang.
As to claim 9, Park discloses additives such as release agents, pigments, etc. See page 10/13. It would have been obvious to add these in the appropriate amounts, given that the main ingredients are present in at least about 70 wt% in order to yield the appropriate pigment/releasing, etc. Further, Park discloses a heat resistant fatty acid added in 1 to 2 wt% in order to improve compatibility, thus reading on processing aid. See pages 9/13 and 10/13.
As to claim 15, molded articles are taught. See page 11/13.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2007-0055051 (herein Park) in view of KR 10-2021-0051773 (herein Yang) and CN 111039571 (herein Han)
The discussion with respect to Park and Yang set-forth above is incorporated herein by reference.
In setting forth the instant rejection, the machine translations supplied with the IDS filed 7/6/23 is relied upon for the KR and CN documents.
As to claim 7, Park teaches glass fibers. See page 6/13 and examples. However, Park is silent on the specifics.
Yang teaches that the glass fiber has a cross sectional diameter of 5 to 20 µm and a length of 2 to 8 mm. See page 7/15. Yang teaches that within these ranges are optimized to balance dimensional stability, rigidity, and workability. See page 7/15.
Han teaches similar compositions that comprise PBT. See examples and page 3. Han teaches that the glass fiber comprises 54-62 wt% SiO2 (silica), 10 to 14 wt% Al2O3 (aluminum oxide), 18-22 wt% CaO (calcium oxide) 5 wt% or less of MgO (magnesia), etc. See abstract and examples. This specific composition for the glass fiber is advantageous in improving the mechanical strength, chemical stability, heat stability, viscosity, etc. See pages 3-4 of Han.
Therefore, it would have been obvious to modify the composition of Park with the specific dimensions of the glass fiber as taught by Yang because one would want to balance dimensional stability, rigidity, and workability. See page 7/15 of Yang. Further, it would have been obvious to modify the composition of Park with the specific composition of the glass fiber as taught by Yang because one would want to balance mechanical strength, chemical stability, heat stability, viscosity, etc. See pages 3-4 of Han.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2007-0055051 (herein Park) in view of KR 10-2021-0051773 (herein Yang) and WO WO 2021/020208.
The discussion with respect to Park and Yang set-forth above is incorporated herein by reference.
In setting forth the instant rejection, the machine translations supplied with the IDS filed 7/6/23 is relied upon for the KR documents. Further, the US equivalent, US 2022/0275149 (herein Tojo) is utilized as the English translation of the WO document.
As to claim 4, Park discloses that the PBT has a melting temperature of 215 to 235 oC. See page 6/13. However, Park is silent on the molecular weight.
Tojo teaches that the weight average molecular weight (Mw) of polyesters is between 10,000 and 250,000 g/mol in order for preferred flowability. See paragraph 38.
It would have been obvious at the time of the invention to have modified the molecular weight of the PBT of Park to within the claimed range as taught by Tojo because one would want to optimize the flowability and other properties. See paragraph 38 of Tojo.
As to claim 5, Park is silent on the melting point of the PET.
Tojo teaches that the melting point of a polyester preferably should be above 200 oC to improve heat resistance. See paragraph 37.
Therefore, it would have obvious at the time of the invention to have modified the melting point of the PET of Park to within the claimed range as taught by Tojo because one would want to optimize the heat resistance. See paragraph 38 of Tojo.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2007-0055051 (herein Park) in view of KR 10-2021-0051773 (herein Yang) and US 2014/0275346 (herein Peacock).
The discussion with respect to Park and Yang set-forth above is incorporated herein by reference.
In setting forth the instant rejection, the machine translations supplied with the IDS filed 7/6/23 is relied upon for the KR documents.
As to claim 16, the molded articles are for the connector of the electricity electronic use and vehicle, socket and fuse case. See page 11/13. However, Park is silent on the claimed control units.
Peacock discloses similar polyester compositions. See abstract and examples. Peacock teaches that polyester compositions may be utilized for electric and electronic components such as engine control unit (ECU). See paragraph 157.
It would have been obvious at the time of the invention to have modified the composition of Park for molded articles such as ECU as taught by Peacock because one would want to utilize the composition for intended uses for polyester compositions. See paragraph 157 of Peacock.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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