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 .
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.
Claim Objections
Claim 12 is objected to because of the following informalities: Claim 12 has two periods. Claims must only have one period and must end in a period. MPEP §608.01(m). 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.
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.
Claim 14 is 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.
Regarding claim 14, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Markgraf (U.S. 20130331488 in view of Richardson (U.S. 4,845,161) and Wilhelm (WO2009103812).
Markgraf exemplifies POM1 with a terminal hydroxyl amount of 20-25 mmol/kg, 8 cm3/ 10 min MVR and exemplifies POM 1 with 15, 26, 42 wt% glass fibers (Component C), MDI coupling agent (Component B) and melamine (formaldehyde scavenger, melamine is 1,3,5-triazine-2,4,6-triamine) See Table 5 for instance and ¶[0201-0213].
Markgraf teaches ¶[0225] POM1 with a higher proportion of terminal OH groups couples the POM to the glass fibers at a significantly higher amount resulting in an improvement in mechanical properties. In ¶[0233] Margraf also exemplifies composition with POM which are tested for wear properties, indicating wear is also a concern when practicing the invention within the four corners of Markgraf.
Markgraf teaches a variety of parts for the molding compositions in applications where stiffness, tensile strength and high impact resistance are desired. Such areas include automotive parts including gears but Markgraf fails to teach parts in the automotive area related to coolant system such as tanks or hoses. ¶[0195]-¶[0197].
Richardson, working in the field of polyoxymethylene compositions for use in the automotive industry similar to Applicant and Markgraf, teaches in Column 16 lines 24-35 polyoxymethylene compositions useful in automotive applications such as gears and fuel tanks because of their extraordinary impact resistance and wear resistance.
Wilhelm, working the in field of polyoxymethylene compositions for use in the automotive industry similar to Applicant and Markgraf, also teaches polyoxymethylene polymer is particular suited for container shaped products such as tanks, pressure vessels and bottles due to its high strength, toughness, stiffness. Additionally, it is highly resist to cooling fluids and hydrocarbons. (See highlighted section of page 5 of English translation).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Markgraf to make automobile parts suggested by Markgraf such as fuel tanks or containers for liquids (which also includes a fuel tank) because Richardson and Wilhelm teach polyoxymethylene compositions with high impact resistance and tensile strength, stiffness and wear resistance are used to make tanks and liquid containers and these properties are taught or suggested by Markgraf to be possessed by Markgraf’s glass filled POM compositions for automotive parts. Additionally, Wilhelm establishes polyoxymethylene is highly resist to chemical attack as discussed above which reasonably suggests to a skilled artisan that container / fuel tanks made from Markgraf’s POM compositions are an appropriate end use for the material in light of the teachings of Richardson and Wilhelm.
One of ordinary skill in the art would have been motivated to choose the POM 1 formulations such as those in Table 5 of Markgraf in making the above containers / fuel tanks because they are exemplified and Margrafk teaches the mechanical properties are better due to the amount of terminal OH groups.
The above container / fuel tank reads over the molded article with at least a portion of fluid flow path as the hole to get the liquid or fuel into and out of the container is necessarily suggested to be present and represents said flow path.
Additionally, while Markgraf, Richardson and Wilhelm do not explicitly teach glycol compatibility or configuration in a cooling / circulating coolant circuit this is considered to be a future intended use and there is nothing of record to reasonably suggest the liquid container / fuel tank part motivated above cannot be used as a tank for a cooling system containing glycol fluid. Wilhelm actually suggests POM is resistant to many fluids and one of ordinary skill in the art is reasonably suggested by Wilhelm’s teachings glycols as a coolant would be one of these resistant fluids.
The above tanks, therefore, read over the molded article of Claim 1, reservoir expansion tank of Claim 2 (as it is simply a future intended use a claimed of any tank) and the tank itself is a housing for the liquid it contains which reads over Claim 3.
With respect to the POM limitations of the claims, as above, Markgraf exemplifies POM1 with a terminal hydroxyl amount of 20-25 mmol/kg, 8 cm3/ 10 min MVR and exemplifies POM 1 with 15, 26, 42 wt% glass fibers (Component C), MDI coupling agent (Component B) and melamine 0.11 wt% (formaldehyde scavenger, melamine is 1,3,5-triazine-2,4,6-triamine) See Table 5 for instance and ¶[0201-0213].
Markgraf teaches ¶[0225] POM1 with a higher proportion of terminal OH groups couples the POM to the glass fibers at a significantly higher amount resulting in an improvement in mechanical properties. In ¶[0233] Margraf also exemplifies composition with POM which are tested for wear properties, indicating wear is also a concern when practicing the invention within the four corners of Markgraf.
The above reads over Claim 4, Claim 5, Claim 6, Claim 7, Claim 9, Claim 10 (all terminal groups are reasonably suggested to be OH as no other end groups are taught, see also ¶[0017] more preferably at least 75 % OH terminal groups), Claim 11, and Claim 12 (MVR recited same as in Markgraf), Claim 13, Claim 14 (MDI is an organic diisocyanate), Claim 15 and Claim 16 as the glass fibers are exemplified as sized and also taught as discussed above to react the POM with the glass fibers, therefore, the sizing limitations of Claim 16 must be met.
With respect to Claim 8, Markgraf does not teach or suggest the overall MVR of the polymer composition (including glass fibers and additives along with the POM1).
In ¶[0021] Markgarf teaches the POM may have an MVR of 1-20 cm3 / 10 mins as opposed to a higher MVR for this component in ¶[0022] and POM1 is in this range above. Markgraf also teaches 5-50 wt% of the reinforcing material in ¶[0077].
It logically follows to one of ordinary skill in the art the MVR of the POM is useful for molding purposes by virtue of being a melt flow parameter.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Markgraf’s compositions using POM1 and the above reinforcing glass fibers such that the resulting compositions containing these components have a MVR in the range of POM taught discussed above, i.e. 1 to 20 cm3/10 min, because the major component (the POM) has this suggested MVR range and one of ordinary skill in the art is logically suggested as discussed above by virtue of this MVR for the major component, the resulting compositions is reasonably suggested to have a similar overall MVR range (i.e. 1-20 cm3/10 mins).
This overlaps the range of Claim 8 and there is no evidence of record to suggest there is an unexpected effect associated with the recited MVR range. The as-filed specification does not appear to disclose the exemplified MVRs of the overall composition.
With respect to Claims 17-21, these claims recite changes in material properties under certain test condition which Markgraf does not teach or suggest explicitly. However, the compositions of the above tanks made from the teachings of Markgraf and Richarson / Wilhelm have POM that meets all the material properties of Claims 1-7 and 9-13. Every example in the as-filed specification which also meets these limitations also meets the ranges of the material properties of Claims 17-21. Therefore, based on the above analysis, when tested appropriately, one of ordinary skill in the art is reasonably suggested the POM1 compositions of Markgraf discussed above must meet the material properties of Claim 17-21 because the underlying compositions are substantially similar to compositions which Applicant demonstrates have these properties and there is no evidence the shape of the article influences these material properties.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
The above reads over Claim 17, Claim 18, Claim 19, Claim 20 and Claim 21.
If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Note that if Applicant wishes to argue they have found specific POM compositions which are particularly more well-suited (i.e. unexpectantly better for a specific end use) to coolant system parts such as tanks and hoses as claimed, the claims are not in a condition where the nexus between the claims and the demonstrations of allegedly unexpected results are present. Applicant has only shown a few specific compositions comprising a variety of additives and specific POM material and has not provided demonstrations that reasonably suggest the small number of examples are probative composition of the broadest composition claim. (i.e. Claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Christopher M Rodd/ Primary Examiner, Art Unit 1766
