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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 9, 2025 has been entered.
This Office action is in response to the amendment filed October 9, 2025 in which claims 36 and claims 55 were amended.
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 36 and its dependents 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.
In claim 36, it is not clear if the xylylenediamine-based polyamide is the same polyamide that is recited in the line above this recitation. Clarification is required. For examination purposes the examiner is taking the position that they are the same.
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).
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 argues that a person of ordinary skill in the art would not have been motivated to use a glass flake having a thickness of 0.6 to 1.8 µm. Applicant argues that during the interview conducted on August 11, 2025, the Examiner stated that Yagyu discloses that thicker than 0.5 µm is not preferable, however, Yagyu also discloses a broader range of 0.01-2.0 µm (paragraph [0003] of Yagyu, for example). Applicant points out that paragraph [0003] refers to prior art and that the range of 0.01-2.0 µm relates to the average particle diameter rather than the average thickness.
The examiner respectfully disagrees with Applicant’s position. While paragraph [0003] is directed to the prior art, it is taught in paragraph [0006] that the average thickness of the glass flakes of Yagyu is at least 0.1 µm but less than 0.5 µm, and the glass flakes include glass flakes having a thickness of at least 0.01 µm but not more than 2.0 µm in an amount of at least 90% by mass. It is clear that glass flakes having the claimed thickness of 0.6 to 1.8 µm are within the scope of Yagyu, and it is clear that Yagyu’s teaching of glass flakes having a thickness of 0.01 µm but not more than 2.0 µm are present in the thermoplastic resin of Yagyu. This range is not the average particle diameter but the thickness of the glass flakes. That Yagyu claims a thickness of at least 0.05 µm but not more than 1.0 µm in an amount of at least 90% by mass does not mean that Yagyu excludes substantially thicker glass flakes and/or thin glass flakes. It is well settled that a reference is relied upon for all that it teaches and as stated above Yagyu teaches that the glass flakes may have a thickness of up to 2.0 µm.
Applicant notes that Takano was cited in the Office Action dated August 9, 2022, and had been overcome by amending the claims to specify that the reinforcing fiber is free from S-glass, therefore, Applicant respectfully submits that Takano should be withdrawn from consideration.
It should be noted that in this Office action Takano is cited as a secondary reference and not as the primary reference. In the office action of August 9, 2022 Takano was cited as the primary reference. For this reason the rejection stands.
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.
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, 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 16648325/20260319