DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/IB2022/055802 filed 6/22/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. EP 21181548.5 filed 6/24/2021, which papers have been placed of record in the file.
Claims 1-15 are pending.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hepp et al. (4,436,860) in view of Shimizu et al. (US 2022/0186022).
Regarding claim 1: Hepp is directed to a thermoplastic composition comprising:
(a) a thermoplastic polymer component comprising a semi-crystalline thermoplastic resin of a polyester (col. 4 ll. 19-27 Hepp)
(b) glass fiber
(c) 0.1-3 wt% of a nucleating agent comprising an organic acid metal salt sodium stearate (col. 4 l. 62 – col. 5 l. 2).
The weight percent value of all components does not exceed 100 wt% and all weight percent values are based on the total weight of the thermoplastic composition.
Carbon fiber is not mentioned, although other conventional ingredients can be included (col. 8 ll. 59-65 Hepp).
Shimizu is directed to a polyester composition and molded articles therefrom, wherein the composition comprises fibers including carbon fiber and glass fibers in combination, wherein the carbon fibers have a nominal diameter of 3-10 μm ([0048]-[0049] Shimizu). One skilled in the art would have been motivated to have selected a combination of glass fibers and carbon fibers in the composition of Hepp for excellent appearance and elastic modulus as well as rigidity ([0049] Shimizu). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a combination of glass and carbon fibers in the composition of Hepp.
While the combination of Hepp and Shimizu doesn't specifically recite surface resistivity, the thermoplastic composition produced in Hepp and Shimizu is substantially identical to the composition produced in the instant invention. Specifically, Example 3 Table 4 of the present invention comprises PET, carbon fibers, and sodium stearate. This is substantially identical to the composition taught by the combination of Hepp and Shimizu.
Case law holds that 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). MPEP 2112.01(I).
Hence, the combination of Hepp and Shimizu suggests a thermoplastic composition having a surface resistivity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claims 2-3: Polyesters of crystalline or semi-crystalline polymers of PET and PBT are disclosed by Hepp.
Regarding claim 4: The crystalline or semi-crystalline polyester component comprises 40-95 wt% of the composition (col. 3 ll. 52-56 Hepp).
Regarding claim 5: The composition of Hepp comprises 5-60 parts reinforcing filler per 100 parts composition (col. 3 ll. 52-56 Hepp).
Regarding claim 6: Hepp discloses glass fibers, while Shimizu discloses carbon fibers and glass fibers.
Regarding claim 7: Hepp discloses inorganic fillers of silicates, mica, aluminas, talc, graphite (Example 3 Hepp).
Regarding claim 8: Hepp discloses an organic nucleating agent of sodium stearate.
Regarding claims 9-11: 0 wt% of an additional polymer and many additional additives of additional polymers, pigments dyes and the like are disclosed (col. 8 ll. 59-65 Hepp).
Regarding claim 12: The composition of Hepp does not require any electrically conductive filler component beyond the carbon fiber.
Regarding claim 13: While the combination of Hepp and Shimizu doesn't specifically recite surface resistivity, the thermoplastic composition produced in Hepp and Shimizu is substantially identical to the composition produced in the instant invention. Specifically, Example 3 Table 4 of the present invention comprises PET, carbon fibers, and sodium stearate. This is substantially identical to the composition taught by the combination of Hepp and Shimizu.
Case law holds that 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). MPEP 2112.01(I).
Hence, the combination of Hepp and Shimizu suggests a thermoplastic composition having a surface resistivity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 14: Hepp mentions articles made from the composition, although does not elucidate any specific article.
Shimizu teaches polyester resins are excellence in mechanical properties, heat resistance, chemical resistance, etc., polyester resins have been widely used for automobile parts and electric and electronic parts ([0002] Shimizu). One skilled in the art would have been motivated to have produced an automobile parts and electric and electronic part in Hepp since polyester resins have been have been widely used for automobile parts and electric and electronic parts, as taught by Shimizu. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the composition of Hepp for producing automobile parts and electric and electronic parts
Regarding claim 15: Hepp discloses a method of making a thermoplastic composition comprising:
(a) a thermoplastic polymer component comprising a semi-crystalline thermoplastic resin of a polyester
(b) glass fiber
(c) 0.1-0.5 wt% of a nucleating agent comprising an organic acid metal salt sodium stearate.
The weight percent value of all components does not exceed 100 wt% and all weight percent values are based on the total weight of the thermoplastic composition.
Carbon fiber is not mentioned, although other conventional ingredients can be included (col. 8 ll. 59-65 Hepp).
Shimizu is directed to a polyester composition and molded articles therefrom, wherein the composition comprises fibers including carbon fiber and glass fibers in combination wherein the carbon fibers have a nominal diameter of 3-10 μm ([0048]-[0049] Shimizu). One skilled in the art would have been motivated to have selected a combination of glass fibers and carbon fibers in the composition of Hepp for excellent appearance and elastic modulus as well as rigidity ([0049] Shimizu). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a combination of glass and carbon fibers in the composition of Hepp.
While the combination of Hepp and Shimizu doesn't specifically recite surface resistivity, the thermoplastic composition produced in Hepp and Shimizu is substantially identical to the composition produced in the instant invention. Specifically, Example 3 Table 4 of the present invention comprises PET, carbon fibers, and sodium stearate. This is substantially identical to the composition taught by the combination of Hepp and Shimizu.
Case law holds that 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). MPEP 2112.01(I).
Hence, the combination of Hepp and Shimizu suggests a thermoplastic composition having a surface resistivity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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