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 Interpretation
Instant claims 1-3 are directed to resin composition comprising polyethylene terephthalate and inorganic filler. Under broadest reasonable interpretation, the polyethylene terephthalate (PET) resin includes any PET including homopolymers, copolymers and modified polyesters all of which can be utilized in any amount. Inorganic filler can be any filler as long as it is inorganic utilized in any amounts. Term comprising further discloses additional components not listed within instant claim 1 that includes both reactive and non-reactive components.
With respect to the absolute value of a heat of crystallization, the way claim is drafted it is unclear if the heat of crystallization is that of PET resin or PET resin with 40% of inorganic filler. The presence of additives while conducting the test important since the additives will influence the result. Furthermore in [0054] the applicants state that the absolute value of a heat of crystallization is that of a resin composition and not of the resin itself as proclaimed in the instant claims 1-3.
Razeem (US 2021/0054154) further clearly teaches that such tests do depend on the content of filler processing temperature. The table shows trend where the values such as crystallinity and heat of fusion decrease with increasing content of talc. In summary, the crystallinity depends on processing temperature and the higher the temperature is the higher crystallinity is. Furthermore 1st and 2nd heating values are not the same.
Additionally instant claims while disclosing the JIS K7121 and its increasing and decreasing temperature profile is silent with respect to the initial state of the polyester resin (was it heated before) as well as how long the PET resin is maintained at 300oC. Additionally, the claims do not indicate at what temperature the claimed value was read.
Consequently, the PET composition of the prior art only has to be capable of achieving claimed heat of crystallinity. Such value will be met if the intrinsic viscosity of the PET resin is at least 0.6 dL/g as disclosed in applicant’s specification [0035].
Claims 15 and 16 are claimed of intended use and do not carry patentable weight.
Claim Rejections - 35 USC § 112
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.
Claims 15 and 16 are 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. Claims 15 and 16 are directed to resin composition and recite intended use. Consequently, claims 15 and 16 fail to further narrow the scope of instant claim 1. 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.
Examiner suggests cancelling claims 15 and 16, since automotive article is already disclosed in instant claims 19 and 20.
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.
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.
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.
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.
Claims 1-3 , 5-7, 15, 16 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Razeem (US 2021/0054154).
With respect to claims 1-3, 5, 15 and 16, Razeem discloses PET composition comprising inorganic filler. Inorganic filler is utilized in PET in a ratio of 3:1 to 1:3 (Abstract). Specifically, the content of inorganic filler (talc) is in an amount of 20-80 wt.% [0055]. Intrinsic viscosity of the PET alloy is 0.25-0.9 [0086]. Wherein intrinsic viscosity of 0.7-0.9 meet instant claim 5.
With respect to the absolute value of the heat of crystallinity, Razeem reports the value based on temperature and content. Figure 7 shows a trend that with increasing temperature the value of ΔHc is decreasing. At 125oC and talc loading of approximately 16% the ΔHc is 2.1 J/g. Consequently, the PET of Razeem is capable of achieving ΔHc at 1st and/or 2nd heating of 3 J/g or less.
With respect to claims 6 and 7, Razeem’s figure 1 discloses holding tanks 128, 130, 132, 134. Tank 128 is designated to polymerize virgin PET (reactor system) [0040]. Tank 130 is designed to hold recycled PET, tank 132 conditions recycled PET by chopping and the like. Tank 134 is designed for liquid PET. As such, one of the ordinary skill in the art at the time instant invention was filed would understand that making PET ins tank 128 would include any starting material known in the art and its content is not limited by Razeem.
With respect to claim 8, in addition to talc Razeem discloses use of other fillers such as glass fibers, additives such as nucleating agents [0061, 0074] as well as titania which is a pigment. In fact, per Fig. 12 [0108] addition of glass fiber results in the molded article having higher distortion temperature, flexural modulus and flexural strength.
With respect to claim 21, produced PET/talc alloy is pelletized upon leaving output 136 [0038, 0043], pellets are recommended for the composition that requires storage.
Claims 1-5, 8, 9, 14-16, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara (JP 61-098762 translation provided) as evidenced by Razeem.
With respect to claims 1-3, 5, 8, Yoshihara discloses injection molded article comprising PET polymer having at least 80% of repeat units consisting of ethylene terephthalate (constitution part of the translation) and fibrous inorganic reinforcing material in amount of 5-50 parts by weight. Fibrous inorganic filler meet the limitation of instant claim 8.
The viscosity of the polyester is at least 0.655 which meets the viscosity of instant claim 5.
With respect to the recitation of the heat of crystallization, in accordance with broadest reasonable interpretation and evidence disclosed in Razeem the polyester having the same intrinsic viscosity and the same filler loading is more than capable of achieving claimed heat of crystallization.
Composition of Yoshihara also comprises 5-80 parts of another polyester based on PBT which is encompassed by term “comprising”.
With respect to claim 4, the PET of Yoshihara comprises 80 mol% of ethylene terephthalate, wherein the balance can be attributed to isophthalic acid (up to 20%) (section Problem 1, p. 3 of translation.
With respect to claim 9, nucleating agent is added to the composition in an amount of 0.01-5 pbw (bottom of page 4) preferably 0.01-1 pbw.
With respect to claim 14, composition of Yoshihara utilizes epoxy compound which is reactive compound in an amount of 0.2-10 pbw (bottom of page 4).
With respect to claims 15, 16 and 19-20, the composition of Yoshihara is utilized to make molded parts for motor parts, sheets (meets panels). Molded articles also include colorant.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara (JP 61-098762 translation provided) in view of Fujii (JP 2008-214558).
In the event applicants do not agree that the composition of Yoshihara can be utilized to form external parts of an automobile Fujii discloses another polyester based composition comprising glass fiber, nucleating agent and colorant or pigments. Fujii states that the crystallization temperature and profile are important in making automotive exterior articles which are required to have a high gloss. The presence of inorganic fillers such as glass fibers results in additional property of low warpage deformation, high strength and high rigidity [0038]. Properties that are required for both interior and exterior properties of the parts used in automotive industry.
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to use composition of Yoshihara which requires low warpage, high rigidity and high strength in the automotive exterior parts as it is shown in Fujii and thereby obtain claimed invention. This is further evident since Yoshihara does disclose making panels, sheets or laminates not just pat for motors.
Claims 7, 9-20, are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara (JP 61-098762 translation provided Fujimaki (WO 00/20491) and in further view of Juikar (US 2008/0161468).
Discussion of Yoshihara from paragraph 2 of this office action is incorporated here by reference. Yoshihara teaches PET composition as disclosed above comprising PET, glass fibers and compound having epoxy groups to make article suitable for automotive industry. Yoshihara discloses use of nucleating agent but fails to disclose its type as well as use of carbon black.
WIth respect to claims 9-12, 14-16, Fujimaki discloses composition comprising 100 parts of linear polyester, 0.1-10 parts of crosslinking agent having two epoxy groups, 0.01-5 parts of metal salt of carboxylic acid (Abstract) which is very similar to that of Yoshihara with respect to organic component (including intrinsic viscosity).
Wherein crosslinking agent having two epoxy groups similarly to Yoshihara meets the limitation of instant claim 14.
Metal salt of carboxylic acid of Fujimaki are defined as sodium, potassium or lithium salts of fatty acids and are not only utilized as catalyst for crosslinking but also for its function as nucleating agents and crystallization promoters (component c). The content and type of the component c meets instant claims 9-12. Carbon black in Fujimaki is disclosed as reinforcing agent and pigment. The polyester disclosed there in is recycled from PET bottles meeting instant claims 7 and 18.
When utilized as a pigment to make automotive exterior parts such as hoods and bumpers, Juikar teaches that content of carbon black pigment will generally be in a range of 0.1-20 parts, which is influenced by the intended use of the composition further meeting instant claims 13, 20 and 21.
Combination of Yoshihara, Fujimaki and Juikar further meets the limitation of claim 17.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara (JP 61-098762 translation provided) as evidenced by Razeem in view of Fujimaki (WO 00/20491) and in further view of Kurian (US 2009/0131625).
Discussion of Yoshihara from paragraph 2 of this office action is incorporated here by reference. In summary Yoshihara disclosed composition of instant claim 1, while Fujimaki supplemented its teachings showing that the PET utilized in making of automotive parts can also be sourced from recycled product thereby minimizing the environmental issues arising from waste.
Kurian further states that another way to minimize impact on environment to make the automotive interior or exterior parts [0058] one of ordinary skill in the art could utilize not only PET waste (such as PET bottles of Fujimaki) but also bio-PET which by definition are formed from raw bioderived resources [0028].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art that in order to form part of a vehicle for both interior and exterior part one can utilize polyesters from bio-derived raw material in addition to the PET of claim 1 and its use will depend on specific article to be made. Such modification would further minimize environmental effect attributed by using waste and bio derived products.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 October 7, 2026
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