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 § 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 b is 10 or more but depends from claim 1 which states that b is 2-200. Since claim 6 recites a range that is open ended, claim 6 is indefinite because it is unclear whether it is meant to be limited by the range of claim 1. It is suggested that the range of claim 6 be amended to recite a range of 10-200.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-8, 11-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishikawa (WO 2019/049916). As the WO document is not in English, citations are made to the corresponding US document, US 2020/0362104.
Ishikawa teaches a polycarbonate based composition comprising 0.1-100 mass% of a polycarbonate/polysiloxane copolymer with 1-50 mass% of a polyester based resin (abstract). Ishikawa teaches examples of the polyester include polybutylene terephthalate (¶ 21) which meets claim 14. Ishikawa teaches forming a molded article (¶ 31, abstract).
Ishikawa teaches the polysiloxane block can be derived from a diol such as
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which meets claimed formula (1) when R6 is an ethylene group, u is 1, R8 is a methylene group, z is 0 and b is 2. Ishikawa teaches n is 20-500 (¶19) and R3-R6 includes methyl (¶ 46-47, 50). This structure also meets formula (1-1) when R5 and 6 are ethylene groups, z and z1 are 0, R7 and R8 are methylene groups and b and b1 are 2. It is noted that other structures in Ishikawa can meet the claimed formula (1).
Ishikawa teaches the polycarbonate includes
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where X includes a single bond or alkyl group (¶12). Ishikawa teaches the content of the polysiloxane block is 1-50 mass% of the block copolymer (¶ 64) and the molecular weight is 9,000-50,000 (¶ 66). This means the polycarbonate portion is 50-99 mass% of 9,000-50,000, which is a range of 4,500-49,500. Specific example of the diol used to form the polycarbonate is bisphenol A (¶188-189). A bisphenol A carbonate monomeric unit has a molecular weight of about 254, giving about 18-195 repeat units which meets the range of y present in formulas (2), formula (111), and formula (a-v).
Bisphenol A gives a monomeric unit that meets claimed formula (111) when X is a propyl group. Ishikawa teaches n is 20-500 (¶19) which overlaps the claimed range of ‘a’ in claim 5.
Ishikawa does not explicitly recite the polysiloxane/polycarbonate is formed in a melt polymerization method. However, claim 16-17 are recited in the product-by-process format by use of the language, “obtained by a melt polymerization method…” and “obtained by using…” Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Ishikawa does not explicitly recite the claimed elongation at break of 25% or more. However, Ishikawa teaches polysiloxanes and polysiloxane/polycarbonate copolymers falling in the scope of the instant claims. As Ishikawa teaches the same blends of polyester and polysiloxane/polycarbonate as claimed, the blends of Ishikawa are expected to have the same properties, including elongation at break, as the claimed blends. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim(s) 1-6, 8-12, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mittal (US 2016/0083528).
Mittal teaches a polyalkyelne-siloxane polymer used to form polycarbonate-polyoxyalkylene-siloxane copolymers and blends (abstract). Mittal teaches an example where a bis-phenol A is reacted with triphosgene and a polyoxyalkylene siloxane polymer (¶ 50) to form a polycarbonate copolymer (¶50-52). The reaction of bisphenol A is reacted with triphosgene gives a polycarbonate having a bisphenol A group,
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, which meets claimed R10 of formula (2), ‘X’ of formula (111), bis(4-hydroxyphenyl)propane of claim 3, and formula (a-v) of claim 4. Bisphenol A is a diol monomer and meets claim 17.
Mittal teaches the polysiloxane/polycarbonate copolymer can be combined with a polyester in a blend (¶25).
While Mittal does not explicitly recite an example using both polyester and the polycarbonate/polysiloxane, it would have been obvious to use polyester because Mittal teaches using polyester (¶ 25) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Mittal teaches an example of the copolymer having a Mw of 28,000 (Table 2) formed from a polysiloxane having a Mw of 8,500 (Table 1). Thus, the Mw of the polycarbonate portion of the copolymer is 28,000-8,500 = 19,500. A bisphenol A carbonate monomeric unit has a molecular weight of about 254, giving about 77 repeat units in a block with a molecular weight of 19,500. 77 repeat units meets the range of 10-500 for variable y.
Mittal teaches the polysiloxane has 35 dimethylsiloxane repeat units (¶ 41) which meets the claimed variable R1-R4, ‘u’, ‘z’, and ‘a’ of formula (1). Mittal teaches the polyether has 10 propylene oxide repat units and 20 ethylene oxide repeat units (¶42). This meets the claimed R6, R8, and b variables of claimed formula (1). The dimethylsiloxane repeat units meet claim 8. The linking group between the polyether block and the polysiloxane block includes a propylene group (abstract) which meets the trimethylene group of claim 9. Ethylene oxide meets the dimethylene group of claim 10.
Mittal teaches an example of the copolymer having a Mw of 28,000 (Table 2) formed from a polysiloxane having a Mw of 8,500 (Table 1) which is about 30 mass% polysiloxane/polyether portion and meets claim 11. The Mw of the block copolymer meets the molecular weight recited in claim 12. While the Mw is not identical to the Mv due to the different measuring methods, one of ordinary skill in the art would have expected a polymer having a Mw of 28,000 and a PDI of 1.75 to have a Mv in a similar amount of 28,000, and certainly in the range of 5,000-50,000 as required by claim 12 because the molecular weight does not vary by extreme amounts when measured differently.
Mittal does not explicitly recite the polysiloxane/polycarbonate is formed in a melt polymerization method. However, claims 16-17 is recited in the product-by-process format by use of the language, “obtained by a melt polymerization method…” and “obtained by using” Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Mittal teaches the composition are used to mold articles (¶2, 52, claim 6) which meets claim 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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