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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 16 and 20 are objected to because of the following informalities: the unabbreviated form of LED (light emitting diode) should be included in the claims. Appropriate correction is required.
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.
Claim(s) 1, 4-8 and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boyd et al. (US 2003/0022971).
Regarding claims 1 and 4-8: Boyd et al. (US ‘971) discloses polycarbonate compositions containing metal salts of a fluorinated imide anion [abstract], wherein Boyd et al. (US ‘971) discloses potassium bis(trifluoromethanesulfonyl)imide ((CF3SO2)2N-+K [0077]). Boyd et al. (US ‘971) discloses Sample 1 [1; 0071-0075; 0077; 0082; 0084; Table C, 1] prepares a polycarbonate test plaque containing 0.08 wt% of (CF3SO2)2N-+K [1; 0071-0075; 0077; 0082; 0084; Table C, 1].
The claimed effects and physical properties, i.e. potassium bis(trifluoromethanesulfonyl)imide having a zinc content of 0.1 ppm by mass or higher [instant claim 1]; a content of the zinc is 1.000 ppm or lower based on 100 parts by mass of the polycarbonate resin [instant claim 8], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 15: Boyd et al. (US ‘971) discloses the 3.35 mm thick test plaque of Sample 1 has a UL-94 rating of V-0 [1; 0071-0075; 0077; 0082; 0084; Table C, 1].
The claimed effects and physical properties, i.e. a 1.5 mm thick test plaque having a UL-94 rating of V-0 [instant claim 15], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 16: Boyd et al. (US ‘971) discloses the resin composition is suitable for preparing monitor housings, glass replacement, optical lenses, etc. [0006].
Boyd et al. (US ‘971) does not specifically disclose the composition is for a cover for a LED. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claims 17-20: Boyd et al. (US ‘971) discloses preparing the test plaque by mixing polycarbonate resin powder and the potassium bis(trifluoromethanesulfonyl)imide, melt mixing the mixture, and grinding the cooled mixed product into ~ 0.3 cm cubes. The cubes were molded into test plaques at 288 oC under pressure [0006; 0072-0073].
Boyd et al. (US ‘971) does not specifically disclose a cover for a LED. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 2-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boyd et al. (US 2003/0022971).
Regarding claim 2: Boyd et al. (US ‘971) discloses polycarbonate compositions containing metal salts of a fluorinated imide anion [abstract], wherein Boyd et al. (US ‘971) discloses potassium bis(trifluoromethanesulfonyl)imide ((CF3SO2)2N-+K [0077]). Boyd et al. (US ‘971) discloses secondary flame-retardant additives [0046], such as fluoroalkylsulfonates [0047] and zinc stannate [0053]. Boyd et al. (US ‘971) discloses Sample 39A [39A; 0071-0075; 0077; 0082; 0084; Table D, 39A] prepares a polycarbonate test plaque containing 0.04 wt% of (CF3SO2)2N-+K and 0.04 wt% (400 ppm) zinc stannate (zinc stannate exchanged for potassium perfluorobutanesulfonate (C4F9SO3-+K) as the secondary flame-retardant additive [0046-0047; 0033]; see MPEP 2131.02) [39A; 0071-0075; 0077; 0082; 0084; Table D, 39A].
Regarding claim 3: Boyd et al. (US ‘971) discloses the basic claimed composition [as set forth above with respect to claim 2].
The claimed effects and physical properties, i.e. potassium bis(trifluoromethanesulfonyl)imide having a zinc content of 0.1 ppm by mass or higher [instant claim 3], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boyd et al. (US 2003/0022971).
Regarding claim 9: Boyd et al. (US ‘971) discloses flame-retardant polycarbonate compositions containing metal salts of a fluorinated imide anion [abstract], wherein Boyd et al. (US ‘971) discloses potassium bis(trifluoromethanesulfonyl)imide ((CF3SO2)2N-+K [0077]). Boyd et al. (US ‘971) discloses secondary flame-retardant additives [0046], such as fluoroalkylsulfonates [0047] and molybdic oxide (molybdenum trioxide; MoO3; {pigment}) [0053]. Boyd et al. (US ‘971) discloses Sample 39A [39A; 0071-0075; 0077; 0082; 0084; Table D, 39A] prepares a polycarbonate test plaque containing 0.04 wt% of (CF3SO2)2N-+K and 0.04 wt% (400 ppm) molybdic oxide (molybdic oxide exchanged for potassium perfluorobutanesulfonate (C4F9SO3-+K) as the secondary flame-retardant additive [0046-0047; 0033]; see MPEP 2131.02) [39A; 0071-0075; 0077; 0082; 0084; Table D, 39A].
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.
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.
Claim(s) 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boyd et al. (US 2003/0022971) as applied to claim 1 above, and further in view of Sakuma et al. (JP 2004-59690). Sakuma et al. (JP 2004-59690) English machine translation for citation.
Regarding claim 10-11: Boyd et al. (US ‘971) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Boyd et al. (US ‘971) discloses the composition can contain dyes [0057].
Boyd et al. (US ‘971) does not specifically disclose 0.0001 to 10.0 parts by mass of a dye based on 100 parts by mass of the polycarbonate resin. However, Sakuma et al. (JP ‘690) discloses flame-retardant polycarbonate compositions [abstract] comprising organic dyes, such as anthraquinone dyes, [0071; 0087] in an amount of 0.0000001 to 10 parts by weight per 100 parts by weight polycarbonate [0071-0072] (see also Ex. 1; 0.28 parts anthraquinone dye [Ex. 1; 0087; 0090-0091; Table 1, Ex. 1]). Boyd et al. (US ‘971) and Sakuma et al. (JP ‘690) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of flame-retardant polycarbonate compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 0.0000001 to 10 parts by weight of organic dye per 100 parts by weight polycarbonate, as taught by Sakuma et al. (JP ‘690) in the invention of Boyd et al. (US ‘971), and would have been motivated to do so since Sakuma et al. (JP ‘690) discloses 0.0000001 to 10 parts by weight of organic dye per 100 parts by weight polycarbonate as coloring agents for flame-retardant polycarbonate compositions [0071-0072].
Regarding claims 10 and 12-13: Boyd et al. (US ‘971) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Boyd et al. (US ‘971) discloses the composition can contain pigments[0057].
Boyd et al. (US ‘971) does not specifically disclose 0.0001 to 10.0 parts by mass of a pigment based on 100 parts by mass of the polycarbonate resin. However, Sakuma et al. (JP ‘690) discloses flame-retardant polycarbonate compositions [abstract] comprising zinc sulfide (ZnS) in an amount of 0.01 to 10 parts by weight per 100 parts by weight polycarbonate [0069-0070] (see also Ex. 1; 0.50 parts ZnS [Ex. 1; 0087; 0090-0091; Table 1, Ex. 1]), wherein the zinc sulfide can have a titanate-based surface treatment [0070]. Boyd et al. (US ‘971) and Sakuma et al. (JP ‘690) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of flame-retardant polycarbonate compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 0.01 to 10 parts by weight of an zinc sulfide having a titanate-based surface treatment per 100 parts by weight polycarbonate, as taught by Sakuma et al. (JP ‘690) in the invention of Boyd et al. (US ‘971), and would have been motivated to do so since Sakuma et al. (JP ‘690) discloses 0.01 to 10 parts by weight by weight of zinc sulfide having a titanate-based surface treatment per 100 parts polycarbonate affords sufficient concealing properties at the time of coloring [0070].
Claim(s) 10, 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boyd et al. (US 2003/0022971) as applied to claim 1 above, and further in view of Ishii et al. (US 6,369,141).
Regarding claims 10, 12 and 14: Boyd et al. (US ‘971) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Boyd et al. (US ‘971) discloses the composition can contain pigments [0057].
Boyd et al. (US ‘971) does not specifically disclose 0.0001 to 10.0 parts by mass of a pigment based on 100 parts by mass of the polycarbonate resin. However, Ishii et al. (US ‘141) discloses flame-retardant polycarbonate compositions [abstract] comprising 0.1-30 parts by weight of surface treated titanium dioxide based on 100 parts by weight of the polycarbonate resin [10:7-55; 13:45-51]. Boyd et al. (US ‘971) and Ishii et al. (US ‘141) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of flame-retardant polycarbonate compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 0.1-10 parts by weight of surface treated titanium dioxide based on 100 parts by weight of the polycarbonate resin, as taught by Ishii et al. (US ‘141) in the invention of Boyd et al. (US ‘971), and would have been motivated to do so since Ishii et al. (US ‘141) discloses 0.1-30 parts by weight of surface treated titanium dioxide based on 100 parts by weight of the polycarbonate resin enhances the brightness, shading property and ray reflection coefficient [10:7-55; 13:45-51].
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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