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 .
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 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.
Claims 1-10 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Senda (WO 2020235662 A1, hereinafter referring to US Patent No. 12,359,055 B2 as the English language equivalent).
Regarding claims 1, 4, and 15, Senda teaches a resin composition containing a thermoplastic resin (A), a thermoplastic resin (B), and a polar resin (C) (Abstract).
The thermoplastic resin (A) is preferably a block copolymer comprising blocks (A-1) and (A-2), wherein block (A-1) contains over 50 wt% of an aromatic vinyl compound, and wherein block (A-2) contains over 50 wt% of a conjugated diene compound (col. 5, lines 3-19). The aromatic vinyl compound may most preferably be styrene (col. 15, line 26). The thermoplastic resin (A) therefore reads on the claimed component “(C).”
The thermoplastic resin (B) preferably includes a reactive functional group and includes epoxy group-containing resins (col. 7, lines 24-27), and may include epoxy group-containing ethylene-based copolymers with contents derived from glycidyl methacrylate (col. 7, lines 42-47). These polymers may further include additional structural units including styrene (col. 8, line 17), and therefore the thermoplastic resin (B) reads on the claimed component “(D).”
The polar resin (C) is preferably at least one of a group of thermoplastic resins, including polyethylene terephthalate and polyphenylene ether resins (col. 11, lines 36-56). Both of the resins within the claimed components “(A)” and “(B)” are contained within component (C), and the phrasing of Senda which states that at least one material may be used (col. 11, line 36) implies that more than one resin may be used; therefore component (C) of Senda reads on both of the claimed components “(A)” and “(B).”
Regarding the claimed compositional limitations, the claimed compositional amounts are indicated as being relative to a total of 100 parts by mass of claimed components “(A)” – “(D).” Therefore, the claimed amounts are equivalent to weight percentage of the polymeric components.
Senda teaches that the inventive composition contains 1-30 wt% of (A), 1-30 wt% of (B), and 40-98 wt% of (C) (col. 12, lines 12-16). The amounts of (A) and (B) taught by Senda encompass/overlap the respectively claimed ranges of “(C)” and “(D),” establishing prima facie cases of obviousness.
Senda does not specify the mixing ratios when multiple components are included within component (C); nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9. In this case, Senda discloses polyethylene terephthalate and polyphenylene ether resins as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine polyethylene terephthalate and a polyphenylene ether resin in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Since Senda teaches an overall incorporation of 40-98 wt% of (C) (col. 12, lines 12-16), this 1:1 ratio corresponds to an incorporation of about 20-49 wt% of each of the polyethylene terephthalate and polyphenylene ether resins, each of which overlap the respectively claimed ranges of “(A)” and “(B),” establishing prima facie cases of obviousness.
Senda does not specify the claimed characteristics of components present within phases of other compositional components, as described in lines 18-29 of claim 1 and within claims 4 and 15. However, the instant Specification particularly states that the claimed composition may be produced merely by melting and kneading the claimed components (see instant Specification at [0098]), and specifically states that the morphology of the claimed composition, wherein claimed component “(C)” is present in both of the phases of claimed components “(A)” and “(B),” is due to the characteristics of each component (see instant Specification at [0084]). Furthermore, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or have been produced by an identical or substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. It is therefore the Office’s position that a composition containing all of the claimed polymeric components, which has been produced by the melt-mixing thereof, will inherently possess the claimed characteristics of components present within phases of other compositional components, as described in lines 18-29 of claim 1 and within claims 4 and 15.
As described above, Senda teaches all of the components as claimed. Furthermore, Senda teaches that the inventive composition may be formed by melt-kneading the components in a conventional kneading apparatus (col. 29, lines 39-49).
The claimed characteristics of components present within phases of other compositional components, as described in lines 18-29 of claim 1 and within claims 4 and 15, will therefore necessarily be present in Senda, as applied above.
Regarding claim 2, Senda teaches that the thermoplastic resin (A) may be a hydrogenated block copolymer (col. 3, lines 8-14). Senda further teaches that the block copolymer is hydrogenated (implying that both blocks are hydrogenated), and teaches hydrogenation amounts of up to 99 mol% (col. 5, lines 42-45). The hydrogenated block copolymer (A) of Senda therefore reads on the claimed hydrogenation limitations.
Regarding claims 3 and 14, Senda teaches that component (A) preferably has no functional groups from the viewpoint of production cost (col. 4, lines 63-64), and does not contemplate polymers of component (A) which have been modified with an amino group or a maleic anhydride group; however, Senda does teach that component (B), which is a modified block copolymer containing an aromatic vinyl-containing block and a conjugated diene block, and which may also be a hydrogenated product thereof (col. 6, lines 56-67), may comprise a mixture of two or more components (e.g., col. 7, lines 18-19 and col. 8, lines 61-62). Senda further teaches that this component may include styrene (col. 8, line 17), and teaches that the modification of component (B) may comprise modifying with, inter alia, maleic anhydride (col. 28, lines 55-58).
As described in the rejection of claim 1, above, the thermoplastic resin (B) of Senda reads on the claimed component “(D),” and is included in amounts ranging from 1-30 wt%. However, in the embodiment of Senda wherein component (B) comprises a mixture of two polymers, wherein one polymer is a thermoplastic copolymer containing styrene and which has been modified by maleic anhydride, said polymer also reads on claimed component “(C).” In the circumstance of claim 3, the component (A) of Senda does not read on claimed component “(C),” however the component (B) of Senda reads on both the claimed component “(C)” and the claimed component “(D),” as described in the rejection of claim 1, above.
Senda does not specify the mixing ratios when multiple components are included within component (B); nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Senda discloses maleic anhydride-modified and non-maleic anhydride-modified copolymers (B) as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine maleic anhydride-modified and non-maleic anhydride-modified copolymers in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Since Senda teaches an overall incorporation of 1- 30 wt% of (B) (col. 12, lines 12-16), this 1:1 ratio corresponds to an incorporation of about 0.5-15 wt% of each of the maleic anhydride-modified and non-maleic anhydride-modified copolymers, each of which overlap the respectively claimed ranges of “(C)” and “(D),” establishing prima facie cases of obviousness.
Regarding claim 5, Senda teaches that the vinyl aromatic block (A-1) has a weight average molecular weight ranging from 3,000 to 60,000 g/mol (col. 15, lines 61-66), which encompasses the claimed numerical range of “5,000 to 28,000.” The weight average molecular weight taught by Senda is not identical to the claimed number-average molecular weight (because the two are related but different molecular weight characteristics). However, since the range of Senda encompasses the claimed range, and since the polymer of Senda contains the same monomers (e.g., predominantly styrene), it is expected that the number average molecular weight of (A-1) block will inherently overlap the claimed range. Furthermore, the claimed number average molecular weight range of “5,000 to 28,000” will overlap the weight average molecular weight range of Senda as long as the dispersity of the claimed block copolymer is lower than or equal to 12, which practically unavoidable given the molecular weight distribution of the claimed copolymer “(C)” (designated as ranging from 1.01 to 1.50 in the instant Specification at [0071]). The molecular weight range described by Senda therefore establishes a prima facie case of obviousness with respect to the claimed molecular weight range.
Regarding claim 6, Senda teaches that the conjugated diene block (A-2) has a weight average molecular weight ranging from 15,000 to 800,000 g/mol (col. 22, lines 16-23), which encompasses the claimed numerical range of “20,000 to 150,000.” The weight average molecular weight taught by Senda is not identical to the claimed number-average molecular weight (because the two are related but different molecular weight characteristics). However, since the range of Senda encompasses the claimed range, and since the polymer of Senda contains the same monomers (e.g., predominantly diene monomers), it is expected that the number average molecular weight of (A-2) block will inherently overlap the claimed range. Furthermore, the claimed number average molecular weight range of “20,000 to 150,000” will overlap the weight average molecular weight range of Senda as long as the dispersity of the claimed block copolymer is lower than or equal to 40, which practically unavoidable given the molecular weight distribution of the claimed copolymer “(C)” (designated as ranging from 1.01 to 1.50 in the instant Specification at [0071]). The molecular weight range described by Senda therefore establishes a prima facie case of obviousness with respect to the claimed molecular weight range.
Regarding claim 7, the aromatic vinyl content of polymer (A) of Senda is provided by the block copolymer (A-1) (c.f. col. 16, lines 31-67, wherein block (A-2) is designated as a conjugated diene block, and may be 100 mol% of conjugated diene units). Furthermore, block (A-1) is preferably 50% by mass or less of polymer (A) (col. 16, lines 8-10), and block (A-1) may contain as little as about 50 mol% of the aromatic vinyl compound (col. 5, lines 3-19). Therefore, the range of aromatic vinyl within polymer (A) of Senda overlaps the claimed range of “30 to 50% by mass,” establishing a prima facie case of obviousness.
Regarding claim 8, block (A-2) of polymer (A) within Senda may comprise substantially all of the conjugated diene monomer within the polymer (c.f. col. 5, lines 27-31, where block (A-1) is indicated as most preferably being substantially 100 mol% of the aromatic vinyl compound). Furthermore, Senda teaches between 55 and 95 mol% total of 1,2- and 3,4- vinyl bond content (col. 18, lines 46-52), which overlaps the claimed range of “between 25 and 60%,” establishing a prima facie case of obviousness.
Regarding claim 9, Senda teaches a hydrogenation rate of 50 to 99 mol% (col. 5, lines 42-45), which overlaps the claimed range of “between 60% and 100%,” establishing a prima facie case of obviousness.
Regarding claim 10, Senda teaches that the hydrogenated block copolymer may have an average molecular weight ranging from 15,000 to 800,000 (col. 24, lines 22-27), which overlaps the claimed range of “10,000 to 250,000,” establishing a prima facie case of obviousness.
Regarding claim 12, as described in the rejection of claim 3, above, it would have been obvious to one having ordinary skill in the art to include a 1:1 ratio of maleic anhydride-modified and non-maleic anhydride-modified copolymers within the formulation of Senda. Furthermore, these polymers may also be hydrogenated (col. 6, line 60). This ratio falls within the claimed range of “1:9 to 9:1,” establishing a prima facie case of obviousness.
Regarding claim 13, as described above, Senda teaches that the inventive composition may be formed by melt-kneading the components in a conventional kneading apparatus (col. 29, lines 39-49). Furthermore, it is prima facie obvious to select any order of mixing ingredients (see MPEP 2144.04.IV.C.). Finally, the limitation of claim 13 is recognized as a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (see MPEP 2113.I.). In this case, the structure implied by the product-by-process limitation of claim 13 requires a mixture of claimed components “(A)” and “(C).” As described above, the mixing of these two components before the addition of other components within the formulation of Senda is prima facie obvious.
Regarding claims 16-17, Senda teaches the incorporation of additional additives including carbon black and glass fiber (col. 13, line 60 – col. 14, line 4).
Regarding claim 18, Senda teaches a molded product of the inventive composition (e.g., col. 13, line 36).
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Senda (WO 2020235662 A1, hereinafter referring to US Patent No. 12,359,055 B2 as the English language equivalent) in view of Hagan (Polymer Engineering and Science, 1966, pp. 373-376).
Regarding claim 11, Senda teaches all of the limitations of claim 1, as described above. Senda differs from claim 11 because it is silent with regard to the claimed molecular weight distribution characteristic.
In the same field of endeavor, Hagan contemplates the relationship between polymer dispersity and injection molding behavior, and describes the influence of molecular weight distributions on flow behavior (p. 373, Introductive section). Hagan utilizes two polystyrenes for experimentation, including a monodisperse sample (Đ = 1.06) and a polydisperse sample (Đ = 2.6) (p. 373, Description of Materials section), and indicates significant material property differences between the two samples, including differences in tensile strength and elongation at break (p. 373, Injection Molding and Mechanical Properties section) and differences in shear sensitivity and molding pressure requirements (p. 375, left column). Hagan therefore recognizes dispersity (Mw/Mn) as a result effective variable at least partially responsible for the mechanical, rheological, and processing properties of polymeric materials. It is prima facie obvious to discover optimum or workable ranges by routine experimentation, utilizing a result-effective variable (see MPEP 2144.05.II. A-B.). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to perform routine experimentation on the dispersities of the polymers of Senda to achieve the optimal mechanical, rheological, and molding characteristics of the inventive composition, thereby achieving the claimed dispersity range. One having ordinary skill in the art would have a reasonable expectation of success in doing so, as Hagan specifically indicates a polydispersity within the claimed range (Đ = 1.06) as improved with respect to the above-described characteristics. The polymers of Hagan, similar to those of the claimed composition, are linear polymeric structures containing styrene. Thus, the teachings of Hagan are reasonably analogous to the claimed materials such that one having ordinary skill in the art would reasonably expect similar experimental trends.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762 December 23, 2025
/MARK KOPEC/Primary Examiner, Art Unit 1762