DETAILED ACTION
1. Claims 1-18, as filed by Preliminary Amendment on 01/09/2024, are pending.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
3. The information disclosure statements (IDS) submitted on 01/09/2024 and 02/27/2024 have been considered by the examiner. Initialed copies are attached.
Claim Objections
4. Claims 5 and 10 are objected to because of the following informalities: The labels [Chem. 1] in claim 5 and [Chem. 2] in claim 10 should be deleted because they add a second label to the same formula (1) and it is confusing to the reader. Appropriate correction is required.
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.
5. Claims 5 and 10-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5, lines 6-8 recites the term “in the formula, R is independently selected from hydrogen, an alkyl group, a substituted alkyl group, an aryl group, and a substituted aryl group, and m is an integer selected from 2 to 6” within parentheses. Claim 10, lines 15-17 recites this same term within parentheses. The inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the recited term is part of the claimed invention.
Claims 11-18 are also rejected as indefinite for failing to overcome the deficiencies of base claim 10. Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 103
6. 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 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.
7. Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sagawa et al. (JP 09-111306 A; citations are to its English machine translation provided by Applicant in their IDS filed on 01/09/2024), in view of Niino et al. (US 2002/0016395 A1; cited on Applicant’s IDS).
As to independent claim 1, Sagawa teaches a composition for inorganic powder injection molding comprising: a sinterable organic powder (see para. 0009-0010); and an organic binder comprising a modified polyacetal (C) including a polyacetal segment (A) and a modification segment (B) (see para. 0012-0013: polyolefin polymer-modified polyacetal resin is an essential binder component).
Sagawa fails to explicitly disclose [1] that a number average molecular weight of the modification segment (B) is 500 to 10,000 and [2] that a melt flow rate (MFR) of the modified polyacetal (C) measured under conditions of 190˚C, 2.16 kg is 70 g/19 min or more and 160 g/10 min or less.
As to difference [1], Niino, in analogous art of polyacetal resins for injection molding (see para. 0002 & 0116), teaches a hydrogenated polybutadiene segment (B) hydroxy-alkylated at both ends (corresponds to the “modification segment (B)” in claim 1) having a number average molecular weight of 500-10,000 (see Niino para. 0013).
Therefore, in view of the teaching of Niino, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition taught by Sagawa by incorporating a modification segment having the molecular weight taught by Niino to arrive at the claimed invention because Sagawa suggests that examples of polyolefin polymers used to modify polyacetal resins include conjugated diene components such as butadiene (see Sagawa para. 0013). Niino clearly teaches a polybutadiene modification segment for polyacetal having the claimed molecular weight (see Niino para. 0007-0018). Thus, a person of ordinary skill in the art would be motivated to select the instantly claimed molecular weight for the modification segment with a reasonable expectation of success for use in inorganic powder injection molding (see Niino para. 0113: the present ABA type block copolymer can be admixed with other additives, such as aluminum powder), and would expect such a composition to have similar properties to those claimed, absent the showing of unexpected results.
As to difference [2], the modified polyacetal would necessarily possess the claimed melt flow rate in view of the substantially identical composition (in this case, the polymer structure taught by Sagawa and Niino corresponds to the modified polyacetal being claimed). See MPEP 2112.01. Alternatively, selecting different synthesis conditions and/or segment lengths in the copolymer to arrive at the desired properties is achieved by one of ordinary skill in the art without undue experimentation based on the prior art and general technical knowledge.
As to claims 2-4, Sagawa and Niino teach the composition according to claim 1, wherein the modification segment (B) is a polyolefin (see Sagawa para. 0013); claim 1, wherein the modification segment (B) is a hydrogenated polybutadiene (see Sagawa para. 0013: examples of polyolefin include butadiene and Niino para. 0010-0013: hydrogenated polybutadiene as segment (B)); claim 1, wherein a number average molecular weight of the modified polyacetal (C) is 10,000 to 50,000 (see Niino para. 0062-0065: the ABA type block copolymer having a number average molecular weight is preferably 10,000-500,000). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 and MPEP 2144.05.
As to claims 5-7, Sagawa and Niino teach the composition according to claim 1, wherein the polyacetal segment (A) is composed of 95.0 to 99.9 mol% of an oxymethylene unit and 0.1 to 5.0 mol% of an oxyalkylene unit represented by the formula (1) defined in claim 5 (see Niino para. 0011-0012: ABA type block copolymer
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…integer selected from 2 to 6); claim 1, wherein the modified polyacetal (C) is a block copolymer represented by (A)-(B)-(A) (see Niino para. 0007-0010, 0028-0036); claim 1, further comprising a lubricant (see Sagawa para. 0016-0017).
As to claim 8, Sagawa and Niino teach an injection-molded body comprising the composition for inorganic powder injection molding according to claim 1 (see Sagawa para. 0022 and Niino para. 0001 & 0025-0027).
As to claim 9, Sagawa and Niino teach a sintered body produced by degreasing and sintering the injection-molded body according to claim 8 (see Sagawa para. 0008-0011 & 0022: production and evaluation of a sintered compact: after degreasing, the product was further sintered in air). Burden is on applicants to show any product differences in product by process claims. See MPEP 2113 and MPEP 2173.05(p).
As to independent claim 10, Sagawa teaches a composition for inorganic powder injection molding comprising: a sinterable organic powder (see para. 0009-0010); and an organic binder comprising a modified polyacetal (C) including a polyacetal segment (A) and a modification segment (B) (see para. 0012-0013: polyolefin polymer-modified polyacetal resin is an essential binder component).
Sagawa fails to explicitly disclose [1] that a number average molecular weight of the modified polyacetal (C) is 10,000 to 500,000, [2] a number average molecular weight of the modification segment (B) is 500 to 10,000 and [3] the polyacetal segment (A) is composed of 95.0 to 99.9 mol% of an oxymethylene unit and 0.1 to 5.0 mol% of an oxyalkylene unit represented by the formula (1) defined in claim 10.
As to difference [1], Niino, in analogous art of polyacetal resins for injection molding (see para. 0002 & 0116), teaches that a number average molecular weight of the modified polyacetal (C) is 10,000 to 500,000 (see Niino para. 0062-0065: the ABA type block copolymer having a number average molecular weight is preferably 10,000-500,000). As to difference [2], Niino teaches a hydrogenated polybutadiene segment (B) hydroxy-alkylated at both ends (corresponds to the “modification segment (B)” in claim 10) having a number average molecular weight of 500-10,000 (see Niino para. 0013). See also MPEP 2144.05.
Therefore, in view of the teaching of Niino, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition taught by Sagawa by incorporating a modification segment having the molecular weight taught by Niino to arrive at the claimed invention because Sagawa suggests that examples of polyolefin polymers used to modify polyacetal resins include conjugated diene components such as butadiene (see Sagawa para. 0013). Niino clearly teaches a polybutadiene modification segment for polyacetal having the claimed molecular weight (see Niino para. 0007-0018). Thus, a person of ordinary skill in the art would be motivated to select the instantly claimed molecular weight for the modification segment with a reasonable expectation of success for use in inorganic powder injection molding (see Niino para. 0113: the present ABA type block copolymer can be admixed with other additives, such as aluminum powder), and would expect such a composition to have similar properties to those claimed, absent the showing of unexpected results.
As to difference [3], Niino teaches the polyacetal segment (A) represented by formula (1) as defined in claim 10 (see para. 0011-0012: ABA type block copolymer
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…integer selected from 2 to 6). For at least the reasons described above, Sagawa and Niino establish a prima facie case of obviousness for independent claim 10.
As to claim 11, Sagawa and Niino teach the composition according to claim 10, wherein a ratio of a number average molecular weight (Mn2) of the modification segment (B) to a number average molecular weight (Mn1) of the modified polyacetal (C) is 0.5% or more and 10% or less (see Niino para. 0170: their ratio was 220/113=1.95). Further, one of ordinary skill in the art would discover the optimum or workable ranges for the ratio in the composition based on routine experimentation and the disclosures of Sagawa and Niino. Burden is shifted to the Applicant to provide evidence that the claimed ranges produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. See MPEP 2144.05.
As to claims 12-14, Sagawa and Niino teach the composition according to claim 10, wherein the modification segment (B) is a polyolefin (see Sagawa para. 0013); claim 10, wherein the modification segment (B) is a hydrogenated polybutadiene (see Sagawa para. 0013: examples of polyolefin include butadiene and Niino para. 0010-0013: hydrogenated polybutadiene as segment (B)); claim 10, wherein the modified polyacetal (C) is a block copolymer represented by (A)-(B)-(A) (see Niino para. 0007-0010, 0028-0036).
As to claims 15-16, Sagawa and Niino teach the composition according to claim 10, but fail to explicitly disclose the properties recited in claims 15-16. However, the disclosed composition would necessarily possess the claimed polyacetal molecular weight reduction ratio and melt flow rate in view of the substantially identical composition (in this case, the polymer structures taught by Sagawa para. 0009-0013 and Niino para. 0009-0013 correspond to the polymers recited in the claims). See MPEP 2112.01. Alternatively, selecting different synthesis conditions and/or segment lengths within the modified polyacetal to arrive at the desired properties is achieved by one of ordinary skill in the art without undue experimentation based on the prior art and general technical knowledge.
As to claim 17, Sagawa and Niino teach an injection-molded body comprising the composition for inorganic powder injection molding according to claim 10 (see Sagawa para. 0022 and Niino para. 0001 & 0025-0027). -- As to claim 18, Sagawa and Niino teach a sintered body produced by degreasing and sintering the injection-molded body according to claim 17 (see Sagawa para. 0008-0011 & 0022: production and evaluation of a sintered compact: after degreasing, the product was further sintered in air). Burden is on applicants to show any product differences in product by process claims. See MPEP 2113 and MPEP 2173.05(p).
Examiner’s Note
8. Examiner has cited particular paragraphs or figures in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants' definition which is not specifically set forth in the claims. See MPEP 2111, 2123, 2125, 2141.02 VI, and 2182.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katie L Hammer whose telephone number is (571)270-7342. The examiner can normally be reached Monday to Friday: 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application is assigned is 571-273-8300.
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KATIE L. HAMMER
Primary Examiner
Art Unit 1761
/KATIE L. HAMMER/Primary Examiner
Art Unit 1761 October 18, 2025