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, claims 1-6, 9, and 10, drawn to a polyamide resin composition.
Group II, claims 7 and 8, drawn to a method for producing the polyamide resin composition according to claim 1.
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:
The inventions lack unity of invention because even though the inventions of these groups require the technical feature of the polyamide resin composition comprising an aliphatic polyamide resin (A) and a fibrous reinforcing filler (B), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of KUNISHIMA (U.S. Publication No. 2018/0179380) in view of GAREISS et al. (U.S. Patent No. 6,184,282) as discussed below.
During a telephone conversation with CHAD RINK on 08/26/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-6, 9, and 10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7 and 8 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 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.
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 non-obviousness.
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 1-6, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over KUNISHIMA (U.S. Publication No. 2018/0179380) in view of GAREISS et al. (U.S. Patent No. 6,184,282, hereinafter GAREISS).
Regarding claim 1, 5, 6, 9, and 10, KUNISHIMA teaches a resin composition including a polyamide resin and reinforcing fibers (Abstract). Examples of polyamide resin include aliphatic polyamides (e.g., PA6, PA66, PA46, PA12, PA612, PA610, PA11, and PA410) which has a number average molecular weight (Mn) of 15,000 to 25,000 [0035] and examples of reinforcing fibers include carbon fibers and glass fibers [0047]. The weight proportion of the reinforcing fibers is 10 mass% to 60 mass% with respect to the total weight of the resin composition [0050].
The resin composition can be used to produce an insert molded product [0002] including any structural member such as a sensor housing for a power steering device, a resin winding guide bearing for a slide door, a housing of an electric oil pump, and etc. [0066-0067].
However, KUNISHIMA does not teach wherein the ratio of a median of the fiber length of the fibrous reinforcing filler (B) to an average of the fiber length of the fibrous of the fibrous reinforcing filler (B) is 0.5 to less than 0.90.
In the same field of endeavor of a thermoplastic (polyamide) molding composition, GAREISS teaches the composition comprises fibrous filler (C) including carbon fibers and glass fibers wherein the glass fibers are preferred (Col. 5, lines 41-43). The fibrous filler (C) has a median fiber length of from 70 to 200 µm (Col. 5, lines 32-37) and the average length (d50) is less than 200 µm (Col. 5, line 47-48), specifically, less than equal to 180 µm (Col. 5, lines 61-65). The fibers may be adjusted to the desired length, for example, by grinding in a ball mill, which gives a distribution of fiber lengths (Col. 5, lines 44-46). The ratio of the median fiber length to the average length can be adjusted in order to obtain desired properties. For instance, 150 µm (median fiber length)/180 µm the average length (d50) is 0.83 which is within the claimed range of 0.50 to less than 0.90.
The molding compositions are suitable for producing moldings of any type (Col. 7, lines 60-64) having good processability and flame retardancy combined with a good spectrum of mechanical properties (Col. 7, lines 60-63).
Given KUNISHIMA teaches the resin composition comprises reinforcing fibers including carbon fibers and glass fibers [0047] for the production of molded products, it would have been obvious to a person of ordinary skill in the art to have provided the reinforcing fibers having the fiber lengths of GAREISS with the resin composition of KUNISHIMA for the benefit of obtaining molding compositions with desired properties (e.g., good processability, flame retardancy, and mechanical properties) as taught by GAREISS. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Furthermore, the fibrous filler (C) has a median fiber length of from 70 to 200 µm (Col. 5, lines 32-37) and the average length (d50) is less than 200 µm (Col. 5, line 47-48), specifically, less than equal to 180 µm (Col. 5, lines 61-65). The ratio of the median fiber length to the average length can be adjusted in order to obtain desired properties. When the fibers have a 150 µm (median fiber length)/180 µm the average length (d50) the ratio is 0.83 which is within the claimed range of 0.50 to less than 0.90. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 2, KUNISHIMA teaches the resin composition comprises polyamide including aliphatic polyamides (e.g., PA6, PA66, PA46, PA12, PA612, PA610, PA11, and PA410) which has a number average molecular weight (Mn) of 15,000 to 25,000 [0035]. PA 6 has a relative viscosity within the claimed range, see paragraph [0098] of the present specification.
Regarding claim 3, as discussed in paragraph 12 above, KUNISHIMA substantially teaches the present invention.
However, KUNISHIMA does not teach wherein the ratio of a median of the fiber length of the fibrous reinforcing filler (B) to an average of the fiber length of the fibrous of the fibrous reinforcing filler (B) is 0.55 to less than 0.89.
In the same field of endeavor of a thermoplastic (polyamide) molding composition, GAREISS teaches the composition comprises fibrous filler (C) including carbon fibers and glass fibers wherein the glass fibers are preferred (Col. 5, lines 41-43). The fibrous filler (C) has a median fiber length of from 70 to 200 µm (Col. 5, lines 32-37) and the average length (d50) is less than 200 µm (Col. 5, line 47-48), specifically, less than equal to 180 µm (Col. 5, lines 61-65). The fibers may be adjusted to the desired length, for example, by grinding in a ball mill, which gives a distribution of fiber lengths (Col. 5, lines 44-46). The ratio of the median fiber length to the average length can be adjusted in order to obtain desired properties. For instance, 150 µm (median fiber length)/180 µm the average length (d50) is 0.83 which is within the claimed range of 0.55 to less than 0.89.
The molding compositions are suitable for producing moldings of any type (Col. 7, lines 60-64) having good processability and flame retardancy combined with a good spectrum of mechanical properties (Col. 7, lines 60-63).
Given KUNISHIMA teaches the resin composition comprises reinforcing fibers including carbon fibers and glass fibers [0047] for the production of molded products, it would have been obvious to a person of ordinary skill in the art to have provided the reinforcing fibers having the fiber lengths of GAREISS with the resin composition of KUNISHIMA for the benefit of obtaining molding compositions with desired properties (e.g., good processability, flame retardancy, and mechanical properties) as taught by GAREISS. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Furthermore, the fibrous filler (C) has a median fiber length of from 70 to 200 µm (Col. 5, lines 32-37) and the average length (d50) is less than 200 µm (Col. 5, line 47-48), specifically, less than equal to 180 µm (Col. 5, lines 61-65). The ratio of the median fiber length to the average length can be adjusted in order to obtain desired properties. When the fibers have a 150 µm (median fiber length)/180 µm the average length (d50) the ratio is 0.83 which is within the claimed range of 0.50 to less than 0.90. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 4, KUNISHIMA teaches the resin composition comprises polyamide including aliphatic polyamides (e.g., PA6, PA66, PA46, PA12, PA612, PA610, PA11, and PA410) which has a number average molecular weight (Mn) of 15,000 to 25,000 [0035]. The aliphatic polyamides are well-known aliphatic homopolyamide resins.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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