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 .
This Office action is in response to the amendment filed May 29, 2026 in which claims 36, 50-53 and 55 were amended.
The rejection of the claims under 35 USC 112 is withdrawn in view of the amendment to the claims.
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 36-38, 40-43 and 50-55 are rejected under 35 U.S.C. 103 as being unpatentable over Yagyu (US 20090088515-appears on previous PTO-892) in view of Takano (US 20150353714) (appears on present PTO-892).
Yagyu teaches a glass flake filler, and a resin composition including this glass flake filler. The average thickness of the glass flakes is at least 0.1 micron but less than 0.5 micron, and the glass flakes include glass flakes having a thickness of at least 0.01 micron but not more than 2.0 micron in an amount of at least 90% by mass (see abstract; para 0001; 0006). .With respect to the average thickness of the glass flakes, it is well settled that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
The glass composition to be used for the glass flake filler of Yagyu is not particularly limited. For example, any of an E-glass composition, a C-glass composition, and an A-glass composition can be used (see para 0020). The thermoplastic resin to be used in Yagyu may be a crystalline resin such as a polyamide (see para 0038).
The resin composition may include a reinforcing material such as glass fiber other than a glass flake filler depending on the intended use. An example of such a material is glass fiber. For example, when a reinforcing material is used for components of electric/electronic devices, it is required to have a very high strength. Therefore, an approximately equal amount of glass fiber and glass flake filler may be blended (see para 0040). Yagyu meets the limitations of the claims other than the differences that are set forth below.
Yagyu does not specifically teach that the reinforcing glass fiber is free from S- glass. However, it would be reasonable to expect that the glass fiber is free of S-glass because Yagyu teaches that the glass flakes are any of an E, C or A glass compositions and the skilled artisan would be led to select glass fibers prepared from the same glass compositions as those of the glass flakes, absent evidence to the contrary.
Yagyu does not specifically teach that the thermoplastic resin is xylylenediamine based polyamide nor that the resin comprises a laser direct structuring additive or talc. However, Takano teaches these differences.
Takano teaches a polyamide resin composition from which a resin molded article is obtained comprising 1-30 parts by wt of a laser direct structuring additive (LDSA) and a glass fiber (see abstract; para 0014). The LDSA comprises a copper-chromium oxide or a metal oxide of antimony and tin (see para 0008). The polyamide resins are polyamide polymers that contain an acid amide group (-CONH-) and are polycondensates of diamine compounds with dicarboxylic acid compounds (see para 0015). The diamine may be xylylenediamine and the dicarboxylic acid may be a α-Ɯ-dicarboxylic acid such as sebacic acid (see para 0017-0018; 0020-0022). The MX polyamides are preferred (see para 0022-0023). The ratio of diamine to dicarboxylic acid is 1:1 (see para 0080).
The thermoplastic resin composition may further comprise talc in an amount from 0.01 to 10 parts by wt. (see para 0050-0051).
It would have been obvious to one of ordinary skill in the art to select the claimed polyamide because Yagyu desires a polyamide resin and Takano teaches that of the thermoplastic resins of Yagyu that polyamides are preferred for molded resins.
It would have been obvious to one of ordinary skill in the art to include a LDSA because Takano teaches that the additive allows for a plated layer to be formed on the surface of the resin molded article (see Takano para 0001-0002; 0007).
With respect to the addition of the talc, Takano teaches that talc can improve dimensional stability, product appearance and also improve plating properties of resin molded articles so that the resin molded articles can be successfully plated even if the LDSA is added in smaller amounts (see para 0050).
Modified Yagyu does not specifically teach that the polyamide resin has a saturated water absorption of 4.0% by mass or smaller. However, it would be reasonable to expect such a property because Yagyu and Takano teach polyamide resins that encompass those of the present invention, and it is well settled that a compound and its properties are inseparable. Therefore, if the prior art teaches substantially the same chemical structure, the properties applicant discloses and/or claims are necessarily present.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant’s arguments throughout the response is that a person of ordinary skill in the art would not have been motivated to use a glass flake having an average thickness of 0.6 to 1.8 µm because Yagyu uses glass flakes wherein the average thickness of the flakes is at least 0.1 µm but less than 0.5 µm. Applicant points to the examples in Yagyu to support this argument.
Example 4 and Comparative Example 3 appear to be the closest examples to the present claims. Example 4 uses glass flakes that have an average thickness of 0.4 µm and Comparative Example uses glass flakes that have an average thickness of 0.7 µm. The shrinkage in the orthogonal direction for these two examples is 0.48% and 0.58%, respectively. The shrinkage in the parallel direction is 0.2% and 0.4%, respectively. Given that Yagyu discloses an average thickness of less than 0.5 µm, the examiner takes the position that 0.49 µm, Yagyu’s highest average thickness, is close enough to the claimed average thickness of 0.6 µm that one skilled in the art would expect that the results would be similar. As shown in the above examples there is only a 0.1% difference in the shrinkage in the orthogonal direction and a 0.2% difference in shrinkage in the parallel direction. It is well settled that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). The statement in Yagyu that the average thickness of the glass flakes should be less than 0.5 µm falls far short of the kind of teaching that would discourage one of ordinary skill in the art from using glass flakes that have an average thickness of 0.6 µm. The examiner is therefore not convinced that there is a sufficient teaching away in the art to overcome the strong case of obviousness made out by Yagyu.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 16648325/20260703
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