DETAILED ACTION
Claim Status
Claim(s) 1-2, 5-8, 10-12 is/are pending.
Claim(s) 1-2, 5-8, 10-12 is/are rejected.
Claim(s) 3-4, 9, 13-20 is/are cancelled.
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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/10/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The Examiner previously indicated in the Interview on 12/02/2025 that the proposed Claim Amendments appeared to mostly address the outstanding rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding new matter) in the previous Office Action mailed 09/25/2025.
However, upon a more detailed re-reading of the disclosure as originally filed the Examiner has determined that the Claim Amendments filed 12/10/2025 do not adequately address the outstanding rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding new matter) as explained in detail below.
The Examiner apologizes for any inconvenience caused by this reconsideration.
Claim(s) 1-2, 5-8, 10-12 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the disclosure as originally filed only provides support for a “polybutylene terephthalate-based resin composition containing the polybutylene terephthalate resin as a main component of the resin (A), the content of the polybutylene terephthalate resin is 50 to 100 parts by mass, preferably more than 50 parts by mass, more preferably 55 parts by mass or more, and still more preferably 60 to 100 parts by mass based on 100 parts by mass of the resin (A)” component. However, the specification does not provide support for the limitation “50 parts or more of polybutylene terephthalate” which is based on 100 parts by mass of the polybutylene terephthalate resin composition as a whole, since the resin composition is clearly distinct from the “resin (A)” component -- i.e., the PBT resin composition contains additional required components (e.g., “epoxy compound (B), etc.). Therefore, the disclosed (in the specification) amount of PBT based on “100 parts by mass of the resin (A)” component is not the same as (and therefore does not provide adequate support for) specifying the amount of PBT based on “100 parts by mass of the polybutylene terephthalate resin composition” as a whole.
Regarding claim 1, the disclosure as originally filed only provides support for a resin composition which “contains the polyamide resin as the resin (A), its content is preferably 0.5 to 50 parts by mass, particularly preferably 5 to 50 parts by mass, and most preferably 10 to 40 parts by mass based on 100 parts by mass of the resin (A)” component. However, the specification does not provide support for the limitation “from 10 to 40 parts of a polyamide” which is based on 100 parts by mass of the resin composition as a whole, since the resin composition is clearly distinguished from the “resin (A)” component -- i.e., the PBT resin composition contains additional required components (e.g., “epoxy compound (B), etc.). Therefore, the disclosed (in the specification) amount of polyamide based on “100 parts by mass of the resin (A)” component is not the same as (and therefore does not provide adequate support for) specifying the amount of polyamide based on “100 parts by mass of the polybutylene terephthalate resin composition” as a whole.
Regarding claim 1, the disclosure as originally filed only provides support for a resin composition which contains the epoxy compound (B) in amounts of “preferably 1 to 15 parts by mass, more preferably 3 parts by mass or more, still more preferably 4 parts by mass or more, and particularly preferably 4.5 parts by mass or more based on 100 parts by mass of the resin (A)” and “more preferably 13 parts by mass or less, still more preferably 10 parts by mass or less, and particularly preferably 8 parts by mass or less.” However, the specification does not provide support for the limitation “from 4 to 10 parts of a bisphenol A-type epoxy compound” which is based on 100 parts by mass of the polybutylene terephthalate resin composition as a whole, since the resin composition is clearly distinguished from the “resin (A)” component -- i.e., the PBT resin composition contains additional required components (e.g., “epoxy compound (B), etc.). Therefore, the disclosed (in the specification) amount of epoxy compound (B) based on “100 parts by mass of the resin (A)” component is not the same as (and therefore does not provide adequate support for) specifying the amount of epoxy compound (B) based on “100 parts by mass of the polybutylene terephthalate resin composition” as a whole.
Regarding claim 1, the disclosure as originally filed only provides support for the identifier “(A)” being associated with the “resin (A)” component which is: (i) the polybutylene terephthalate resin; and/or (ii) the polycarbonate resin; and (iii) optionally thermoplastic resin other than the above “polybutylene terephthalate resin and/or the polycarbonate resin” (e.g., polyamide resins, etc.). However, the specification does not provide support for the identifier “(A)” being associated with the “polybutylene terephthalate resin composition” as a whole since component “resin (A)” does not include the other required component “epoxy compound (B)”.
Therefore, to ensure adequate support by the disclosure as originally filed, claim 1 should be amended to clearly distinguish the resin (A) component from the overall PBT-based resin composition -- for example. but not limited to:
(version 1)
“a molded article comprising a polybutylene terephthalate-based composition containing resin (A);
…
wherein the resin (A) comprises, relative to 100 parts by mass of resin (A):
(i) 50 parts or more of polybutylene terephthalate (A1); and
(ii) 10 to 40 parts of a polyamide resin (A2);
wherein the polybutylene terephthalate-based resin composition comprises:
(i) 100 parts of resin (A); and
(ii) from 4 to 10 parts of a bisphenol A-type epoxy compound (B) having an epoxy equivalent of from 185 g/eq to about 770 g/eq....
(version 2)
“a molded article comprising a polybutylene terephthalate-based composition containing resin (A);
…
wherein the polybutylene terephthalate-based resin composition comprises:
(i) 100 parts of resin (A), wherein the resin (A) comprises, relative to 100 parts by mass of resin (A):
• 50 parts or more of polybutylene terephthalate (A1); and
• 10 to 40 parts of a polyamide resin (A2); and
(ii) from 4 to 10 parts of a bisphenol A-type epoxy compound (B) having an epoxy equivalent of from 185 g/eq to about 770 g/eq....
Claims 2, 5-8, 10-12 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 103 (AIA )
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 rejections of Claims 1-2, 5-8, 10-12 under 35 U.S.C. 103 based on IKEGAWA ET AL (US 2002/01232108), in view of KE ET AL (US 2012/0193241), and in view of LIM ET AL (US 2012/0108701), in view of KANDA ET AL (US 4,508,640) or MUTSUDA (US 5,795,935), in the previous Office Action mailed 03/27/2025 have been withdrawn in view of the new grounds of rejection necessitated by the Claim Amendments filed 12/10/2025.
However, the withdrawal of these rejections does NOT constitute a concession as to the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. Upon the resolution of the outstanding issues with respect to new matter, the previous rejections under 35 U.S.C. 103 may be reinstated and/or modified.
Response to Arguments
Applicant’s arguments filed 12/10/2025 have been considered but are moot in view of the new ground(s) of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding new matter) in the present Office Action necessitated by the Claim Amendments filed 12/10/2025.
However, the Examiner makes no concessions regarding the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. Discussion of the merits and applicability of the previously cited prior art references are suspended pending the resolution of the new rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding new matter).
The Examiner notes that in response to Applicant’s arguments previously filed on 06/11/2025 -- i.e., Applicant argues that the recited combination of the claimed polybutylene terephthalate-comprising resin composition and the claimed plasma-treated surface (which is not exposed to “air”) produced unexpected results with respect to peel strength to the metal layer -- the Examiner points out that: (i) the use of plasma is well known in the art to improve adhesion with metal layers; and (ii) while working Examples 4-5 (utilizing inventive composition R4) in the specification provides some limited evidence of superior peel strength, the showing in the specification is not commensurate in scope with the present claims – for example, but not limited to:
• the amounts of “polybutylene terephthalate (A1)” and “polyamide (A2)” in the PBT resin composition – inventive composition R4 of working Examples 4-5 only uses a single “resin (A)” component containing 80 parts PBT and 20 parts polyamide, while the present claims allow for a resin (A) component with substantially broader ranges of PBT (i.e., as low as 50 parts to up to 90 parts PBT) and polyamide (i.e., as low as 10 parts to up to 40 parts);
• the amount and type of “bisphenol A-type epoxy compound (B)” in the PBT resin composition -- inventive composition R4 of working Examples 4-5 only uses 4.5 parts of an epoxy compound (B) with an equivalent weight of about 670-770 g/eq, while the present claims allow for a resin composition containing: (i) up to 10 parts of an epoxy compound (B); and/or (ii) 4-10 parts by weight of an epoxy compound (B) having an epoxy equivalent weight as low as 185 g/eq;
• the type(s) and amount(s) of other components (e.g., elastomers, reinforcement material, etc.) – inventive composition R4 of working Examples 4-5 contains:
• non-trivial amounts of three specific elastomers, two of which (C1, C3) contain glycidyl (i.e., epoxy) groups;
• 54 parts of glass fiber (F) surface-treated with an epoxy-type coating of reinforcement material;
while the present claims do not require these components and/or allows for any amount(s) and type(s) of other components;
• the amounts of components (A1) and (A2) and (B) in the molded article as a whole -- Working Examples 4-5 utilize molded articles wherein composition R4 constitutes the effective entirety of the molded article, while the present claims utilize the open term “comprising” with respect to the molded article as a whole (which allows for any amount of other materials in the molded article as long as the PBT resin composition is present in any non-zero amount);
• etc.
While Applicant is not required to provide evidence of unexpected results and/or criticality for every possible embodiment encompassed by the present claims, any showings of criticality and/or unexpected results provided by the specification or Applicant should be reasonably representative of the full scope of the claimed invention and/or provide sufficient evidence that can be reasonably extended by one of ordinary skill in the art over the scope of the present claims.
MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
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Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
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I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
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The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
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II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
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To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
In the present instance, the specification provides evidence of two working Example (i.e., Examples 4-5) utilizing a single resin composition (R4) containing:
• a specific amount of a single type of polybutylene terephthalate resin (A1);
• a specific amount of a single type of polyamide resin (A2);
• a specific amount of a single epoxy-containing compound (B2);
• specific amounts of two additional epoxy-containing compounds -- i.e., glycidyl-functionalized elastomers (C1 and C3);
• the additional presence of specific amounts of multiple specific types of other components -- i.e., core/shell elastomer (C2); reinforcement material (F); release agent (G); stabilizer (H); and carbon black (i).
Applicant has not provided objective evidence of comparable unexpected results and/or criticality if compositions containing different amounts and/or types of components (e.g., but not limited to: epoxy compounds (B) containing epoxy equivalent weights of less than 600 g/eq; elastomers and/or glass fiber which do not contain any epoxy-containing groups or coatings; etc.) which are encompassed by the present claims, but which are materially different in amount(s) and/or type(s) from those used in the composition R4 of working Examples 4-5, are used to form the molded resin article, especially since it is well known in the art that the use of plasma treatment generally improves adhesion to metal coatings.
In particular, since Example R4 is the only inventive example that contains C1 and C2 and C3, it is unclear whether components C1 and C2 and C3 are merely optional components or are critical for providing the relied upon unexpectedly superior metal/resin adhesion. This is particularly significant with respect to components C1 and C3, which are copolymers which contain glycidyl (i.e., epoxy) groups, especially when Applicant argues that the presence of epoxy reactive groups cause formation of “strong chemical bonds with the later deposited metal atoms to form a uniform layer.”
Similarly, since Example R4 is contains a substantial amount (i.e., 54 parts) of glass fiber (F) surface-treated with an epoxy-based coating, it is unclear whether the epoxy-surface-treated glass fiber (F) is merely an optional component or is critical for providing the relied upon unexpectedly superior metal/resin adhesion, especially when Applicant argues that the presence of epoxy reactive groups cause formation of “strong chemical bonds with the later deposited metal atoms to form a uniform layer.”
In the absence of any clear support for: (i) the amount of the PBT-based resin composition in the molded article as a whole; and (ii) the amounts of components (A), (B), (C), (D), (E), (F), (G), and (I) in the PBT-resin composition as a whole, Applicant may be required to utilize fairly restrictive language to make claim 1 reasonably commensurate in scope with the very limited showing of unexpected results provided by the Specification -- e.g., “a molded article consisting of a polybutylene terephthalate resin composition” combined with “wherein the polybutylene terephthalate resin composition comprises”:
• 100 parts by weight of resin (A), wherein resin (A) comprises:
• reasonably commensurate amount of PBT (A1), and
• reasonably commensurate amount of polyamide (A2),
• reasonably commensurate amounts of a bisphenol A-type epoxy compound (B) with a reasonably commensurate amount of epoxy equivalent;
• reasonably commensurate amount of elastomer (C) (see paragraph [0228] in Published Application US 2021/0340346), wherein elastomer (C) comprises:
• reasonably commensurate amount of glycidyl-modified elastomer (C1) (see paragraph [0183, 0191] in Published Application US 2021/0340346);
• reasonably commensurate amount of elastomer (C2) (see paragraph [0192, 0214] in Published Application US 2021/0340346);
• reasonably commensurate amount of glycidyl-modified elastomer (C3) (see paragraph [0215, 0222, 0225] in Published Application US 2021/0340346);
• reasonably commensurate amount of glass fiber (F) treated with novolac epoxy sizing agent (see paragraph [0287, 0290] in Published Application US 2021/0340346);
• reasonably commensurate amount of polyolefin-based release agent (G) (see paragraph [0301] in Published Application US 2021/0340346).
In view of: (i) the very limited showings provided by the specification; and (ii) the absence of any additional experimental data, the term “reasonably commensurate amount” in the exemplary language above, while not required to exactly match the amounts utilized in the single inventive composition R4, should be reasonably representative of the amounts of said components utilized in inventive composition R4 in order to make the claims reasonably commensurate in scope with the very limited evidence of unexpected results in the specification.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2019-098602 disclose polyester / polyamide blend compositions containing epoxy-group-functionalized compatibilizers with specific epoxy equivalent weights.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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January 10, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787