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 Objections
Claim 1 is objected to because it not immediately clear that the “specific terminal property” of line 2 is the same as the “hemiformal terminal group” of the second-to-last line.
Appropriate correction is required.
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.
Claim 8 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 8, the step of “using” is indefinite because it is not clear what steps of using improve acid resistance.
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 of this title, 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Arai (WO 2018/180078) in view of Hase (US 7,893,140).
It is noted that the international Patent Application WO publication is being utilized for date purposes. However, since WO 2018/180078 is in Japanese, in the discussion below, the US equivalent for WO 2018/180078, namely US 10,844,191, is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
With respect to claims 1, 2, and 6-9, Arai discloses a polyacetal resin composition which can minimize degradation of a molded product produced from the composition when the molded product is in contact with an acidic cleaner (abstract)—wherein the composition comprises 100 parts by mass of a polyacetal copolymer having hemiformal terminal group content of 0.8 mmol/kg or less, 0.1-1.0 parts by mass of hindered phenol-based antioxidant, 0.1-1.0 parts by mass of an oxide or hydroxide of magnesium or zinc (abstract). Also included is 0.5-3.0 parts by mass of polyalkylene glycol (col. 11, lines 13-15).
Arai teaches that other components such as “known stabilizers for polyacetal resin compositions may be added” (col. 7, lines 1-6) but fails to disclose adding a hindered amine compound or an ultraviolet absorber in claimed amounts.
Hase discloses a polyacetal resin composition comprising a polyacetal copolymer having 1.0 mmol/kg or less of hemiformal terminal group, hindered phenol-based antioxidant, a hindered amine light stabilizer, and a UV absorber (abstract). Hase discloses that the hindered amine is added in an amount of 0.2-1 parts and that the UV absorber is added in an amount of 0.2-1 part by weight per 100 parts by weight polyacetal copolymer (col. 23, line 11 to col. 24, line 15). Hase teaches that the combination of specific ingredients provide for a molded article that generates an extremely small quantity of formaldehyde but also exhibits excellent weathering (light) resistance (Tables 1 and 2, col. 23, lines 1-9), wherein the molded article finds use in automotive parts (col. 15, line 36).
Given that both Arai and Hase are drawn to polyacetal resin compositions for use in automotive parts with low hemiformal terminal content and further given Arai discloses adding “known stabilizers” to its polyacetal resin composition, it would have been obvious to one of ordinary skill in the art add the hindered stabilizer and UV absorber advantageously used in Hase’s polyacetal composition to Arai.
With respect to claim 3, Arai discloses that the BET surface area of the magnesium oxide is 100 m2/g (col. 11, lines 10-11).
With respect to claims 4 and 5, Hase discloses that the UV absorber is 2-(2H-benzotriazole-2-yl)-4,6-bis(1-methyl-1-phenylethyl)phenol or N-(2-ethylphenyl)-N’-(2-ethoxy-phenyl)oxalic diamide (i.e., claimed N-(2-ethylphenyl)-N’-(2-ethoxyphenyl)oxamide) (col. 24, lines 24-28).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,037,487 in view of Hase (US 7,893,140). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claims 1 and 2, claim 1 of US ‘487 is a polyacetal resin composition comprising 100 parts by mass (pbm) polyacetal copolymer having hemiformal terminal group amount of 0.8 mmol/kg or less, 0.2-2.0 pbm hindered phenol-based antioxidant, 2.0-20 pbm magnesium and/or zinc oxide, and 0.5-3.0 pbm polyalkylene glycol.
The claims of US ‘487 do not include a hindered amine compound or an ultraviolet absorber in claimed amounts.
Hase discloses a polyacetal resin composition comprising a polyacetal copolymer having 1.0 mmol/kg or less of hemiformal terminal group, hindered phenol-based antioxidant, a hindered amine light stabilizer, and a UV absorber (abstract). Hase discloses that the hindered amine light stabilizer is added in an amount of 0.2-1 parts and that the UV absorber is added in an amount of 0.2-1 part by weight per 100 parts by weight polyacetal copolymer (col. 23, line 11 to col. 24, line 15). Hase teaches that the combination of specific ingredients provides for a molded article that generates an extremely small quantity of formaldehyde but also exhibits excellent weathering (light) resistance (Tables 1 and 2, col. 23, lines 1-9), wherein the molded article finds use in automotive parts (col. 15, line 36).
Given that both the claims of US ‘487 and the disclosure Hase are drawn to polyacetal resin compositions comprising a polyacetal with low hemiformal terminal content and further given that Hase teaches that a specific combination of antioxidant, hindered amine light stabilizer, and UV absorber provides for improved weathering properties, it would have been obvious to one of ordinary skill in the art add the hindered amine light stabilizer and UV absorber to the composition to the claimed by US ‘487.
With respect to claim 3, see claim 2 of US ‘487.
With respect to claims 4 and 5, Hase discloses that the UV absorber is 2-(2H-benzotriazole-2-yl)-4,6-bis(1-methyl-1-phenylethyl)phenol or N-(2-ethylphenyl)-N’-(2-ethoxy-phenyl)oxalic diamide (i.e., claimed N-(2-ethylphenyl)-N’-(2-ethoxyphenyl)oxamide) (col. 24, lines 24-28).
With respect to claims 6-9, see claims 3-6 of US ‘487.
Claims 1-9 is/are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 12,037,487 in view of Hase (US 7,893,140).
The applied reference has a common Applicant, at least one common Inventor, and a common Assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). See the rejection set forth in paragraph 5 above.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,891,504 in view of Hase (US 7,893,140). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claims 1 and 2, claim 1 of US ‘504 is a polyacetal resin composition comprising 100 parts by mass (pbm) polyacetal copolymer having hemiformal terminal group amount of 0.8 mmol/kg or less, 0.5-3 pbm antioxidant, 3-12 pbm magnesium and/or zinc oxide, and 0.5-3.0 pbm polyalkylene glycol.
The claims of US ‘504 do not include a specific antioxidant or hindered amine compound or an ultraviolet absorber in claimed amounts.
Hase discloses a polyacetal resin composition comprising a polyacetal copolymer having 1.0 mmol/kg or less of hemiformal terminal group, hindered phenol-based antioxidant, a hindered amine light stabilizer, and a UV absorber (abstract). Hase discloses that the hindered amine light stabilizer is added in an amount of 0.2-1 parts and that the UV absorber is added in an amount of 0.2-1 part by weight per 100 parts by weight polyacetal copolymer (col. 23, line 11 to col. 24, line 15). Hase teaches that the combination of specific ingredients provides for a molded article that generates an extremely small quantity of formaldehyde but also exhibits excellent weathering (light) resistance (Tables 1 and 2, col. 23, lines 1-9), wherein the molded article finds use in automotive parts (col. 15, line 36).
Given that both the claims of US ‘504 and the disclosure Hase are drawn to polyacetal resin compositions comprising a polyacetal with low hemiformal terminal content and further given that Hase teaches that a specific combination of antioxidant, hindered amine light stabilizer, and UV absorber provides for improved weathering properties, it would have been obvious to one of ordinary skill in the art add the hindered phenol antioxidant, hindered amine light stabilizer, and UV absorber to the composition claimed by US ‘504.
With respect to claim 3, see claim 2 of US ‘504.
With respect to claims 4 and 5, Hase discloses that the UV absorber is 2-(2H-benzotriazole-2-yl)-4,6-bis(1-methyl-1-phenylethyl)phenol or N-(2-ethylphenyl)-N’-(2-ethoxy-phenyl)oxalic diamide (i.e., claimed N-(2-ethylphenyl)-N’-(2-ethoxyphenyl)oxamide) (col. 24, lines 24-28).
With respect to claims 6-9, see claims 3-6 of US ‘504.
Claims 1-9 is/are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 11,891,504 in view of Hase (US 7,893,140).
The applied reference has a common Applicant, at least one common Inventor, and a common Assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). See the rejection set forth in paragraph 7 above.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,634,576 in view of Hase (US 7,893,140). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claims 1-3, claim 1 of US ‘576 is a polyacetal resin composition comprising 100 parts by mass (pbm) polyacetal copolymer having hemiformal terminal group amount of 0.2-0.8 mmol/kg, 1.1-2.0 pbm hindered phenol-based antioxidant, 6-15 pbm magnesium oxide having BET surface area of 100-155 m2/g, and 2-5 pbm polyalkylene glycol.
The claims of US ‘576 do not include a hindered amine compound or an ultraviolet absorber in claimed amounts.
Hase discloses a polyacetal resin composition comprising a polyacetal copolymer having 1.0 mmol/kg or less of hemiformal terminal group, hindered phenol-based antioxidant, a hindered amine light stabilizer, and a UV absorber (abstract). Hase discloses that the hindered amine light stabilizer is added in an amount of 0.2-1 parts and that the UV absorber is added in an amount of 0.2-1 part by weight per 100 parts by weight polyacetal copolymer (col. 23, line 11 to col. 24, line 15). Hase teaches that the combination of specific ingredients provides for a molded article that generates an extremely small quantity of formaldehyde but also exhibits excellent weathering (light) resistance (Tables 1 and 2, col. 23, lines 1-9), wherein the molded article finds use in automotive parts (col. 15, line 36).
Given that both the claims of US ‘576 and the disclosure Hase are drawn to polyacetal resin compositions comprising a polyacetal with low hemiformal terminal content and further given that Hase teaches that a specific combination of antioxidant, hindered amine light stabilizer, and UV absorber provides for improved weathering properties, it would have been obvious to one of ordinary skill in the art add the hindered amine light stabilizer and UV absorber to the composition to the claimed by US ‘576.
With respect to claims 4 and 5, Hase discloses that the UV absorber is 2-(2H-benzotriazole-2-yl)-4,6-bis(1-methyl-1-phenylethyl)phenol or N-(2-ethylphenyl)-N’-(2-ethoxy-phenyl)oxalic diamide (i.e., claimed N-(2-ethylphenyl)-N’-(2-ethoxyphenyl)oxamide) (col. 24, lines 24-28).
With respect to claims 6-9, see claims 2-5 of US ‘576.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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