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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to a material comprising components (A) –(E), classified in class 524/539.
II. Claims 8-11, drawn to a composition comprising components (A) –(E), polybutylene terephthalate and reinforcing material, classified in 525/437+.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as is, in and of itself, without the presence of additional materials that would react in-situ to produce a mutually exclusive final product and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
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 in view of their recognized divergent subject matter.
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies).
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.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ms. Belinda Lee on September 17, 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
Claims 1-7 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.
In claim 1, to the extent that both the transesterification inhibitor (C) [0029] and the antioxidant (E) [0035] include the same phosphite-based materials (claims 4 and 6), it is unclear how said components distinguish over each other.
In claim 5, it is unclear what is meant by a silicon modifier.
In claim 6, it is unclear what is meant by a complex antioxidant.
Claim Rejections - 35 USC § 102
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 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 1-4 and 6 are rejected under 35 U.S.C. 102(a1) as being anticipated by
CN 102952376 (Mu) abstract and machine translation.
Mu discloses a modified polyester material comprising:
10 to 60 wt.% polyethylene terephthalate (PET) (meets Applicants’ polyethylene terephthalate (A));
10 to 30 wt.% polybutylene terephthalate (PBT);
10 to 20 wt.% polycarbonate (PC);
0 to 15 wt.% mineral filler;
10 to 30 wt.% glass fiber;
0 to 8 wt.% compatibilizer;
0.1 to 0.5 wt.% composite nucleating agent (meets Applicants’ nucleating agent (B));
0.1 to 0.5 wt.% coupling agent;
0.2 to 0.7 wt.% antioxidant inclusive of phosphorous-based compounds (simultaneously meets Applicants’ transesterification inhibitor (C) and antioxidant (E)); and
0.1 to 0.5 wt.% lubricant (meets Applicants’ lubricant (D)) (e.g., abstract, [0001], [0008-0009], [0017—23], examples, claims).
As to claim 1, Mu expressly sets forth in the working examples a material comprising, inter alia,
PET (meets Applicants’ polyethylene terephthalate (A));
a composite nucleating agent including benzylidene sorbitol and silicon dioxide [0017] (meets Applicants’ crystal nucleating agent (B));
a lubricant including N,N’-ethylene bisstearamide (claim 11) (meets Applicants’ lubricant (D)); and
an antioxidant including N,N’-hexamethylene bis(3,5-di-t-butyl-4-hydroxyphenylpropionamide) (meets Applicants’ antioxidant (E)) and orthophosphorous acid tri(2,4-di-t-butylphenyl) ester [0017] (meets Applicants’ phosphorous-based transesterification inhibitor (C)).
Notably, Mu’s PET appears to be a virgin material. In any event, it is not seen that the patentability of the presently claimed modified polyester material depends on whether the polyethylene terephthalate is a virgin or recycled resin. The presently claimed modified polyester material, defined in a product-by-process format, appears to be the same as Mu’s modified polyester material and, as such, the claim is unpatentable even if the prior product had been made by a different process, In re Thorpe, 227 USPQ 964. Further noted, is that Mu’s silicon dioxide nucleating agent is expressly listed as a viable crystal nucleating agent in present specification [0026].
As to claim 2, Mu’s PET has an intrinsic viscosity of 0.78 to 0.92 dL/g (claim 2).
As to claim 3, Mu’s exemplified composite nucleating agent includes benzylidene sorbitol (meets Applicants’ organic nucleating agent (B)) and silicon dioxide (meets Applicants’ inorganic nucleating agent (B)).
As to claim 4, Mu’s exemplified orthophosphorous acid tri(2,4-di-t-butylphenyl) ester meets claimed phosphorous-based transesterification inhibitor (C).
As to claim 6, Mu’s exemplified orthophosphorous acid tri(2,4-di-t-butylphenyl) ester meets claimed phosphorous-based antioxidant (E).
Claim Rejections - 35 USC § 102/103
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 and 3-6 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 107974059 A (Liao) abstract and machine translation.
Liao discloses a polyester material comprising:
90 to 97 wt.% recycled polyethylene terephthalate (PET) (meets Applicants’ polyethylene terephthalate (A));
0.5 to 1.5 wt.% pyromellitic dianhydride;
0.3 to 0.5 wt.% fluorine-containing epoxy compound;
0.2 to 1 wt.% hydrolytic-resistant agent;
0.5 to 1 wt.% nucleating agent (meets Applicants’ crystal nucleating agent (B));
0.t to 3.5 wt.% heat stabilizer inclusive of phosphorous-based compounds (simultaneously meets Applicants’ transesterification inhibitor (C) and antioxidant (E)); and
0.5 to 3 wt.% of a lubricant (meets Applicants’ lubricant (D)) (e.g., abstract, examples, claims).
As to claim 1, Liao expressly sets forth (Example 2) a polyester material comprising, inter alia,
94.5 wt.% PET (meets Applicants’ polyethylene terephthalate (A));
0.6 wt.% Surlyn 8920 ionomer nucleating agent (meets Applicants’ crystal nucleating agent (B));
1.5 wt.% bisphenol A phosphite heat stabilizer (simultaneously meets Applicants’ transesterification inhibitor (C) and antioxidant (E)); and
1.7 wt.% N,N’-ethylene bisstearamide/silicone lubricant (meets Applicants’ lubricant (D)).
Notably, Liao’s Surlyn ionomer nucleating agent is expressly listed as a viable crystal nucleating agent in present specification [0026].
As to claim 3, Liao’s exemplified Surlyn ionomer nucleating agent meets claimed organic nucleating agent (B).
As to claim 4, Liao’s exemplified bisphenol A phosphite meets claimed phosphite-ester based transesterification inhibitor (C).
As to claim 5, Liao’s Example 2 contains a silicone lubricant.
As to claim 6, Liao’s exemplified bisphenol A phosphite meets claimed phosphite ester antioxidant (E).
Liao anticipates the above-rejected claims for the embodiment wherein the transesterification inhibitor (C) and the antioxidant (E) are the same material, e.g., bisphenol A phosphite. In the alternative, it would have been within the purview of one having ordinary skill in the art to use further incorporate an additional heat stabilizer to Liao’s polyester material, i.e., wherein one meets the presently claimed transesterification inhibitor (C) and the other meets the presently claimed antioxidant (E) for their expected additive effect and with the reasonable expectation of success. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]the idea of combining them flows logically from their having been individually taught in the prior art”, In re Kerkhoven, 205 USPQ 1069.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over CN 102952376 (Mu) in view of CN 107974059 A (Liao), both described hereinabove.
Mu discloses N,N’-ethylene bisstearamide as the lubricant. From Liao it is known that silicones and stearamides are functional lubricants in compositions comprising polyethylene terephthalate. Thus, it would have been within the purview of one having ordinary skill in the art to use a silicone in place of Mu’s stearamide, or in addition thereto, for its expected lubricating effect and with the reasonable expectation of success.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over CN 107974059 A (Liao) in view of CN 102952376 (Mu), both described hereinabove.
Liao does not expressly describe the PET in terms of intrinsic viscosity and, as such, implicitly suggests that any intrinsic viscosity (inclusive of that presently claimed) can satisfactorily be used. In this regard, Mu discloses that PET in similar-such compositions has an intrinsic viscosity as presently claimed of 0.78 to 0.92 dL/g (claim 2).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over CN 107974059 A (Liao) described hereinabove.
In essence, Liao differs from claim 7 in that the PET content in the examples is higher than that presently claimed. Given that Liao expressly teaches PET contents of as low as 90 wt.%, it would have been obvious to one having ordinary skill in the art to formulate a composition per Liao meeting the presently claimed PET content for its expected additive effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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