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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-12 in the reply filed on 07/07/2026 is acknowledged. Accordingly, claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-12 are currently under examination on the merits.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the combined subject matter of claims 1-12 of copending Application No.18/561580. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the conflicting claims reads upon the subject matter recited in the presently examined claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over An et al (US 2013/0274391, of record, ‘391 hereafter).
Regarding claims 1-12, ‘391 discloses a composition containing (A) less than 90% by weight, specifically 70% as in Example Batch 1-3, of a linear polycarbonate which does not contain an end group represented by formula (I) as in claim 9 ([0004], [0006], [0010]-[0019], [0049], Table 3); (B) 5% to 70% by weight, specifically 30% as in Example Batch 1-3 (Table 3), of a branched polycarbonate having a preferred degree of branching of 0.75 to 5 mol% and not comprising any end groups of formula (I) as in claim 1 ([0004], [0006], [0035]-[0040], [0047]), but with an end group being mono-phenolic group satisfying present claim 10 ([0041]-[0043]); (C) preferably 0.02% to 1.0 % by weight of a compound selected from the group of alkali metal, alkaline earth metal or ammonium salts of aliphatic or aromatic sulfonic acid, specifically potassium perfluorobutane sulfonate in an amount of 0.08 wt%, satisfying present claims 5 and 11-12 ([0061]-[0063], [0079], Examples); (D) less than 44 % by weight of a reinforcing fiber ([0085]-[0086], 0 to 80 parts per 100 parts of polymer); (E) a cyclic siloxane ([0054], [0059], Batch 1-3, Table 3); and (F) other additive as listed in the present claim 7 ([0087]-[0095]). ‘391 discloses that the composition may contain an reinforcing fiber in an amount up to 44 wt% ([0086]), but does not specifically exemplify an embodiment having reinforcing fiber in the presently claimed range as in claims 1 and 5; however, it is known in the art that the reinforcing fiber is used to enhance mechanic properties such as tensile strength and modulus, and its amount is an effective variable because the amount of the reinforcing fiber directly affects the mechanic properties of the composition. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the amount of reinforcing fiber within the scope of the present claims so as to produce sufficient mechanical properties as needed. The composition of ‘391 does not contain polytetrafluoroethylene, halogenated flame retardants, or a polysiloxane-polycarbonate block co-condensate (See Batch 1-3, Table 3), satisfying present claims 2-4 and 8.
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Wen et al (US 2017/0081512). Wen discloses a polycarbonate composition comprising a linear polycarbonate, a branched polycarbonate and a metal sulfonate as a flame retardant and a cyclic siloxane ([0003]-[0004], Examples). Zheng et al (US 2013/0317148). Zheng discloses a polycarbonate composition comprising a linear polycarbonate, a branched polycarbonate, a flame retardant and a reinforcing fiber ([0004]-[0005], Examples).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
Prosecution Insights