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 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.
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano (JP 2000239407 A, hereinafter referring to the attached ESPACENET translation).
Regarding claims 1 and 2, Hirano teaches a molded lighting cover formed from a resin sheet ([0008]), wherein the resin sheet contains a resin (which may be polystyrene, [0013]) and inorganic light diffusers (which may be a mixture of materials including barium sulfate and calcium carbonate, [0018]).
The polystyrene of Hirano reads on the claimed “vinyl copolymer” because the instant Specification states that the “vinyl copolymer” may be a polymer having 100 mol% of an aromatic vinyl compound, including styrene ([0014] and [0016]).
Furthermore, while Hirano is silent with regard to the refractive index of the polystyrene polymer, the instant Specification states, as described above, that a polymer having 100 mol% of styrene is suitable. The polystyrene polymer of Hirano is therefore identical to the claimed “vinyl copolymer,” comprising all of the same components falling within the required compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed refractive index will therefore necessarily be present in the polystyrene of Hirano as applied above.
The inorganic fillers of Hirano likewise read on the claimed inorganic particles “(II-1)” and (II-2);” The instant Specification states that specific examples of these materials include barium sulfate and calcium carbonate (see instant Specification at [0029]). Furthermore, while Hirano is silent with regard to the refractive indices of the barium sulfate and calcium carbonate, the instant Specification states, as described above, that barium sulfate and calcium carbonate are suitable inorganic particles. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed refractive indices (within claim 2) will therefore necessarily be present in the barium sulfate and calcium carbonate of Hirano as applied above.
Regarding the claimed particle sizes of the inorganic fillers, Hirano teaches that the barium sulfate and calcium carbonate may have weight average (D50) particle sizes ranging from 0.1 to 50 microns ([0018]), which encompasses the respectively claimed ranges of “1.2 µm to 2.8 µm” and “3.6 µm to 6.4 µm,” establishing prima facie cases of obviousness.
Hirano teaches that the particulate light-diffusing agents are included in total amounts preferably ranging from 0.1 to 10 parts by weight per 100 parts of the resin ([0020]), which encompasses claimed total content range of “4 to 10 parts by mass,” establishing a prima facie case of obviousness. The claimed amount of “100 parts by mass” of the claimed vinyl resin is likewise rendered obvious by this teaching, as 100 parts of the inventive resin of Hirano is identical thereto.
Regarding the limitation requiring a range of 2 to 3 parts by weight of the first inorganic particles and 1 to 7 parts by weight of the second inorganic particles, Hirano is silent with regard to the particular ratio of incorporation of the barium sulfate and calcium carbonate. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Hirano teaches barium sulfate and calcium carbonate as equally suitable alternatives to one another and therefore recognizes the equivalence of the two light diffusing agents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine barium sulfate and calcium carbonate in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Given that Hirano teaches the combined amounts thereof as ranging from 0.1 to 10 parts by mass (as described above, see Hirano at [0020]), it would have been obvious to one having ordinary skill in the art to include each of the barium sulfate and calcium carbonate light diffusers in amounts ranging from about 0.05 to about 5 parts per 100 parts of the resin component. These amounts encompass/overlap the respectively claimed ranges of “2 to 3 parts by mass” and “1 to 7 parts by mass,” establishing prima facie cases of obviousness. The ratio range between these two compounds may therefore range from about 0.01 to about 100 (corresponding to ratios wherein one compound is included at 0.05 phr and the other is included at 5 phr), which encompasses the claimed range of “0.3 or more and less than 4.0,” establishing a prima facie case of obviousness. As described above, Hirano teaches that the light diffusing particles are all, on average, in the range of 0.1 to 50 microns ([0018]). Therefore, either of the barium sulfate and calcium carbonate of Hirano may read on either the claimed inorganic particles “(II-1)” and “(II-2),” wherein mutatis mutandis either material reads on their respectively claimed compositional amounts and particle sizes, and the claimed blending ratio.
Regarding claims 3-4, Hirano teaches that the inventive composition has a light transmittance between 40 and 70% ([0040]), which encompasses the claimed range of “55.0% to 65.0%,” establishing a prima facie case of obviousness. Hirano is silent with regard to the claimed haze and specific gravity characteristics; nevertheless, as described above, Hirano teaches a composition which is structurally identical to the claimed composition, which contains all of the same components, and which denotatively shares at least one physical characteristic with the claimed composition – level of light transmittance. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed haze and specific gravity characteristics will therefore necessarily be present in Hirano as applied above.
Regarding claim 5, as described above, Hirano teaches the use of barium sulfate.
Regarding claim 7, Hirano teaches a molded lighting cover made from the inventive resin sheet ([0008]), which reads on the claimed “molded article.”
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hirano (JP 2000239407 A, hereinafter referring to the attached ESPACENET translation) in view of Saito (WO 2013161843 A1, hereinafter referring to the attached ESPACENET translation).
Regarding claim 6, Hirano meets all of the limitations of claim 1 as described above. Hirano differs from claim 6 because it is silent with regard to the molecular weight of the polystyrene resin within the inventive sheet.
In the same field of endeavor, Saito teaches a light-diffusing resin composition and a molded article thereof (p. 1), wherein the molded article may be a cover for a lighting fixture (p. 51, last paragraph). Saito specifically teaches the use of a resin (p. 7, final paragraph) which may be polystyrene (p. 10, first paragraph), and which has a weight average molecular weight ranging from about 50,000 g/mol to about 1,000,000 g/mol (pp. 11-12, bridging paragraph). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the molecular weight range of Saito within the polystyrene of the inventive composition of Hirano, as Saito teaches this molecular weight range as suitable for use within the same kind of molded light fixture article. The range of 50,000 to 1,000,000 g/mol overlaps the claimed range of “80,000 to 150,000,” establishing a prima facie case of obviousness.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
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