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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meyer et al US10035884 B2.
Regarding claims 13-15, Meyer teaches polysiloxane-polycarbonate block copolymers where the polysiloxane content is about 5 wt.% based on the feed rates in table 1 Col. 24. The polycarbonate is 13.5 kg/h, the catalyst MB is 1.5 kg/h, the polysiloxane is 0.75 kg/h, which totals 15.75 kg/h, and the polysiloxane makes up 0.75/ 15.75 = 4.8% of that, which reads on the polysiloxane content of claims 13-14. The relative solution viscosity for example 2, shown in table 1, is 1.282, which anticipates the claimed range in claims 13-14.
In table 5, Col. 25, inventive example 2 has 99.6% of the siloxane domain size <200 nm, with a d min of 11 nm, anticipating the proportion of polysiloxane domains between 12-200 nm being more than 99% for claims 13-14.
Meyer teaches the block copolymers can be processed to form mouldings or shaped articles by hot pressing, spinning, blow-moulding, thermoforming, extrusion, or injection moulding to form products, Col. 19 lines 48-55, which reads on claim 15.
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.
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.
Claims 1-12, 16 rejected under 35 U.S.C. 103 as being unpatentable over Meyer et al, US10035884 B2 in view of Koenig et al, EP0864599 and further in view of Naef, R. DE19535817A1.
Regarding claim 1, 4-5, 10-11, Meyer teaches a process for continuous production of polysiloxane-polycarbonate copolymer using a high-viscosity reactor, abstract and Col. 15 line 66 to Col. 16 lines 1-4 and line 58. The polycarbonate (oligocarbonate) is mixed with a hydroxyaryl polysiloxane of formulas 2a and 2b, Col. 9 lines 10-25, forming a reaction mixture, see Col. 16 lines 4-5 and line 54-55, where the feedstocks and catalysts are mixed together. Meyer teaches the polysiloxane is prepared in a reaction flask equipped with a stirrer, Col. 21 lines 66-67, which reads on claim 11.
Meyer further teaches the preferable addition of co-catalysts in the form of an alkali metal salt or earth alkaline metal salts, Col. 14 lines 57-60, and is used in an amount of 0.0005 mmol/kg- 5 mmol/kg based on the total weight of the siloxane, polycarbonate, and the co-catalyst salt, Col. 15 lines 25-32. Which in turn calculates out to 2.5*10-6 mmol/kg to 2.5 mmol/kg of polysiloxane component because Meyer teaches the polysiloxane makes up 0.5-50 wt.% of the composition, Col. 13 lines 38-46, and overlaps with the claimed amounts of co-catalyst; where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The reaction mixture, after melt blending, is conveyed into the high viscosity mixer through the inlet and polycondensation occurs under preferred temperatures of 280-380°C, and preferred pressures of 0.03 mbar to 5 mbar, Col. 13 lines 50-55, which reads on the claimed temperatures and pressures of claims 1, 2, and 4.
The polycondensate is then discharged from the high viscosity reactor, Col. 17 lines 50-55, and Col. 23 line 40.
Meyer exemplifies a polycarbonate used in the reaction of the examples which has an OH end group amount of 600 ppm, Col. 21 line 53, but is silent to the claimed range of OH end groups in the broader disclosure.
Meyer is also silent to the use of the special condensation reactor of the claim as defined in ¶[0035] of the pre-grant publication, and exemplifies a horizontal high viscosity mixer for the polycondensation reaction, Col. 23 line 61, but also states in the broader disclosure that the polycondensation can be performed in other types of mixers such as a thin-film evaporator, Col. 15-16 lines 66-67, and 1-3.
Koenig discloses polysiloxane-polycarbonate copolymers, ¶[0001], formed from the polycondensation of hydroxyaryl polysiloxanes ¶[0017] and oligocarbonates derived from diphenols ¶[0019]. The oligocarbonates are exemplified as having relative solution viscosities of 1.123 and phenolic OH content of 1900 ppm before reacting with the polysiloxane, ¶[0051], which reads on the OH content of claims 1, 2, and 10 and the relative solution viscosity of claims 1, 2, and 5. The final copolymers have a range of relative solution viscosities from 1.246-1.319, see right columns of table II, page 8 of original document, which is similar to the copolymers produced by Meyer. Koenig further discloses the copolymer is also used for forming shaped articles ¶¶[0043, 0044], by injection molding, ¶[0062]. It is prima facie obvious to substitute one material for another to obtain predictable results when the materials provide the same use and function, in this case an oligocarbonate for the polycondensation reaction with a hydroxyaryl polysiloxane to form a polysiloxane-polycarbonate block copolymer.
Naef discloses a reactor for thermal processing of viscous thermoplastics known as a thin-film evaporator (TFE) or reactor, ¶¶[0001-0002]. Naef discloses that the thin-film evaporator ensures uniform distribution of the treated material and is more economically sound and efficient due to the reduction in dwell time, which also increase the quality of the product, ¶¶[0006-0008], compared to traditional polymerization and stripping methods, ¶¶[0002-0003]. Naef’s TFE satisfies the claimed special condensation reactor because it has a vertical reaction chamber, with a shaft, and blades (reads on the at least one spreader) that extend out at the circumference, which also have outer edges, they rotate at a defined distance from the outer wall, see figures 1-4 in original document and ¶¶[0045-0046, 0058, 0060]. There is a gap between the blades and the wall where the material is spread against the heating surface, ¶[0060], which also satisfies the definition of the special condensation reactor in ¶[0035] of the Pre-Grant publication of the instant specification, which applicant states in ¶[0046] that the reactor is a thin-film evaporator. Temperatures and pressures of 280°C and 0.5-1 mbar are disclosed by Naef, ¶¶[0063,0064] which are similar to the temperatures and pressures taught by Meyer. Naef further exemplifies peripheral rotor speeds of 2 m/s ¶[0063] and 1.5 m/s ¶[0065], for the conveying of the viscous polymer in the chambers, which reads on the claimed circumferential velocity of claim 1.
Naef does not disclose the application rate of the reaction mixture into the chamber but every thin-film evaporator in the as-filed examples operating within the claimed pressure and velocity has an application rate in the claimed range, therefore, one of ordinary skill in the art is reasonably suggested when measured accordingly, the thin film evaporator operating with the velocity, pressure, and amounts as claimed must also have the application rate in the claimed range.
Meyer and Koenig are analogous to the claimed invention because both are in the field of polysiloxane-polycarbonate block copolymers and their methods of making.
Naef is analogous to the claimed invention because it is in the field of thermal processing of viscous polymers.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to have practiced the invention of Meyer but substituting Meyer’s oligocarbonate for the oligocarbonate of Koenig because it would produce the predictable result of a polysiloxane-polycarbonate copolymer for forming shaped articles and further melt polymerize it in the thin-film evaporator of Naef with the motivation of using a reactor for viscous polymers that ensures uniform distribution while mixing and is more economical, efficient, and improves the quality of the end result as disclosed by Naef, and because the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.)
Regarding claim 2, the difference between claim 2 and claim 1 is that the special condensation reactor is connected in a series of reactors, while the ingredients and mixing conditions are the same. Although the cited prior art is silent to the connection of a series of reactors, it would have been obvious to one having ordinary skill in the art at the time the invention was made to connect more than one reactor together because it is a predictable arrangement for increasing the mixing/polymerization of viscous polymers. Each reactor performs the same function, and the use of an additional reactor amounts to a duplication of a known element to obtain the predictable results of a polymer blend that has been further polymerized with a high likelihood of success.
Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960).
Regarding claim 3, Meyer teaches the organic or inorganic salt that is the co-catalyst is preferably added to the siloxane in a mixture before being blended with the polycarbonate, Col. 15 lines 44-56.
Regarding claims 6-9, Meyer teaches the polysiloxane content in the block copolymer is preferably from 2.5-7.5 wt.% Col. 13 line 45, and exemplifies a polysiloxane-polycarbonate block copolymer where the polysiloxane content is about 5 wt.% based on the feed rates in table 1 Col. 24. The polycarbonate is 13.5 kg/h, the catalyst MB is 1.5 kg/h, the polysiloxane is 0.75 kg/h, which totals 15.75 kg/h, and the polysiloxane makes up 0.75/ 15.75 = 4.8% of that, which falls within the 4.5-5.5 wt.% polysiloxane content.
Regarding claim 12, Meyer and Naef disclose reaction temperatures and pressures overlapping with the claimed temperatures and pressures, as stated above for claims 1 and 2 and Naef discloses the claimed circumferential velocity, as stated above.
The difference is that the claim recites a frequency of surface renewal in the reaction chambers and an application rate. Naef discloses the reactor has a continuous surface renewal ¶[0064] but is silent to the frequency of surface renewal and the application rate.
Every thin-film evaporator in the as-filed examples operating within the claimed pressure and velocity has a surface renewal frequency and application rate in the claimed range, therefore, one of ordinary skill in the art is reasonably suggested when measured accordingly, the thin film evaporator operating with the velocity, pressure, and amounts as claimed must also have the surface renewal frequency and application rate in the claimed range.
Regarding claim 16, Meyer teaches the polycondensation reaction occurs under preferred pressures of 0.03 mbar to 5 mbar, Col. 13 lines 50-55, which overlaps with the claimed pressure.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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