DETAILED ACTION
Examiner Note: This is action is based upon the response after final action dated 6/3/2026. The new ground of rejection under 35 U.S.C. 112(d) was not necessitated by an amendment to the claims. The present Office action is therefore made non-final.
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 .
Response to Amendment
The amended claims 19, 23-32, 34-37 filed on 6/3/2026 have been entered and considered, the amended claim(s) 19 has been rejected below, with the same ground of rejection of the dependent claim 33 in the final rejection mailed on 4/15/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In this case, the claim 23 states wherein the content of the epoxy resin (C) is 0.05 to 3 parts by mass with respect to 100 parts by mass of the polybutylene terephthalate resin (A), fails to further limit its dependent claim 19, which states (A)100 parts by mass of the polybutylene terephthalate resin and (C) 0.05 to 3.0 parts by mass of a novolac epoxy resin containing the glycidyl ether structure of formula (1).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) and Yasushi (JP2016216530, herein Yasushi, 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.
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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.
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.
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), Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) and Yasushi (JP2016216530, herein Yasushi, 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, Yamakawa and Yasushi 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.
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Kumazawa further teaches the ratio between AX-71/PBT=0.1/80=0.125% [FOR; P28; Table 1], lies in the claimed range. Ueda and Kumazawa 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 Kumazawa, 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 Kumazawa.
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), Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) and Yasushi (JP2016216530, herein Yasushi, 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, Yamakawa and Yasushi 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 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), Yamakawa (JP2018123215, herein Yamakawa, a machine translation is being used for citation purpose) and Yasushi (JP2016216530, herein Yasushi, 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, Yamakawa and Yasushi 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 filed 6/3/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, first, Ueda teaches the composition for molded articles of electrical and electronic components [0083] with (a) thermoplastic resin [0014] including: polybutylene terephthalate [0014] as the component (A); polycarbonate [0014] as the component (B); 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], as analogous art, Yamakawa teaches a particularly preferred novolac type epoxy resin under the trade name HP-7200H [0070] reads on novolac epoxy resin containing the glycidyl ether structure, to improve the mechanical property of polybutylene terephthalate, and further lead to 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] toward the automobile parts, electric and electronic parts manufacturing [0085], 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], the teachings of Ueda and Yamakawa can collectively meet the polyester resin composition can be used in various automotive electrical mounting components (various control units, various sensors, and the like), connectors, switch components, relay components [Instant App. US20220275199; 0032], wherein, the specific novolac type epoxy resin is to improve the compatibility effect among the components [Instant App. US20220275199; 0055], by improving compatibility, can lead to the molded article’s stability, and mechanical strength.
Second, Yamakawa is not being relied upon for the limitations of amorphous resin, in contrast, Yamakawa is relied upon merely for teaching that 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 as claimed. Yamakawa provides clear teaching that the specific novolac type epoxy resin is suitable for composition similar to those of Ueda comprising polybutylene terephthalate for molded articles of electrical and electronic components manufacturing, and therefore one having ordinary skill in the art would be motivated to substitute the HP-7200H [0070] as taught by Yamakawa into the composition of Ueda. This motivation would not require the complete adoption of every teaching of Yamakawa with respect to the limitations of amorphous polyester, but would merely indicate to one having ordinary skill in the art that said specific novolac type epoxy resin is suitable for the intended purpose. The incorporation therefore would have been obvious. Hence, Yamakawa does not teach away the instant application.
In response to applicant's argument that “This inherency theory fails because the prior art does not teach the specific three-component system of the claimed invention -- (A) PBT, (B) amorphous resin, and (C) novolac epoxy resin of formula (1) -- in the claimed amounts”, the argument is not persuasive.
In this case, First, 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]. Hence, Ueda, Yamakawa and Yasushi collectively teach all required limitation of the molded product with the composition as set forth in the rejection above, which including the PC+PBT+ novolac epoxy resin of the specific three-component system as applicant pointed out can further lead to the claimed transmittance as set forth in the rejection above.
Second, regard to the “excellent effects”, the argument is not persuasive. In fact, when Examples 1-7 and Comp. Examples 1-10 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 32 is open to wherein the content of the nucleating agent (F) is 0.05 to 5 parts by mass with respect to 100 parts by mass of the polybutylene terephthalate resin (A). However, Examples 1, 2, 4, 6; Comp. Examples 4, 5, 7, 8 only have one single nucleating agent concentration value, namely 0.446 parts by mass [Instant app. US20220275199; Table 2; Page 9-10]. Furthermore, Examples 4, 6; Comp. Examples 9, 10 only have one single nucleating agent concentration value, namely 0.476 parts by pass [Instant app. US20220275199; Table 2; Page 9-10]. These examples employ a limited range of materials that are not reasonably commensurate with the claimed range of nucleating agent (F). These examples are therefore insufficient to establish non-obviousness.
Moreover, Examples 3 and 7, Comp. Examples 1-3, 6 do not use nucleating agent, which indicate 0 parts by mass. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Whether 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. See MPEP 716.02(d).
In response to applicant's argument that “the FINAL designation may not be appropriate under MPEP § 706.07(a)”, the argument is not persuasive.
Nevertheless, the finality of the previous Office action is withdrawn as Applicant’s amendment did not necessitate the new ground of rejection under 35 U.S.C. 112(d). see MPEP 706.07(a).
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
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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