FINAL REJECTION
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 1-8 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.
In dependent claim 1 is deemed to be indefinite in regards to the metes and bounds of the newly added limitation of: “a content of the carbon nanotubes (B) with respect to 100 parts by mass of the thermoplastic resin (A) is 0.1 to 10 parts by mass,”. Applicant’s use of the article “a” seems to imply that the listed concentration range is set forth only as one possible concentration range out of many other unspecified concentration ranges. If Applicant actually wants the metes and bounds of the scope of independent claim 1 to be limited to the set forth concentration range, applicant would need to delete the article “a” and replace it with the word --the--.
All other claims are also being rejected here because they dependent on rejected independent claim 1.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New claim 8 has a negative limitation of: “ wherein the thermoplastic resin composition does not contain glass fibers.”, which is deemed to be impermissible new matter. Please note MPEP section 2173.05(i), wherein it is disclosed that the mere absence of a positive recitation of a compound in a specification does not provide a basis for explicitly excluding the compound. Silence is not disclosure. Nor does applicant’s specification provide an intrinsic reason for the exclusion of any and all glass fibers.
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.
EXAMINATION NOTE:
Independent claim 1, which is drawn to a thermoplastic resin composition, has set forth the following method of use limitation: “and wherein a sheet having a thickness of 100 µm and formed from the thermoplastic resin composition has a sheet surface maximum height Sz of 5 µm or less, which is measured according to ISO 25178;”. As such, said method of use limitation is given little if any patentable weight in regards to the actually claimed thermoplastic composition. It should also be noted that the specifics of the method steps used (temperature die/screw/extruded, time etc.) may influence applicant’s said physical parameters of the formed 100 um thermoplastic sheet, which are in addition to the actual chemical makeup of the thermoplastic composition itself.
Claim(s) 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2016/032296 A1.
WO 2016/032296 A1 discloses a conductive thermoplastic resin composition for molded articles, the composition comprising a conductive filler and a polycarbonate resin, wherein the conductive filler contains carbon nanotube-modified glass fiber or carbon nanotube-modified glass fiber component (claim 1). WO 2016/032296 A1 further discloses that polycarbonate resin compositions can be used in electromagnetic wave shielding applications (paragraph [3]).
In particular, Applicant’s claims 1-6 are deemed to be anticipated over WO 2016/032296 A1’s Comparative Examples 1 to 3, which describe polycarbonate compositions comprising: 100 parts by weight polycarbonate resin (a thermoplastic resin), HDPE wax, Doverphos antioxidant, and 1 to 5 parts carbon nanotubes (CNT). The CNT are of the type CM-130, which is one of Applicant’s most preferred (CNT) as set forth in (Table 1) of Applicant’s Specification.
Thus, Applicant’s carbon nanotubes requirements (1) and (2) of Applicant’s independent claim 1, are fully met because WO 2016/032296 A1 employs the exact same preferred CM-130 type carbon nanotubes that Applicant uses in their invention. In any case, it is well known in the art that a compound and its properties are in separatable. Furthermore, the same reasoning applies to the CNT’s BET specific surface area according to Applicant’s dependent claim 2, as well as to the CNT volume resistivity according to Applicant’s dependent claim 3.
Furthermore, WO 2016/032296 A1’s HDPE wax component fully meets the limitation of Applicant’s dependent claim 4. Likewise, WO 2016/032296 A1’s polycarbonate resin (a thermoplastic resin) component fully meets the limitation of Applicant’s dependent claim 5. Finally Comparative Examples 1 to 3 teach that after forming the compositions into pellets, the pellets are then subjected to an injection-process to make molded articles, which fully meets the limitation of Applicant’s dependent claim 6. Also see paragraph 1 of WO 2016/032296 A1’s specification wherein forming the compositions into molded articles is directly disclosed.
As an aside, (see EXAMINATION NOTE), in Table 2 of Applicant’s specification, carbon nanotubes sold under CM-130 have a surface roughness (Ra) that falls within (0.3 to 2.8 nm). As such, if the polycarbonate compositions set forth in WO 2016/032296 A1’s Comparative Examples 1 to 3, where actually subsequently used to be make 100 micron thick sheets containing said CM-130 carbon nanotubes, said sheets would certainly have a surface maximum height Sz of 5 um or less, as measured according to ISO 25178 because it is well known in the art that a compound/composition and its properties are in separatable.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by KR 20200085506 A.
KR 20200085506 A discloses a polymer composition and composite molded article for shielding electromagnetic waves which comprises a binder resin including polyamide, polyesters and polycarbonate, and a conductive filler that includes carbon black having a specific DBP oil absorption (CB), carbon nanotubes (CNT) and carbon fibers (CF), and wherein the weight ratio (CB/CNT) of carbon black and carbon nanotubes is ≥ 1 (claims 1, 2, 9).
Specifically Applicant’s claims are deemed to be anticipated over Examples 1 to 4 which describe polyamide compositions comprising 100 parts by weight of polyamide binder resin, antioxidant, lubricant (Shinwon Chemicals, Hi-Lube, which are wax beads), 10-20 parts of carbon black, 25 parts carbon fiber, and 3 to 7 parts of carbon nanotubes of the type CM-130.
As an aside, (see EXAMINATION NOTE), in Table 2 of Applicant’s specification, carbon nanotubes sold under CM-130 have a surface roughness (Ra) that falls within (0.3 to 2.8 nm). As such, if the thermoplastic compositions set forth in KR 20200085506 A’s Examples 1 to 4, where actually subsequently used to be make 100 micron thick sheets containing said CM-130 carbon nanotubes, said sheets would certainly have a surface maximum height Sz of 5 um or less, as measured according to ISO 25178 because it is well known in the art that a compound/composition and its properties are in separatable.
Response to Arguments
Applicant's arguments filed 06/08/26 with the 132 declaration, have been fully considered but are not persuasive to overcome the prior-art rejection made over WO 2016/032296 A1 for the reasons of record above. Additional examiner comments are set forth next.
Please note that claim(s) 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2016/032296 A1 (i.e. WO) over the Comparative Examples 1 to 3, and NOT over Example 1 of WO’s invention. In applicant’s said 132 declaration, this fact seems to have been lost, since the new data, set forth in applicant’s 132 declaration, does not seem to compare applicant’s claimed invention to Comparative Examples 1 to 3.
Please note that WO’s Comparative Examples 1-3 substitute carbon nanotubes (CM-130 which are multi-walled carbon nanotubes) for WO’s conductive filler (B) which is disclosed to be carbon nanotubes selected from: (B1) carbon nanotubes modified glass fibers and/or (B2) carbon nanotubes-modified glass fiber processed product. As such, in WO’s Comparative Examples 1-3, the carbon nanotubes (CM-130) ARE NOT CARBON FIBERS, as repeatedly and erroneously expressed by applicant in their 132 declaration. While WO does require in both Example 1 (according to WO invention) and Comparative Examples 1-3, the presence of carbon fibers (i.e. Zoltek’s PX35), these carbon fibers are listed as component (C) which is in addition to conductive filler (B). Also note the thermoplastic composition made by applicant in their 132 declaration, seems to have improperly excluded the required presence of Zoltek’s PX35 carbon fibers.
The bottom line is that applicant’s 132 declaration does NOT compare applicant’s claimed invention against anyone of WO’s Comparative Examples 1-3. Thus applicant’s conclusions, as set forth in the 132 declaration, are deemed to be non-probative over the examiner’s prior-art rejection made over WO’s Comparative Examples 1-3.
Finally, in light of applicant’s new claim 7, the examiner has made a new prior-art rejection over KR 20200085506 A.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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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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/JOSEPH D ANTHONY/ Primary Examiner, Art Unit 1764
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