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
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nogita et al. (EP 3121151), as cited on the IDS.
Regarding claim 1; Nogita et al. teaches a composition comprising a polymer resin, such as a cycloolefin resin (alicyclic resin) [0055] and strontium carbonate powder in an amount of 1 to 25 wt.% based on the amount of the polymer resin [0056]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See 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), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the strontium carbonate powder in an amount of 1 wt.%, and would have been motivated to do so since Nogita et al. teaches it suitable to add the strontium carbonate powder in an amount as low as 1 wt.%.
Regarding claim 2; Nogita et al. teaches the strontium carbonate powder further comprises a surface active agent (surfactant) attached to the surfaces thereof [0016].
Regarding claim 3; Nogita et al. does not explicitly teach wherein the composition has a melt flow rate of 40 g/10 min. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. melt flow rate, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Regarding claims 4 and 5; Nogita et al. teaches the strontium carbonate powder has a mean longitudinal diameter in the range of 5 to 50 nm and a mean aspect ratio in the range of 2.2 to 5.0 [0015].
Regarding claim 6; Nogita et al. teaches a molded polymer resin for optical uses [0002-0003].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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