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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 8-11 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 8,
Claim 8 refers to the composition further comprising another polymer (F). However, claim 6 currently lists polymers such as polyethylene, a silicone, or fluorine-based resin and as such, it is unclear how the component F differs from the lubricant component D of claim 6 which only lists polymeric compounds as component F of claim 8 only specifies that it is another polymer. The applicant is required to review the claim language and to revise as necessary to define the difference between the two components.
Claims 9-11 are rejected based upon their dependence upon claim 8.
Regarding Claim 9,
Claim 9 contains the trademark/trade name Nylon. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe polyamides, including polyamide 6, polyamide 6,6, and polyamide 12 and, accordingly, the identification/description is indefinite.
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 1-4, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yosuke (JP 2010-024337, Foreign Reference #1 from IDS dated 4/13/2026, using JPO machine translation).
Regarding Claims 1-4,
Yosuke teaches a polyester composition (Abstract) that preferably contains polyethylene terephthalate (PET) as the polyester (Paragraphs 17 and 18) and which preferably has an intrinsic viscosity of between 0.5 and 1.5 dL/g (Paragraph 20) and demonstrates the use of PET with an intrinsic viscosity of 0.7 dL/g (Paragraph 90) along with an inorganic filler that must contain either zirconium silicate or silica (Paragraph 37) which can further comprise components such as talc, mica, or calcium carbonate (Paragraph 44). Yosuke further teaches that the composition can also contain crystal nucleating agents, lubricants, and antioxidants (Paragraph 75). While Yosuke notes that glass fiber can be used, it is not a required component and would therefore not be present.
Regarding Claim 12,
Yosuke teaches the composition as described above in regard to claim 1. With regard to the amounts, Yosuke teaches that the PET represents 100 parts by weight with the inorganic filler constituting from 1 to 300 parts by weight (Paragraph 8) but preferably 50 to 200 parts relative to PET (Paragraph 42). Yosuke also teaches that the lubricant, nucleating agent, and antioxidant can be used “within a range not impairing the effects of the present invention” (Paragraph 75). Because the nucleating agent (0.5 to 15 parts), lubricant (0.05 to 1 parts) and antioxidant (0.1 to 1 part) can be below 1 part by weight, it would logically follow that such small amounts overlap with the amounts taught by Yosuke. Further, the amounts of PET and filler would allow for incorporation amounts that overlap with the range of the instant claim. One of ordinary skill in the art would note that Yosuke teaches that the range for the filler is to afford good surface hardness, appearance, durability, and mechanical properties (Paragraph 42) and as such, would be motivated to stay within the preferred range. Using the 50 parts by weight amount in combination with the minimum amounts of the other components, this would give a composition which is roughly 66% PET by weight and 33% by weight filler. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 13,
Yosuke teaches that the composition can be molded by various molding methods (Paragraph 79). While Yosuke does not explicitly teach that the molded article takes the form of pellets, Yosuke does teach that injection, extrusion, press, and blow molding result in an excellent degree of freedom in shape (Paragraph 79), which one of ordinary skill in the art would include a shape such as a pellet. It would therefore have been obvious prior to the effective filing date of the instant application to have produced a product of any shape using the composition.
Claim 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yosuke (JP 2010-024337, Foreign Reference #1 from IDS dated 4/13/2026) as applied to claims 1-4, and 12-13 above, and as evidenced by Ma (US 20200325328).
Regarding Claim 5,
Yosuke teaches the use of nucleating agents as discussed above in regard to claim 1, but does not teach that the nucleating agent is the sodium salt of an organic acid. However, by teaching the use of the class of compounds, it would logically follow that compounds known to be used in the art could be utilized. Accordingly, the use of sodium salts of organic acids for this purpose is evidenced by Ma, which teaches that compounds such as sodium benzoate and Surlyn are useful in polyester compositions (Paragraph 19). As such, it would have been obvious prior to the effective filing date of the instant application to have used these specific compounds in the composition of Yosuke.
Regarding Claim 6,
Yosuke teaches the use of compounds such as fluorine containing resins and silicones (Paragraph 76), which though Yosuke teaches these compounds for a different purpose, would still have the same properties and therefore be useful for the same purpose. Additionally, as Yosuke teaches the class of lubricants broadly (Paragraph 75), it would logically follow that compounds known in the art to be useful for the purpose would be allowed. Components such as stearic acid derived compounds and polyethylene waxes are used for this purpose as evidenced by Ma, which teaches the use of these compounds in polyester compositions (Paragraph 18). As such, it would have been obvious prior to the effective filing date of the instant application to have used these specific compounds in the composition of Yosuke.
Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yosuke (JP 2010-024337, Foreign Reference #1 from IDS dated 4/13/2026) as applied to claims 1-4 and 12-13 above, and further in view of Andrews (US 20100233405).
Regarding Claim 7,
Yosuke teaches the use of antioxidants as discussed above in regard to claim 1, but does not specifically teach the use of phenolic based antioxidants. Andrews teaches that phenolic-based antioxidants are useful in polyester compositions (Paragraph 68). One of ordinary skill in the art would recognize that because Yosuke teaches the broad class of antioxidants but none specifically, they would look to the existing art such as Andrews for guidance towards compounds known to be useful. Because both Andrews and Yosuke both are directed towards compositions containing polyesters, specifically PET, that contain similar other components, the ordinarily skilled artisan would be motivated to select from the options presented by Andrews for use in the composition taught by Yosuke. As a result, it would have been obvious prior to the effective filing date of the instant application to have used phenolic-based antioxidants.
Regarding Claims 8-11,
Yosuke teaches that components such as compatibilizers (Paragraph 50) and other polymers such as polyamides (Paragraph 76) can be utilized in the composition. Further, Yosuke teaches that suitable compatibilizers contain functional groups such as anhydrides or epoxy groups (Paragraph 51) and specifically notes the use of copolymers of polyethylene, methyl acrylate, and glycidyl methacrylate (Paragraph 52), meeting the requirements of claims 8 and 10. Additionally, Yosuke teaches that the compatibilizer is used in amounts of 0.1 to 50 parts by weight relative to 100 parts by weight of the polyester (Paragraph 58), which overlaps with the range of 5 to 20 parts by weight of claim 11. One of ordinary skill in the art would recognize that the compatibilizer is present to promote the mixing of two dissimilar polymers or components and would thus use an amount of compatibilizer that was able to ensure phase integration of the two polymers. Further, Yosuke notes that the inclusion of a compatibilizer improves the appearance and surface hardness of the composition (Paragraph 52). As such, it would have been obvious to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
While Yosuke teaches the use of polyamides, Yosuke does not enumerate particular examples. Andrews teaches polyester compositions that include PET and a polyamide (Abstract) and notes that particularly preferred polyamides include polyamide-6, polyamide-6,6, and polyamide-12 (Paragraph 52). Andrews further teaches that the incorporation of polyamides into polyester compositions is known to improve mechanical properties as well as barrier properties of the compositions (Paragraph 15). Given this information, one of ordinary skill in the art would be motivated to include polyamides which are taught by Yosuke to be useful in the composition and to specifically choose the preferred polyamides of Andrews due to the improvements to the compositions. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the specific polyamides taught by Andrews in the composition taught by Yosuke. With regard to the amounts, Yosuke teaches that the incorporation amount of the polyamide can be contained in amounts that do not impair the object of the present invention (Paragraph 76). Andrews further notes that the ratio of the polyester to the polyamide is from 98:2 to 85:15 (Paragraph 118), which overlaps with the range of the instant claim. One of ordinary skill in the art would note that because both Yosuke and Andrews teach polyester compositions for use in molded articles and express preference for the same polyesters as well as similar additives and that both are directed towards heat resistant articles (Yosuke Abstract, Andrews Paragraph 17) that the use of similar amounts of polyamide in the compositions would afford similar benefits. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dalgewicz III (US 20020055586) teaches a polymer blend that contains a polyester such as polyethylene terephthalate with an intrinsic viscosity of between 0.5 and 1.2 that is combined with a compatibilizer that is a copolymer of ethylene and a glycidyl acrylate with other co-monomers also taught that can include components such as polyamides, nucleating agents, lubricants and antioxidants in similar amounts to those of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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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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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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