DETAILED ACTION
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 § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 7-15, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kock et al. (US 2014/0031480). Xie and Squire et al. (US 2009/0318597) re cited as evidentiary references.
Regarding claims 1, 7, and 10, Kock teaches a polypropylene composition (Abstract) comprising a glass or carbon fiber filler (p. 6, [0124]). Inventive Examples 8 and 9 (p. 9-10, Table 4) include a polypropylene resin, glass fibers, and calcium stearate (equivalent to the claimed surface modifier).
Regarding claim 3, IE8 and IE9 include 0.2 wt% calcium stearate combined with 56.45 wt% polypropylene and 40 wt% glass fiber. This is equivalent to 0.35 parts by weight of surface modifier per 100 parts by weight polypropylene.
Regarding claim 4, Kock’s polypropylene preferably has a Mw of 150,000 or lower (p. 2, [0046]) and a molecular weight distribution Mw/Mn of 5.0 to 10.0 (p. 2, [0045]), indicative of a Mn of 30,000 or lower. This overlaps with sufficient specificity to anticipate the claimed range.
Regarding claim 5, the polypropylene resin is most preferably a homopolymer (p. 3, [0049]).
Regarding claims 8 and 9, glass fibers preferably have a length of 3-15 mm and diameter of 10-20 microns (p. 6, [0125]-[0126]).
Regarding claim 11, Kock includes a maleic anhydride functionalized polypropylene when glass fibers are used (p. 6, [0128]). This reads on the claimed compatibilizer.
Regarding claims 12 and 13, Kock teaches the use of Exxelor PO1020 as a maleic anhydride functionalized polypropylene (p. 6, [0128]). Squire demonstrates that this product is a homopolymer of polypropylene grafted with 0.5-1.0 wt% maleic anhydride (p. 12, [0135]).
Regarding claim 14, the maleic anhydride functionalized polypropylene is preferably included in amounts of 1.2-4.0 wt% with respect to the total material (p. 6, [0128]). IE8 and IE9 (p. 9, Table 4) includes 0.8 wt% and 2.0 wt% of Exxelor PO1020, respectively, per 77.65 wt% and 56.45 wt%, respectively, of polypropylene. This is indicative of 1.03 and 3.45 parts by weight of maleic anhydride functionalized polypropylene (equivalent to the claimed compatibilizer) per 100 parts polypropylene resin.
Regarding claim 15, the composition includes up to 2 wt% of an alpha-nucleating agent (p. 3, [0061]). Nucleating agents are recognized in the art as resulting in improved impact resistance (see, e.g., Xie, p. 1415, first full paragraph).
Regarding claim 17, Kock’s base resin comprises at least 98.0 wt% polypropylene and up to 2.0 wt% of an additive such as an antioxidant (i.e. heat-resistant agent). This is equivalent to up to approximately 2.04 parts by weight or less of heat-resistant agent per 100 parts polypropylene resin. This overlaps with sufficient specificity to anticipate the claimed range.
Regarding claim 18, IE9 (p. 9-10, Table 5) exhibits a tensile strength of 135 MPa. Kock is silent with respect to flexural strength and impact strength. Nevertheless, Kock as applied above is compositionally identical to the claimed invention and shares a tensile strength within the claimed range. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01.
Regarding claim 19, Kock’s composition is employed in injection molding applications (p. 2, [0035]).
Claims 1, 2, 5, 7, 10-12, 14, 15, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie et al. (J. Appl. Polym. Sci., 2005, vol. 96, p. 1414-1420).
Regarding claims 1, 7, 10, 11, and 16, Xie teaches a mixture of polypropylene (PP), maleated polypropylene (MPP; a compatibilizer), glass fibers, a phenolic antioxidant (a phenol-based heat-resistant agent), and calcium stearate (a surface modifier) (p. 1415, Blending of PP, MPP, and glass fibers; see also Materials and Maleation of PP). This anticipates claims 1, 7, 10, 11, and 16.
Regarding claim 2, the second composition listed in Table 1 at page 1416 includes 30 wt% glass fibers, 10 wt% MPP, 1 wt% calcium stearate, and a total of 0.5 wt% of antioxidants (see also p. 1415, Blending of PP, MPP, and glass fibers), indicating that polypropylene is present in the amount of 58.5 wt%. 30 wt% glass fibers per 58.5 wt% polypropylene is equivalent to 51.3 parts by weight of glass fibers per 100 parts by weight of polypropylene. This falls within the claimed range of 40-55 parts by weight.
Regarding claim 5, the polypropylene resin is not described as containing any comonomers (p. 1415, Materials), and is therefore understood to be a homopolymer.
Regarding claim 12, Xie’s compatibilizer is obtained by treating a polypropylene homopolymer with MAH (p. 1415, Maleation of PP). Thus, Xie’s compatibilizer is understood to “comprise” a polypropylene homopolymer.
Regarding claim 14, the third composition listed in Table 1 at page 1416 includes 30 wt% glass fibers, 5 wt% MPP compatibilizer, 1 wt% calcium stearate, and a total of 0.5 wt% of antioxidants (see also p. 1415, Blending of PP, MPP, and glass fibers), indicating that polypropylene is present in the amount of 63.5 wt%. 5 wt% MPP compatibilizer per 63.5 wt% polypropylene is equivalent to 7.87 parts by weight of compatibilizer per 100 parts by weight of polypropylene. This falls within the claimed range of 1-10 parts by weight.
Regarding claim 15, Xie teaches that physical properties including impact strength are improved by addition of nucleating agents (p. 1415, first full paragraph). Table V (p. 1418) illustrates two examples which include 1.0 wt% of a nucleating agent in compositions which also include 99 wt% of a composite comprising polypropylene and 30 wt% of glass fibers. This is equivalent to a composition including 1.0 wt% nucleating agent, 29.7 wt% glass fibers, and 69.3 wt% polypropylene, or approximately 1.44 parts by weight of nucleating agent per 100 parts polypropylene.
Regarding claim 19, Xie’s composition is molded into test pieces on a hot press (p. 1415, Blending of PP, MPP, and glass fibers).
Claims 1, 3, 7, 10, 11, 14, 16, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hu et al. (WO 2024/139876 A1; machine translation referred to herein).
Regarding claims 1 and 10, Hu teaches a composition comprising polypropylene; resin and glass fibers (Abstract); and calcium stearate as a lubricant (p. 3, line 20; see also p. 4, line 14 – p. 5, line 8 and Examples 1-12).
The instant specification defines the claimed surface modifier as including stearate-based compounds (spec., p. 14, lines 14-16). Although not expressly described as such by Hu, calcium stearate therefore reads on the claimed surface modifier.
Regarding claim 3, Hu teaches that additives including lubricants are present in amounts of 0-1 parts by weight (Abstract; p. 3, lines 14-16 and 20).
Regarding claim 7, Hu’s composition includes glass and polyamide (i.e. nylon) fibers (Abstract).
Regarding claim 11, the composition also includes a compatibilizer (Abstract) and an antioxidant (i.e. a heat-resistant agent) (p. 3, lines 14-15).
Regarding claim 14, the compatibilizer is present in amounts of 2-5 parts by weight (Abstract).
Regarding claim 16, suitable antioxidants include hindered phenol compounds (p. 3, line 17).
Regarding claim 19, the composition is used to form a variety of molded products (p. 3, lines 28-31).
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kabeya et al. (US 2017/0218189).
Regarding claim 1, Kabeya teaches a composition comprising a polypropylene resin and a fiber (Abstract). The fiber may be a glass fiber (p. 16, [0253]) that has been surface-treated with a silicone compound or a higher fatty acid or fatty acid metal salt (p. 16, [0261]) such as stearic acid and salts thereof (p. 16, [0263]).
Regarding claim 6, the composition includes a polypropylene resin (Y) with a melt flow rate (equivalent to the claimed melt index) of 10-100 g/10 min at a temperature of 230°C under a load of 2.16 kg (p. 3, [0049]). Kabeya’s inventive examples include a polypropylene resin (Y-1) having a melt flow rate of 40 (p. 29, [0474]; p. 26, [0435]).
Claim Rejections - 35 USC § 103
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.
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 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kock as applied to claim 1 above, further in view of Takemoto (JP 2005-085482 A; machine translation referred to herein).
Regarding claims 19 and 20, Kock remains as applied above. Kock’s composition is suggested for use in automotive applications (p. 1, [0002]). The composition has a high degree of dimensional stability (p. 6, [0131]) and increased temperature resistance relative to conventional polypropylene resins (p. 6, [0132]). Kock does not teach a molded product comprising an ion filter.
Takemoto teaches a fuel cell system including an ion exchange filter used to remove ions in coolant circulated within the fuel cell stack (Abstract). The fuel cell system is mounted to a vehicle (p. 1, [0001]). The filter main body is made of polypropylene mixed with glass fiber having a desired degree of heat resistance (p. 2, [0018]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ Kock’s composition in a fuel cell system including an ion exchange filter, as this represents an automotive application recognized by Takemoto as being suitable for glass fiber reinforced polypropylene resins having good heat resistance. Additionally, Kock’s composition will provide improved dimensional stability to the fuel cell system. Modification in this way reads on claims 19 and 20.
Regarding claim 21, Kock and Takemoto are silent with respect to ion elution ability. Nevertheless, the prior art as applied above results in an identical molded product formed from an identical composition. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01.
In the alternative, Takemoto prefers a resin material that does not elute (p. 2, [0018]). It would have been obvious to one of ordinary skill in the art at the time of filing to minimize or eliminate the ion elution ability of Kock’s composition when forming a fuel cell system according to Takemoto in order to meet this requirement, thereby arriving at the claimed range. Note that elimination of ion elution (consistent with a “resin material that does not elute”) would result in ion elution ability of 0.0 ppm, which falls within the claimed range of 0.8 ppm or less.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 4-17, and 19 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 3-13, 15, 16, and 18 of copending Application No. 18/521,651 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 3, 18, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 17, and 20 of copending Application No. 18/521,651 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The amount of surface modifier required by instant claim 3 is recited in claim 2 of the reference application.
The numerical ranges in instant claims 18 and 21 overlap with the ranges in claims 17 and 20 of the reference application. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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