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.
Claims 1-3, 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fushimi (US20210207326, herein Fushimi), in the view of Furuya (JP2003045080, herein Furuya, a machine translation is being used for citation purpose) and Nakae (JP2006008776, herein Nakae, a machine translation is being used for citation purpose).
Regarding Claims 1-3, 5, 7, Fushimi teaches polycarbonate resin composition [0174] comprising: 15 parts by mass of a special polycarbonate resin [0174] as compound (A); 2.25 parts by mass of an isocyanurate compound [0174] as compound (B), and obtain the mixture [0174], therefore, the compound (B) fraction is 2.25/(15+2.25)=13.04%, lies in the claimed range; polyisocyanate include isoboron diisocyanate (IPDI) [0039] which indicates the two isocyanate groups per molecular.
Fushimi does not explicitly teach the structure of polycarbonate resin (A), however, Furuya teaches “polycarbonate resin” [0045] reads on the claimed polycarbonate resin (A), as evidenced by CAS Registry Number: 496041-01-1 [Scifinder], structure see below, which is formed by using “2,2-bis(4-hydroxy-3-methylphenyl)propane; p-tert-butylphenol” [0200], including: R1 and R2 are each independently a C1 methyl groups, and n=1; X represent by formula (4), with the R18, R19 are each methyl group and C=1; terminal structure represented by General formula (2) with R3 each independently represent a C4 alkyl group and m=1.
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Fushimi and Furuya are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the polycarbonate-based coating composition formation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the specific “polycarbonate resin” [0045] into the composition formation. Doing so would lead to the desired property of “transparent protective layer is made of a material that transmits laser light, and examples of such materials include thermoplastic resins such as polycarbonate resins” [0036] as taught by Furuya.
Fushimi does not explicitly teach the claimed viscosity average molecular weight (Mv) of the polycarbonate resin. However, Nakae teaches “polycarbonate resin has a viscosity average molecular weight of 13,000 to 35,000” [0009] lies in the claimed range. Fushimi and Nakae are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the polycarbonate-based coating composition formation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the “polycarbonate resin has a viscosity average molecular weight of 13,000 to 35,000” [0009] into the composition formation. Doing so would lead to the desired property of polycarbonate resin molded article having a coating layer which has high hardness and excellent adhesion, and more specifically to a polycarbonate resin molded article having a high hardness [0001] as taught by Nakae.
Regarding Claim 6, Fushimi does not explicitly teach the claimed viscosity average molecular weight (Mv) of the polycarbonate resin. However, Nakae teaches “polycarbonate resin has a viscosity average molecular weight of 15,000 to 25,000” [0009] lies in the claimed range. Fushimi and Nakae are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the polycarbonate-based coating composition formation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the “polycarbonate resin has a viscosity average molecular weight of 13,000 to 35,000” [0009] into the composition formation. Doing so would lead to the desired property of polycarbonate resin molded article having a coating layer which has high hardness and excellent adhesion, and more specifically to a polycarbonate resin molded article having a high hardness [0001] as taught by Nakae.
Regarding Claim 8, Fushimi teaches polyisocyanate include isoboron diisocyanate (IPDI) [0039], but does not teach the specific diisocyanate, however, Nakae teaches hexamethylene diisocyanate [0064]. Fushimi and Nakae are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the polycarbonate-based coating composition formation. 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 hexamethylene diisocyanate [0064] into the composition formation. Doing so would lead to the desired property of polycarbonate resin molded article having a coating layer which has high hardness and excellent adhesion, and more specifically to a polycarbonate resin molded article having a high hardness [0001] as taught by Nakae.
Regarding Claims 9-14, Fushimi teaches polycarbonate resin with enhanced solvent solubility with methyl ethyl ketone [0174] matches the organic solvent and collectively read on the binder resin solution; Fushimi further teaches the obtained mixture was applied onto one surface of the fiber layer, using a bar coater [0174] and coat to the surface of fiber layer [0174] as substrate film, wherein, resin layer was laminated on both surfaces of the fiber layer [0174] indicates the polycarbonate composition laminated/coated onto the film.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fushimi (US20210207326, herein Fushimi), Furuya (JP2003045080, herein Furuya, a machine translation is being used for citation purpose) and Nakae (JP2006008776, herein Nakae, a machine translation is being used for citation purpose) as applied in cliam1 set forth above, in the view of Ogawa (US20190359847, herein Ogawa).
Regarding Claim 4, Fushimi, Furuya and Nakae teach the polycarbonate resin composition as set forth in claim 1 above, Fushimi does not explicitly teach the wherein the structural unit represented by General formula (1) above is contained in an amount of not less than 40 mol % relative to the number of moles of all structural units contained in the polycarbonate resin (A), however, Ogawa teaches the 102.4 g (0.4 mol) of 2,2-bis(4-hydroxy-3-methylphenyl-)propane (hereinafter, simply referred to as “BPC” [0076] matches the formula (1), wherein, R1 and R2 are each independently a C1 methyl groups, and n=1; X represent by formula (4), with the R18, R19 are each methyl group and C=1;, and 1.5 g of p-t-butylphenol (hereinafter, simply referred to as “PTBP” [0078], hence the mole of PTBP is 1.5/150.22=0.01 mol, wherein, the BPC (left) [2,2-Bis(4-hydroxy-3-methylphenyl)propane 97 79-97-0]; PTBP (right) [4-tert-Butylphenol 99 98-54-4] are the two components of the polycarbonate resin (A), structures see below:
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Therefore, the mole fraction of BPC is 0.4mol/(0.4mol+1.5/150.22mol)=97.56%, lies in the claimed range. Fushimi and Ogawa are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the polycarbonate-based coating composition formation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the 102.4 g (0.4 mol) of 2,2-bis(4-hydroxy-3-methylphenyl-)propane (hereinafter, simply referred to as “BPC” [0076], and 1.5 g of p-t-butylphenol (hereinafter, simply referred to as “PTBP” [0078] into the composition formation process. Doing so would lead to the desired property of polycarbonate resin having a specific structural unit has good solubility in an organic solvent, has excellent transparency, has moderate hardness and adhesion to metal after drying, and capable of forming a coating film which can serve as a strong protective film that can also easily be peeled off [0007] as taught by Ogawa.
Response to Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Nakae is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, first, Fushimi, Furuya and Nakae collectively teach the polycarbonate resin composition as set forth in the rejection above. The Furuya teaches the specifically claimed structure of polycarbonate resin (A) as of “polycarbonate resin” [0045] reads on the claimed polycarbonate resin (A), as evidenced by CAS Registry Number: 496041-01-1 [Scifinder] as set forth in the rejection above.
Second, Fushimi teaches the selection of the special polycarbonate resin (Yupizeta 2136, manufactured by MITSUBISHI GAS CHEMICAL COMPANY, INC.) [0174], as evidenced by CAS Registry Number: 30527-02-7 [Scifinder], structure see below, with phenolic hydroxyl groups, which lead to the resin lamination layer formation to substrate, via using a bar coater, and was then hardened by being heated at 100° C. for 1 hour to form a resin layer [0174] with desired mechanical strength [0167].
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Third, Nakae not only attribute the polycarbonate's beneficial properties to the phenolic terminal groups as applicant pointed out, but also explicitly teaches aromatic polycarbonate resin having a terminal phenolic hydroxyl group of the desired molecular weight [0033], and the molecular weight of the aromatic polycarbonate resin produced can be easily controlled, the molecular weight does not increase, and components insoluble in inert organic solvents are not produced [0033], which indicates the molecular weight of the aromatic polycarbonate resin can lead to desired solubility, further lead to the coating layer with roll coating, cured at temperature 80 to 130°C, [0043], and thickness 0.5 to 30 μm [0043] lead to the desired hardness [0001] and the polycarbonate resin molded article with transparency [0007], can further apply toward residential windows, show windows, vehicle windows, vehicle windshields [0044] as taught by Nakae, can meet the coating resin apply to IC cards and security cards [Instant app. US20220289905; 0216], indicates transparent coating, with thickness of in a range of 5-200 μm [Instant app. US20220289905; 0149], hence, the desired molecular weight of polycarbonate can impact the thermal processing and curing temperature, which further lead to the formation of product with the specific thickness, with the desired hardness and transparency of the molded polycarbonate resin.
Lastly, the instant application specification explicitly teaches the polycarbonate resin (A) has the terminal structure represented by Structural formula (2) may be derived from either p-tert-butylphenol (PTBP) or p-hydroxyphenethyl alcohol (PHEP) [Instant App. US20220289905; 0107-108], which does not exclude the polycarbonate with phenolic hydroxyl groups.
Hence, Nakae does not teach away the instant application specification.
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, Fushimi not only teaches the laminate has cellulose fiber layer as applicant pointed out, but also explicitly teaches the polycarbonate resin composition [0174] including polycarbonate resin [0174] as compound (A); isocyanurate compound [0174] as compound (B), lead to the lamination formation via bar coater, and was then hardened by being heated at 100° C. for 1 hour to form a resin layer [0174], with thickness 20 μm or more [0028] and the desired mechanical strength and transparency [0167], with application to window materials of various types of vehicles or buildings, interior materials, exterior materials [0167]. As analogous art, Furuya not only teaches the optical recording medium as applicant pointed out, but also expressly teaches the specific “polycarbonate resin” [0045] meet the claim 1 and further laminating this polycarbonate resin composition as transparent layer onto substrate such as glass plate [0037], with thickness 3-200 μm [0037], indicates transparent coating; as another analogous art, Nakae teaches the polycarbonate with desired molecular weight, which lead to the to the coating layer with bar coating, roll coating, cured at temperature 80 to 130°C, form the laminate [0043], with thickness 0.5 to 30 μm [0043] and further apply the polycarbonate resin molded article with transparency [0007] toward residential windows, show windows, vehicle windows, vehicle windshields [0044].
Hence, Fushimi, Furuya and Nakae collectively teach the polycarbonate resin composition, and lead to the coating application with transparency, can meet coating resin apply to IC cards and security cards [Instant app. US20220289905; 0216], with transparent coating, thickness of in a range of 5-200 μm [Instant app. US20220289905; 0149].
Therefore, none of Fushimi, Furuya or Nakae teaches away the instant application.
With regard to the “excellent effects”, the argument is not persuasive.
In fact, when Examples 1-9 and Comp. Examples 1-6 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to the content of wherein the polyisocyanate compound (B) is contained in an amount of not less than 0.1% by mass and not more than 30% by mass relative to the total mass of the polycarbonate resin (A) and the polyisocyanate composition (B). However, Examples 1-5, 7; Comp. Examples 3, 5, 6 only have the single polyisocyanate concentration value, namely 10% [Instant app. US20220289905; Table 1; Page 12]. Hence, The Examples 1-5, 7; Comp. Examples 3, 5, 6 are therefore insufficient 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).
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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