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 7 is objected to because of the following informalities: “4.5%under” should instead be –4.5% under--; “3.8%under” should instead be –3.8% under--. Appropriate correction is required.
Claim Rejections - 35 USC § 101/112(b)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 10 is rejected under 35 U.S.C. 112(b) because the claim provides for the use of a semi-aromatic polyamide molding composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections - 35 USC § 112(b)
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 1-10 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.
Regarding claims 1 and 5, the recitation (line 14) of ‘in a resin matrix of the semi-aromatic polyamide molding composite material, the wollastonite has’ is indefinite as there is no explicit recitation of a resin matrix and it is not clear if the claim is intended to recite that the wollastonite is dispersed in the matrix or is present in a matrix, etc. It is not clear how the wollastonite dimensions are linked specifically to the resin matrix. It is noted that the recitation “in a resin matrix of the semi-aromatic polyamide molding composite material” could simply be removed for clarity. This includes claims 2-10 as they depend from claim 1.
Regarding claim 6, it is noted that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation toner selected from carbon black toner, black toner and amorphous carbon toner, and the claim also recites preferably amorphous carbon toner which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 7, it is noted that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation of a reflectivity of less than 4.5%, and the claim also recites more preferably has a reflectivity of less than 3.8% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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, 5, 7-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (CN 103936978 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 1-3, 5 and 7, Zhang teaches polyamide resin compositions comprising 30-99.9% of a polyamide component, 0-60% of a reinforcing filler, 0-50% of a flame retardant, and 0.1-10 % of auxiliary agents (abstract; pg3 [0010]), wherein the auxiliary agents include toners and coloring agents (pg5 [0021]).
Zhang teaches the polyamide is a copolymer comprising 80-99 mol% of 10T units and 1-20 mol% of 1010 units formed by decamethylene diamine and sebacic acid, which may be substituted by other C2-C14 aliphatic dicarboxylic acids (abstract; pg2 [0005]). Zhang teaches polyamide 10T/1010 (pg2 [0005])(claim 2). Zhang further teaches the polyamide has a melting point of higher than 260°C (pg2 [0007]).
Zhang teaches the reinforcing filler is selected from fibrous inorganic materials having an average length of 0.1-6 mm (=100-6000 micron) and a length-diameter ratio of 30-600:1 (=approx. 0.16-200 micron diameter) (pg3 [0011]; pg7 clm 8)(claims 1 and 5) and teaches the filler includes wollastonite fiber (pg3 [0012]).
Zhang does not specifically teach the crystallization peak width at half maximum of 4-11°C (claim 1) or 5-8 °C (claim 3), a whiteness of less than 26.5, or a reflectivity of less than 6% (claim 1), less than 4.5% or less than 3.8% (claim 7). However, Zhang teaches polyamide resin compositions comprising the claimed polyamide, the claimed wollastonite filler and the claimed toner, present in the claimed amounts, and obtained by substantially the same method. The instant specification demonstrates that a polyamide as claimed, in combination with wollastonite and toner as claimed, will have the claimed properties (instant original specification [0030]-[0032]). It is noted that 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claim 8, Zhang teaches the composition as set forth in claim 1 above. As the recitation of claim 8 includes zero the recitation is optional and deemed met by Zhang.
Regarding claim 10, Zhang teaches the composition as set forth in claim 1 and teaches uses include engine pipes (pg5 [0021]). The recitation that the basic formulation containing said semi-aromatic polyamide composite is to be used in LED display screen light source reflection support does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
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.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 103936978 A; using Clarivate Analytics machine translation for English language citations) as set forth above and further in view of Rautenberg et al. (US PGPub 2019/0031857).
Regarding claim 4, Zhang teaches the compositions as set forth in claim 1 above. Zhang does not specifically teach the number-average molecular wight. However, Rautenberg teaches similar polyamide molding compositions comprising a polyamide resin (a) in combination with dyes, fillers and other optional materials ([0036]-[0049]) to obtain compositions suitable for moldings used in motor vehicles, appliances, decorative strips and paneling ([0072]). Rautenberg teaches preferred polyamides include PA10T-type copolymers ([0136]; [0141]) and teaches it is preferred for such polyamides, within the context of molding compositions, to have a number-average molecular weight of from 8,000-50,000 g/mol ([0142]-[0145]). Rautenberg and Zhang are analogous art and are combinable because they are concerned with the same field of endeavor, namely polyamide molding compositions which may comprising coloring materials and which are suitable for vehicular moldings. At the time of filing a person having ordinary skill in the art would have found it obvious to select a number-average molecular weight as taught by Rautenberg for the polyamides of Zhang and would have been motivated to do so as Ruatenberg teaches such a number-average molecular weight is preferred for molding compositions processible under coloring conditions ([0142]; [0011]).
Regarding claim 6, Zhang teaches the composition as set forth in claim 1 above and further, as noted, teaches inclusion of toners/coloring agents (pg5 [0021]). Zhang does not specifically teach black toners. However, Rautenberg teaches similar polyamide molding compositions comprising a polyamide resin (a) in combination with dyes, fillers and other optional materials ([0036]-[0049]) to obtain compositions suitable for moldings used in motor vehicles, appliances, decorative strips and paneling ([0072]). Rautenberg teaches chromium complex black dyes as suitable for homogeneous, bulk coloring of polyamides which are stable and processible ([0011]). Rautenberg additionally teaches further coloring materials including known carbon black fillers may also be present ([0184]-[0187]). Rautenberg and Zhang are analogous art and are combinable because they are concerned with the same field of endeavor, namely polyamide molding compositions which may comprising coloring materials and which are suitable for vehicular moldings. At the time of filing a person having ordinary skill in the art would have found it obvious to select the chromium dyes of Rautenberg as the toner/coloring agents of Zhang and would have been motivated to do so as Rautenberg teaches such dyes result in black colored polyamide compositions having homogeneous, bulk coloring that is stable and processible ([0011]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 103936978 A; using Clarivate Analytics machine translation for English language citations).
Zhang teaches the composition as set forth in claim 1 above and further teaches a production method comprising combining the components in a high speed mixer to mix uniformly, extruding with a double-screw extruder, cooling and granulating (instant pelletizing), and drying, wherein the extruding temperature is 330°C (pg7 [0029]).
Zhang does not specifically teach the revolving speed as claimed. However, It is noted that generally, differences in form, proportion or degree will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such is critical (MPEP 2144.05 IIA; see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; see also Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/Primary Examiner, Art Unit 1767
Prosecution Insights