DETAILED ACTION
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 1-5 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “…consisting of…a resin composed of…”. “Composed of” is interpreted as “comprising”. Transitional phrase “consisting of” is close to additional elements while “composed of” is open to additional elements.
Claim 1 recites “a resin composed of components (A)-(E)”. However, components (C)-(E) are not a resin.
For purposes of expediting prosecution, claim 1 is interpreted as “consisting of components (A)-(E), …the total amount of (A) and (B) being 100 parts by mass”.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tajima (JP2015-168810).
In setting forth this rejection a machine translation of JP2015-168810 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claim 1, 4-5: Tajima discloses a polycarbonate resin composition consisting of 100 parts by mass (pbm) of polycarbonate resin (A), 10 to 100 pbm of carbon fiber (B), and 10 to 50 pbmof glass fiber (C) (i.e. a reinforcing material), carbon black (i.e. a colorant) and release agent (i.e. a slip agent) [0009, examples]. Aromatic polycarbonates are preferred as polycarbonate (A) because it provides advantageous heat resistance, mechanical properties, and electrical characteristics [0014]. The polycarbonate resin (A) suitably contains 80 mass percent or less of a recycled polycarbonate [0062]. Thus, the corresponding amount of non-recycled polycarbonate is about 20 mass percent or more relative to total polycarbonate (A). The viscosity average molecular weight (Mv) of (A) is preferably 18,000 to 30,000 according to [0055], which one of ordinary skill in the art would reasonably understand applies to each polycarbonate resin therein. The weight ratio of Mv of the recycled aromatic polycarbonate to non-recycled polycarbonate is about 0.6-1.7, since each of the polycarbonate resins has a viscosity average molecular weight of polycarbonate resin (A) is preferably 18,000 to 30,000. The carbon fiber (B) is surface-treated with a polyamide-based sizing agent and present in the narrower amount of 20 to 65 pbm [0064-0065]. The composition contains a combination of flame retardants 0.03 to 5 pbm of polytetrafluoroethylene and 1 and 30 pbm or less of condensed phosphate ester flame retardant per 100 pbm of polycarbonate resin (A) [0090], [0091]. Case law holds that 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 2, Tajima teaches that recycled polycarbonate can be recovered from a water bottle, building materials, an automobile headlamp lens, and vehicle light guide plate [0062].
Claim 3, Tajima discloses a molded article obtained by molding the composition therein [0009].
Response to Arguments
In response to applicant's Declaration regarding unexpected results, the data have been fully considered, however, they are insufficient to establish unexpected results given that 1) new example 11 uses component B with a molecular weight outside of the claimed range; 2) comparative Examples 1, 2, and 8 (see remarks page 9) differ from the working examples not only with respect to the (A)/(B) molecular weight ratio but also because A-4 and B-4 have viscosity average molecular weight values outside the claimed viscosity average molecular weights of (A) and (B) required by claim 1. It is unclear whether any apparent difference in the comparative examples is due to the viscosity average molecular weight of (A) or (B), due to the (A)/(B) molecular weight ratio, or due to both. 3) The data is not reasonably commensurate in scope with the scope of claims. The inventive data only contains 15-50 parts by weight of component C as compared to the claimed 10-60 parts, 28-35 parts by weight of the component D as compared to the claimed 20-40 parts, and 0.4-0.7 parts of the component E as compared to the claimed 0.01-1 part; and the inventive data only contains four specific recycled polycarbonates as compared to the claimed genus recycled aromatic polycarbonate (it is noted that the characteristics of different recycled polycarbonates vary dramatically, and the genus aromatic polycarbonate contains thousands of species), three specific polycarbonates as compared to the claimed genus aromatic polycarbonate, a carbon fiber surface treated with polyamide as compared to the claimed three species, a specific phosphate compound as compared to the claimed genus phosphate compound, and a specific fluorine compound as compared to the claimed genus fluorine compound. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached M-F 9am-6pm.
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, Joseph Del Sole can be reached at (571)272-1130. 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.
/WENWEN CAI/Primary Examiner, Art Unit 1763
Prosecution Insights