DETAILED ACTION
Claim Status
Claim(s) 1-20 is/are pending.
Claim(s) 1-20 is/are rejected.
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.
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.
Claim(s) 2 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. #.
The disclosure as originally filed provides support for “at least one of the reactive monomers is a reactive diluent monomer that is dissolved in the unsaturated and/or saturated polyester resins”, but does not provide support for unsaturated and/or saturated polyester resins generally “comprises” (e.g., merely mixed with a polyester resin in a non-dissolved state).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (A) limited ranges of BMC compositions; does not reasonably provide enablement for the entire recited compositional range of BMC compositions as a whole. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make:
the recited BMC compositions exhibiting the recited properties (after curing) (claims 1-20):
(a) tensile strength; and
(b) flexural strength; and
(c) notched Izod impact strength;
and optionally said BMC compositions with the additional recited properties (after curing) (claims 1-10):
(d) plasticity;
and optionally a cured article made from said BMC compositions with the additional recited properties (after curing) (claim 8-12):
(e) gloss; and
(f) linear shrinkage;
and optionally a cured headlamp housing made from said BMC compositions with the additional recited properties (claim 13-20):
(g) flexural strength; and
(h) linear shrinkage; and
(i) gloss; and
(j) reflectance;
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
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(B) The nature of the invention;
(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A), the claims are relatively broad -- for example, but not limited to:
• Claims 1-3, 6-20 do not contain any limitations on the minimum amount of the curing package b), as long as the curing package b) is present in a non-zero amount;
• Claims 1-4, 6-20 does not contain any limitations on the minimum amounts of components i)-iii) in the curing package b), as long as components i)-iii) is present in the curing packaging b) in a non-zero amount;
• Claims 1-20 allow for substantial amounts (up to ~42 wt%) of other components and do not contain any limitations on the type(s) and amount(s) of these other components (e.g., polymeric components such as other polyester or non-polyester resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) which can be present in the BMC compositions as a whole and cured articles made therefrom as a whole as long as components a)-c) and i) to iii)are present in the recited minimal individual and combined amounts;
With respect to Wand factor (B), the specification and Applicant states that prior art BMC composition have significant difficulty in forming molded articles having properties (i.e., tensile strength; flexural strength; notched Izod impact strength; etc.) for automative applications with high reflectivity requirements.
With respect to Wand factors (C)-(E), the prior art does not specifically disclose or teach the production of cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20).
With respect to Wand factors (F)-(G), the disclosure as originally filed only discloses very limited ranges of: cured BMC compositions as a whole; and cured article compositions as a whole; or cured headlamp housings as a whole; which exhibit the recited properties (a)-(c), optionally properties (d), optionally properties (e)-(f), and/or optionally properties (g)-(j).
With respect to Wand factor (H), the Specification only provides a single working Example 1 of a BMC composition which (upon curing) produces an article which explicitly satisfies recited properties (a)-(c). While the Specification states that that “Compositions 2-8 had similar strength and shrinkage properties as Composition 1, and met or exceeded the requirements from the automotive manufacturer”, the Specification fails to adequately define what constitutes “similar strength and shrinkage properties” (e.g., what degree of difference is deemed to be adequately “similar”; etc.). Furthermore, the Specification fails to provide clear objective evidence that the Compositions 2-8 in the Specification exhibit the recited physical properties within the recited closed range (i.e., between the recited lower limit and the recited upper limit) of recited properties (a)-(c), and optionally properties (d), optionally properties (e)-(f), and/or optionally properties (g)-(j).
Since the composition of a BMC composition (after curing) would materially(and possibly unpredictably) affect the recited properties (a)-(c) and additionally would materially (and possibly unpredictably) affect the recited properties (e)-(f), and/or properties (g)-(j) of cured articles made from said BMC compositions, it is the Examiner’s position that undue experimentation would be required to produce cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20) using BMC compositions which fully conform to the recited limitations, but are materially different from the compositions in the working Examples in the Specification -- for example, but not limited to:
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(1) the type of polyester resin system a) (claims 1-10) or a)-i) (claims 11-20) -- e.g., but not limited to:
-- the type of unsaturated polyester resin;
-- the type of saturated polyester resin;
-- the type(s) of reactive diluent monomer(s);
-- the type(s) and/or amount(s) of added reactive diluent monomer(s);
(2) the total amount(s) of the curing package b) (claims 1-10) or ii) (claims 11-20);
.
(3) the type(s) and amount(s) of the individual three components (i.e., i) inhibitor; ii) initiator; iii) accelerator) in the curing package b) (claims 1-20) -- e.g., but not limited to:
-- the amount(s) of para-benzoquinone;
-- the amount(s) of di(tert-butylperoxyisopropyl)benzene;
-- the amount(s) of cobaltic acetylacetonate; etc.
(4) the type(s) and amount(s) of individual components in the additive package c) (claims 1-10) or iii) (claims 11-20) -- e.g., but not limited to:
-- the type(s) and amount(s) of moisture absorbing components;
-- the type(s) and amount(s) of particle fillers;
-- the type(s) and amount(s) of reinforcing glass fiber fillers; etc.
The present claims use the open term “comprising” with respect to the BMC composition, which allows for substantial amounts (i.e., up to ~42 wt%) of other components (e.g., polymeric components such as other polyester or non-polyester resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.):
• as long as components a) to c) are present in the BMC compositions of claims 1-10 in the required minimal individual and combined amounts;
• as long as components a)-i) to a)-iii) are present in the BMC compositions of claims 11-20 in the required minimal individual and combined amounts.
However, the Specification only provides a single BMC composition (Composition 1) which objectively exhibits (when cured) the recited above physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20):
• wherein the recited components a)-c) (claims 1-10) or i)-iii) (claims 11-20) constitute the effective entirety of the BMC composition;
• particularly when for Compositions 2-8, the Specification fails to contain objective quantitative data for recited physical properties (a)-(c), and optionally properties (d), optionally properties (e)-(f), and/or optionally properties (g)-(j) -- i.e., it is unclear whether Compositions 2-8 in the Specification fully meet all required physical properties in individual claims.
Additionally, even assuming that Compositions 2-8 fully satisfy all physical properties required in a given individual claims, Compositions 2-8 share substantial similarities to Composition 1 -- for example:
• Compositions 2, 4-8 in the Specification utilize a polyester resin system a) or i) in types and amounts which are substantially similar to those utilized in Composition 1;
• Composition 3 in the Specification utilize a polyester resin system a) or i) in types and amounts which are substantially similar to those utilized in Composition 1, except for the type of reactive diluent monomer;
• Compositions 2-8 in the Specification utilize a curing package b) or ii) in types and amounts which are substantially similar to those utilized in Composition 1;
• Compositions 2-8 in the Specification utilize an additive package c) or iii) (i.e., molecular sieve as moisture control additive; fillers A and B and C; fibers A and B) in types and amounts which are substantially similar to those utilized in Composition 1.
The Examiner has reason to believe that the composition of the BMC composition as a whole would materially affects the mechanical and surface properties of the cured BMC composition and cured articles made from said BMC compositions since it is well-recognized in the art that: (1) the chemical and molecular structure of the polyester resins used; (2) the degree of curing (as affected by the types and amounts of cure-related agents); and/or (3) the types and amounts of non-polymeric components (as affected by the types and amounts of fillers and reinforcing agents); can materially -- and sometimes unpredictably -- affect the mechanical properties and/or flow characteristics of a cured polyester molding composition -- in particular:
• the Examiner has reason to believe that the BMC composition needs to contain a minimum total amount of curing package b) (claims 1-10) or ii) (claims 11-20) in order to produce cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20) and optionally the above additional properties (d) (claims 1-10), and additional properties (e)-(f) (claims 8-12), and additional properties (g)-(j) (claims 13-20) -- in contrast, the present claims permit any non-zero amount (which includes very low amounts such as 0.05 wt% or 0.01 wt% or 0.005 wt%, etc.);
• the Examiner has reason to believe that the BMC composition needs to contain minimum individual amounts of the three components (i.e., inhibitor; initiator; accelerator) in curing package b) (claims 1-10) or ii) (claims 11-20) in order to produce cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20) and optionally the above additional properties (d) (claims 1-10), and additional properties (e)-(f) (claims 8-12), and additional properties (g)-(j) (claims 13-20) -- in contrast, the present claims permit any non-zero individual amounts of inhibitor, initiator, or accelerator (which includes very low amounts such as 0.05 wt% or 0.01 wt% or 0.005 wt%, etc.).
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20), without undue experimentation using BMC compositions which are materially different from those used in the working Examples (specifically Composition 1).
For example, but not limited to, different BMC compositions which materially differ from Composition 1 in the Specification include:
• curing package b) (claims 1-10) or ii) (claims 11-20) in amounts greater than (e.g., 0.6 wt% or 0.7 wt% or 0.9 wt% or 1.1 wt%, etc.) or less than (e.g., 0.3 wt% or 0.2 wt% or 0.1 wt% or 0.05 wt%) the 0.43 wt% used in Composition 1 in the Specification;
• para-benzoquinone (inhibitor) in amounts greater than (e.g., 0.15 wt% or 0.20 wt% or 0.5 wt%, etc.) or less than (e.g., 0.05 wt% or 0.01 wt% or 0.001 wt%, etc.) the 0.08 wt% used in Composition 1 in the Specification;
• di(tert-butylperoxyisopropyl)benzene (initiator) in amounts greater than (e.g., 0.2 wt% or 0.4 wt% or 0.5 wt% or 1 wt%, etc.) or less than (e.g., 0.10 wt% or 0.05 wt% or 0.01 wt%, etc.) the 0.15 wt% used in Composition 1 in the Specification;
• cobaltic acetylacetonate (accelerator) in amounts greater than (e.g., 0.3 wt% or 0.4 wt% or 0.5 wt% or 1 wt%, etc.) or less than (e.g., 0.15 wt% or 0.10 wt% or 0.05 wt% or 0.01 wt%, etc.) the 0.20 wt% used in Composition 1 in the Specification;
• other types of unsaturated polyesters (e.g., terephthalic acid-based; cyclohexane dicarboxylic acid-based; naphthalene dicarboxylic acid-based; aliphatic acid-based; ethylene glycol-based; neopentyl glycol-based; etc.) different from the isophthalate-based unsaturated Resin A or Resin C used in Compositions 1-8 in the Specification;
• other types of saturated polyesters (e.g., aromatic dicarboxylic acid-based such as terephthalic acid-based or naphthalene dicarboxylic acid-based; based on glycols different from the glycol mixture used in Resin B or Resin D in the Specification; etc.) different from the adipic acid-based saturated Resin B or Resin D used in Compositions 1-8 in the Specification;
• different types of reactive monomers (e.g., (meth)acrylate; vinyl acetate; unsaturated diacrylates; etc.) other than divinylbenzene used in Compositions 1-8 in the Specification;
• different types of reactive diluent monomers other than the vinyl toluene or styrene used in Compositions 1-8 in the Specification;
• different amounts of reactive diluent monomer which are greater than or lesser than the ~7-8 wt% used in Composition 1 in the Specification;
• different amounts and/or types of additive package c) (claims 1-10) or iii) (claims 11-20);
• other types of moisture control additive (e.g., activated charcoal, silica gel, etc.) in different amounts greater than or less than the 0.2 wt% of molecular sieve used in Composition 1 in the Specification;
• other types of fillers (e.g., silica, aluminum oxide, titanium oxide, clay, etc.) in different combined and individual amounts greater than or less than the combined and individual amounts of Particles A-C used in Composition 1 in the Specification;
• only one, only two, or more than three different types of fillers;
• glass fiber in different combined amounts greater than or less than the combined amount of 13 wt% used in Composition 1;
• etc.;
.
• non-trivial amounts (e.g., up to ~42 wt%) of other components (e.g., other polymeric components such as other polyester or non-polyester saturated or unsaturated resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.);
• etc.
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In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20), over the entire scope of the present claims without undue experimentation, particularly in view of the very limited number of working Examples (i.e., Composition 1 only) in the Specification which provide objective quantitative evidence of fully satisfying the recited physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20) -- i.e., the Specification fails to provide objective quantitative evidence that the Compositions 2-8 in the Specification also exhibit physical properties which fully satisfy: (1) the recited closed range (i.e., between the recited lower limit and the recited upper limit) of recited properties (a)-(c), and optionally properties (d), and optionally properties (f) or (h); and (2) the recited open-ended range for optional properties (e), (g), (i)-(j).
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(s) 1-20 is/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 pre-AIA the applicant regards as the invention.
Claims 1, 11, 13 are vague and indefinite because it is unclear whether the phrase “wherein a cured BMC composition has…” refers to: (i) the previously recited BMC composition; or (ii) a different, unspecified BMC composition. For the purposes of the present Office Action, the phrase “wherein a cured BMC composition has…” has treated as referring to the previously recited BMC composition.
Claims 2-10, 12, 14-20 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 rejections under 35 U.S.C. 103 based on EP 790115 (WEBER-EP ‘115) in the previous Office Action mailed 11/19/2024 have been withdrawn in view of the Claim Amendments filed 02/19/2025.
Response to Arguments
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that the Claim Amendments filed 10/15/2025 “as supported by the specification would not require the skilled artisan to engage in undue experimentation to make or use the invention.” However, while the Claim Amendments filed 10/15/2025 resolve several major issues with respect to scope of enablement, numerous other issues still remain as discussed in detail in the present Office Action.
In particular, the use of the phrase “greater than 0 wt. %” with respect to the amount of curing package b) (claims 1-10) or curing package ii) (claims 11-20) encompasses very low amounts which approach, but still fully satisfy the “greater than 0 wt. %” limitation in the claims (e.g., 0.03 wt% or 0.02 wt% or 0.01 wt% or 0.005 wt% or 0.001 wt%, etc.). Since the Examiner has reason to believe that the degree of cure significantly affects at least one or more of the recited physical properties (a)-(e), and optionally (d), the disclosure as originally filed has not provided adequate guidance or direction of experimentation with respect to how to produce cured BMC compositions which exhibit the recited above physical properties (a)-(c) (claim 1-20), and optionally the above additional property (d) (claims 1-10), and cured articles made from said BMC compositions with the above additional recited properties (e)-(f) (claims 8-12) or with the additional recited properties (g)-(j) (claims 13-20), utilizing curing packages and curing package components (i.e., inhibitor; initiator; accelerator) in such very low amounts, especially in view of the very limited number of working Examples (i.e., Composition 1) with objective numerical evidence of fully satisfying the recited combination of multiple physical properties.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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February 20, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787