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 9 is objected to because of the following informalities:
Claim 9, line 7, recites “the cumulative integrated value”. The claim should instead read “the cumulative integral value”.
Appropriate correction is required.
Claim Analysis
Summary of Claim 1:
A polyarylene sulfide resin composition comprising:
100 parts by weight of (A) a polyarylene sulfide;
10 to 100 parts by weight of (B) a glass fiber; and
1 to 20 parts by weight of (C) an olefin elastomer,
wherein, when a cumulative integral value from a molecular weight of 100 to a molecular weight of 10,000 in a molecular weight distribution curve of (A) the polyarylene sulfide is taken as 100, the cumulative integrated value at a molecular weight of 4,000 is 48 to 53, and
when a melt flow rate of (A) the polyarylene sulfide is defined as MFR1, and when the melt flow rate obtained after mixing (A) the polyarylene sulfide with an epoxy silane coupling agent at a weight ratio of 100:1, and heating the resulting mixture at 315.5°C for 5 minutes is defined as MFR2, a rate of change represented by MFR2/MFR1 is not more than 0.085.
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.
Claims 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ishio et al. (JP 2017155065 as listed on IDS dated March 20, 2024).
The examiner refers to the English translation of Ishio et al. provided by the Applicant.
Regarding claim 9, Ishio et al. disclose in Example 3 a composition comprising 100 parts by weight of polyphenylene sulfide (another name for polyarylene sulfide), 48 parts by weight glass fiber, and a total of 8 parts by weight of olefin copolymers (see Table 1, [0137-0139]), thereby lying within the claimed ranges of (A), (B), and (C).
Ishio et al. is silent on the cumulative integral value and the melt flow rate of the polyarylene sulfide in the composition of Example 3 as recited in the instant claim.
However, the properties of the polymer are dependent on the structure and the process to synthesize the polymer. Ishio et al. teach the polyarylene sulfide of PPS-2 is synthesized in a substantially identical process [0114-0117] as the process used in the instant specification (see Instant Specification [0140-0151]. Thus, the resulting polyarylene sulfide should likewise be substantially identical to the claimed copolymer. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 10 and 11, Ishio et al. do not disclose Example 3 comprises an organic silane coupling agent in the amounts as recited in the instant claim.
However, Ishio et al. broadly teach the composition may comprise an organic silane coupling agent having at least one functional group selected from an amino group among others [0097], thereby reading on the organic silane coupling agent of instant claim 10 and 11. Ishio et al. further teach the amount of organic silane coupling agent is 0.05 to 3 parts by weight of (A) the polyarylene sulfide [0097], thereby overlapping the claimed range. 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Ishio et al.
Regarding claim 12, Ishio et al. disclose the polyarylene sulfide in the composition of Example 3 is subjected to a thermal oxidation crosslinking treatment [0137], thereby reading on the recited polyarylene sulfide has a crosslinked structure.
Regarding claim 13, Ishio et al. is silent on the amount of resulting residue of the polyarylene sulfide in the composition of Example 3 as recited in the instant claim.
However, Ishio et al. broadly teach the polyarylene sulfide obtained by the production was dissolved in 20-fold amount of 1-chloronapthalene at 250°C for 5 minutes and filtered under hot pressure filtration through PTFE membrane filter having a pore size of 1 µm or less has an amount of residue of 4.0% by weight or less [0022], thereby reading on the claimed range. 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Ishio et al.
Regarding claim 14, Ishio et al. disclose the composition of Example 3 is used to form an injection molded article [0146], thereby reading on the instant claim.
Regarding claim 15 and 16, Ishio et al. is silent on if the composition of Example 3 is used to form a molded article that is a fluid piping part or any water plumbing part as recited in the instant claim 15 and 16 respectively.
However, Ishio et al. broadly teach the composition can be applied to plumbing parts such as a water heat part, water faucet parts and mixing faucets, pipes among others [0102-0106], thereby reading on the fluid piping part of instant claim 15 and the water plumbing part that is water heater-related parts or pump-related parts of instant claim 16. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the polyarylene sulfide composition of Ishio et al. to form a fluid piping part and a water heater-related parts or pump-related parts as broadly taught by Ishio et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9-10 and 12-15 of copending Application No. 18693939 in view of Ishio et al. (JP 2017155065) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to composition comprising amounts of polyarylene sulfide and an organic silane coupling agent wherein the polyarylene sulfide has a cumulative integral value and a melt flow rate as recited in the instant claims.
‘743 and ‘939 differ in that ‘939 does not comprise a glass fiber and olefin elastomer.
Ishio et al. disclose a polyarylene composition comprising 10 to 100 parts by weight of a fibrous filler that is glass and 4-15 parts by weight of an olefin elastomer (claim 4). Ishio et al. offer the motivation that adding glass fibers improves mechanical strength and adding the olefin elastomer improves toughness and moldability [0089-0091]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add the glass fibers and olefin elastomer in the amounts as taught by Ishio et al. with reasonable expectation that the mechanical strength, toughness, and moldability would improve.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10, 12-15, and 20-21 of copending Application No. 18693187 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to composition comprising amounts of polyarylene sulfide and a glass fiber wherein the polyarylene sulfide has a cumulative integral value and a melt flow rate as recited in the instant claims. ‘743 and ‘187 differ in that ‘187 does not comprise an olefin elastomer.
Ishio et al. disclose a polyarylene sulfide composition comprising and 4-15 parts by weight of an olefin elastomer (claim 1). Ishio et al. offer the motivation that adding the olefin elastomer improves toughness and moldability [0090-0091]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add the glass fibers and olefin elastomer in the amounts as taught by Ishio et al. with reasonable expectation that the toughness and moldability would improve.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9, 11-16 of copending Application No. 18693775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to overlapping amounts of polyarylene sulfide and an organic silane coupling. ‘743 and ‘775 differ in that ‘775 does not comprise an olefin elastomer.
Ishio et al. disclose a polyarylene sulfide composition comprising and 4-15 parts by weight of an olefin elastomer (claim 1). Ishio et al. offer the motivation that adding the olefin elastomer improves toughness and moldability [0090-0091]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add the glass fibers and olefin elastomer in the amounts as taught by Ishio et al. with reasonable expectation that the toughness and moldability would improve.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ANDREA WU/ Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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