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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1/2, 4, 5, 6, 10, 11, 13, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 5, 8, 9, 10, and 11 respectively of Ko et al., U.S. Patent No. 12,630,709 in view of Tsuchigane et al., U.S. Patent Application Publication No. 2020/0079919. Although the claims at issue are not identical, they are not patentably distinct from each other. The instant- and patent compositions defined by Ko strongly overlap both in terms of makeup and also relative quantities of the individual components. The only distinguishing aspects are (i) the patent composition contains a phosphorus-based additive and there are attached to both the PBT and PET polymers ranges outlining their intrinsic viscosities whereas the instant claims are silent regarding each of these (at least in claims 1 and 11) and (ii) the instant claims require the glass fiber component to be composed of a higher weight fraction of alumina than CaO.
However, instant claims 1 and 11 are sufficiently broad as to encompass PBT/PET of any intrinsic viscosity and may contain a phosphate compound given Applicants’ employment of the transitional phrase “comprising”.
Patent claims 1 and 9 do not mandate that the glass fibers used in that invention have the same relative quantities of Al2O3 and CaO. The prior art documents that types of glass, such as S glass, which do contain larger alumina content and calcium oxide content impart to plastics superior strength- see [0006] of Tsuchigane- and therefore their substitution for the glass fibers in patent claims 1 and 9, or selection from the glass fiber types encompassed by patent claims 1 and 9, would have been obvious to the skilled artisan as of the effective filing date of the invention. (As an aside, the Examiner recognizes that the same passage spelling out the benefits of S glass also mentions disadvantages but the glass fibers that are the focus of that disclosure also contain more alumina than calcium oxide. See [0013].)
The ranges defining the intrinsic viscosity of PBT and PET in instant claim 2 overlap those same ranges in patent claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The remaining claims mirror one another in terms of how they further limit the independent claims.
Allowable Subject Matter
Claims 3, 7-9, and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1 to 14 are allowable over the prior art. One of the most salient references, salient because it not only teaches most of the same materials but also in relative quantities conforming with the requirements of claim 1, is CN 106046715. This reference is further lamentable because it describes the role of PET as a component that lessens the crystallization rate and molding shrinkage in PBT-based articles of manufacture. This disclosure does not, though, mention the claimed copolymer (iii) nor does it teach the makeup of the glass fibers. Even if the Examiner were to combine CN ‘715 with Tsuchigane to address the latter of these two deficiencies, there would still be the matter of the methacryl-modified diene/alkenylaromatic copolymer not having been disclosed. While copolymers within this genus have documented utility as tougheners/impact modifiers and compatibilizers, so do the vinyl polymers featuring at least one polar monomer recited in [0041] of the reference, of which glycidyl methacrylate copolymers are included. (These are correlated with claimed component (iv).) That is, it is not clear why a skilled practitioner of the CN ‘715 invention would have been motivated to replace a large portion of the tougheners listed in [0041] with a methacryl-modified diene/alkenylaromatic copolymer notwithstanding the fact that there are a number of disclosures that mention these alongside olefin/glycidyl (meth)acrylate copolymers in a similar context. At the very least, the advantages of using both, and in corresponding quantities, is not revealed.
KR 2019-0027115, like CN ‘715, teaches a composition with comparable amounts of (i), (ii), (iv), and (v) but is devoid of any mention of a copolymer equivalent to (iii) and uses E glass, which is known not to comply with the limitations of the last two lines of claims 1 and 11. In lieu of methacryl-modified diene/alkenylaromatic copolymer, it instead teaches acrylonitrile/styrene/acrylate and the Examiner could not find a justification for the substitution of the former for the latter.
CN 115403901 at {n0010] advocates using mixtures of the copolymers (iii) and (iv) as a toughener mixture but no reason is given.
CN 114806129 teaches a thermoplastic composition containing PBT and also both claimed copolymers (iii) and (iv) where the former is labeled a toughener and the latter a compatibilizer but neither the required quantity of PBT nor that of the methacrylate-modified alkenylaromatic/diene copolymer is met.
U.S. 2024/0076444 [0152-0167] and Table 5, Example 6 where a composition compositionally similar to that claimed is summarized but there are, nevertheless, at least several ways in which it differs including relative quantities of PBT and PET inconsistent with those claimed and the absence of an impact modifier/compatibilizer equivalent to claimed component (iv).
KR 2020-0001616 teaches a composition comprising all of (i) to (iv), but not in corresponding amounts. U.S. 2021/0002477 describes a composition containing all of (i) (ii), (iv), and (v) but none are provided in an equivalent quantity.
The Examiner did not perceive that any of these, alone or in combination, would constitute a foundation for rejection even under 35 U.S.C. 103.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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MARC S. ZIMMER
Primary Examiner
Art Unit 1765
July 14, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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