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 .
Election/Restrictions
Applicant's election with traverse of Group I claims 1-15 in the reply filed on 12/05/2025 is acknowledged. The traversal is on the ground(s) that the Office has characterized the inventions of Group I and Group II as related as process of making and product made. Citing MPEP § 806.05(f) the Office suggests that the process as claimed can be used to make another and a materially different product, such as thermoplastic polyethylene resin, multi-walled carbon nanotubes and seashells. However, there is no evidence of record to show that the claimed process could be used as the Office has alleged. Accordingly, Applicants respectfully submit that the Restriction Requirement is unsustainable, and it should therefore be withdrawn and Applicant submit that a search of all the claims would not impose a serious burden on the office.
This is not found persuasive because with respect to the evidence that if the product can be made from same process is the burden of proof is on Applicants due to inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 U.S.P.Q. 431 (CCPA 1977) and with respect to the arguments that all claims would not impose a serious burden on the office:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
the prior art applicable to one invention would not likely be applicable to another invention;
the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claims, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/05/2025.
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.
Claim(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Vella et al. (CA 2955235) in view of Dandenault et al. (WO 2013/091111) and Tazawa et al. (WO 2023/181942).
Regarding claims 1-4, Vella discloses conductive polymer composite and the composite comprises a thermoplastic polymer and a plurality of metal-plated carbon nanotubes (abstract). The thermoplastic polymer can comprise at least one polymer selected from polyamides such as nylon (page 7, lines 6-15). The thermoplastic polymer can be included in the composite in any suitable amount that will allow the composite to function in a three-dimensional printing process. Examples of suitable amounts include a range of from about 30% to about 99.5 % by weight, such as about 50 to about 99, or about 50 to about 95, relative to the total weight of the conductive polymer composite (para 0027). Vella discloses carbon nanotubes can be employed as the substrate for the metal plating. Examples of carbon nanotubes include
multiwalled carbon nanotubes (para 0030). Example amounts of carbon nanotubes include a range of from 1% to about 50% by weight relative to the total weight of the conductive polymer composite (para 0031). Vella in example 2, para 0046 discloses polymer mixed with MWCNTs which would meet the limitation of MWCNTs dispersed in the polymer (i.e. polyamide).
However, Vella fails to disclose that the composite polymer includes seashells having an average size of less than 100 microns present in an amount of 1-20 wt% and dispersed in a matrix of the thermoplastic polyamide resin.
Whereas, Dandenault discloses composition comprising calcite and a polymer composition comprising a polymer (claim 2). The polymer includes polyamides such as nylon-6, nylon-6,6 (page 15, line 15, claim 10). Dandenault discloses calcite (CaCO3) is a carbon mineral and example of biological calcite containing materials include seashells (page 7, lines 5-10, claim 9). Dandenault discloses calcinate present in an amount of 20-40 wt% and polymeric composition in an amount of 80-60 wt% (claim 13). Dandenault discloses inorganic calcite dispersed within an organic polymer forming highly inorganically filled organic polymer matrix (page 7, lines 25-28). Dandenault discloses calcite can be prepared in a predetermined particle size range by means known to those skilled in the art (page 7, lines 21-23).
Whereas, Tazawa discloses a polyolefin resin foam containing a biomass material that has calcium carbonate as the main component. The biomass material can be contained in the polyolefin resin foam according to the present technology in an amount of 50 weight% or less. A biomass material derived from eggshells and/or seashells can be used as the biomass material used in the polyolefin resin foam according to the present technology (abstract). Tazawa discloses the average particle diameter of the eggshell powder and/or the shell powder is not particularly limited, and can be freely designed depending on the use of the foam and the expected physical properties. The lower limit of the average particle size of the eggshell powder and/or shell powder that can be used in the present technology is, for example, 6 μm or more,. By using eggshell powder and/or seashell powder with an average particle size of 6 μm or more, the dispersibility in the resin composition during foam production can be improved, and it can also contribute to reducing the pulverization cost. Furthermore, the upper limit of the average particle diameter of the eggshell powder and/or shell powder that can be used in the present technology is, for example, 200 μm or less, preferably 100 μm or less. By using eggshell powder and/or shell powder with an average particle diameter of 200 μm or less, workability during mixing with the resin component and other components described below and the physical properties of the produced foam can be improved (page 5, para 4-5).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include calcinate seashells in an amount of 20-40 wt% dispersed in organic polymer and having an average particle size of 6-100 microns as taught by Dandenault and Tazawa respectively in the conductive polymer composite of Vella motivated by the desire to have improved stiffness, toughness and strength (page 6, lines 9-12) and to have improved dispersibility and workability.
As Vella in view of Dandenault and Tazawa discloses the composite including polyamide resin, MWCNTs and seashells in claimed amount as presently claimed, it therefore would be obvious that composite would intrinsically have the claimed tensile strength of greater than 90 MPa.
Regarding claim 5, Vella discloses thermoplastic polymer can comprise at least one polymer selected from polyamides such as nylon (page 7, lines 6-15) and Dandenault discloses composition comprising calcite and a polymer composition comprising a polymer (claim 2). The polymer includes polyamides such as nylon-6, nylon-6,6 (page 15, line 15, claim 10).
Regarding claim 6, As Vella in view of Dandevault discloses composite comprising seashells dispersed in organic polymer as presently claimed, it therefore would be obvious that composite would intrinsically have the claimed smooth morphology with regularly spaced protrusions.
Regarding claim 7, Dandevault discloses calcite in combination with salt of one or more of palmitic and stearic acid (claim 11) and Dandenault discloses inorganic calcite dispersed within an organic polymer forming highly inorganically filled organic polymer matrix (page 7, lines 25-28), where the organic polymer includes polyamides such as nylon-6, nylon-6,6 (page 15, line 15, claim 10). As Dandevault discloses calcite which is surface modified dispersed in organic polymer, it therefore would be obvious that calcite seashells would intrinsically form a chemical bond through a combination of physical interactions with polyamide resin.
Regarding claims 8-9, Vella discloses Nanotubes with any suitable dimensions can also be employed. As examples, the length of the carbon nanotubes can range from 0.045 urn to 200 urn and the outer diameter can range from 1 nm to 30 nm (para 0030).
Regarding claims 10-13, with respect to the limitation of flexural strength of greater than 100 MPa, shore hardness of at least 100, Vicat softening point of at least 270C and an elongation of less than 45%.
As Vella in view of Dandenault and Tazawa discloses the composite including polyamide resin, MWCNTs and seashells in claimed amount as presently claimed, it therefore would be obvious that composite would intrinsically have the claimed flexural strength of greater than 100 MPa, shore hardness of at least 100, Vicat softening point of at least 270C and an elongation of less than 45%.
Regarding claim 14, Vella discloses thermoplastic polymer can be included in the composite in any suitable amount that will allow the composite to function in a three-dimensional printing process. Examples of suitable amounts include a range of from about 30% to about 99.5 % by weight, such as about 50 to about 99, or about 50 to about 95, relative to the total weight of the conductive polymer composite (para 0027). Vella discloses carbon nanotubes can be employed as the substrate for the metal plating. Examples of carbon nanotubes include multiwalled carbon nanotubes (para 0030). Example amounts of carbon nanotubes include a range of from 1% to about 50% by weight relative to the total weight of the conductive polymer composite (para 0031) and Dandenault discloses inorganic calcite dispersed within an organic polymer forming highly inorganically filled organic polymer matrix (page 7, lines 25-28) and contains as low as 5 wt% to as high as 40% inorganic (i.e. calcite).
Regarding claim 15, While there is no disclosure that the composite polymer of Vella is used in automotive door panel as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all 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”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. automotive door panel, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Vella and further that the prior art structure which is a composite identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788