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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-7, 9, 15, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (JP 05-262976A) in view of Sato et al. (2016/0177062) and Steck et al. (EP 2664649 A2).
Regarding claims 1, 4-6, 15, 18 and 19: Matsumoto et al. teach a thermoplastic polyimide resin composition comprising 50 mass% of a thermoplastic polyimide resin (TPI), 20 mass% carbon fibers, 10 mass% fluorine resin (PTFE), and 20 mass% of inorganic filler (talc) [Example 5; Table 1].
Matsumoto et al. fail to teach the claimed polyimide.
However, Sato et al. teach that the claimed polyimide [0250; Examples] in an analogous composition allows the composition to be easily processed by molding and prepared into a molded article having excellent heat resistance and a desired capability, for example, mechanical strength, flame resistance, design properties, slidability, heat aging resistance, and conductivity [0023, 0031, 0033; Examples]. Sato et al. teach that the content ratio of the repeating structural unit of formula (1) is 40 mol% [0040].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyimide of Sato et al. as the polyimide of Matsumoto et al. to provide a polyimide that is excellent in molding processability and can be prepared into a molded article having excellent heat resistance and a desired capability, for example, mechanical strength, flame resistance, design properties, slidability, heat aging resistance, and conductivity.
The amount of 40 mol% is very close to the amount of just less than 40 mol%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Matsumoto et al. fail to teach wollastonite.
However, Steck et al. teach that wollastonite is a tribologically effective additive in polyimide compositions and is used in combination with talc [0009, 0010, 0021; Examples], and improves its load-bearing behavior [0005], along with wear resistance [0008]. Steck et al. teach adding 1-40% of the wollastonite [0007; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1 to 40% of wollastonite as taught by Steck et al. to the composition of Matsumoto et al. as a tribologically effective additive to improve load-bearing behavior and wear resistance.
Regarding claim 7: Matsumoto et al. fail to teach graphite.
However, Sato et al. teach adding 0.01 to 30 mass% [0168] of graphite to an analogous composition to provide the desired color and to further impart slidability and light blocking properties [0164].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 30 mass% of graphite as taught by Sato et al. to the composition of Matsumoto et al. to provide the desired color and to further impart slidability and light blocking properties.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 9: Matsumoto et al. teach a molded article [0001; Examples].
Claim(s) 1, 4-7, 9, 15, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (JP 05-262976A) in view of Sato et al. (WO 2019/220966 A1). US 2021/0139701 is being used as an English language equivalent to WO 2019/220966 A1 since it is a national stage entry of the international application.
Regarding claims 1, 4-6, 15, 18 and 19: Matsumoto et al. teach a thermoplastic polyimide resin composition comprising 50 mass% of a thermoplastic polyimide resin (TPI), 20 mass% carbon fibers, 10 mass% fluorine resin (PTFE), and 20 mass% of inorganic filler (talc) [Example 5; Table 1].
Matsumoto et al. fail to teach the claimed polyimide.
However, Sato et al. teach that the claimed polyimide [0011; Examples] in an analogous composition allows the composition to be easily processed by molding and prepared into a molded article having slidability, and an excellent balance between heat resistance and mechanical strength [0009, 0167; Examples]. Sato et al. teach that the content ratio of the repeating structural unit of formula (1) is 20 mol% [0011; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyimide of Sato et al. as the polyimide of Matsumoto et al. to provide a polyimide composition to be easily processed by molding and prepared into a molded article having slidability, and an excellent balance between heat resistance and mechanical strength.
Matsumoto et al. fail to teach wollastonite.
However, Sato et al. teach that wollastonite can be used interchangeably with talc in an analogous composition [0147].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use wollastonite as taught by Sato et al. in place of talc in the example of Matsumoto et al. It is a simple substitution of one known element for another to obtain predictable results.
Regarding claim 7: Matsumoto et al. fail to teach graphite.
However, Sato et al. teach adding 0.05 to 15 mass% [0148] of graphite to an analogous composition to enhance heat resistance and mechanical strength [0150].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.1 to 15 mass% of graphite as taught by Sato et al. to the composition of Matsumoto et al. to enhance heat resistance and mechanical strength
Regarding claim 9: Matsumoto et al. teach a molded article [0001; Examples].
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, 4-7, 9, 15, 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,359,064 in view of Steck et al. (EP 2664649 A2).
The Patent claims the composition of the instant claims with the exception of the inorganic filler (D).
However, Steck et al. teach that wollastonite is a tribologically effective additive in polyimide compositions [0009, 0010, 0021; Examples], and improves its load-bearing behavior [0005], along with wear resistance [0008]. Steck et al. teach adding 1-40% of the wollastonite [0007; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1 to 40% of wollastonite as taught by Steck et al. to the composition of the Patent claims as a tribologically effective additive to improve load-bearing behavior and wear resistance.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that wollastonite is not taught in Matsumoto et al. or the patent in the double patenting rejection. This has been remedied by Steck et al.
The applicant has alleged that Sato et al. teach against the claimed range of 20 to less than 40 mol%. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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