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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8-11, 13 are rejected 35 U.S.C. 103 as being unpatentable over Tamai (JP2009068005, herein Tamai, a machine translation is being used for citation purpose), in the view of Kiyoshi (JP2013237728, herein Kiyoshi, a machine translation is being used for citation purpose) and Kim (US20180187005, herein Kim).
Regarding Claims 1, 2, 3, 4, 5, Tamai teaches molded article [0001] using 100 parts by weight of (A1) a polycarbonate resin composition comprising 70% by weight (the sum of A1 and A2 being 100% by weight) of a polycarbonate resin, [Table 3; Example 3; FOR] as component (A), which lies in the claimed range.
Tamai teaches thermoplastic resin other than the polycarbonate resin (A2) used in the present invention include polyester resins [0016], wherein specific examples of aromatic polyesters include polybutylene terephthalate (PBT), [0018], wherein, the PBT A2-6 [0125] concentration is 30% [Table 4; Example 18; FOR] lies in the claimed range.
Tamai further teaches polyethylene terephthalate (PET) [0018] as component (C), wherein the range is 0 to 90% by weight (the sum of A1 and A2 being 100% by weight) of a thermoplastic resin other than polycarbonate resin, (A2) [0010], but does not explicitly teach the specific range; Tamai teaches (A2), ethylene/glycidyl methacrylate copolymers [0016] as component (E), which reads on the polyolefin-based polymer having a glycidyl group, wherein the range is 0 to 90% by weight (the sum of A1 and A2 being 100% by weight) of a thermoplastic resin other than polycarbonate resin, (A2) [0010], but does not explicitly teach the specific range. However, Kiyoshi teaches polyethylene terephthalate [0044], in the range of 10 parts by mass or less [0040] overlaps the claimed range; Kiyoshi further teaches component (B), polyolefin resins having a glycidyl group [0024], in the range of 2 to 10 mass % [0022] encompasses the claimed range. Tamai and Kiyoshi are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polycarbonate/polyester based thermoplastic resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tamai to substitute the teachings of polyethylene terephthalate [0044], in the range of 10 parts by mass or less [0040]; and component (B), polyolefin resins having a glycidyl group [0024], in the range of 2 to 10 mass % [0022] into the composition. Doing so would further achieve the predictable desired property of the composition has low gloss and excellent texture transferability [0006] as taught by Kiyoshi.
Tamai teaches methyl methacrylate-butadiene rubber-styrene copolymer [0025] as component (D), in the range of 5 to 100 parts by weight [0026], but does not teach the specific range, however, Kim teaches 5 parts by weight to about 10 parts by weight of a methyl methacrylate-butadiene-styrene copolymer [0012] overlaps the claimed range. Tamai and Kim are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polycarbonate/polyester based thermoplastic resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tamai to substitute the teachings of 5 parts by weight to about 10 parts by weight of a methyl methacrylate-butadiene-styrene copolymer [0012] into the composition. Doing so would further achieve the predictable desired property of excellent chemical resistance, impact resistance, heat resistance, and/or formability and thus may be widely applied in the production of various products regardless of painting or non-painting, for example thus may be usefully applied to an auto interior material and the like [0023] as taught by Kim.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding the gloss, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tamai, Kiyoshi and Kim teach all of the claimed ingredients, in the claimed amounts, and Tamai teaches the composition as being made by a substantially similar process as of kneaded using a twin-screw extruder [0141]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses kneaded, twin-screw extruder [Instant App. US20220356344; 0089]. Therefore, the claimed effects and physical properties, i.e. gloss, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 6, Tamai, Kiyoshi and Kim teach thermoplastic resin composition as set forth above, but Tamai is silent on the wherein the (A) polycarbonate resin has a melt flow index of 1 to 15 g/10 min. However, Kim teaches polycarbonate resin having a melt flow index of 6.0 g/10 min [0088] which lies within the claimed range. Tamai and Kim are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polycarbonate/polyester based thermoplastic resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tamai to add the teachings of Kim and provide the claimed the specification of the melt flow index of the polycarbonate resin. Doing so would further achieve the predictable desired property of excellent chemical resistance, impact resistance, heat resistance, and/or formability and thus may be widely applied in the production of various products regardless of painting or non-painting, for example thus may be usefully applied to an auto interior material and the like [0023] as taught by Kim.
Regarding Claim 8, Tamai teaches one having a core layer of a butadiene/styrene copolymer and an outermost layer of a methyl methacrylate polymer [0097].
Regarding Claim 9, Tamai teaches flame retardant [0109].
Regarding Claims 11, 13, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tamai, Kiyoshi and Kim teach all of the claimed ingredients, in the claimed amounts, and Tamai teaches the composition as being made by a substantially similar process as of kneaded using a twin-screw extruder [0141]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses kneaded, twin screw extruder [Instant App. US20220356344; 0089]. Therefore, the claimed effects and physical properties, i.e. notched Izod impact strength, styrene emission amount would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 7 is rejected 35 U.S.C. 103 as being unpatentable over Tamai (JP2009068005, herein Tamai, a machine translation is being used for citation purpose), Kiyoshi (JP2013237728, herein Kiyoshi, a machine translation is being used for citation purpose) and Kim (US20180187005, herein Kim), as applied in claim 1, and in the further view of Chang (US20150159013, herein Chang).
Regarding Claim 7, Tamai, Kiyoshi and Kim teach thermoplastic resin composition as set forth above, but Tamai does not explicitly teach the polybutylene terephthalate resin has an intrinsic viscosity of 0.7 to 1.5 dl/g. However, Chang teaches that the polyester resin may comprise one or more of polybutylene terephthalate” [0048] wherein “the polyester resin may have an intrinsic viscosity (η) of about 0.7 to about 1.4 dl/g [0049] which lies within the claimed range. Tamai and Chang are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polycarbonate/polyester thermoplastic resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tamai to add the teachings of Chang and provide wherein the polyester resin may have an intrinsic viscosity (η) of about 0.7 to about 1.4 dl/g [0049]. Doing so would further achieve the predictable desired property of resin owing to the fact that a reduction in the mechanical properties of the thermoplastic polycarbonate resin composition can be prevented, and a reduction in the flowability and formability of the composition can also be prevented. [0049] as taught by Chang.
Response to Arguments
Applicant's arguments filed 2/10/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “the cited documents do not recognize synergetic properties provided by the PC+PBT+PET ternary resin system as claimed, such as a surprising balance of high impact resistance, low VOC, and low gloss, which is a result of this unique ternary synergy”, the argument is not persuasive.
In this case, First, Tamai, Kiyoshi and Kim collectively teach all required limitation of the molded product with the composition as set forth in the rejection above, which including the PC+PBT+PET ternary resin system.
Second, in response to the applicant’s argument that “the unexpected results” is not persuasive. The data is not a direct comparison with the closest prior art. Tamai teaches (A2), ethylene/glycidyl methacrylate copolymers [0016] as component (E). However, the comparative example 1 does not use component (E), comparative example 4 does not use component (E) but uses (E’) Acrylic Particles; comparative example 5 does not use component (E) but uses (E″) Inorganic Filler [Instant App. P5; Table 1], which are all different from component (E) disclosed in Tamai, and thus are not indicative of the composition of the closest prior art. A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e).
In response to applicant's argument that “Kim directs a person of ordinary skill in the art away from using PBT in an amount within the claimed range”, the argument is not persuasive.
In the rejection applied previously and above, Kim is not being relied upon for the polybutylene terephthalate (PBT) and the range, in contrast, Kim is relied upon merely for teaching that 5 parts by weight to about 10 parts by weight of a methyl methacrylate-butadiene-styrene copolymer [0012].
Kim provides clear teaching that the methyl methacrylate-butadiene-styrene copolymer are suitable for compositions similar to those of Tamai, and therefore one having ordinary skill in the art would be motivated to substitute the methyl methacrylate-butadiene-styrene copolymer [0012] into the composition of Tamai. This motivation would not require the complete adoption of every teaching of Kim with respect to PBT, but would merely indicate to one having ordinary skill in the art that said methyl methacrylate-butadiene-styrene copolymer [0012] is suitable for the intended purpose. The incorporation therefore would have been obvious. Hence, Kim does not teach away the instant application.
Conclusion
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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