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(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.
Claim 4 is 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 4, the claim requires that the glass fibers are “flat” glass fibers while simultaneously requiring an average diameter. One having ordinary skill in the art would be unable to determine what shape(s) of fibers fall within the claimed composition, as it is unclear how a “flat” fiber can possess a diameter – a characteristic typically representative of a round (i.e., not flat) fiber.
All claim limitations must be considered during examination, and it would be improper to form a prior art rejection based on speculative interpretation (see MPEP 2143.03). In this case, any reasonable interpretation of claim 4 would require reading out the “flat” or “diameter” limitation(s). Claim 4 will therefore not be examined on the merits.
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.
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.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Weber (US 2008/0227920 A1) in view of Li (WO 2016107396 A1, hereinafter referring to the attached ESPACENET translation) and Junikar (US 20080161468 A1).
Regarding claim 1, Weber teaches a thermoplastic molding composition, comprising:
a thermoplastic polyester A (Abstract) which may preferably be polybutylene terephthalate ([0033]). Said polyester is included in amounts ranging from 10 to 97.5 wt% (Abstract), which encompasses the claimed range of “40 to 50% by weight,” establishing a prima facie case of obviousness.
A graft copolymer B (Abstract), which may be an ASA rubber base ([0075]) which has been further grafted with, optionally, styrene and acrylonitrile ([0065]-[0067]). This ASA-based graft copolymer reads on the claimed “acrylic styrene acrylonitrile resin” because it is a resin which contains acrylic, styrene, and acrylonitrile. Said graft copolymer is included in amounts ranging from 1 to 97.5 wt% (Abstract), which encompasses the claimed range of “18 to 20% by weight,” establishing a prima facie case of obviousness.
A filler E (Abstract), which is preferably glass fiber ([0135]). Said fillers are incorporated in amounts ranging from 0 to 40 wt% (Abstract), which encompasses the claimed range of “25 to 35% by weight,” establishing a prima facie case of obviousness.
A Copolymer D (Abstract), which may be the reaction product of a copolymer of methyl methacrylate, an additional acrylate, and a third, epoxy-containing acrylate (p. 17, claims 5-6), with a thermoplastic polyester such as the same polyester described within component A, above ([0116]). Weber teaches at that the degree of conversion D1 (epoxy-functional (meth)acrylate polymer) may be as low as 15%, with preferred conversion rates of 25-75% ([0117]). This indicates a preference for a significant portion of epoxy groups remaining unreacted and intact in component D. At a minimum, the unreacted portion of d1 in D therefore reads on the claimed “epoxy resin.”
Additionally however, component D is obtained by the reaction of d1 and d2 (Abstract). Examples of d2 include the same polyesters used for component A ([0116]). Component D can be formed in-situ by melt mixing d1 and d2 along with the remaining components of the composition (p. 5, [0119], [0127]). When D2 is the same as A, the composition is formed by mixing components identical to those recited by the instant claims. In that case, d1 reads on the claimed epoxy resin.
Component D comprises from 0.5-50 wt% of the composition, and the epoxy-containing component d1 comprises from 5 to 95 wt% thereof (Abstract). The epoxy resin component d1 therefore comprises between about 0.025 and about 47.5 wt% of the formulation which encompasses the claimed range of “1 to 3% by weight,” establishing a prima facie case of obviousness.
Weber teaches the incorporation of additional additives (H) (Abstract), which includes stabilizers and agents to counter decomposition by heat (p. 6, [0152]). However, Weber differs from claim 1 because it is silent with regard to the incorporation of the claimed “carbodiimide-based anti-hydrolysis agent.”
In the same field of endeavor, Li teaches a stabilizer composition containing a carbodiimide, and molding compositions containing the same, stating that adding carbodiimide compounds to polymer systems such as polyesters can slow down degradation rates and improve hydrolysis resistance (p.1-2). Li specifically points out the suitability of the inventive stabilizer composition within poly(butylene terephthalate) polymers (p. 10), and teaches the incorporation of the stabilizer composition in amounts ranging from 0.1 to 5 wt% alongside 95-99.9 wt% of polyester polymer (p. 9). Furthermore, Li teaches that the stabilizer composition contains between 70 and 99.99% of the carbodiimide (p. 10). Li therefore teaches the incorporation of the carbodiimide compound in amounts ranging between about 0.7 and 4.9995% per 95-99.9 wt% of polymer. It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (see MPEP 2144.07). It therefore would have been obvious to one having ordinary skill in the art, at the time of filing, to incorporate a stabilizer composition containing between about 0.7 and about 4.9995% of a carbodiimide per 95-99wt% of polymer, including polybutylene terephthalate within the formulation of Weber for the purpose of imparting hydrolytic stability thereto, as Li teaches said composition containing said carbodiimide as suitable therefor. Given that Weber teaches the incorporation of from 10 to 97.5 wt% of the thermoplastic polyester (Abstract), it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate between about 0.01 and about 4.875 wt% of the stabilizer composition of Li, which would contain between about 0.007 and 4.8745 wt% of the carbodiimide, which encompasses the claimed range of “0.01 to 1% by weight,” establishing a prima facie case of obviousness.
Weber further differs from claim 1 because it is silent with regard to the incorporation of the claimed “epoxy silane.” In the same field of endeavor, Junikar teaches a polyester composition (abstract) suitable for molding applications (e.g., [0088] and [0133]), containing a carboxy-reactive compound (Abstract), wherein said carboxy-reactive compound is useful as a viscosity modifier, which enhances the viscosity of polyester(s) therein, including poly(butylene terephthalate) ([0060], [0140]). Junikar exemplifies the use of 3-glycidoxypropyltriethoxysilane ([0074]), which reads on the claimed “epoxy silane” because the instant Specification exemplifies the same as an epoxy silane (c.f. instant Specification at p. 9, lines 13-14). Additionally, it is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (see MPEP 2144.07). It therefore, would have been obvious to one having ordinary skill in the art at the time of filing to utilize the carboxy-reactive component of Junikar, including 3-glycidoxypropyltriethoxysilane, within the composition of Weber for the purpose of enhancing the viscosity thereof within molding compositions. Junikar further teaches that the amount of carboxy reactive compound is useful in amounts ranging from about 0.05 to about 5 weight percent ([0081]), which overlaps the claimed range of “0.01 to 1% by weight,” establishing a prima facie case of obviousness.
Regarding claim 2, Weber is silent with regard to the specifically claimed viscosity rage. However, Junikar teaches that the polyester (which may be polybutylene terephalate, as described above), may have an intrinsic viscosity ranging from 0.3 to 0.8 dl/g ([0019]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the PBT polymer of Weber with the PBT polymer of Junikar, having an intrinsic viscosity ranging from 0.3 to 0.8 dl/g, as Junikar recognizes said polymer as suitable for injection molding applications ([0133], likewise to Weber, c.f. Weber at [0296]). The viscosity range of 0.3 to 0.8 dl/g overlaps the claimed range of “0.80 to 1.00 dl/g,” establishing a prima facie case of obviousness.
Regarding claim 3, Weber teaches that the graft base b1 of polymer B may be an ASA rubber, as described above ([0075]), and teaches that b1 makes up 40-80 wt% of polymer B ([0064]). The ASA polymer therefore contains between 40 and 80 wt% of rubber, which overlaps the claimed range of “20 to 60%,” establishing a prima facie case of obviousness.
Regarding claim 5, Weber teaches molded articles of the inventive composition ([0298]). The recitation of the phrase “for capacitor housing” is recognized as an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction (see MPEP 2111.02.II.). Therefore, Weber meets the limitations of claim 5 despite not contemplating the use of the inventive composition as a capacitor housing.
Regarding claims 6-10, Weber is silent with regard to the claimed characteristics. Nevertheless, Weber as modified results in a composition which is structurally identical to the claimed composition, meeting all of the claimed compositional limitations. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed characteristics will therefore necessarily be present in Weber as modified, and as applied above.
Conclusion
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
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