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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The range of claim 6 is broader than the range of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 and 7-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yamada et al. (2018/0057661).
Regarding claims 1-5, 7-11 and 15-17: Yamada et al. teach a composition comprising a polycarbonate-polyorganosiloxane copolymer of formula (2-11) [0105]:
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and the claimed amount of the claimed UV absorber [Examples].
Regarding claim 12: Yamada et al. teach a Mv of 14,000 to 22,000 [0033; Examples].
Regarding claims 13-14: Since the composition is the same as claimed, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 18: The claim contains a product by process limitation. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Since the chemical structure is met, the claim limitations are met.
Regarding claim 20: Yamada et al. teach a molded body [0001, 0044; Examples].
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 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.
Claim(s) 1-6 and 8-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mittal et al. (2016/0083528) in view of Yamada et al. (2018/0057661).
Regarding claims 1-6, 8-11, 15-17 and 19: Mittal teaches [Table 1, Example 1 and Table 2, first entry PC-Siloxane-Copolymer -1; 0042, 0043, 0050] polycarbonate siloxane copolymer, which includes siloxane repeating units as represented by formula (1), where R1=R2=R3=R4=Me; a =36; R6= CH2CH(CH3)CH2, R8= (CH(CH₃)CH₂), with z=1 and b =10, and a polycarbonate block derived from bisphenol A (which corresponds to formula (2) and 2,2-bis(4-hydroxyphenol)propane of instant claim 3, and structure a-v of instant claim 4). The polycarbonate repeat units y are calculated to be ~ 54. The polysiloxane is present at 7.1 wt% [Table 2] in the total polycarbonate siloxane copolymer, meeting the claimed requirement.
Mittal fails to teach a UV absorber.
However, Yamada teaches adding 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber to an analogous polycarbonate-polyorganosiloxane block copolymer composition to improve the weatherability of the composition [0172-0173, 0178; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber as taught by Yamada to the composition of Mittal to improve the weatherability of the composition.
Regarding claim 9: the structure of Mittal is the very similar to the claimed structure, only differing by one methyl group. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).
Regarding claim 12: Mittal teaches the claimed molecular weight [Examples; Tables].
Regarding claims 13-14: Since the composition is the same as claimed, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 18: The claim contains a product by process limitation. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Since the chemical structure is met, the claim limitations are met.
Regarding claim 20: Mittal teach a molded body [0002, 0035; Examples].
Claim(s) 1-14 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konig et al. (5,783,651).
Regarding claims 1-12 and 18-19: Konig et al. teach a polycarbonate-based resin composition comprising a polycarbonate-polyorganosiloxane copolymer has the claimed polyorganosiloxane block (formulae (IV) of column 2) and the claimed polycarbonate block (column 6, lines 3-5; Examples), employing melt polymerization conditions (paragraph bridging columns 7 and 8). The average length of the polydiorganosiloxane segments is between 5 and 100 (column 3, lines 39-42), and the segments will constitute between 7 and 30 wt.% of the total weight of the polycarbonate-polysiloxane copolymer. The variable R₃ in formula (IV) is preferably a linear propylene moiety consistent with claim 9. Konig et al. teach the claimed molecular weight (column 8, lines 31-37; Examples). Konig et al. teach adding a UV absorber (column 8, line 46). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a UV absorber to the composition to stabilize the composition.
Regarding claims 13-14: Since the composition is the same as claimed, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 20: Konig et al. teach molded articles (column 9, lines 1-5; Examples).
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konig et al. (5,783,651) as applied to claim 1 further in view of Yamada et al. (2018/0057661).
Konig et al. fail to specify a particular UV absorber.
However, Yamada et al. teach adding 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber to an analogous polycarbonate-polyorganosiloxane block copolymer composition to improve the weatherability of the composition [0172-0173, 0178; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber as taught by Yamada et al. as the UV absorber in the composition of Konig et al. to improve the weatherability of the composition.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez Vidal et al. (2017/0240710) in view of Yamada et al. (2018/0057661).
Regarding claims 1-11 and 15-17: Regarding claim 1, Gonzalez Vidal et al. teach a composition comprising a polysiloxane polycarbonate block copolymer with the following structure [0093]:
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Z is taught to be an integer from 1 to 500 [0093]. Additionally, R1 and R2 are methyl; R3 and R4 are methyl groups. R5 is an an alkylarylene group, R6 is an alkylarylene group with 3 alkyl groups attached to the aromatic group. and R10 is a divalent aromatic hydrocarbon group having 15 carbon atoms [0093]. Gonzalez Vidal et al. also teaches X is 1-1000 [0093]. Gonzalez Vidal et al. teach adding a stabilizer [0162].
Gonzalez Vidal et al. fail to teach a UV absorber.
However, Yamada teaches adding 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber to an analogous polycarbonate-polyorganosiloxane block copolymer composition to improve the weatherability of the composition [0172-0173, 0178; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber as taught by Yamada to the composition of Gonzalez Vidal et al. to improve the weatherability of the composition.
Regarding claim 12: Gonzalez Vidal et al. teach a Mw of 20,000 to 100,000 g/mol [0139]. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claims 13-14: Since the composition is the same as claimed, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 18: The claim contains a product by process limitation. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Since the chemical structure is met, the claim limitations are met.
Regarding claim 20: Gonzalez Vidal et al. teach a molded body [0158-0161; Examples].
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,384,881 in view of Yamada et al. (2018/0057661).
The Patent claims a polycarbonate-based resin composition comprising the claimed polycarbonate-polyorganosiloxane copolymer.
The Patent fails to claim a UV absorber.
However, Yamada teaches adding 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber to an analogous polycarbonate-polyorganosiloxane block copolymer composition to improve the weatherability of the composition [0172-0173, 0178; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber as taught by Yamada to the composition of the Patent to improve the weatherability of the composition.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,398,237 in view of Yamada et al. (2018/0057661).
The Patent claims a polycarbonate-based resin composition comprising the claimed polycarbonate-polyorganosiloxane copolymer.
The Patent fails to claim a UV absorber.
However, Yamada teaches adding 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber to an analogous polycarbonate-polyorganosiloxane block copolymer composition to improve the weatherability of the composition [0172-0173, 0178; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber as taught by Yamada to the composition of the Patent to improve the weatherability of the composition.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,540,218 in view of Yamada et al. (2018/0057661).
The Patent claims a polycarbonate-based resin composition comprising the claimed polycarbonate-polyorganosiloxane copolymer.
The Patent fails to claim a UV absorber.
However, Yamada teaches adding 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber to an analogous polycarbonate-polyorganosiloxane block copolymer composition to improve the weatherability of the composition [0172-0173, 0178; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 1.0 parts by mass of a benzotriazole or a benzoxazinone UV absorber as taught by Yamada to the composition of the Patent to improve the weatherability of the composition.
Relevant Prior Art
Odian (Principles of Polymerization, 4th edition, 2004) teaches that Mv and Mw are close to each other, and within 10-20% (page 22).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 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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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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