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 Objections
Claim 1 is objected to because of the following informalities: Claim 1 should be amended to recite a number average molecular weight of 100,000 g/mol or more. Appropriate correction is required.
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 1 – 6 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 because:
Claim 1 sets forth a rubber-reinforced styrenic resin (A) and a styrenic resin (B). However, each of these resins is only required to be derived from polymerization of a vinyl monomer which is an aromatic vinyl compound, and not specifically styrene or a derivative thereof. The scope of the claim is consequently indefinite, as it is unclear if each of (A) and (B) must be based on styrene or a derivative thereof. For the purposes of further examination, (A) and (B) will be interpreted as corresponding to aromatic vinyl resins, i.e. resins which may be but are not required to be based on styrene.
There is a lack of antecedent basis for “the” DSC method of Claim 1. The claim does not set forth a DSC method prior this recitation. For the purposes of examination, the DSC method recited in Claim 1 will be interpreted as corresponding to a DSC method as described in [0148] of the instant specification.
As Claims 2 – 6 depend on Claim 1, they incorporate the indefinite subject matter thereof and are therefore also rejected under this statute.
Claim 4 is additionally rejected under this statute, as it recites “The thermoplastic resin composition for foaming molding according to Claim 1, for use in core-back foam injection molding”. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced (see MPEP 2173.05(q)). For the purposes of examination, Claim 4 will be interpreted as setting forth “The thermoplastic resin composition for foaming molding according to Claim 1, wherein the thermoplastic resin composition for foaming molding is suitable for core-back foam injection molding”.
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.
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 and 3 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,314,925 to Burnell et al. (hereinafter Burnell), as evidenced by US 3,128,262 to Lightfoot.
Regarding Claim 1. Burnell teaches a thermoplastic resin composition for foam molding (Column 1, Lines 8 – 13) comprising:
more preferably 60 to 80% by weight of an aromatic polycarbonate resin;
more preferably 20 to 40% by weight of a rubber modified vinyl aromatic graft copolymer (Column 5, Line 62 – Column 6, Line 4). The rubber modified vinyl aromatic graft copolymer is derived from polymerization of vinyl aromatic monomers onto/in the presence of a rubber substrate (Column 3, Lines 27 – 33);
0% by weight of an aromatic vinyl resin other than said rubber modified vinyl aromatic graft copolymer; and
0.01 to 1% by weight of a polytetrafluoroethylene polymer (Column 6, Lines 5 – 8). TEFLON® 6 is described as a commercially available species thereof (Column 2, Lines 19 – 21). Lightfoot provides evidence that TEFLON® 6 has a molecular weight of 3,000,000 (Column 7, Lines 74 – 75).
The Office recognizes that the more preferable range for the rubber-reinforced aromatic vinyl resin, corresponding to instantly claimed component (A), of 20 to 40% by weight is not identical to the instantly claimed range of 1 to 20 parts by mass. However, it does overlap. It has been held that 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 3. Burnell teaches the thermoplastic resin composition for foam molding of Claim 1 may further comprise titanium dioxide, i.e. an inorganic filler, in an amount of 0.5 to 4.0 weight (Column 5, Lines 50 – 52).
Regarding Claim 4. Burnell teaches the thermoplastic resin composition for foam molding of Claim 1 but does not expressly teach it is suitable for core-back injection molding. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Burnell teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a thermoplastic resin composition for foam molding that it is suitable for core-back injection molding, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 5. Burnell teaches a molded foam article derived from molding the thermoplastic resin composition for foam molding of Claim 1 (Column 1, Lines 8 – 13; Column 4, Lines 22 – 65; and Column 5, Line 62 – Column 6, Line 11).
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,314,925 to Burnell et al. (hereinafter Burnell), as evidenced by US 3,128,262 to Lightfoot, as applied to Claim 1 above, and further in view of JP 2010254833 to Muraki. For the purposes of examination, citations for Muraki are obtained from a machine translation of the document obtained from the European Patent Office website in July 2026.
Regarding Claim 2. Burnell teaches the thermoplastic resin composition for foam molding of Claim 1 further comprises a chemical foaming agent (Column 5, Lines 7 – 17) but does not provide a general teaching with respect to the amount thereof. However, Muraki teaches the concept of providing a chemical blowing agent in an amount of 0.1 to 5 parts by mass relative to 100 parts by mass of a thermoplastic resin composition [0120]. Burnell and Muraki are analogous art as they are from the same field of endeavor, namely thermoplastic resin compositions for foam molding. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the chemical blowing agent in Burnell in an amount of 0.1 to 5 parts by mass relative to 100 parts by mass of the thermoplastic resin coomponent, as taught by Muraki. The motivation would have been that Muraki teaches this to be a suitable amount for chemical blowing agents to be included in thermoplastic resin compositions for foam molding [0120].
Regarding Claim 2. Burnell teaches a molded foam article derived from molding the thermoplastic resin composition for foam molding of Claim 1 (Column 1, Lines 8 – 13; Column 4, Lines 22 – 65; and Column 5, Line 62 – Column 6, Line 11) but does not specifically teach the molding process is a core-back foam injection molding process. However, Muraki teaches the concept of foam molding a thermoplastic resin composition via a core-back type injection foam molding process [0101]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the foam the thermoplastic resin composition of Burnell via a core-back type injection foam molding process, as taught by Muraki. The motivation would have been that Muraki teaches a core-back type injection foam molding process to be a suitable process for molding thermoplastic resin compositions and further that this process reliably obtains a foam molded body having fine and uniform cells [0101].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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