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 § 102
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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uekusa (JP 2018042908). Note: A machine translation is being used for JP 2018-042908.
Considering Claim 1: Uekusa teaches a composition comprising a 50/50 blend of a 4-methyl-1-pentene/alpha-olefin copolymer and a thermoplastic elastomer (Example 5), optionally mixed with 0.001 to 50 parts by mass of an inorganic filler (pg. 13-14). Thus the amount of the 4-methyl-1-pentene/alpha-olefin copolymer and thermoplastic elastomer would be less than 50 parts when mixed with the filler.
Uekusa teaches the composition as having a temperature where the loss tangent tan delta reaches the maximum of 20.1 ºC and a maximum value of the loss tangent tan delta of 1.21 (Table 2) and the melting point as being less than 160 ºC (pg. 4). Uekusa teaches the 4-methyl-1-pentene content as being 72.5 mole percent and the propylene content as being 27.5 mole percent (Table 1).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the density of the composition, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 2: Uekusa teaches the copolymer as having a tan delta peak temperature of 31 ºC and a tan delta peak value of 2.8 (Table 1).
Considering Claim 3: Uekusa teaches the filler as being calcium carbonate or talc (pg. 13-14).
Considering Claims 5 and 9: Uekusa teaches molding the composition into a sheet (Example 5).
Considering Claim 6: Uekusa teaches forming a shoe insole/daily necessity from the composition (pg. 16).
Considering Claims 7 and 8: Uekusa does not teach using the composition to form a toy or earpiece component. However, these are statements of intended use. The terms are so broad that they do not provide a specific structure, as toys can have a wide variety of shapes and sizes, and an earpiece contains a large number of components of different shape and sizes. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
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.
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 Uekusa (JP 2018042908) as applied to claim 1 above, and further in view of Goto et al. (JP 2005255917). Note: A machine translation is being used for JP 2005-255917.
Considering Claim 4: Uekusa teaches the composition of claim 1 as shown above.
Uekusa is silent towards the filler size. However, Goto et al. teaches a composition comprising a 4-methyl-1-pentene copolymer and an inorganic filler with an average particle size of 0.1 to 100 microns (Abstract). Uekusa and Goto et al. are analogous art as they are concerned with the same field of endeavor, namely 4-methyl-1-pentene copolymer compositions. It would have been obvious to a person of ordinary skill in the art to have selected a filler with the particle size of Goto et al. in the composition of Uekusa, and the motivation to do so would have been, as Goto et al. suggests, to provide sufficient mixing between the filler and the polymer (pg. 7).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767