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(b)
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.
Claims 2, 13 and 26-29 are 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.
Regarding claim 2, the metes and bounds of what is meant by “high” molecular weight and by “low” molecular weight is not clear as the terms appear relative. Neither ‘high’ nor ‘low’ are terms defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 13, the metes and bounds of what is meant by “high” molecular weight and by “low” molecular weight is not clear as the terms appear relative. Neither ‘high’ nor ‘low’ are terms defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 26, the recitation that the composition further comprises “from about 20.0 wt% to about 24.0 wt% of the aliphatic polyketone polymer resin” renders the claim indefinite and it cannot be determined what is being claimed. It is not clear what is being referred to here i) as claim 26 depends from claim 25 which is directed to the further addition of a LLDPE, which is different from “the” aliphatic polyketone; and ii) as claim 26 ultimately depends from claim 23 which recites 84 to 86.9 wt% of aliphatic polyketone polymer resin (note the 112(d) rejection below). This includes claims 27-29 as they depend from claim 26.
Claim Rejections - 35 USC § 112(d)
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 26 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. Claim 23, from which claim 26 ultimately depends, requires 84.0 to 86.9 wt% of aliphatic polyketone polymer resin. As such, the recitation of claim 26 that “the” aliphatic polyketone polymer resin is present from 20.0 to 24.0 wt% is improper for failing to include all the limitations of the claim upon which it depends. 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-12 and 14-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall (US 6,025,422).
Regarding claim 1, Hall teaches flame retardant polymer compositions comprising 100 parts by weight of a blend of polymer and 10 to 200 parts hydrated inorganic filler (abstract; co 2 ln 40-43). Hall further teaches the composition is capable of meeting marketplace requirements for physical properties, burn performance, and extrudability, without raising undue health concerns regarding toxicity (col 2 ln 25-31).
Hall teaches the polymer is a polymer blend comprises about 1 to about 99 wt% of a copolymer and about 99 to about 1 wt% of an aliphatic polyketone (co 4 ln 61 to col 5 ln 2). Hall further teaches the hydrated inorganic filler is selected from fillers which release or produce water upon thermal decomposition (col 3 ln 5-8) including preferably magnesium hydroxide (col 3 ln 30), wherein the filler is surface treated with an organic agent, to improve dispersion of the filler with the polymer blend, including aminosilanes (col 3 ln 35-40).
While Hall does not specifically teach a composition suitable for direct or indirect contact with food it is noted that a preamble recitation is not generally held as limiting and is of no significance to claim construction (see Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999); and MPEP § 2111.02). Further, Hall teaches flame retarding polymer compositions which use aliphatic polyketones and hydrated inorganic fillers present for the express purpose of releasing or producing water upon thermal decomposition (instant self-extinguishing; MPEP 2112.01).
Regarding claim 2, Hall teaches the compositions as set forth in claim 1 above. As the ‘low’ molecular weight’ aliphatic polyketone can be present at zero%, i.e. is optional, and as the aliphatic polyketon taught by Hall is readable over ‘high’ molecular weight, absent and definition thereof, the claim is deemed met by Hall.
Regarding claim 3, Hall teaches the compositions as set forth in claim 1 above and further teaches the hydrated inorganic fillers are present in the form of small particles having mean diameters of from about 0.4 µm to about 100 µm (col 3 ln 42-44; see also exemplified magnesium hydroxide having average particle size of 0.7 µm (col 10 ln 11-15).
Regarding claims 4-11, Hall teaches the compositions as set forth in claim 1 above. Hall does not explicitly state a V-2 flame performance (claim 4), a tensile strength from 9,200 to 9,700 psi (claim 5), elongation at break from 33 to 48% (claim 6), a tensile modulus of 360,000 to 370,000 psi (claim 7), a notched Izod impact of 1.6 to 1.8 ft-lb/in (claim 8), specific gravity of 1.28 to 1.36 (claim 9), an ash content of 7 to 18% (claim 10), or a ‘synergistic effect’ (claim 11). However, Hall does teach a flame retarding polymer composition comprising aliphatic polyketone and surface treated magnesium hydroxide, present in the claimed amounts, obtained by substantially the same process. The instant original specification states that the combination of aliphatic polyketone with aminosilane surface treated magnesium hydroxide, present in the claimed amounts, will result in a composition having the claimed properties (instant original specification [0031]-[0043]). 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 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.”; MPEP 2112.01)).
Regarding claim 12, Hall teaches flame retardant polymer compositions comprising 100 parts by weight of a blend of polymer and 10 to 200 parts hydrated inorganic filler (abstract; co 2 ln 40-43). Hall further teaches the composition is capable of meeting marketplace requirements for physical properties, burn performance, and extrudability, without raising undue health concerns regarding toxicity (col 2 ln 25-31).
Hall teaches the polymer is a polymer blend comprises about 1 to about 99 wt% of a copolymer and about 99 to about 1 wt% of an aliphatic polyketone (co 4 ln 61 to col 5 ln 2). Hall further teaches the hydrated inorganic filler is selected from fillers which release or produce water upon thermal decomposition (col 3 ln 5-8) including preferably magnesium hydroxide (col 3 ln 30), wherein the filler is surface treated with an organic agent, to improve dispersion of the filler with the polymer blend, including aminosilanes (col 3 ln 35-40).
Hall further teaches a procedure to prepare the compositions comprising mixing the components together using any conventional mixing device equipped with high shear mixing elements and a heating element, mixing at a temperature above the melting point of the polymer resins, followed by pelletizing and cooling to room temperature (col 8 ln 14-48).
While Hall does not specifically teach a composition suitable for direct or indirect contact with food it is noted that a preamble recitation is not generally held as limiting and is of no significance to claim construction (see Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999); and MPEP § 2111.02). Further, Hall teaches flame retarding polymer compositions which use aliphatic polyketones and hydrated inorganic fillers present for the express purpose of releasing or producing water upon thermal decomposition (instant self-extinguishing; MPEP 2112.01).
Regarding claim 14, Hall teaches the method as set forth in claim 12 above and further teaches the hydrated inorganic fillers are present in the form of small particles having mean diameters of from about 0.4 µm to about 100 µm (col 3 ln 42-44; see also exemplified magnesium hydroxide having average particle size of 0.7 µm (col 10 ln 11-15).
Regarding claims 15-22, Hall teaches the method as set forth in claim 12 above. Hall does not explicitly state a V-2 flame performance (claim 15), a tensile strength from 9,200 to 9,700 psi (claim 16), elongation at break from 33 to 48% (claim 17), a tensile modulus from 360,000 to 370,000 psi (claim 18), a notched Izod impact of 1.6 to 1.8 ft-lb/in (claim 19), specific gravity of 1.28 to 1.36 (claim 20), an ash content of 7 to 18% (claim 21), or a ‘synergistic effect’ (claim 22). However, Hall does teach a flame retarding polymer composition comprising aliphatic polyketone and surface treated magnesium hydroxide, present in the claimed amounts, obtained by substantially the same process. The instant original specification states that the combination of aliphatic polyketone with aminosilane surface treated magnesium hydroxide, present in the claimed amounts, will result in a composition having the claimed properties (instant original specification [0031]-[0043]). 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 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.”; MPEP 2112.01)).
Regarding claim 23, Hall teaches flame retardant polymer compositions comprising 100 parts by weight of a blend of polymer and 10 to 200 parts hydrated inorganic filler (abstract; co 2 ln 40-43). Hall further teaches the composition is capable of meeting marketplace requirements for physical properties, burn performance, and extrudability, without raising undue health concerns regarding toxicity (col 2 ln 25-31).
Hall teaches the polymer is a polymer blend comprises about 1 to about 99 wt% of a copolymer and about 99 to about 1 wt% of an aliphatic polyketone (co 4 ln 61 to col 5 ln 2). Hall further teaches the hydrated inorganic filler is selected from fillers which release or produce water upon thermal decomposition (col 3 ln 5-8) including preferably magnesium hydroxide (col 3 ln 30), wherein the filler is surface treated with an organic agent, to improve dispersion of the filler with the polymer blend, including aminosilanes (col 3 ln 35-40). Hall further teaches up to 1 wt% of stabilizers, including oxidative inhibitors (instant antioxidant), etc. (col 7 ln 6-23).
While Hall does not specifically teach a composition suitable for direct or indirect contact with food it is noted that a preamble recitation is not generally held as limiting and is of no significance to claim construction (see Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999); and MPEP § 2111.02). Further, Hall teaches flame retarding polymer compositions which use aliphatic polyketones and hydrated inorganic fillers present for the express purpose of releasing or producing water upon thermal decomposition (instant self-extinguishing; MPEP 2112.01).
Regarding claim 24, Hall teaches the compositions as set forth in claim 23 above and further teaches the optional inclusion of further additives including lubricants and release agents selected from stearamides, stearic acid, stearic alcohol, etc. (col 7 ln 34-42).
Regarding claim 25, Hall teaches the compositions as set forth in claim 24 above and further teaches the optional inclusion of linear low density polyethylene (col 6 ln 12-26), as well as the optional inclusion of polyurethanes (col 6 ln 36-51), colorants, plasticizers, processing aids, etc. (col 7 ln 34-55).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hall (US 6,025,422) in view of George (US 5,227,437).
Hall teaches the method as set forth in claim 12 above and teaches that the aliphatic polyketone resins generally have molecular weights of from about 1,000 to about 200,000 (col 4 ln 11-14). Hall does not specifically teach a combination of 60.0 to 95.0 wt% ‘high’ molecular weight and 5.0 to 25.0 wt% ‘low’ molecular weight aliphatic polyketones. However, George teaches it is advantageous to use blends of linear, aliphatic polyketones in the form of 20 to 50 wt% copolymer (of carbon monoxide and ethylene; instant ‘low’) and 80 to 50 wt% terpolymer (of carbon monoxide, ethylene and hydrocarbon; instant ‘high’) (col 1 ln 60 to col 2 ln 8; col 3 ln 1-5) each having different crystallization points and melting point temperatures, depending upon molecular weight, wherein the blend results in an increased use temperature range (co 1 ln 60 to col 2 ln 15; col 2 ln 48-65; col 3 ln 55-65). George and Hall are analogous art and are combinable because they are concerned with the same field of endeavor, namely aliphatic polyketone polymer compositions suitable for forming extrusion molded articles. At the time of filing a person having ordinary skill in the art would have found it obvious to utilize an aliphatic polyketone blend as taught by George as the aliphatic polyketones of Hall and would have been motivated to do so as George teaches use of such a blend allows for broader utility and broader range of use as well as reduced energy costs in manufacture of molded parts.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/159,943 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because directed to substantially the same combination of aliphatic polyketone polymer resin and amino silane surface modified magnesium hydroxide wherein the respective compositions are self-extinguishing, suitable for direct or indirect contact with food and have the same properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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