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 § 101 1. 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. 2. Claims 13-14 and 18 are 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 use of the claimed items in claims 13 -14 and 1 8 is not a statutory class of invention. 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. ” Claim Rejections - 35 USC § 112 3. 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 appl icant regards as his invention. 4. Claims 13 -14 and 1 8 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 definite process step or steps is or are required by the instantly claimed recitation of “Use” of the instant claims 13 -14 and 1 8 . 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.” 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 . Claim s 1 - 7 and 9- 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008 - 115295 Inoue et al. , the English translation provided by the applicant being referenced below unless otherwise noted , in view of US Pat. No. 5859137 Chou . Regarding claims 1 - 7 , 9 , and 14- 17 : Inoue, paragraphs [0007] -[ 0008], discloses a composition containing 50-90 wt % of polyester, 5-40 wt % polycarbonate, 1-30 wt % of compatibilizer that is an olefin having a functional group that reacts with a carboxyl group, and 1-40 wt % of a styrene elastomer. These ingredients encompass the instantly claimed ingredients and include amounts of the instantly claimed ingredients , including the amounts of the instant claims 1 , 4, and 17 . Paragraph [0027] of Inoue describes the styrene elastomer as imparting impact resistance which makes it an impact modifier of the instant claims. Inoue, paragraph [0030] discloses ABS as their styrenic elastomers which falls within the scope of the instant claim 9. Paragraph [0033] of Inoue describes the olefin polymer as having unsaturated carboxylic acid or derivative thereof as the functional group that reacts with a carboxyl group. The instantly claimed monovalent ionomer is not described. The polyester resin contains PET and PBT , which falls within the scope of the instant claim 5 . See Inoue, paragraph [0010] . The polycarbonate resins of Inoue, paragraphs [0021] -[ 0022], made with only the bisphenol A fall within the scope of the instantly claimed aromatic polycarbonates including those of the instant claim 7. The particularly suitable description of the bisphenol A polycarbonate of Inoue is taken as disclosing this polycarbonate with sufficient specificity to anticipate its use. Inoue discloses their ionomer as a compatibilizer at paragraph [0007]. Inoue, paragraphs [0033] -[ 0034], discloses using ethylene copolymers of monocarboxylic acid, dicarboxylic acid, and includes using combinations of their monomers. Inoue does not disclose the instantly claimed monovalent ionomer. It is taken that the instantly claimed recitation of “monovalent” regarding the ionomer references the neutralizing agent in view of the instant specification, page 6, lines 30-3 2 because the ionomer cannot otherwise be monovalent due to the dicarboxylic acids at least. It is noted that Inoue, paragraphs [0040] -[ 0041], discloses adding polyamide to the compatibilizing agent to improve rigidity and fluidity. It is thereby clear that Inoue desires improved fluidity. It is further clear that the compatibilizers of Inoue include those which are compatible with polyamides. Chou discloses ionomers which are copolymers of ethylene, monocarboxylic acid, and dicarboxylic acid which are neutralized with ions including sodium and lithium (column 4, lines 2-4). See Chou, column 3, lines 35-67, particularly 59-61. See Chou, column 1, lines 15-25, column 9, lines 9-26, 38-44, noting the ability to act as compatibilizer of line 44, and lines 45-67, and column 10, lines 1-23, noting the polyesters of line 21 and the polycarbonates of line 22 which shows that Chou’s ionomers are expected to be compatible with Inoue’s polyesters and polycarbonates and to give the improved flow and compatibilization described by Chou and desired by Inoue. The ionomers of Chou fall within the scope of the instant claims 1-3 and 14-16. Regarding claim 6: As discussed above, Inoue, paragraph [0010], discloses using combinations of PET and PBT in unlimited amounts. Inoue does not specify the amounts of each polyester of the instant claim 6. However, the lack of limits on the amounts of PET and PBT of Inoue makes Inoue encompass the instantly claimed amounts of the instant claim 6. It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the amounts of PET and PBT of the instant claim 6 in the compositions of Inoue because they are broadly encompassed by Inoue, Inoue , paragraph [0018], specifies the properties contributed by each of PET and PBT, it is within the ability of the ordinary skilled artisan to choose the desired properties for a given application and to choose the desired amounts of each of the properties of PET and PBT when mixtures thereof are used by selecting the amounts of each of PET and PBT to give the desired amounts of properties contributed by the individual polyesters, and the amounts of each of the PET and PBT would have been expected to give only predictable properties to the final composition. Regarding claims 10-1 3 and 18 : The articles of Inoue made with the above discussed compositions of Inoue fall within the scope of the instant claims 10-12. Making these articles is the “Use” of the instant claim s 13 and 18 . Regarding claims 1 -7 and 9-1 8 : Inoue does not describe the instantly claimed ionomers. It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed ionomers as the compatibilizer of Inoue because they are broadly encompassed by the carboxylic acid functional ethylene copolymers of Inoue, Chou shows such ionomers to be flow improvers and compabilizers and to be compatible with polyesters and polycarbonates, and the flow improvement and compatibilization given by Chou’s ionomers would have been expected in the compositions of Inoue. 7 . Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-115295 Inoue et al., the English translation provided by the applicant being referenced below unless otherwise noted, in view of US Pat. No. 5859137 Chou , as applied to claims 1-7 and 9-18 in paragraph 6 above, further in view of US Pat. Application Publication No. 2002/0132889 Penning et al. The discussion of paragraph 6 above is repeated here in its entirety. Inoue does not disclose the polycarbonate molecular weight of the instant claim 8. Penning, paragraph [0036] discloses weight average molecular weights of polycarbonates which include those of the instant claim 8 for use in molding compositions though they are not the compositions of the instant claims. It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed polycarbonates of the weight average molecular weights of the instant claim 8 in the above discussed compositions of Inoue in view of Chou because they are broadly encompassed by Inoue by Inoue’s lack of limiting their polycarbonate molecular weights, Penning shows such polycarbonate molecular weights to be useful in molding compositions at paragraph [0036] and the entirety of the Penning disclosure, and molecular weight is expected to give only predictable viscosity and modulus properties to the compositions of Inoue in view of Chou. Conclusion 8 . Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Value for firstName-middleName-lastName?" \* MERGEFORMAT PATRICK D NILAND whose telephone number is FILLIN "Insert your individual area code and phone number." \* MERGEFORMAT (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, FILLIN "Insert your SPE’s name." \* MERGEFORMAT Robert S Jones , can be reached at telephone number FILLIN "Insert your SPE’s area code and phone number." \* MERGEFORMAT 571-270-7733 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/ InterviewPractice . /PATRICK D NILAND/ Primary Examiner, Art Unit 1762