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 .
Preliminary amendment filed 4/24/2024 is made of record. Claims 9-10 are amended; and claims 1-10 are currently pending in the application.
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, claim(s) 1-8 and 10, drawn to polycarbonate alloy material. It is noted that claim 10 drawn to use of polycarbonate alloy material is kept with the polycarbonate alloy material since no materially significant limitations are recited in claim 10 that would patentably distinguish it from composition of claims 1-8.
Group II, claim(s) 9, drawn to method for preparing polycarbonate alloy material.
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: Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of polycarbonate alloy material comprising polycarbonate, polyethylene terephthalate and metallic compound wherein the metallic compound is selected from one or more of a metal oxide, a metal alkali and a metal salt; and the metal is selected from one or more of copper, iron, magnesium, calcium, titanium, antimony, sodium and potassium, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Unannounced Inventor (CN 104710740 A - hereafter CN ‘740). It is noted that CN 104710740 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations below are to the English translation unless explicitly stated. Specifically, CN ‘740 teaches, in example 2, an alloy made from a composition comprising polycarbonate (PC), polyethylene terephthalate (PET) and titanium dioxide (paragraph 029-030).
During a telephone conversation with Floyd Canfield on 8/25/2026 a provisional election was made with traverse to prosecute the invention of group I, claims 1-8 and 10. Affirmation of this election must be made by applicant in replying to this Office action. Claim 9 is 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 § 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 3 and 5-7 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.
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 3 recites the broad recitation “metallic compound is selected from one or more of a metallic titanium oxide and a metallic antimony oxide”, and the claim also recites “preferably, the metallic compound is selected from one or more of metallic antimony oxides” 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.
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 5 recites the broad recitation “wherein the polycarbonate has a viscosity average molecular weight of 10,000-40,000”, and the claim also recites “preferably 18,000-35,000, and more preferably 25,000-33,000“ 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.
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 5 recites the broad recitation “the PET has an intrinsic viscosity of 0.65-0.9 dl/g”, and the claim also recites “and preferably 0.7-0.88 dl/g” 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.
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 “wherein the antistatic agent is selected from one or more of carbon nanotubes”, and the claim also recites “preferably the antistatic agent is selected from one or more of multi-walled carbon nanotubes having a tube diameter of 1.0-80 nm and a length of 2-70 µm, and more preferably, the antistatic agent is selected from one or more of multi-walled carbon nanotubes having a tube diameter of 20-60 nm and a length of 10-25 µm” 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.
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 “flexibilizer is selected from one or more of an ethylene-butyl acrylate-glycidyl methacrylate copolymer, an ethylene-octene-glycidyl methacrylate copolymer, a methyl methacrylate-butadiene-styrene copolymer, a methylmethacrylate-acrylic acid copolymer, an ethylene-methyl acrylate copolymer, and a methylmethacrylate-acrylate-silicone copolymer”, and the claim also recites “preferably the flexibilizer is a complex of the ethylene-butyl acrylate-glycidyl methacrylate copolymer and the methylmethacrylate- butadiene-styrene copolymer in a weight ratio of (1:2) - (2:1)” 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 10 provides for use of polycarbonate alloy material, but, since the claims do 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 Rejections - 101
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.
Thus, claim 10 is also 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 § 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.
Claims 1-5, 7-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Unannounced Inventor (CN 104710740 A - hereafter CN ‘740).
Regarding claims 1 and 3-4, CN ‘740 teaches a PC/PET alloy (title) which reads on polycarbonate alloy material in present claim 1. See example 2, wherein the composition used to make the alloy comprises 62% PC (i.e., reads on polycarbonate and its amount in present claim 1), 28% PET (i.e., reads on polyethylene terephthalate and its amount in present claim 1) and 1.4% of titanium dioxide (paragraph 029) which reads on metal oxide and its amount in present claim 1, metallic titanium oxide in present claim 3, and TiO2 in present claim 4.
Regarding claim 2, see example 2, wherein the composition used to make the alloy comprises 62% of PC (i.e., reads on polycarbonate and its amount in present claim 1), 28% of PET (i.e., reads on polyethylene terephthalate and its amount in present claim 1) and titanium dioxide (paragraph 029). Low smoke promoter includes titanium dioxide (paragraph 0013) and is present in amounts of 0.5 to 3% (paragraph 008).
Regarding claim 5, see example 2, wherein polycarbonate has a weight average molecular weight of 18,000 to 40,000 (i.e., reads on the viscosity average molecular weight) and PET has a characteristic viscosity of 0.6 to 1.0 dl/g (paragraph 029) which reads on intrinsic viscosity of PET in present claim 5.
Regarding claim 7, see example 2, wherein the composition comprises 4% of compatibilizer ethylene-butyl acrylate-glycidyl methacrylate copolymer (paragraph 029) which reads on the flexibilizer in present claim 7.
Regarding claim 8, see example 2, wherein the composition comprises 0.2% of hindered phenolic antioxidant 1076 (paragraph 029 and 016). It is noted that antioxidant 1076 is octadecyl 3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate (i.e., reads on the antioxidant and its amount in present claim 8).
Regarding claim 10, it is the Office’s position that it is the intended use of PC/PET alloy, of CN ‘740, in the field of medicine packaging.
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.
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 nonobviousness.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Unannounced Inventor (CN 104710740 A - hereafter CN ‘740) in view of Unannounced Inventor (CN 104845318 A - hereafter CN ‘318).
The discussion with respect to CN ‘740 in paragraph 18 above is incorporated here by reference.
CN ‘740 is silent with respect to antistatic agent and its amount.
However, CN ‘318 teaches in the same field of endeavor a modified PC/PTT carbon nanotube composite (title). Use of carbon nanotube will greatly improve the heat conduction antistatic performance of the material. Carbon nanotubes are added in amounts of 5 to 15% (abstract) which overlaps with the amount of carbon nanotube in present claim 6. The carbon nanotube has a particle diameter of 0.5 to 200 nm and a length of 5 to 20 microns (paragraph 011) which overlaps with the tube diameter and length in present claim 6. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Case law holds that selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, in light of the teachings in CN ‘318 and case laws, it would have been obvious to one skilled in art prior to the filing of present application to add carbon nanotube, of CN ‘318, in overlapping amounts having an overlapping diameter and length, in the polycarbonate alloy, of CN ‘740, for above mentioned advantages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. 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.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764
Prosecution Insights