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 .
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.
Claim 5 is 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 5, the claim is drafted to require that the carbon black has been acid treated with the intent of decreasing surface conductivity and increasing dielectric properties. However, neither the claim nor the instant disclosure describes what constitutes “acid treatment,” and thus one having ordinary skill in the art would be unable to determine the full metes and bounds of the claim.
Where there is a great deal of uncertainty as to the proper interpretation of the limitations of a claim, it is improper to reject such a claim on the basis of prior art (see MPEP 2173.06.II.).
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 1-3, 6-9, and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Norikane (EP 2617772 A1).
Regarding claim 1, Norikane teaches a polyphenylene ether resin composition excellent in heat resistance and having a high degree of blackness (Abstract), wherein the composition comprises 100 phr of a polyphenylene ether resin component (A) and 0.01 to 5 parts by weight of carbon black (B) (Abstract). The composition additionally requires only 0.1 to 20 parts by weight of an alkaline earth metal carbonate and/or sulfate (C) (Abstract). The composition may therefore comprise between about 0.008 and about 4.8 weight percent of the carbon black, which overlaps and therefore anticipates the claimed range of “from at least 0.1 wt% to 10 wt% of a low-OAN carbon black.” Furthermore, Norikane teaches that the carbon black has an OAN most preferably ranging from 40 to 60 cm3/100g ([0053]), which falls within and therefore anticipates the claimed range of “60 cubic centimeters per 100 grams (cc/100g) or less.”
Regarding claim 2, as described above, Norikane states that the composition only requires the polyphenylene ether component (A), the carbon black component (B) and the alkaline earth metal carbonate and/or sulfate (C) (Abstract). Given the respective ranges of 100 parts, 0.01 to 5 parts, and 0.1 to 20 parts, respectively, the composition may include between 80 and about 99.9 wt% of the polyphenylene ether component (A), which falls within and therefore anticipates the claimed range of “from about 10 wt% to 99.9 wt% of the polymer base resin.”
Regarding claims 6 and 7, Norikane teaches the optional incorporation of additional additives including inter alia antioxidants and lubricants ([0127]). Norikane also explicitly indicates the addition of styrene resins to improve the impact resistance of the polyphenylene ether resins ([0009]).
Regarding claims 8 and 9, as described above, Norikane requires the incorporation of a polyphenylene ether resin (Abstract). Norikane additionally teaches the optional incorporation of a liquid crystalline polyester resin ([0051]).
Regarding claim 13, Norikane is silent with regard to the claimed L* characteristic. Nevertheless, Norikane teaches a composition which features all of the claimed compositional limitations. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed L* characteristic will therefore necessarily be present in Norikane as applied above.
Regarding claims 14-15, Norikane teaches shaped articles of the inventive composition including junction boxes, connectors, and electric devices, etc. ([0028]), which reads on “a component of a telecommunications device.”
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 3-4 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Norikane (EP 2617772 A1) in view of Sabic (SABIC Innovative Plastics NorylTM Resin PX500 Technical Datasheet, updated January 28, 2008).
Regarding claims 3 and 4, Norikane teaches all of the limitations of claim 1 as described above. Norikane differs from claims 3 and 4 because it is silent with regard to the claimed dissipation factor of the polyphenylene ether component. Norikane does however contemplate that the inventive composition is heat resistant (abstract) and likewise contemplates the suitability of the inventive composition to form wiring junction boxes (e.g., [0007]).
Noryl Resin PX500 is a commercially available polyphenylene ether resin which provides high heat performance and is excellent for internal circuit tray applications (c.f. Sabic p. 1). Furthermore, it is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (See MPEP 2144.07). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize Noryl PX500 PPE as the polyphenylene ether resin within Norikane, as Sabic teaches that Noryl PX500 is a highly heat-resistant PPE resin useful for similar circuitry housing applications.
The instant Application states that Noryl PX500 PPE resin from SABIC possesses a dissipation factor of about 0.0011 to about 0.0018 at frequencies from 1.9-5 GHz ([0072]). These values fall within the claimed ranges of “0.004 or lower at a frequency of a least 1 gigahertz (GHz)” and “0.004 or lower at a frequency of from 1 GHz to 20 GHz,” establishing prima facie cases of obviousness. The Noryl PX500 resin of Norikane as modified by Sabic therefore meets the limitations of claims 3 and 4.
Regarding claims 10-12, Norikane as modified is silent with regard to the claimed dissipation factor characteristics of the inventive composition. Nevertheless, Norikane as modified teaches all of the compositional limitations of the claims and further meets the dissipation factor characteristics as contemplated within the claims. The instant Specification states that carbon black having the claimed compositional amounts and OAN characteristics are beneficial for reducing the common destructive effect that carbon black brings to low Df thermoplastic compositions, thereby indicating that a suitably low dissipation factor within the thermoplastic material alongside the claimed carbon black characteristics is responsible for the claimed dissipation factor of the overall composition.
Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dissipation factor characteristics will therefore necessarily be present in Norikane as modified by Sabic, which meets all of the claimed compositional limitations while simultaneously incorporating a PPE polymer which possesses a Df characteristic suitable for the formation of a composition with the claimed overall Df characteristic according to the Specification (c.f. [0024] of instant Specification).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
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