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 .
DETAILED ACTION
SPECIFICATION OBJECTION
The parent application No. 16/721,199 became U.S. Patent No. 11,834,558 and thus updated information of para. [0001] of the specification is needed.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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 1-4, 10-14, 20-24 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2011071718 A2 (June 16, 2011, 40 pages).
WO teaches polypropylene composition comprising 1-10 ppm of a pigments including blue pigment and 50-250 ppm of aromatic trisamide nucleating agents in abstract and at pages 5-15.
WO teaches a polypropylene composition comprising 150 ppm of nucleating agents TA1 (aromatic trisamide) and pigment blue in example 2.
Regarding the recited blue hue factor and normalized brightness value of claim 1, the polyolefin resin composition of the example 2 of WO would comprise the same acetal compound and an amount of the pigment such as cobalt blue and thus it would be expected to exhibit the recited properties inherently.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from the polyolefin resin composition of WO. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
Thus, the instant invention lacks novelty.
Regarding claims 2-3, 12-13 and 22-23, WO teaches propylene random copolymer in the example 2.
Regarding claims 4 and 14, WO teaches aromatic trisamide in the example 2 meeting the claim 4.
Regarding claim 10, WO teaches various pigments including blue pigment in the example 2.
Regarding claims 11, 21, 30 and 30, WO teaches blending polypropylene with the aromatic trisamide and further blending with the blue pigment in the example 2.
Claims 1-7, 9-17, 19-27, 29-35 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2012/102805 A1 (Aug. 2, 2012).
WO teaches a thermoplastic polymer composition comprising an additive composition comprising at least one clarifying agent meeting the instantly recited clarifying agent in an amount of 100-5,000 ppm and a coloring agent exhibiting a Aa’ value and a Ab’ value in claim 1. WO teaches polypropylene polymers in claim 4.
WO teaches pigments including pigment blue 29 and pigment blue 63 in bottom of [0020] and Tables 1-3. Compositions comprising a blue pigment of the Tables 1-3 would be expected to have the recited blue hue factor and normalized brightness value of claim 1 inherently.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from the polyolefin resin composition of WO. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
Thus, the instant invention lacks novelty.
Regarding claims 2-3, 12-13 and 22-23, WO teaches polypropylene polymers in claim 4.
Regarding claims 4 and 14, WO teaches the instant acetal compounds in claim 1.
Regarding claim 10, WO teaches pigments including pigment blue 29 and pigment blue 63 in bottom of [0020] and Tables 1-3.
Regarding method claims 11-17, 19-27 and 29-30 as well as additive composition of claims 31-37, see claims 1-45 of WO.
Claims 1-4, 10-14, 20-24 and 30-32 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011071718 A2 (June 16, 2011, 40 pages) in view of Danielson et al. (US 2007/0185247 A1)
Regarding 31-32 and 37, the example 2 of WO teaches blending a polypropylene composition comprising 150 ppm of nucleating agents TA1 (aromatic trisamide) and then blending the pigment blue. Thus, utilization of a mixture of the sorbitol and pigment would have been obvious.
There would be very limited choices (i.e., add aromatic trisamide) and then add the pigment blue, add the pigment blue and then add aromatic trisamide) or add a mixture of the aromatic trisamide and pigment blue. The court held that very limited choices is anticipation and thus utilization of the instant mixture would have been obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Further, Danielson et al. teach a coloring agent additive precursor composition comprising a clarifying agent and a coloring agent in claims 14 and 19.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to obtain the art well known mixture of the clarifying agent and coloring agent in WO with the disclosure of Danielson et al. absent showing otherwise.
Claims 1-4, 9-14, 19-24, 29-32 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2001/0040320 A1).
Kobayashi et al. teach a polyolefin resin composition comprising dibenzylidene sorbitol compound as a nucleating agent and pigments including cobalt blue in claims 1 and 11.
Kobayashi et al. teach various dibenzylidene sorbitols (DBS) at page 3 which are acetal compounds. The nucleating agent (i.e., dibenzylidene sorbitols) would meet the recited clarifying agent of claim 1 since the dibenzylidene sorbitols are acetal compounds meeting the recited in the instant claim 4.
Kobayashi et al. teach utilization of 0.2 to 2.0 wt. parts er100 parts by weight of the polyolefin in [0082]. The 0.1 to 1 part by weight of the pigment is equal to 2,000 to 20,000 ppm which would overlap the recited 50 ppm to 5,000 ppm of claim 1.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polyolefin resin composition comprising the dibenzylidene sorbitols with 2,000 to 5,000 ppm of the pigment such as cobalt blue in Kobayashi et al. since Kobayashi et al. teach an amount of the pigment overlapping the instantly recited amount absent showing otherwise.
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, 919F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding the recited blue hue factor and normalized brightness value of claim 1, the above discussed polyolefin resin composition of Kobayashi et al. would comprise the same acetal compound and an amount of the pigment such as cobalt blue and thus it would be expected to exhibit the recited properties inherently.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from the polyolefin resin composition of Kobayashi et al. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Regarding claims 2-3, 12-13 and 22-23, Kobayashi et al. teach polypropylene in [0085].
Regarding claims 4, 14 and 32, the dibenzylidene sorbitols taught by Kobayashi et al. are acetal compounds meeting the claims 4, 14 and 32.
Regarding claims 9, 19 and 29, 2,000 to 20,000 ppm of the pigment taught in [0096] by Kobayashi et al. teach would overlap the recited amount.
Regarding claims 10, 20, 30 and 37, Kobayashi et al. teach various pigments in claim 11 including cobalt blue.
Regarding claims 11, 21 and 31, example 1 of Kobayashi et al. teaches blending polypropylene with sorbitol and Kobayashi et al. further teach blending with the pigment. Thus, utilization of a mixture of the sorbitol and pigment would have been obvious. Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). MPEP 2123.
There would be very limited choices (i.e., add sorbitol and then add the pigment, add the pigment and then add sorbitol or add a mixture of the sorbitol and pigment) for the blending the sorbitol and pigment with the polyolefin. The court held that very limited choices is anticipation and thus utilization of the instant mixture would have been obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Regarding claims 4, 14 and 24, the dibenzylidene sorbitols are acetal compounds meeting claims 4, 14 and 24.
Claims 1-4, 9-14, 19-24, 29-32 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2001/0040320 A1) in view of CN 102341449 A (February 1, 2012).
The above rejection, the examiner states “The nucleating agent (i.e., dibenzylidene sorbitols) would meet the recited clarifying agent of claim 1 since the dibenzylidene sorbitols are acetal compounds meeting the recited in the instant claim 4.”.
CN teaches the same sorbitols taught by Kobayashi et al. as a clarifying agent in English abstract and claim 5 which would support the examiner’s position in the above rejection over Kobayashi et al.
Claims 4-8, 14-18, 24-28 and 32-37 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2001/0040320 A1) as applied to claims 1-4, 9-14, 19-24, 29-32 and 37 above, and further in view of Hansen et al. (US 2007/0066733 A1).
Regarding other clarifying agents recited in claims 4-8, 14-18, 24-28 and 32-37, Hansen et al. teach various nucleating or clarifying agents in [0016-0030]. Hansen et al. teach employing about 5,000 ppm or less and about 1,000 ppm or less of the clarifying agents in [0031]. The about 5,000 ppm or less and about 1,000 ppm would make the instantly recited amounts of claims 1, 9, 11, 19, 21, 29 and 31 obvious.
Hansen et al. teach alditol acetals in [0028-0030] as well as pigment blue in table 1.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known clarifying agents and amounts thereof (e.g., 1,000 ppm) taught by Hansen et al. in Kobayashi et al. since Hansen et al. teach and equate acetal derivatives as the clarifying agents and since Kobayashi et al. teach various acetal derivatives absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claims 8, 18, 28 and 36, Hansen et al. teach that R, R3 and R8 of alditol acetals of [0028] include alkyl group and thus, the instant recited n-propyl group would have been obvious since the alkyl group would encompass the n-propyl group.
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 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 11,834,558. Although the claims at issue are not identical, they are not patentably distinct from each other because the recited clarifying agents of the instant claims 1 and 5-8 would encompass the clarifying agent taught in claim 1 of the patent. Other matching claims would be self-explanatory to one skilled in the art. For example, the instant claims 2-4 and 9-10 are taught in claims 2-5 of the patent.
Note that the instant claims 31-37 were withdrawn from consideration and cancelled in the parent case after the restriction requirement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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