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
Applicant’s election without traverse of Group I (claims 1-12 and 15) in the reply filed on 5/7/2026 is acknowledged.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
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, 5-12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (US 20190085165 A1).
Regarding claims 1-2 and 5-9, 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.
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.
Regarding claim 12, Choi does not teach any functionalized carbon nanotubes. Therefore, it is expected that the carbon nanotubes are non-functionalized.
Regarding claim 15, 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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi as applied to claim 1 above, further in view of Banerjie et al (US 20210155775 A1).
Regarding claims 3-4, Choi teaches the composition in claim 1. 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 [0075], which is used in an amount of from about 0.1 wt % to about 10 wt % [0016].
It would have been obvious to one of ordinary skill in the art at the time of filing to add about 0.1 wt % to about 10 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, 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 microcrystalline cellulose to Choi’s composition to achieve enhanced strength, as desired by Choi [0057, 0065].
The 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.
Conclusion
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
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