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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on has been considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities: in the first paragraph of the specification please update the lineage/cross reference to the applications to which priority is claimed. Appropriate correction is required.
Claim Objections
Claims 2, 3 is objected to because of the following informalities:
In claim 2, there closed parentheses is missing in the second to last line for EPDM. Appropriate correction is required.
In claim 3, the use of parentheses is missing both sides of the curved brackets or matching open and closed parenthesis to form a complete set, hence a complete thought or limitation. Appropriate correction is required.
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.
Claim 5 and 11 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.
It is not clear what Applicant means from the terms “ACTO” or active oxygen in claims 5 and 11.
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 1-14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of copending Application No. 19/126,094. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and copending claims are obvious variants of each other.
Copending Claim 1 of application 19/126,094 requires a coated filament comprising; an inorganic filament; and a polymer composition comprising a thermoplastic polymer, wherein the polymer composition is in direct contact with the filament, and wherein the coated filament has a length of 100 mm or longer. The instant application requires the same only differencing in that the length sought is 100mm or less. The range still overlaps.
Both Claim 4 of the instant application and that of 19/126,094 requires the exact same melt viscosity in the range from 1.0 to 25 Pas at the melting temperature of the polymer composition, wherein the melting temperature of the polymer composition is determined on a 5mg sample using a differential scanning calorimetry on the second heating curve using a heating and cooling rate of 10*C/min and wherein the melt viscosity is determined according to IS06721-10:2015 by applying oscillating- shear to the molten sample at an Angular Frequency of 1 rad/s and shear strain of 5%;
Copending Claim 5 of 19/126,094 is the same as Claim 6 of the instant application;
Copending Claims 6 and 7 of 19/126,094 is the same as Claim 7 and 8 of the instant application;
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 6-14 is/are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by WO2022/128783A1 issued to Yaneva et al. [equivalent application USPUB 20240052112A1 is being used to cite paragraph numbers]
Regarding Claim 1, where Applicant seeks a coated filament comprising an inorganic filament and a polymer composition comprising a thermoplastic polymer, wherein the polymer composition is in direct contact with the filament and wherein the coated filament has a length of less than 100 mm; Applicant is directed to Yaneva et al., who teach pellets of a glass fiber-reinforced thermoplastic polymer composition comprising a sheathed continuous multifilament strand comprising a core that extends in the longitudinal direction and a polymer sheath which intimately surrounds said core, wherein the core comprises at least one continuous (long) glass multifilament strand, the polymer sheath consists of a thermoplastic polymer composition comprising a polyolefin which has a melt flow index as measured according to ISO1133-1 :2011 (2.16kg/230°C) of at least 1.0 dg/min and less than 20 dg/min, preferably 5.0 to 19 dg/min, more preferably 6.0 to 18 dg/min, wherein the length of the glass filaments in the pellets are substantially the same as the pellet length, and is 10 to 55 mm, preferably 10 to 40 mm, more preferably 10 to 30 mm and most preferably from 10 to 20 mm. [ see ¶¶ abstract, 0010-0014].
Regarding Claim 2, where Applicant seeks that the coated filament according to claim 1, wherein the polymer composition comprises at least 95wt% of the thermoplastic polymer based on the polymer composition and/or wherein the thermoplastic polymer is chosen from the group of acrylonitrile butadiene styrene (ABS), acrylonitrile styrene acrylate (ASA), polyethylene (PE), polyolefin elastomer (POE), polyethylene terephthalate (PET), polypropylene (PP),polyvinylchloride (PVC), polybutadiene (BR), ethylene propylene diene monomer (EPDM, polyamide (PA), thermoplastic polyurethane (TPU) and mixtures thereof; Applicant is directed to ¶¶ 0032-0042 where the percentage and composition is taught. Polypropylene tops the list of choices.
Regarding Claim 3, where Applicant seeks that the coated filament according to claim 1, wherein the polymer composition comprises a polypropylene composition comprising A) a grafted polypropylene grafted with C1) a side chain compound capable of forming hydrogen bond and/or B) a non-grafted polypropylene and C2) a compound capable of forming hydrogen bond, wherein the total amount of A) and B) with respect to the polypropylene composition is at least 70 wt% and the polypropylene composition comprises D) a low molecular weight polyethylene having molecular weight of at most 5000 g/mol in an amount of less than 10 wt% with respect to the polypropylene composition; Applicant is directed to ¶¶ 0032-0042 where the percentage and composition is taught. Polypropylene tops the list of choices.
Regarding Claim 6, where Applicant seeks that the coated filament according to claim 1, wherein the coating is a spot coating or a mantle coating; the instant reference teaches that in the coating methods the polymer is still fluid and can bind the filament together and nowhere does it state that the coating totally covers or encapsulates the core, as such the coating would be intermittent and thus be a spot/speckle or mantle coating.
Regarding Claim 7, where Applicant seeks a filament bundle comprising a plurality of coated filaments according to claim 1 ; Applicant is directed to ¶ 0083-0084, where the instant reference teaches that the strand can be a plurality of coated filaments.
Regarding Claim 8, where Applicant seeks an article comprising the coated filament of Claim 1; Applicant is directed to ¶ 0134 where they show that an article suck as a battery casing is formed. The entire reference uses the word article over and over.
Regarding Claim 9, where Applicant seeks that a coated filament, filament bundle or tape obtainable by a method for producing a coated filament comprising the steps of a. producing an uncoated inorganic filament from an inorganic melt, b. providing a molten polymer composition comprising a thermoplastic polymeric. applying the molten polymer composition to the uncoated inorganic filament, and allowing the molten polymer composition to solidify and d. obtaining a coated filament comprising an inorganic filament which is coated with the polymer composition and wherein the inorganic filament is in direct contact with the polymer composition and el. cutting the coated filament into pieces having a length of less than 100mm or e2 bundling a plurality of said coated filaments into a filament bundle or a yarn and optionally cutting the filament bundle or yarn into pieces having a length of less than 100mm or f. bundling a plurality of said coated filaments into a filament bundle or a yarn and g. producing a tape from the filament bundle or from the yarn to produce a tape having a thickness from 0.2 up to and including 2 mm, a width from 10 up to and including 500mm and wherein the tape has a length/width ratio of above 10; Applicant's claims recite a coated filament which is a product. The manner in which the product is manufactured is given minimal patentable weight. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Regarding Claim 10, where Applicant seeks that the coated filament according to claim 9, wherein the polymer composition has a melt viscosity in the range from 1.0 to 25 Pas at the melting temperature of the polymer composition, wherein the melting temperature of the polymer composition is determined on a 5mg sample using a differential scanning calorimetry on the second heating curve using a heating and cooling rate of 10°C/min and wherein the melt viscosity is determined according to IS06721-10:2015 by applying oscillating-shear to the molten sample at an Angular Frequency of 1 rad/s and shear strain of 5%; Applicant's claims are directed to a product. Applicant's claims recite a coated filament which is a product. This claims depends from Claim 9 and is also rejected, as the manner in which the product is manufactured is given minimal patentable weight. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Regarding Claim 11, where Applicant seeks that the coated filament according to claim 10, wherein the polymer composition meets inequation 1 : q < (82 x eA0.007 x (ACTO)) + 5 (inequation) wherein q stands for the melt viscosity in Pa.s as measured at the melting temperature of the polymer composition, wherein the melting temperature of the polymer composition is determined on a 5mg sample using a differential scanning calorimetry on the second heating curve using a heating and cooling rate of 10°C/min and wherein the melt viscosity is determined according to 1506721-10:2015 by applying oscillating-shear to the molten sample at an Angular Frequency of 1 rad/s and shear strain of 5% and wherein ACTO stands for the amount of active oxygen in the polymer composition in ppm; Applicant's claims are directed to a product. Applicant's claims recite a coated filament which is a product. This claims depends from Claims 10, which depends from 9 and is also rejected, as the manner in which the product is manufactured is given minimal patentable weight. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Regarding Claim 12, where Applicant seeks that the coated filament according to claim 9,wherein during the application step the polymer composition contacts the uncoated inorganic filament at an angle of at most 450; Applicant's claims are directed to a product. Applicant's claims recite a coated filament which is a product. This claims depends from Claim 9 and is also rejected, as the manner in which the product is manufactured is given minimal patentable weight. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Regarding Claim 13, where Applicant claims that the coated filament according to claim 9,wherein when applying the organic polymer to the uncoated inorganic filament, the speed at which the polymer is applied is 50% to 110% the speed at which the inorganic filament is moved and/or the speed at which the inorganic filament is moved is 500 to 3000 m/min; Applicant's claims are directed to a product. Applicant's claims recite a coated filament which is a product. This claims depends from Claim 9 and is also rejected, as the manner in which the product is manufactured is given minimal patentable weight. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Regarding Claim 14, where Applicant seeks that the coated filament according to claim 9, wherein the polymer composition is molten using a melting device; Applicant's claims are directed to a product. Applicant's claims recite a coated filament which is a product. This claims depends from Claim 9 and is also rejected, as the manner in which the product is manufactured is given minimal patentable weight. See MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2022/128783A1 issued to Yaneva et al.
Regarding Claim 4, where Applicant seeks that the coated filament according to claim 1, wherein the polymer composition has a melt viscosity in the range from 1.0 to 25 Pas at the melting temperature of the polymer composition, wherein the melting temperature of the polymer composition is determined on a 5 mg sample using a differential scanning calorimetry on the second heating curve using a heating and cooling rate of 10°C/min and wherein the melt viscosity is determined according to IS06721-10:2015 by applying oscillating-shear to the molten sample at an Angular Frequency of 1 rad/s and shear strain of 5%; Although Yaneva et al. teach what is set forth above does not explicitly teach the limitations as sought in this claim. Yaneva et al. teach the same composition with a melt viscosity, however it is not measured using the same parameters as sought by Applicant. It is reasonable to presume that said limitations are inherent if not obvious to the invention. Support for said presumption is found in the use of similar materials (i.e. same composition and in the similar production steps). The burden is upon the Applicant to prove otherwise. In re Fitzgerald, 205 USPQ 594. In the alternative, the claimed coated filament would obviously have been provided by the process disclosed by Yaneva et al. Note In re Best, 195 USPQ 433, footnote 4 (CCPA 1977) as to the providing of this rejection under 35 USC 103 in addition to the rejection made above under 35 USC 102.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
USPN 4,937,028 A issued to Glemet et al. Glement et al. teach a process is provided for producing thermoplastic resins reinforced with long fibers in which rovings are impregnated with a wetting thermoplastic polymer by means of a die and a baffle zone, then taking up the impregnated rovings in a second die where they are then covered with a thermoplastic polymer. [abstract]. The continuous fibers that are employed to reinforce the thermoplastic resins are known and are either organic or mineral. By way of example, rovings of fiber glass, silica, carbon, or aramide can be introduced. The wetting thermoplastic polymer must be compatible with the coating thermoplastic polymer such as grafted polypropylene – polypropylene. Polymers modified by grafting or sequencing that are particularly useful include: a grafted polypropylene such as polypropylene grafted with maleic anhydride or acrylic acid; a poly(ethylene-vinyl acetate) grafted with maleic anhydride; a grafted high-density polyethylene such as high-density polyethylene grafted with acrylic acid or maleic anhydride; a grafted linear low-density polyethylene such as linear low-density polyethylene grafted with acrylic acid or maleic anhydride; a poly(ether-amide) sequenced copolymer, and the like. Example 1, teaches a preparation of polypropylene grafted with maleic anhydride.
USPN 6,045,912 issued to Taguchi et al. sizing agents used on long glass fibers which include an amino silane dispersion within a polypropylene wax.
USPUB 2008/0143010A1 issued to Kashikar et al. teaches a process for producing long glass fiber reinforced thermoplastic compositions.
USPN 3,993,726 issued to Moyer, who teaches a process for the continuous production of articles of thermoplastic resin reinforced with long fibers of glass. According to the method described, the roving is impregnated with a mixture of wetting thermoplastic resin and reinforcing thermoplastic resin in a crosshead die fed by an extruder. The fibers are impregnated by first expanding the fibers of the roving and coating the expanded fibers in a crosshead die and passing the fibers and the thermoplastic mixture through a bar zone so that the material thoroughly penetrates into each fiber.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp
