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 .
Election/Restrictions
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/7/2026.
Response to Amendment
The amendment filed on 9/8/2026 has been entered. Claim(s) 1, 4 and 15 is/are currently amended. Claim(s) 3 has/have been cancelled. Claim 16-18 are new. Claim(s) 1-2 and 4-18 is/are pending with claim(s) 13-14 withdrawn from consideration. Claim(s) 1-2, 4-12 and 15-18 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 9/8/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the cited references fail to disclose the MCC of amended claims 1 and 15 because the cellulose material in Banerjie is a nanoscale material. As acknowledged by the Examiner, the nanocellulose materials described in Banerjie are "nanometer-sized," with a size of from 0.01 nanometers (nm) to 1000 nm (1 pm). Banerjie, para. [0076]. In contrast, the composition according to amended claims 1 and 15 includes a microcrystalline cellulose material having micron-sized domains of from greater than 1 micron (pm) to 100 pm. The examples in the present disclosure include micro-scale cellulose having a particle size of 51 pm, over 50 times greater than the upper limit in Banerjie. Application, Table 2. Accordingly, the claimed microcrystalline cellulose material is distinct from the nanocellulose material described in Banerjie at least because the Banerjie describes nanocellulose materials having a different particle size than those of amended claims 1 and 15.
In response, Banerjie teaches that “nanocellulose” is broadly defined to include a range of cellulosic materials, including but not limited to microfibrillated cellulose, nanofibrillated cellulose, microcrystalline cellulose, nanocrystalline cellulose, and particulated or fibrillated dissolving pulp [0075]. “Nanofibrillated cellulose” or equivalently “cellulose nanofibrils” means cellulose fibers or regions that contain nanometer-sized particles or fibers, or both micron-sized and nanometer-sized particles or fibers. “Nanocrystalline cellulose” or equivalently “cellulose nanocrystals” means cellulose particles, regions, or crystals that contain nanometer-sized domains, or both micron-sized and nanometer-sized domains. “Micron-sized” includes from 1 μm to 100 μm and “nanometer-sized” includes from 0.01 nm to 1000 nm (1 μm). Larger domains (including long fibers) may also be present in these materials [0076].
Therefore, “micron-sized” includes from 1 μm to 100 μm and “nanometer-sized” includes from 0.01 nm to 1000 nm (1 μm) are both covered by Banerjie’s teaching.
Applicant argued that Choi teaches against limiting its CNTs to having an aspect ratio of less than 200. Choi explains that higher aspect ratios are preferred in to increase conductivity. Specifically, Choi discloses that its carbon nanotubes "have great aspect ratio and specific surface area," and, more specifically, that "within [the specified] diameter and length ranges, the carbon nanotubes may have an aspect ratio of about 100 to about 1,000 to improve electrical conductivity of the conductive polyamide/polyphenylene ether resin composition."Page 6 of 8 Choi, paras. [0099], [0101], [0102]. Choi's stated purpose for its conductive filler is thus to maximize the aspect ratio for conductivity, running contrary to the aspect ratio recited in claims 1 and 15, which is limited to "less than 200."
In response, Choi broadly teaches the carbon nanotubes’ aspect ratio of 20-1000 as stated in the 103 rejection, which overlaps the claimed range of less than 200. Even the narrowed range of about 100 to about 1,000 of Choi’s aspect ratio overlaps the claimed range. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I). Applicant needs rebut a prima facie case of obviousness by showing the criticality of the range, that the claimed range achieves unexpected results relative to the prior art range (MPEP2144.05.III).
Applicant argued that the data in the present application demonstrate the synergistic effect of the claimed composition. As shown in Fig. 2, combining a low-aspect-ratio carbon nanotube (aspect ratio 50) with 1 wt% microcrystalline cellulose produced a 531% improvement in creep, far exceeding the 407% improvement that would be expected from adding the improvement observed for 1 wt% of that carbon nanotube alone (362%) and 1 wt% microcrystalline cellulose alone (45%). By contrast, combining a high-aspect-ratio carbon nanotube (aspect ratio 909) with 1 wt% microcrystalline cellulose produced only a 179% improvement in creep, falling below the 206% improvement predicted by simple addition (161% + 45%). Application, Fig. 2. Further to the point, the data show that creep performance decreases as the CNT aspect ratio increases.
In response, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 1 recites carbon nanotubes having an aspect ratio less than 200. However, the data in the specification only shows that carbon nanotubes having maximum aspect ratio of 147 (CNT-2) [Table 4 spec.] can have the synergistic effect [Fig. 2]. It is not known if carbon nanotubes having aspect ratio of near 200 will have the synergistic effect. The claim recites a microcrystalline cellulose material having micron-sized domains of from greater than 1 micron to 100 micron. However, the data only employs one microcrystalline cellulose material having particle size 51 micron [Table 2 spec.]. It is not known of microcrystalline cellulose material having particle size of 1 micron and 100 micron will have the synergistic effect.
Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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(s) 1-2, 4-12 and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (US 20190085165 A1) in view of Banerjie et al (US 20210155775 A1).
Regarding claims 1-2, 4-9, Choi teaches a composition for automotive molded article, comprising 35 wt % to 90 wt % (more preferably 40 wt % to 80 wt %) of a polyamide and 0.1-5 wt% of a conductive filler [0019]. The polyamide includes polyamide 6 and polyamide 66 [0022]. The conductive filler includes carbon fibrils, preferably carbon nanotubes having a diameter of 0.5 nm to 100 nm and a length of 0.01 μm to 100 μm [0096, 0099, 0101].
The examiner submits that polyamide 6 and polyamide 66, commonly referred to as Nylon-6 and Nylon-6,6, read on the claimed semicrystalline polymer as specified in claims 2 and 8, as evidenced by the applicant [0027 spec.]. The content of 40 wt % to 80 wt % falls within the claimed range of from about 40 wt% to about 95 wt%.
The carbon nanotubes with a diameter of 0.5 nm to 100 nm and a length of 0.01 μm to 100 μm have aspect ratio of 20-1000, as calculated by the examiner, overlapping the claimed less than about 200 in claim 1, less than about 160 in claim 5, less than about 70 in claim 6, and less than about 50 in claim 7, respectively. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Thus, the 0.1-5 wt% of the carbon nanotubes read on the claimed from about 0.1 wt. % to about 5 wt. % of carbon nanotubes.
Choi does not teach that the composition further comprises a microcrystalline cellulose material.
In the same field of endeavor, Banerjie teaches a polymer-nanocellulose composite composition for automotive molded articles, comprising a polymer, nanocellulose and a functional filler [0030, 0085, 0305]. The polymer includes polyamides [0063]. The functional filler includes carbon nanotubes [0030]. The nanocellulose include microcrystalline cellulose having particle size of 1 μm to 100 μm [0075-0076], which is used in an amount of from from about 0.1 wt % to about 5 wt % [0016]. Banerjie teaches that microcrystalline cellulose enhances strength [0306].
It would have been obvious to one of ordinary skill in the art at the time of filing to add from about 0.1 wt % to about 5 wt % of microcrystalline cellulose in Choi’s composition, as it is expressly disclosed as being useful in this application. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. In addition, it would have been obvious to one of ordinary skill in the art at the time of filing to add microcrystalline cellulose to Choi’s composition to achieve enhanced strength, as desired by Choi [0057, 0065].
The microcrystalline cellulose having particle size of 1 μm to 100 μm meets the claimed range of 1 μm to 100 μm.
The amount of from about 0.1 wt % to about 5 wt % of microcrystalline cellulose meets the claimed from about 0.01 wt. % to about 8 wt. % of a microcrystalline cellulose material.
The recited “wherein the composition exhibits a percent improvement in creep of at least 40% when measured in accordance with ASTM E139” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
The combined weight percent value of all components does not exceed 100 wt. %, and all weight percent values are based on the total weight of the composition.
The recited “the composition exhibits a percent improved creep of at least 100% compared to a neat sample of thermoplastic resin” in claim 9 is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claims 10-11, Choi teaches that the composition may further include additives such as a flame retardant, a lubricant, a plasticizer, an antioxidant, a colorant, in an amount of about 0.1 to about 10 parts by weight relative to 100 parts by weight of the base resin [0106, 0114]. The amount falls within the claimed range of from about 0.01 wt. % to about 25 wt. % of at least one additional additive. B amount of about 0.1 wt % to about 10 wt % of microcrystalline cellulose overlaps the claimed from about 0.01 wt. % to about 8 wt. % of a microcrystalline cellulose material.
Regarding claim 12, Choi does not teach any functionalized carbon nanotubes. Therefore, it is expected that the carbon nanotubes are non-functionalized.
Regarding claims 15-16, Choi teaches a composition comprising 40 wt % to 80 wt % of a polyamide and 0.1-5 wt% of a carbon nanotubes having aspect ratio of 20-1000, wherein the combined weight percent value of all components does not exceed 100 wt. %, and all weight percent values are based on the total weight of the composition, the recited improvement in creep is a property of the product, as stated above. Banerjie’ amount of from about 0.1 wt % to about 5 wt % of microcrystalline cellulose meets the claimed from about 0.01 wt. % to about 8 wt. % of a microcrystalline cellulose material.
Regarding claims 17-18, Banerjie’ amount of from about 0.1 wt % to about 5 wt % of microcrystalline cellulose overlaps the claimed from about 0.5 wt. % to about 3 wt. % of a microcrystalline cellulose material.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
