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 Status
Claims 1-15 are pending.
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.
Claim 6 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 6 recites the limitation "monoaryl carbonate" and the term “aromatic ester units”. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, “monoaryl carbonate” has been interpreted as resorcinol carbonate, and “aromatic ester units” has been interpreted as isophthalic acid-terephthalic acid-resorcinol ester units.
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.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claim 1-15 is/are rejected under 35 U.S.C. 103 as being obvious over Van Der Mee et al (herein “VDM1”; US 2020/0131362 A1) in view of Van Der Mee et al (herein “VDM2”; US 2015/0104599 A1); The applied references have a common inventor with the instant application (Van Der Mee).
Van Der Mee (VDM1) teaches a thermoplastic composition wherein:
One or more BPA homopolycarbonate(s) can be present in an amount of 0.1-60 wt. %, based on the total weight of the thermoplastic composition [p. 0023].
A poly(carbonate-arylate ester) copolymer can be present in an amount of 10-85 wt. % based on the total weight of the thermoplastic compositions [p. 0020].
The poly(carbonate-arylate ester) copolymer can comprise 50-95 mol % of BPA carbonate units, 5-50 mol % of monoaryl arylate ester units of formula (8) or (8a) (isophthalic acid-terephthalic acid resorcinol ester units), and 1-20 mol % of resorcinol carbonate units [p. 0030] [see applicants formula (4c) at p. 0030 of the instant specification].
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{see instant claims 4, 5, 6} The poly(carbonate-arylate ester) copolymer can be a copolymer of formulas (9, 9a) [p. 0029]:
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Various additives may be incorporated. Additives include fillers, reinforcing agents, antioxidants, heat stabilizers, light stabilizers, ultraviolet (UV) light stabilizers, plasticizers, lubricants, mold release agents, antistatic agents, colorants such as titanium dioxide, carbon black, and organic dyes, surface effect additives, radiation stabilizers, flame retardants, anti-drip agents, and impact modifiers. A combination of additives can be used. The total amount of the additives (other than any impact modifier, filler, or reinforcing agents) can be 0-5 wt. % or 0.01-5 wt. %, based on the total weight of the thermoplastic composition [p. 0042] {see instant claim(s) 7}.
VDM1 teaches the composition can be molded into useful shaped articles by a variety of methods, such as injection molding, injection-compression molding, heat-cool molding, extrusion, rotational molding, blow molding, and thermoforming [p. 0058] . VDM1 teaches that articles of the thermoplastic composition can be used as a component of a wide variety of devices and applications, including articles for trains [p. 0062] {see instant claim(s) 1, 12, 13, 14}. VDM1 exemplifies the use of AO-1 Tris(2,4-di-t-butylphenyl)phosphite (IRGAFOS 168) as an acid stabilizer for the thermoplastic composition (prolonging color stability under acidic conditions) [table 1; p. 0036, 0038, 0066]. Although VDM1 exemplifies the use of Irgafos 168, a well-known organophosphorus stabilizer in the art [Wikipedia], VDM1 is silent with respect to appropriate species of flame retardants, when selected as an additive to the thermoplastic composition.
VDM2 teaches polycarbonate-based compositions are useful in a variety of applications, however, standards for flame retardant properties have become increasingly stringent, particularly in applications used in mass transportation [p. 0003]. VDM2 further teaches poly(carbonate-arylate ester)s that do not meet flame retardant standards {directed towards similar compositions as those taught by VDM1} can be formulated so as to have very low heat-release properties and low smoke densities, with improved processing properties such as flowability, and without significantly compromising mechanical properties such as impact resistance; the addition of an organophosphorus compound(s) to poly(carbonate-arylate ester) copolymers results in an improved balance of properties compared to the same copolymers without the organophosphorus compounds [p. 0014]. VDM2 teaches an organophosphorus flame retardant may be included in an amount effective to provide 0.1 to 1.0 wt % phosphorus, based on the weight of the composition [p. 0053]. VDM2 teaches the several suitable species of organophosphorus flame retardants, including the following {see instant claim(s) 1, 9, 10, 11, 12}:
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{see instant claims 1, 3, 12} In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the composition of VDM1 comprising:
One or more BPA homopolycarbonate(s) present in an amount of 0.1-60 wt %;
A poly(carbonate-arylate ester) copolymer present in an amount of 10-85 wt %;
A flame-retardant additive present in an amount of 0.1-1.0 wt %, wherein the total amount of additives are present in an amount of 0.01-5 wt %;
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Furthermore, it would have been obvious to select an organophosphorous flame-retardant additive from the species taught by VDM2, as the general teachings of VDM2 are that the addition of an organophosphorus compound(s) to poly(carbonate-arylate ester) copolymers results in an improved balance of properties compared to the same copolymers without the organophosphorus compounds.
Regarding claim 2; VDM1 is silent with respect to the critical heat flux and contention index of toxicity of the thermoplastic composition. However, a person with ordinary skill in the art would expect a composition resulting from the teachings of VDM1 in view of VDM2 to obviously embrace embodiments capable of satisfying these properties as the composition of VDM1 in view of VDM2 significantly satisfies the chemical and material limitations (and amounts thereof) of the claimed composition.
Regarding claim 8; VDM1 teaches more than one BPA homopolycarbonate can be present in the thermoplastic composition. For example, the polycarbonate compositions can comprise a first BPA homopolycarbonate having an Mw of 20,000-25,000 g/mol and a second BPA homopolycarbonate having an Mw of 28,000-32,000 g/mol, or a second BPA homopolycarbonate having an Mw of 16,000-20,000 g/mol, each measured by GPC [p. 0022]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the thermoplastic composition of VDM1 with a BPA homopolycarbonate having a Mw of 20,000-25,000 g/mol and a BPA homopolycarbonate having a Mw of 28,000-32,000 g/mol. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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