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 .
Examiner Notes
Claims 22-27 are currently pending. Claims 1 and 24 have been amended.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows: The claim of priority to application 17/252235 is not proper because the prior-filed application does not name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. See 37 CFR 1.78.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 22 recites the “continuous polymer phase free of an elastomer,” the cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453. The insertion of the above phraseology as descried above positively excludes “elastomer” however, there is no support in the present specification for such an exclusion. While the present specification is silent with respect to the use of an elastomer, it is noted that as stated in MPEP 2173.05(i), the “mere absence of a positive recitation is not the basis for an exclusion.”
Please note, the recitation of the continuous polymer phase consisting of a vinyl chloride homopolymer both excludes other components (e.g., such as an elastomer) and is supported in the specification.
Claims 23-27 are rejected as being dependent on unsupported claim 22.
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 24 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.
Claim 24 recites that the fiber “having a coating” it is unclear if the recited coating is the same coated required in claim 22 or a second coating on the fiber.
For sake of further examination, as there does not appear to be support in the specification for a second coating, the coating of claim 24 will be viewed as further limiting the thickness and material of the coating recited in claim 22.
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.
Claims 22-24 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Heikkila et al. (US 2017/0137585) in view of Hiratsuka et al. (JP 2004-091518).
Regarding claims 22 and 26, Heikkila, discloses a composite comprising a fiber “discontinuous phase” and polymer “continuous phase” (0014-0015). The continuous polymer phase consisting of a vinyl chloride homopolymer (0025). The discontinuous fiber phase comprising natural and synthetic fibers in which the fiber is coated with an interfacial organometallic surface chemical treatment (0041 and 0047). The modifier added in an amount ranging from 0.01 to 6 wt% (0051), overlapping the claimed amount of 0.1 to 5 wt% in claim 22 and 0.1 to 3 wt% in claim 26. The coating having a thickness of at least about 50 to about 1000 Å, overlapping the claimed thickness of less than 1500 Å. The coated fibers having a fiber packing fraction of approximately 40 to 95 vol or wt% (0055), overlapping the claimed packing fraction of 40 to 95% vol%.
Heikkila further teaches that with the interfacial modifier coating, composites can achieve the following properties:
Property
ASTM Method
Minimum value
Units
Tensile Strength
D638
50000
psi
Tensile Modulus
D638
1200000
psi
Flexural Strength
D790
50000
psi
Flexural Modulus
D790
1200000
psi
Notched IZOD
D256
1.3
ft-lbs/in
COTE
D969
Maximum Value:
1.1x10-5
in/in-oF
Overlapping the claimed notched IZOD impact resistance of about 0.4 to 3.0 ft-lb-in-1, COTE of about less than 2x10-5 in/in-oF, tensile and flexural modulus of greater than 700,000 psi, and tensile and flexural strength of greater than 2,500 psi.
Heikkila does not disclose the fiber comprising less than 30 wt% of wollastonite fiber (CaSiO3) having a length greater than 60 to 90 microns, diameter greater than about 3 microns and aspect ratio greater than about 3.
Hiratsuka, in the analogous field of vinyl chloride resin composites (0001), discloses a vinyl chloride resin molded product (0001) comprising a continuous phase of polyvinyl chloride homopolymer (0007) and a discontinuous phase comprising 30 to 50 parts by weight per 100 parts by weight vinyl chloride resin of wollastonite (β-calcium metasilicate; i.e., CaSiO3) (0007), overlapping the claimed less than 30 wt%. The fiber having an average fiber length of 25 to 60 µm, diameter of 15 µm or less and aspect ratio of 3 or more (0061), overlapping the claimed length of greater than 60 to 90 microns, diameter greater than about 3 microns and aspect ratio greater than about 3.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the fiber of Heikkila to include wollastonite, as taught by Hiratsuka, providing a vinyl chloride composition with low coefficient of linear expansion and excellent impact resistance (0006).
Modified Heikkila dose not disclose the composite having a heat deflection temperature of at least 60oC (ASTM D648), however, as modified Heikkila discloses a substantially similar composition as claimed including the same method for formation of mixing the materials under melt processing conditions (0057), this property is expected from the prior art product because it has been held that "products of identical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established."
Regarding claim 23, Hiratsuka teaches the wollastonite fibers as discussed above. Heikkila teaches that the fibers may include cellulosic fibers (0041).
Regarding claim 24, Hiratsuka teaches the wollastonite fibers having an average fiber length of 25 to 60 µm, diameter of 15 µm or less and aspect ratio of 3 or more (0061), overlapping the claimed length about 50 to 250 microns, diameter about 5-20 microns and aspect ratio greater than about 15.
Heikkila teaches the interfacial modifier added in an amount ranging from 0.02 to 3 wt% (0051), overlapping the claimed amount of 0.02 to 3 wt%, and comprising organo-titanate (0049).
Regarding claim 27, Heikkila teaches the interfacial modifier comprising a titanate compound (0049).
Regarding the overlapping ranges discussed in claims 22, 24, and 26, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Heikkila in view of Hiratsuka as applied to claim 22 above, and further in view of Reynoso Gomez et al. (US 2016/0362578).
Regarding claim 25, modified Heikkila discloses the limitations of claim 22 as discussed above. Heikkila does not disclose the polymer having a K value of about 50-75 (ISO 1628-2).
Reynoso Gomez, in the analogous field of polyvinyl chloride polymer composites (0015) discloses PVC with a K value (DIN EN ISO 1628-1) of 50 to 70 (0041-0042), overlapping the claimed K value of 50 to 75.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the K value of the PVC of Heikkila to range from 50-70 as taught by Reynoso Gomez, to improve processability of the composite (0041).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Response to Arguments
Applicant’s amendments filed 02/05/2026 have been entered. Accordingly, the 35 U.S.C. 112(b) and 35 U.S.C. 112(d) rejections have been withdrawn. However, due to the amendments new 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections have been made.
It is maintained that the claim of priority to application 17/252235 is improper because the prior-filed application does not name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. See 37 CFR 1.78.
Applicant’s arguments over Hiratsuka have been fully considered. Applicant argues that Hiratsuka requires a PVC polymer grafted with elastomer/crosslink monomers, teaching against use of PVC homopolymer. Applicant further argues that Hiratsuka cannot be combined with Heikkila because the mechanism of action in each are vastly different. Applicant argues that the proposed combination is hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Hiratsuka is not used for teaching the PVC composition. Hiratsuka is a teaching reference used to teach a PVC composition which includes wollastonite fibers. While Hiratsuka does not disclose all the features of the present claimed invention, as Hiratsuka is used as a teaching reference, it is not necessary for the secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 842 F. 2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, this reference teaches a certain concept, namely addition of wollastonite fibers in a PVC composition, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that the property values from Heikkila have little probative value since the interfacially coated fibers are glass fibers and not wollastonite.
Heikkila teaches that the interfacial modifier coating supports or enhances the final properties of the composite (0021) and that the tabled values are due to the interfacial treatment (0063). Furthermore, Heikkila does not limit their invention to only glass fibers, teaching that both natural and synthetic fibers may be used (0041). There is a reasonable expectation that the taught values can be achieved within the proposed prior art combination.
Applicant argues over Reynoso Gomez that there is no rational basis to use any of the polymers in this reference in any material other than a plastisol.
Reynoso Gomez is provided to teach a K value of a PVC polymer. Reynoso Gomez teaches that the K value is closely related to the intrinsic viscosity of the polymeric material (0041). There is a reasonable expectation that the motivation of improved processability (0041) would be achieved in the proposed prior art combination.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781