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 19, 23-26, 30, 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda (JP2008075077, herein Ueda, a machine translation is being used for citation purpose), in the view of Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose), as evidenced by Kenji (KR102128231, a machine translation is being used for citation purpose, herein Kenji).
Regarding Claims 19, 23, Ueda teaches (a) Thermoplastic resin [0014] including: polybutylene terephthalate [0014] as the component (A); polycarbonate [0014] as the component (B); Ueda further teaches polybutylene terephthalate resin and polycarbonate resin (in a weight ratio of 7:3) [0095], lies in the ratio between polybutylene terephthalate and polycarbonate, which is 100/15 to 100/100.
Ueda teaches novolac-type epoxy compounds [0052] in the range of 0.1 parts by weight or more per 100 parts by weight of the thermoplastic resin (a); the mechanical properties can be more effectively improved [0055], but Ueda does not explicitly teach the specific claimed novolac-type epoxy compound and the range as claimed, however, Yamakawa teaches a particularly preferred novolac type epoxy resin represented by the above general formula (1) is available from DIC Corporation under the trade name HP-7200H [0070] reads on novolac epoxy resin containing the glycidyl ether structure and meets the claimed specifications as evidenced by Evidence Ref: Kenji (KR102128231, a machine translation is being used for citation purpose, herein Kenji), with the structure matches the formula (1), wherein, n number from 1 to 20 overlaps the claimed n number; x is represented by the formula (2); R1 and R2 are both C6 carbon number.
PNG
media_image1.png
522
526
media_image1.png
Greyscale
Yamakawa further teaches the range of the specific claimed novolac-type epoxy compound, 0.1-5 weight part with respect to 100 weight part of said (A) polybutylene terephthalate resins [0072], overlaps the claimed range. Ueda and Yamakawa are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of utilize the novolac-type epoxy compound to improve the polybutylene terephthalate mechanical property and further apply into the electronic parts, and automotive parts manufacturing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the HP-7200H [0070] as taught by Yamakawa, into the composition preparation. Doing so would further achieve the desired property of improving the hydrolysis resistance of the insert molded article, upon 0.3 parts by weight or more is preferable blend into polybutylene terephthalate [0072] lies in the claimed range, as taught by Yamakawa, wherein, the hydrolysis acts as a degradation mechanism, breaking down the molecular chains and causing a loss of mechanical properties of the polybutylene terephthalate, hence, the utilization of the HP-7200H [0070] with the specific range will improve the mechanical property of polybutylene terephthalate, and further lead to the automobile parts, electric and electronic parts manufacturing [0085].
Regard to the endothermic peak, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Ueda and Yamakawa teach all of the claimed ingredients, in the claimed amounts, and Ueda teaches the composition as being made by a substantially similar process as of molded via twin-screw extruder; under conditions of a cylinder temperature of 260°C [0113]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. endothermic peak would necessarily arise from a composition with all the claimed ingredients and amounts. "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.
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). See MPEP § 2144.05.
Regarding Claims 24-26, Ueda teaches example 5 [FOR; P25; Table 1] glass fiber (b-1) to polybutylene terephthalate (a-1) ratio is 67/70 lies in the claimed range, wherein, the glass fiber is filler materials (D).
Regarding Claim 30, Ueda teaches crystal nucleating agents [0057].
Regarding Claim 34, Ueda teaches molded article [0001].
Regarding Claim 35, It is submitted that the limitation recited in instant claim 35 “is a transmittable material for laser welding” is intended use. Nonetheless, Ueda further teaches “molded product with excellent laser welding characteristics such as laser transmittance” [0012].
Regarding Claim 36, Ueda teaches a molded article with a thickness of 2 mm [0077], lies in the claimed range.
Claims 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over
Ueda (JP2008075077, herein Ueda, a machine translation is being used for citation purpose) and Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) as applied in claim 19 above, in the view of Kumazawa (JP2009132851, herein Kumazawa, a machine translation is being used for citation purpose), as evidenced by ADEKA data sheet.
Regarding Claims 27-29, Ueda and of Yamakawa teach the polyester resin composition as set forth in claim 19 above. Ueda does not teach the transesterification inhibitor and the range, however, Kumazawa teaches ADEKA AX-71 [0095], reads on the claimed the transesterification inhibitor, structure see below, as evidenced by [ADEKA data sheet], matches the claimed formula (4), wherein, the m=1 or 2; R6 is C18H37.
PNG
media_image2.png
195
361
media_image2.png
Greyscale
Yamakawa further teaches the ratio between AX-71/PBT=0.1/80=0.125% [FOR; P28; Table 1], lies in the claimed range. Ueda and Yamakawa are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polybutylene terephthalate and polycarbonate based composite and molded article formation, with improved mechanical properties, and laser transmittance, laser weldability properties for automotive parts, electrical and electronic components manufacturing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the ADEKA AX-71 [0095] and the range as taught by Yamakawa, into the composition preparation. Doing so would further achieve the desired property of the inclusion of AX-71 can suppresses transesterification reactions that may occur between (A) polyester resin and (B) amorphous resin [0087], which are (A) polybutylene terephthalate [0018] and (B) polycarbonate [0027], making it possible to obtain a thermoplastic resin composition with particularly excellent fluidity [0087] and further lead to excellent mechanical properties, laser transmittance, laser weldability, recyclability, hydrolysis resistance, or dry heat resistance [0088] and further lead to the automotive parts, electrical and electronic components manufacturing [0102] as taught by Yamakawa.
Claims 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over
Ueda (JP2008075077, herein Ueda, a machine translation is being used for citation purpose) and Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) as applied in claim 30 above, in the view of Sakata (US20090324977, herein Sakata).
Regarding Claims 31-32, Ueda and Yamakawa teach the polyester resin composition as set forth in claim 30 above. Ueda teaches crystal nucleating agents [0057], but does not teach the specific nucleating agents and the range. However, Sakata teaches inorganic nucleating agent, silica [0075], the proportion of the nucleating agent relative to 100 parts by weight of the polybutylene terephthalate-series resin (A) may be about 0.001 to 5 parts by weight [0076], overlaps the claimed range. Ueda and Sakata are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of utilize the nucleating agent to the polybutylene terephthalate and polycarbonate-based composite with advanced mechanical properties, laser transmittance, laser weldability for electric device part, and automotive part manufacturing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the inorganic nucleating agent, silica [0075], the proportion of the nucleating agent relative to 100 parts by weight of the polybutylene terephthalate-series resin (A) may be about 0.001 to 5 parts by weight [0076], as taught by Sakata, and apply into the composition preparation. Doing so would further lead to high moldability and can produce a molded article having a high mechanical strength [0077], as taught by Sakata, wherein, the specific nucleating agents and the range can enhance the crystallization process, lead to the improved mechanical strength and further application in the electric device part, and automotive part manufacturing [0087].
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). See MPEP § 2144.05.
Claim 33 rejected under 35 U.S.C. 103 as being unpatentable over
Ueda (JP2008075077, herein Ueda, a machine translation is being used for citation purpose) and Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) as applied in claim 19 above, in the view of Yasushi (JP2016216530, herein Yasushi, a machine translation is being used for citation purpose).
Regarding Claim 33, Ueda and Yamakawa teach the polyester resin composition as set forth in claim 19 above. Ueda teaches twin-screw extruder; under the conditions of cylinder temperature 280°C [0098] indicates the molding temperature and matches the claimed temperature, but does not explicitly teach the mold temperature of 80° C; to prepare a molded sheet with a thickness of 1 mm. However, Yasushi teaches in the case of polybutylene terephthalate resin, injection molding at 250 to 280°C; and the mold temperature is 50 to 100°C [0118], the thickness of the laser light transmission area 0.3 to 1.5 mm [0123], overlap the claimed ranges.
Ueda and Yasushi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polybutylene terephthalate and polycarbonate-based composite for laser welded article manufacturing including automotive components, electrical components. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the mold temperature is 50 to 100°C [0118], the thickness of the laser light transmission area 0.3 to 1.5 mm [0123] as taught by Yasushi toward laser molded article formation. Doing so would further achieve the excellent transmittance of the molded article, which is affected by the thickness of the laser-welded area, and the injection molding conditions [0122] as taught by Yasushi.
Regarding the transmittance, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Ueda and Yamakawa collectively teach all of the claimed ingredients, in the claimed amounts, and Yasushi further teaches the composition as being made by a substantially similar process as of injection molding at 250 to 280°C; and the mold temperature is 50 to 100°C [0118], the thickness of the laser light transmission area 0.3 to 1.5 mm [0123]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. transmittance would necessarily arise from a composition with all the claimed ingredients and amounts. "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 37 rejected under 35 U.S.C. 103 as being unpatentable over
Ueda (JP2008075077, herein Ueda, a machine translation is being used for citation purpose) and Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) as applied in claim 30 above, in the view of Masaru (JP2015058690, herein Masaru, a machine translation is being used for citation purpose).
Regarding Claim 37, Ueda and Yamakawa teach the polyester resin composition as set forth in claim 30 above. Ueda teaches crystal nucleating agents [0057], but does not explicitly teach wherein the nucleating agent (F) is an aliphatic carboxylic acid amide. However, Masaru teaches organic nucleating agents, ethylenebis-12-hydroxystearate amide [0017], which is aliphatic carboxylic acid amide. Ueda and Masaru are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of utilize the nucleating agent to the polybutylene terephthalate and polycarbonate-based composite with advanced heat resistance properties. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the organic nucleating agents, ethylenebis-12-hydroxystearate amide [0017], as taught by Masaru, and apply into the composition preparation. Doing so would further lead to desired crystallization rate, heat resistance, temperature sensitivity, and transparency [0017] owing to the selection of the specific nucleating agent, as taught by Sakata.
Response to Arguments
Applicant’s arguments with respect to claim(s) 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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.
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, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights