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 § 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al.
(KR20080061813A) in view of Kraton (Kraton G1650 polymer, 2019), Angell et al. (US 2012/0053265) and Takagi et al. (JP2000095934A).
In the Abstract, page 9, col. 2, ¶ 1 and the paragraph bridging pages 11-12, Lee et al. teaches a thermoplastic resin composition comprising:
25 to 95 parts by mass of polycarbonate resin,
1 to 70 parts by mass of vinyl copolymer based on styrene, i.e. styrene copolymer, and
0.1 to 20 parts by mass of a flame retardant, based on 100 parts by mass of base resins.
A molded article can be formed from the thermoplastic resin composition (page 12, col. 2, ¶ 2).
While Lee et al. disclose a styrene copolymer, they do not disclose the styrene copolymer to be styrene-ethylene/butylene styrene copolymer as presently claimed. However, Kraton teach Kraton G1650, a styrene-based copolymer that is styrene-ethylene/butylene-styrene copolymer that provides stability to withstand weathering and high processing temperatures for thermoplastic compositions.
In light of motivation for using Kraton G1650 disclosed by Kraton as described above, it therefore would have been obvious to one of the ordinary skill in the art to use Kraton G1650 as the styrene copolymer in Lee et al. in order to provide stability to withstand weathering and high processing temperatures, and thereby arrive at the claimed invention.
While Lee et al. disclose a flame retardant, they do not disclose the flame retardant to be dihydro-9-oxa-10-phosphaphenanthrene-10-oxide (DOPO) as presently claimed. However, Angell et al. disclose DOPO flame retardant that can be combined with polymers such as polycarbonates and polystyrenes (see Abstract and ¶ 10). DOPO is thermally and hydrolytically stable and is able to withstand high temperature polymer processing (see ¶ 4). Further, DOPO being a phosphorus based flame retardant is environmentally friendly (see ¶ 2).
In light of the motivation for using DOPO disclosed by Angell et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use DOPO as the flame retardant in Lee et al. in order to provide thermal hydrolytic stability as well as ability to withstand high temperature polymer processing.
While Lee et al. disclose the flame retardant composition, they do not disclose a polyphenylene ether resin. However, Takagi et al. disclose combining 5 to 95 parts by weight of polyphenylene ether resin with 5 to 95 parts by weight of polycarbonate resin in a thermoplastic resin composition (see Abstract). Accordingly, the amount of polyphenylene ether is 5 to 100 parts by weight with respect to 100 parts by weight of polycarbonate resin (5 = 100/95 X 5 and 100 = 100/95 X 95). The polyphenylene ether is identical to that presently claimed, and is taught to improve impact strength and appearance of the molded article (see ¶ 12-16). The thermoplastic resin composition comprising polycarbonate resin and polyphenylene ether resin is excellent in rigidity and impact resistance, and excellent in heat resistance and workability (see ¶ 4).
Also, while Lee et al. do not disclose the glass fiber, Takagi et al. teaches the thermoplastic resin composition to comprise a filler such as glass fiber in amount of 5 to 40 parts by weight with respect to 100 parts by weight of polycarbonate resin (5 to 95 parts by weight) and polyphenylene ether resin (5 to 95 parts by weight) in order to improve rigidity, heat resistance and dimensional accuracy (pages 4-5, bridging paragraph). Accordingly, the amount of glass fiber is 5 to 42 parts by weight with respect to 100 parts by weight of polycarbonate resin (5 =100/95 X 5 and 42 = 100/95 X 40).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to use 5 to 100 parts by weight of polyphenylene ether resin and 5 to 42 parts by weight of glass fiber in the thermoplastic resin composition of Lee et al. in view of Kraton and Angell et al. in order to obtain the advantages of improved rigidity, impact resistance, heat resistance, workability and dimensional accuracy, taught by Takagi et al., motivated by a reasonable expectation of success, and thereby arriving at the claimed invention.
Regarding the properties of claim’s 3, 7-11, Lee et al. in view of Kraton, Angell et al. and Takagi et al. disclose the thermoplastic resin composition identical to that presently claimed. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties. " In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990}. 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. See MPEP § 2112.01.
If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6 and 8-13 of copending Application No. 18/574,440 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because No. 18/574,440 requires the claimed thermoplastic resin composition comprising:
about 100 parts by weight of a polycarbonate resin;
about 20 to 55 parts by weight of a polyphenylene ether resin;
about 15 to 55 parts by weight of glass fiber;
about 1 to 20 parts by weight of a styrene-ethylene/butylene-styrene copolymer; and
about 0.2 to 4 parts by weight of dihydro-9-oxa-10-phosphaphenanthrene-10-oxide
(DOPO).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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