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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-13, drawn to a polyester resin composition.
Group II, claim(s) 14, drawn to a method of preparing a polyester resin composition.
Group III, claim(s) 15, drawn to a molded article comprising a polyester resin composition.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of the polyester resin composition, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of JP 2007119645.
During a telephone conversation with Jung S. Shim on 6/16/26, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14 and 15 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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 2 is objected to because it appears to be missing the preamble “The polyester resin composition...” Appropriate correction is required.
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) 1-7 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harashina (JP 2007119645) in light of Encyclopedia of Materials: Science and Technology, pp. 3541-3545 (2001)
In ¶’s 18, 66, 92, 103, 109, 111 and 112 and table 1, Harashina teaches a polyester-based flame-retardant resin composition comprising polybutylene terephthalate, polyethylene terephthalate, glass fiber strands, diethylphosphinic acid aluminium (a flame retardant aid) , melamine cyanurate (a flame retardant), and resorcinol bis(di-2,6-xylyl phosphate) as a condensed phosphate ester, wherein the intrinsic viscosities of the polyethylene terephthalate and the polybutylene terephthalate are 0.75 and 0.85, respectively, which is consistent with the present claims, and the melamine cyanurate is exemplified in an amount of 30 parts by weight (= corresponding to 11.8 when the total parts by weight is converted to 100 parts by weight).
In ¶ 14, the flame retardant resin composition is taught to include phosphorus-based flame retardant aids, such as phosphate esters.
In ¶’s 13 and 26, Harashina teaches the polybutylene terephthalate and polyethylene terephthalate, with each at least 50% of the base resin, wherein flame retardant is at about 5 to 100 parts with respect to 100 parts by weight of the base resin, and the weight ratio between the flame retardant and the flame retardant aid is about 100/0 to 1/99. This range overlaps with the rejected present claims for both.
It is noted that glass fiber strands, naturally composed of SiO2, Al2O3, and CaO, is composed primarily of SiO2, as evidenced by the Encyclopedia of Materials: Science and Technology.
Harashina differs from the present claims in that they do not delimit the content of phosphate ester. However, this difference could be derived by a person skilled in the art by way of optimization via routine experimentation in light of the teaching in Harashina
Regarding Claims 5 and 6, the claims are to the composition comprising the polyethylene terephthalate, and not the source of the polyethylene terephthalate. The polyethylene terephthalate is the same.
With regard to claim 9, Harashina teaches the feature wherein, with respect to a total of 253.5 parts by weight of the polyester-based flame-retardant resin composition, the glass fiber strands are included in an amount of 65 parts by weight(= corresponding to 25.6 when the total parts by weight is converted to 100 parts by weight) (see ¶’s 111 and 112 and table 1).
Regarding Claim 12, with respect to a total of 253.5 parts by weight of the polyester-based flame-retardant resin composition, Harashina teaches an anti-dripping agent, an antioxidant and a lubricant are included in an amount of 2 parts by weight (= corresponding to 0.8 parts by weight when the total parts by weight is converted to 100 parts by weight), and the lubricant includes montanic acid ester or polyethylene wax (see ¶’s 110-112 and table 1).
Regarding Claims 13, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However; the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. (high-load heat deflection temperature, flexural strength and flexural modulus) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties. " In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990}. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to arrive at the present polyester resin composition from the teachings of Harashina, motivated by a reasonable expectation of success.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harashina (JP 2007119645) as applied above, and further in view of Bauer et al. (KR 20200049839), Stoppelman et al. (US 2014/0066560) or Zoitos et al.(US 2019/0352515).
Harashina differs from the claimed invention in that the specific content of SiO2, Al2O3 and CaO in the glass fiber is not disclosed. However, Bauer et al. teaches wherein a flame-retardant polyester composition comprises polyethylene terephthalate or polybutylene terephthalate, and aluminum diethylphosphinate, melamine cyanurate, and glass fiber, and the glass fiber has a composition of 50 to 56% of SiO2, 12 to 16% of Al2O3, and 16 to 25% of CaO (see ¶’s 51-57, 76, 89, 103, 111], 140 and 149 of Bauer et al.).
Each of Stoppelman et al. and Zoitos et al. also individually teach flame-retardant compositions using glass fiber filler, wherein the glass fiber has a composition of 52 to 62% of SiO2, 12 to 16% of Al2O3, and 12 to 25% of CaO (see ¶ 104 of Stoppelman et al. and ¶ 47 of Zoitos et al.)
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to use glass fibers in the flame retardant composition of Harashina with the SiO2, Al2O3 and CaO contents taught in Bauer et al., Stoppelman et al. or ¶ 47 of Zoitos et al., motivated by a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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