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 .
The amended claims of 10/20/23 are taken as being pending because the claims of 7/18/24 are not amended and are submitted in response to a Notice to File Corrected Application Papers apparently.
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. 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 1-3, 6, 8, 12-14, 17, 19, 23, and 26-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11827779 Ratnagiri. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the patented claims differ somewhat in scope, they overlap to the extent that one practicing the instantly claimed inventions would practice the patented inventions and vice versa.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 3 and 14 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.
A. It is not clear what is required by the recitations of “molecular weight” with the instantly claimed polymers of the instant claims 3 and 14. It is particularly unclear what type of polymer molecular weight is required by the recitation of only “molecular weight” regarding these polymers, e.g. number, weight, z, viscosity, or some other type of average polymer molecular weight. Odian, pages 19-24, explains the different types of average polymer molecular weights and the first full paragraph of page 23 explains the importance of specifying the type of average molecular weight.
The instant specification, page 6, fourth line defines “Mw” as weight average molecular weight. The instant specification, page 10, lines 9-10 references “a molecular weight (Mw)”, which is taken as indicating weight average molecular weight in view of the general definition of “Mw”. However, the instant specification does not define “molecular weight” per se without the recitation of “Mw”. “[M]olecular weight” of the instant claims is therefore taken as not being defined as “weight average molecular weight”. The scope of the claims is therefore not clear.
For examination purposes, any type of polymer molecular weight will be taken as reading on the instant claims.
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 1, 2, 6, 8, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 106366558 Zhang, the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
Regarding claims 1, 2, 6, and 8:
Zhang discloses compositions containing polyoxymethylene homopolymer of molecular weight 1.5-3 million and styrene maleic anhydride of molecular weight of 2500-3000 g/mol. See Zhang, page 3, lines 1-9. The amounts of POM fall within the scope of the instant claims based on only the components which fall within the scope of the instantly claimed (A), (B), and (C) and the amounts of SMA fall within the scope of the instantly claimed amounts thereof. The remaining components of Zhang fall within the scope of the instantly claimed component (C) and its amounts and/or are encompassed by the open language of the instant claims.
Zhang teaches that their compositions have excellent mechanical strength and toughness. It is noted that the high molecular weights of the POM would have been expected to contribute to this strength and toughness. The instantly claimed heat deflection temperature is expected to be necessarily inherent in the compositions of Zhang because they contain the instantly claimed components in the instantly claimed amounts, including the POM and SMA. Similar compositions are expected to have similar properties. See MPEP 2112.
Note the homopolymer of Zhang page 3, line 23 which falls within the scope of the instant claim 2.
The antioxidant of the Zhang, page 3, line 5 falls within the scope of the instant claim 6. The phenolic antioxidant of Zhang, page 3, line 13 is taken as being a sterically hindered phenolic antioxidant necessarily and inherently in order to be a phenolic antioxidant, which falls within the scope of the instant claim 8. See MPEP 2112.
Regarding claim 26:
The engineering plastic material of Zhang would necessarily be used to make an article which falls within the scope of the instant claim 26. See MPEP 2112.
Claim Rejections - 35 USC § 103
7. 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.
8. Claim 3 is are rejected under 35 U.S.C. 103 as being unpatentable over CN 106366558 Zhang, the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
The discussion of the teachings of Zhang of paragraph 6 above is repeated here.
Zhang does not describe the ratios of styrene and maleic anhydride in their styrene maleic anhydride copolymers. They also do not require acid groups in their styrene maleic anhydride copolymers which gives an acid value of 0.
It is clear from the instant specification that the styrene maleic anhydride copolymers having the instantly claimed amounts of styrene and maleic anhydride and the instantly claimed Tgs are commercially available styrene maleic anhydride copolymers. Also, the amounts of monomers dictates the Tg as evidenced by the Fox equation for determining Tg. See the instant specification, pages 16-17, noting the commercially available styrene maleic anhydride copolymers which fall within the scope of the instant claim 3.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the commercially available styrene maleic anhydride copolymers having the instantly claimed amounts of styrene and maleic anhydride and the instantly claimed Tgs because Zhang does not limit these particulars and thereby encompasses them, the ordinary skilled artisan understands from undergraduate organic chemistry that like polarity things are compatible with like polarity things and therefore the styrene maleic anhydride copolymers would need to have sufficient polarity from the maleic anhydride to be compatible with the polar POM, and it is within the ability of the ordinary skilled artisan to determine the desired amounts of styrene and maleic anhydride to achieve this compatibility.
9. Claim 27 is are rejected under 35 U.S.C. 103 as being unpatentable over CN 106366558 Zhang, the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of CN 103435834 Liu et al.
The discussion of the teachings of Zhang of paragraph 6 above is repeated here.
Zhang does not disclose the articles of the instant claim 27.
Liu, page 14, line 23 and page 15, line 1 discloses a molded article made from a composition similar to that of Zhang.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the molded article from the engineering composition of Zhang discussed above because Liu shows it to be desirable to make such molded articles from similar compositions and the molded article from the compositions of Zhang would have been expected to have the properties of the composition of Zhang. These molded articles of Zhang in view of Liu would have been necessarily insulators of the instant claim 27 because the compositions of Zhang are not conductive.
Allowable Claims
10. The instant claims 12-13, 17, 19, 23, 29-31 are allowable over the closest prior art seen by the examiner which is represented by the above cited prior art. The prior art considered does not disclose the instantly claimed inventions and does not provide proper motivation to modify the closest prior art into the instantly claimed inventions.
Objections
11. Claim 28 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art considered does not disclose the instantly claimed inventions and does not provide proper motivation to modify the closest prior art into the instantly claimed inventions.
12. Claim 14 would be allowable 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.
The prior art considered does not disclose the instantly claimed inventions and does not provide proper motivation to modify the closest prior art into the instantly claimed inventions.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762