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 .
This communication responds to the application and amended claim set filed November 16, 2023. Claims 1-15 are currently pending.
Drawings
The drawings are objected to because the single drawing is labelled as “Figur 1.” “Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the typo "Figur" must be corrected.” (37 CFR 1.84(u)(1).) The appropriate designation is “FIGURE” or “Figure.”
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 1 is a “method claim” which recite a method without setting forth any positive process steps. Thus, the claims fail to comply with 35 U.S.C. 101 as the claims do not fall into at least one of the four statutory categories of patent eligible subject matter. MPEP 2106.03. Claims 2-9 are rejected as being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112
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.
Claims 1-9 are 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.
Claims 1 is indefinite because the claim is drawn to a method without reciting any steps. See MPEP 2173.05(q) (“Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b)).
The claim language is confusing because it is not clear whether the method is trying to reduce component C in the wastewater through treatment of the wastewater or during the process of preparing the composition, since there are not steps recited in the claim 1. Given that there are not method steps provided, Examiner is left to infer the method for reducing component C in the wastewater. In view the US PG Pub. US20240254291 ([0013]-[0015]),[0207], it appears that the mere presence of component B will reduce the amount of component C in the wastewater obtained in the preparation of the composition. Paragraph [0207] of the US PG Pub US20240254291 appears to focus on preventing component C from being present in the waste water rather than removing or reducing it [0207]. It is noted that the wastewater results from the pelletization step rather than from the manufacturing of the composition [0207], and Examiner is interpreting the water used during the pelletization step (step b) is the wastewater. Given the BRI discussed above, the preparation of any composition including all the elements (A), (B) and (C) will be interpreted as reading on the method for reducing a content of component C in wastewater wherein wastewater is interpreted as the water used during the pelletization step . Claims 2-9 are rejected as being dependent on a rejected base claim.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over An et al. (WO 2012-065292 A1 as listed on the IDS dated 11/16/2023 or US 2013/0274391 A1).
The examiner will refer to the US equivalent of An et al., US 2013/0274391 A1.
Regarding claim 1, An et al. teach the preparation of a composition [0098], wherein the composition comprises a linear polycarbonate, a branched polycarbonate having a degree of branching of 0.05 to about 4.2 (claims 3-4) and a flame retardant including a sulfonate salt or derivatives thereof such as potassium perfluoroalkylsulfonate salt or derivatives thereof (claim 1, 13-14, tables 1- 2). An et al. teach the branched polycarbonate is prepared by adding a branching agent such as THPE (table 1) during polymerization in amounts between 0.05 to 2 wt.% [0035] and that the branching agent is added in an amount relative to the bisphenol monomer, that is sufficient to achieve the desired branching content [0036]. It is noted that the branched polycarbonate used in the instant specification is based on bisphenols A and THPE as a branching agent ( 1.3 wt.%), p-tert-butylphenol (BUP) as chain terminator having a melt volume flow rate MVR of 6 cm3 /(10 min) (to ISO 1133:2012-03, at a test temperature of 300° C. with a load of 1.2 kg), which uses a content of branching agent that overlaps with the content of branching agent of An et al.
An et al. and the claims differ in that An et al. do not teach the exact claimed ranges for the degree of branching of the branched PC as recited in the instant claims. However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by An et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
An et al. are silent on the method for reducing the content of component C in waste water obtained in the preparation of the composition.
However, An et al. teach a preparation of a composition substantially identical to the claimed invention, wherein the composition comprises the linear polycarbonate, the polycarbonate having a degree of branching that overlaps with the claimed range and the same component C potassium perfluoroalkylsulfonate salt disclosed in the instant specification (see discussion above). Given that the claimed and prior art compositions are substantially identical in structure and composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. Therefore, the composition of Ann et al. would be expected to contribute to a reduction of the content of the component C in the water (wastewater) used during the pelletization step.
Regarding claim 2, An et al. teach a method for preparing the composition comprising blending the components followed by compounding in a single or twin screw extruder. The extrudate is immediately quenched in a water batch and pelletized [0098], thereby reading on the step (a) and (b).
Regarding claim 3, An et al. teach the extruder is operated at a temperature higher than that necessary to cause the composition to flow and the extrudate (strand) is immediately quenched in a water batch and pelletized [0098], which implies the extrudate comes into contact with the water at least temporarily in the form of a melt, as required by the instant claim.
Regarding claim 4, An et al. teach the extrudate (claimed composition) is quenched in a water batch and pelletized [0098], wherein the water batch used during the pelletization step is considered to read on the wastewater.
Regarding claim 5, An et al. are silent on the type of pelletization.
However, An et al. teach the extrudate is quenched in a water batch and then pelletized [0098], which implies a strand pelletizing, wherein the strand (extrudate) directly come into contact with the water and then is pelletized ([0192] of US PG Pub. of the instant application US 2024/0254291 A1).
Regarding claim 6, An et al. teach the composition as discussed in the rejection of claim 1. An et al. further teach the composition comprises 95 wt.% or less of linear polycarbonate (claim 10), 5-70 wt.% of branched polycarbonate (claim 11) , 0.01-1.5 wt.% of the flame retardant [0062], 0-80 parts wt. of reinforcing fillers such as glass fiber, carbon fiber or the like based on 100 parts of the polycarbonate (0-40 wt.% based on the total composition) [0086]. Furthermore, An et al. teach in a preferred embodiment the composition comprises about 70 wt.% of linear polycarbonate High Flow PC-1 and about 30 wt. % branched PC based upon weight of polycarbonate, potassium perfluorobutane in the amount of about 0.08 wt. % of the total weight of the composition, a heat stabilizer in the amount of about 0.06 wt. % of the total weight of the composition, a polymethylphenyl siloxane in the amount of about 0.4 wt. % of the total weight of the composition, and octaphenyl cyclotetrasiloxane in the amount of 0.1 wt. % of the total weight of the composition ([0109]). By examiner’s calculations, the composition comprises 69.5 wt.% of linear PC, 29.8 wt.% of branched polycarbonate, 0.08 wt.% potassium perfluorobutane, 0.06 wt. of heat stabilizer, 0.4 wt.% of polymethylphenyl siloxane, 0.1 wt. % of octaphenyl cyclotetrasiloxane based on the total weight of the composition, as required by the instant claim.
Regarding claim 7, An et al. teach the composition comprises octaphenyl cyclotetrasiloxane ([0054], [0109], claim 23), which reads on formula (R12 Si O)Y , when R1 is a phenyl group and y is 4, as required by the instant claim.
Regarding claim 8, An et al. teach the composition further comprises additives including an antioxidant [0087], a heat stabilizer [0088], a light stabilizer [0089], an UV absorbing [0090], colorants [0093], as required by the instant claim.
Regarding claim 9, An et al. teach the composition consist of linear polycarbonate, branched PC, potassium perfluorobutane, polymethylphenyl siloxane, octaphenyl cyclotetrasiloxane [0054] and heat stabilizer [0109], as required by the instant claim.
Regarding claim 10, An et al. teach the composition as previously discussed in the rejection of claim 1 (see paragraph 9). It is noted that the examiner interprets the phrase “for reducing the content of component ( C ) in the waste water obtained in the preparation of the composition” as reciting the purpose or intended use of the claimed composition comprising a polycarbonate (B) having a degree of branching of 0.8 to 1.5 mol%. While An et al. do not teach that the branched polycarbonate having the specific degree of branching is used for reducing the content of component ( C ) as recited in the instant claim, Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Regarding claim 11, note that the discussion supra for claim 2 presently applies.
Regarding claim 12, note that the discussion supra for claim 3 presently applies.
Regarding claim 13, note that the discussion supra for claim 4 presently applies.
Regarding claim 14, An et al. are silent on the type of pelletization.
However, it is noted that the discussion supra for claim 5 presently applies.
Regarding claim 15, note that the discussion supra for claim 6 presently applies.
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, 6-10 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 and 11-15 of copending Application No. 18/561,580 in view of WO 2012-065292 A1 and US 2013/0274391 A1.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach a method and a composition in which the composition comprises the components (A) to (E) in amounts that overlap and the component (B) having a degree of branching in amounts that overlaps (0.8 to 1.5 mol% in the current application and 1.0-1.5 mol% in the copending application). Examiner interprets the phrase “for reducing the content of component ( C ) in the waste water obtained in the preparation of the composition” as reciting the purpose or intended use of the claimed composition comprising a polycarbonate (B) having a degree of branching of 0.8 to 1.5 mol%. While the copending application does not teach that the branched polycarbonate having the specific degree of branching is used for reducing the content of component ( C ) as recited in the instant claims, Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
The difference between the claims of the copending application and the instant claims 8-9 is the method claims do not teach the composition comprising additives. However, An et al. teach the preparation of a flame retardant composition where in the composition comprises additives including antioxidants [0087], heat stabilizers [0088], light stabilizers [0089], UV absorbing [0090], colorants [0093]. An et al. offer the motivation of using the additives in the composition of the instant application due to its ability to improve the appearance and stability of the polycarbonate composition while maintaining flame retardance properties and transparency [0084]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the additives taught by An et al. on the composition as recited in the instant claims 8-9, thereby arriving at the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 6-10 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 9, 10-15 , of copending Application No. 18/561,420 in view of WO 2012-065292 A1 and US 2013/0274391 A1.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach a method and a composition in which the composition comprises the components (A) to (D) in amounts that overlap and the component (B) having a degree of branching in of 0.8 to 1.5 mol%. Examiner interprets the phrase “for reducing the content of component ( C ) in the waste water obtained in the preparation of the composition” as reciting the purpose or intended use of the claimed composition comprising a polycarbonate (B) having a degree of branching of 0.8 to 1.5 mol%. While the copending application does not teach that the branched polycarbonate having the specific degree of branching is used for reducing the content of component ( C ) as recited in the instant claims, Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
The difference between the claims of the copending application and the instant claims 7-9 is that the method claims do not teach the composition further comprising a cyclic siloxane and additives. However, An et al. teach the preparation of a flame retardant composition where in the composition comprises additives including antioxidants [0087], heat stabilizers [0088], light stabilizers [0089], UV absorbing [0090], colorants [0093]. An et al. further teach the composition comprises octaphenylcyclotetrasiloxane [0074]. An et al. offer the motivation of using the additives in the composition of the instant application due to its ability to improve the appearance and stability of the polycarbonate composition while maintaining flame retardance properties and transparency [0084]. An et al. teach that the use of octaphenylcyclotetrasiloxane in combination with Rimar salt (potassium perfluorobutanesulfonate) improves the flame performance and also increases the transparency and reduce the haze of polycarbonate compositions. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the cyclic siloxane and additives taught by An et al. on the composition as recited in the instant claims 7-9, thereby arriving at the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 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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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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