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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 48, 53, 56, 58 and the claims dependent therefrom are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
There is no proper antecedent basis in claim 40 for the recitation of “the aromatic polymer” in each of these claims. While liquid crystal polymers are, themselves, they represent a narrower genus of materials than that embraced by the characterization “aromatic polymer(s)”.
For the purpose of evaluating the aforementioned claims against the prior art, it will be presumed that the limitations defining relative quantities of a fluorinated additive, inorganic filler, etc. are in relation to 100 parts of a liquid crystal polymer.
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 40-43, 45-46, 53-55, and 60 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamiya et al., JP 4376445.
Kamiya is directed to liquid crystal polymer-based compositions containing as essential ingredients 100 parts of the polymer and 0.01 to 20 parts of an organosiloxane copolymer adhering to formula (2) in [0005-0006] and with a dynamic viscosity spanning a range of between 2 and 100,000 Pascal.seconds, or 2,000 to 100,000,000 mPa.s. (The Examiner takes notice of the fact that, for linear polysiloxanes, (1 cst ≈ 1 mPa.s) is germane to the subject matter of claim 46.) The reference does not also disclose weight-average molecular weights of the organosiloxane component but the Examiner takes notice of the fact that at least several, if not all, of the exemplified embodiments of the silicone oils disclosed in [0031], with dynamic viscosities as high as 1,000,000 mPa.s in at least one case, will inherently be in possession of weight-average molecular weights consistent with those mandated by claim. (Applicant is reminded of the structure/property relationships where higher viscosity polymers have higher molecular weights and so, if a siloxane polymer having a kinematic viscosity of 10,000 cst complies with the molecular weight limitation as is suggested by claim 46, it follows that structurally similar polymers with higher viscosities such as in [0031] of the reference will inherently possess weight-average molecular weights of a similar magnitude. It is further noted, in this connection, that the polymers depicted in [0005] and named in [0031] are structurally analogous to those in claim 45.)
There are described in [0029, 0031] and Table 1 the makeup of exemplified embodiments where between 0.2 and 3 parts of a silicone oil are added to a blend of 70 parts of a liquid crystalline polyester and 30 parts of glass fibers in which case the requirements of both claims 41 and 42 are met.
As for claims 47 and 53-55, the incorporation of particulate fillers including silica, barium sulfate, among various others is mentioned in [0021]. A total amount of inorganic filler, that may comprise both fibrous- and particulate fillers alike, is preferably between 20 and 80 parts based on 100 parts of the liquid crystal polymer.
As for claim 60, paragraph [0013] teaches a couple of the same precursors.
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.
Claims 40-46, 48-50, 53-54, 58, and 60 are rejected under 35 U.S.C. 103 as being unpatentable over Asano et al., U.S. Patent Application Publication No. 2002/0055563.
Asano teaches a flame retardant composition containing at least the materials, and in the designated amounts, set forth in the abstract. In a lone exemplification, the composition comprises (.98)(80) = 78.4 parts of a polycarbonate, (0.02)(80) parts of a silicone compound (Shin Etsu X-40 9805), and 20 parts of liquid crystal polymer. Precursors from which the liquid crystal polymer are derive are contemplated in [0022] including several of the same ones outlined in claim 60. Normalized to 100 parts of liquid crystal polymer, the amount of silicone equates to:
1.6/20 = x/100, x =8.
Hence, the relative amount of silicone compound to liquid crystal polymer is consistent with that claimed.
Attempts to ascertain the structure/molecular weight of X-40 9805 were unsuccessful so the weight-average molecular weight of that product is not known but [0027] says that silicones having a Mw as high as 300,000 are suitable in the practice of the prior art invention. Accordingly, the prior art range taught in association with silicone weight-average molecular weight overlaps that required by claim 40. In the case 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
As for claim 43-45, paragraph [0032] states that methylphenylsilicones constitute favored permutations of the silicone additive where the mol percentage of methyl groups is at least 70% as claim 44 stipulates.
Regarding claim 46, viscosity is tied primarily to polymer structure and degree of polymerization which, in turn, is related to polymer molecular weight. To the extent that the prior art silicone polymers are comprised primarily of methyl- and phenyl substituents, with the content of methyl groups being in agreement with claim 44, and their molecular weights may be comparable to those mandated by claim 40, the skilled artisan has a reasonable expectation that the kinematic viscosity range will, likewise, be inherently equivalent.
As for claims 48 and 53, paragraphs [0034-0035] disclose the incorporation of different embodiments of a flame retardant, many of which could also be regarded as fillers insofar as they are inorganic particulate compounds, but also including polytetrafluoroethylene (PTFE). The stated quantity of this component is 0.01 to 50 parts per 100 parts of the thermoplastic component, whereas claims 48 and 53 disclose their quantities relative to the amount of a liquid crystal polymer. Still, it may be verified mathematically that the reference is encompassing of myriad compositions for which the limitations of claims 48 and 53 may be satisfied. Consider, for instance, a composition resembling that summarized in Example 1 of the reference, but where 3 parts of PTFE is added. Normalized to 100 parts of liquid crystal polymer, the amount of PTFE would be:
3/20 = x/100, x = 15,
meaning 15 parts of PTFE per 100 parts of liquid crystal polymer. It will further be noted that the abstract allows for as much as 100 parts of liquid crystal polymer per 100 parts thermoplastic so a practitioner of the prior art invention can easily conceive of compositions where the weight contribution of the liquid crystal polymer is substantially higher and the amount of the flame retardant component may be, in turn, higher but still meet the requirements of claim 48. (Claim 53 discloses a permissible ratio of inorganic filler-to-liquid crystal polymer of 10-95:100 and, therefore, there are an even much broader spectrum of compositions embraced by the reference for which its limitation would be satisfied.)
Regarding claim 54, there are listed in [0034] embodiments of an inorganic flame retardant material for which the Moh’s hardness limitation is inherently met. As evidence, see, for instance, the attached Moh’s Hardness chart from GNP Graystar verifying that at least zirconium oxide (8) and calcium carbonate (3) are in possession of this property.
As for claim 58, antistatic agents are mentioned in [0036] and, while there is no guidance as to how much of this material is to be added, one of ordinary skill is capable of optimizing its concentration to offer an acceptable level of anti-static characteristics to the composition while not having a deleterious effect on other desired properties. “where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (ie. does not require undue experimentation).” In re Aller, 105 USPQ 233. “Discovering an optimum value of a result effective variable involves only routine skill in the art.” In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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 40-63 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 10,829634. Although the claims at issue are not identical, they are not patentably distinct from each other. The only meaningful distinction between instant claim 40 and patent claim 1 is that the latter also stipulates the presence of a fluorinated additive, and the range defining the amount of the siloxane polymer indicated in the former is substantially broader but is fully encompassing of the amount of the siloxane component as defined in patent claim 1. That is to say, the subject matter of instant claim 40 is wholly encompassing of all of the breadth of patent claim 1 and more. Each of claims 41 to 63 further limits instant claim 40 in precisely the same way as do claims 2-24 of patent claim 1.
Claim 61 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,725,106. Although the claims at issue are not identical, they are not patentably distinct from each other. The only meaningful distinction between the inventions defined by instant claim 61 and patent claim 1 is that the former is directed to a composition whereas the latter is directed to an article comprising a part made of the same. Analyzed through the lens of restriction practice, had these claims been presented in the same application, they would have been related as combination-subcombination where the combination (the camera module) requires the particulars of the subcombination (the composition). In order that two claims related in this manner are restrictable (read: patentably distinct), the combination must NOT require the particulars of the subcombination. Insofar as that is not true here, the two aforementioned claims are not patentably distinct from one another.
Allowable Subject Matter
Claims 51-52 and 61-63 are objected to as being dependent upon a rejected base claim, but would be allowable over the prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 56-57 and 59 would be allowable over the prior art if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As for claims 51 and 52, Asano only makes cursory mention of PTFE, there being no indication of it being furnished in a supported form. Likewise, while antistatic compounds are mentioned, none are exemplified and the Examiner did not see that ionic liquid permutations featured prominently in the related prior art. Regarding claims 61-63, it is not clear to the Examiner that these properties are realized merely by adding a structurally similar polysiloxane compound, and in comparable quantities to a liquid crystal polymer. It is probably the case that other materials blended with these will bear some influence on the magnitude of said properties thus it cannot be stated with any authority that the prior art compositions are inherently in possession of equivalent dynamic coefficient of friction, wear depth, or spiral flow length.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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January 21, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765