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.
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 1-2, 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 18/568,001 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composition of the same polycarbonate-polysiloxane block copolymer as recited in the instant claims and the copending claims recite polymers including methyl methacrylate-butadiene-styrene (copending claim 17) which meets the styrene based resin of the instant 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.
Claim(s) 1-5, 7-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (US 2018/0230305).
Okamoto teaches a polycarbonate-polyorganosiloxane copolymer (abstract) which can be used to form a composition that includes an additive including a copolymer (B) which includes units derived from acrylonitrile and styrene (abstract) and thus are a styrene resin and includes examples such as ABS (¶ 127). Okamoto teaches the amount of the copolymer is 8-100 pbm based on 100 pbm copolymer (A) (¶25) which is about 4-50 wt% and meets claim 16.
Okamoto teaches the polycarbonate-polyorganosiloxane copolymer can be derived from a polysiloxane such as
PNG
media_image1.png
74
336
media_image1.png
Greyscale
(¶77) where R3-R6 can be a C1-C6 alkyl group (¶ 63) and where Sasaki teaches polydimethylsiloxane (¶ 79, 211, 222) which has R3-R6 as methyl groups. These meet the claimed R1-R4 of formula (1). Okamoto teaches n is the average chain length and which Okamoto teaches is 20-500, preferably 30-150 (¶19, 55, 63) which meets the claimed ‘a’ of formula (1) in claim 1 and claim 5. The ethylene group -(CH2)2- adjacent to the silicon atom meets the claimed R6 of Formula (1) of claim 1. The structure in Okamoto meets claimed formula (1) when u is 1, z is 0, R8 is a methyl group (CH2), and b is 2. The structure of Okamoto also meets formula (1-1) of claim 7 when z1 is 0, R7 is a methylene group, b1 is 2, and R5 is an ethylene group.
Okamoto teaches the polycarbonate-polyorganosiloxane copolymer can be derived from a polysiloxane such as
PNG
media_image2.png
80
638
media_image2.png
Greyscale
(¶ 77) where R3-R6 can be a C1-C6 alkyl group (¶ 63) and where Sasaki teaches polydimethylsiloxane (¶ 79, 211, 222) which has R3-R6 as methyl groups. These meet the claimed R1-R4 of formula (1). Okamoto teaches n is the average chain length and which Okamoto teaches is 20-500, preferably 30-150 (¶19, 55, 63) which meets the claimed ‘a’ of formula (1) in claim 1 and claim 5. The methylethylene group -(CHMeCH2)- adjacent to the silicon atom meets the claimed R6 of Formula (1) of claim 1 and claim 10. The structure in Okamoto meets claimed formula (1) when u is 1, z is 0, R8 is a -CMe2Ph- group and a Ph-OH group and b is 2. The structure of Okamoto also meets formula (1-1) of claim 7. Okamoto teaches examples of linking groups to the siloxane groups include (CH2)c where c is 1-6 (¶68) which meets the ‘trimethylene’ of claim 9.
Okamoto teaches the polycarbonate-polyorganosiloxane has a viscosity molecular weight of 10,000-25,000 (¶102) and that the amount of polyorganosilane in the copolymer is 2-15 mass% (¶101). This gives an amount of polycarbonate of 85-98 mass% and corresponds to a molecular weight of 8,500-24,500. When the monomeric unit is derived from bisphenol A (¶ 96, 100), the corresponding monomeric unit of the polycarbonate has a molecular weight of about 254, giving about 33-96 repeat units. This range meets ‘y’ of formula (1) in claim 1.
Okamoto teaches the polycarbonate can be derived from bisphenol A (¶ 96, 100) which meets structure (111) of claim 2 when X is a C3 alkylene group, claim 3, and formula (a-v) of claim 4.
Okamoto does not explicitly recite the claimed elongation at break of 25% or more. However, Okamoto teaches polysiloxanes and polysiloxane/polycarbonate copolymers falling in the scope of the instant claims. As Okamoto 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).
Okamoto does not explicitly recite the polysiloxane/polycarbonate is formed in a melt polymerization method. However, claims 17-18 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.
Okamoto teaches forming molded bodies (¶ 32, 130) which meets claim 19.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 6 recite the value of b is 10 or more. The prior art fails to teach the structural features recited in claims 6 and therefore no prior art rejections are presented over this claim.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
Prosecution Insights