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 .
This communication is responsive to the claims filed 07/06/2026. Claims 1-50 are pending. The elected claims 1-16 are under consideration in this Office Action. The non-elected claims 17-50 are withdrawn.
The 35 USC 112 (d) rejection dated 04/06/2026 at para. 8 is WIHTDRAWN due to Applicant’s amendments.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 07/06/2026. In particular, claim 1 has been amended from repeating units derived from naphthenic hydroxycarboxylic and/or naphthenic dicarboxylic acids to repeating units derived from 6-hydroxy-a-naphthoic acid. Thus, the following action is properly made final.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Claim Rejections - 35 USC§ 103
6. Claims 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al.
(US2019/0169427 Al).
Regarding Claim 1, the instant claim 1 claims:
A polymer composition comprising,
from about 50 wt.% to about 90 wt.% of a polymer matrix
from about 10 wt.% to about 40 wt.% of inorganic filler particles; and
from about 0.1 wt.% to about 10 wt.% of an impact modifier.
Kim teaches a polymer composition comprising 20 wt.% to about 70 wt.% of polymers ([0015]), inorganic filler from about 10 wt.% to about 70 wt.% ([0044]), and impact modifier from about 0.1 wt.% to about 10 wt.% ([0048]). The wt.% ranges of polymers, inorganic filler and impact modifier encompass or the same as ranges of the claimed components, respectively.
The instant claim 1 further claims:
The polymer includes a liquid crystalline polymer containing,
hydroxycarboxylic acid repeating units constitute about 70 mol.% or more,
repeating units derived from 6 hydroxy-2-naphthoic acid (HNA) in an amount from about 10 mol.% to about 30 mol.% of the polymer,
repeating units derived from aromatic dicarboxylic acids in an amount of from 0 mol.% to about 5 mol.% of the polymer.
6-hydroxy-2-naphthoic acid (HNA) is a species of hydroxycarboxylic acid. The instant claim does not claim hydroxycarboxylic acid repeating units excluding repeating units derived from HNA, therefore, the claim is interpreted that the hydroxycarboxylic acid repeating units include units derived from HNA.
Kim further teaches the polymers include liquid crystalline polymers (LCP) ([0021]). Kim para. [0026-0029] teach the constitution of repeating units of the LCP polymers. Kim teaches that the LCP polymers typically contain about 10 mol. % to about 85 mol. % repeating units derived from hydroxycarboxylic acid ([0026]), overlapping the claimed 70 mol% or more. Kim further teaches that the LCP constitutes repeating units derived from HNA about 1 mol% to about 35 mol% ([0029]), overlapping the claimed 10 mol% to 30 mol%. Kim furthermore teaches that the LCP constitutes repeating units derived from aromatic dicarboxylic acids in an amount of about 5 mol% to about 60 mol%, overlapping the claimed 0 mol% to about 5 mol%.
Therefore, Kim teaches a polymer composition comprising the claimed components in the respective overlapping amounts and the LCP polymer contains the claimed repeating units in the overlapping respective mol%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kim.
The instant claim 1 furthermore claims the composition exhibits Charpy notched impact strength of 10 kJ/m2 or more as determined at 23°C according to ISO Test No. 179-1 :2010.
Kim teaches the composition exhibits Charpy notched impact strength, measured at 23°C according to ISO Test No. 179-1 :2010, from about 1 to about 20 kJ/m2 ([0011]), overlapping the claimed 10 kJ/m2or more.
Kim does not have a general teaching on tensile elongation of the composition. The examples of Kim do not meet all the structural limitations of the instant claim 1, for example, the LCP polymers are less than 50 wt.% of a polymer composition. Therefore, Kim is silent on tensile elongation of the claimed composition. However, Kim teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. tensile elongation or Charpy notched impact strength, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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. See MPEP § 2112.01. 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 as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 2, Kim discloses that the composition may have a melt viscosity of from about
1 to about 200 Pa-sat a shear rate of 1000 seconds-1([0066]), therefore, the melt viscosity is less than 200 Pa-s at a shear rate of 400 seconds-1..
Regarding Claim 3, Kim discloses that the composition may exhibit a tensile strength of from
about 20 to about 500 MPa ([0011]). Although Kim measured with ISO Test No. 527:2012. One ordinary
skilled artisan would reasonably infer the tensile strength encompasses the claimed 100 MPa or more
when determined by ISO Test No. 527:2019.
Regarding Claim 4, Kim discloses that the composition may have a melting temperature of 350°C
([0066]).
Regarding Claim 5, Kim exemplifies that the LCP-1 and LCP-2 contain HBA and HNA ([0084]).
Regarding Claim 6, Kim teaches HBA may constitute from about 10 mol% to about 80 mol% ([0029]), overlapping the claimed 70 mol% to about 90 mol%.
Regarding Claim 7, Kim teaches the polymer may contain terephthalic acid, isophthalic acid, 2,6-
naphthalene dicarboxylic acid, hydroquinone, etc., or a combination thereof ([0025]).
Regarding Claim 9, Kim teaches suitable inorganic filler particles having a hardness value of
about 2.0 or more based on the Mohs hardness scale ([0045]).
Regarding Claim 10, Kim teaches suitable inorganic filler particles having a median diameter of
from about 0.1 to about 30 micrometers ([0045]), overlapping with the claimed about 0.1 to about 20
micrometers.
Regarding Claim 11, barium sulfate is the preferred inorganic filler of Kim.
Regarding Claim 12, Kim teaches the polymer composition remains substantially free of glass
fiber ([0064]).
Regarding Claims 13-14, Kim teaches the impact modifier may be an olefin copolymer that
contains a (meth)acrylic monomeric unit ([0049]).
Regarding Claim 15, Kim teaches the composition may contain an antistatic filler ([0054]).
Regarding Claim 16, Kim discloses that a molded part of the composition exhibits a deflection
temperature under load of from about 180°C to about 280°C at a specified load of 1.8 MPa. Although
Kim measured the deflection temperature according to ASTM D648-07, one ordinary skilled artisan
would reasonably infer that the deflection temperature is l 60°C or more if measuring with ASTM
D648-18.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (US2019/0169427 Al),
as applied to Claim 1 above, and in further view of Yosuke et al. (JP2018168207 A).
The disclosure of Kim has been discussed above. Kim teaches that the polymer composition
comprising inorganic filler particles but is silent on that the particles are spherical.
However, Yosuke teaches a liquid crystalline polymer composition for a camera module (claim
7) comprising 50 to 80 wt.% liquid crystalline polymer and 20 to 50 wt.% inorganic fillers (claim 1),
wherein the liquid crystalline polymer contains repeating units derived from hydroxycarboxylic acid
repeating units, such as 4-hydroxybenzoic acid, 6-hydroxy-2-naphthoic acid and dicarboxylic acids, such
as terephthalic acid and isophthalic acid (p3:90 - p4: 127). Thus, Yosuke is an analogous art of Kim.
Yosuke further teaches spherical inorganic fillers are preferred because spherical inorganic fillers have
surface smoothness and compatible with each other (p7:226-229), in view of such benefits, one ordinary
skilled artisan would have been motivated before the effective filing date of instant application to use
spherical inorganic filler particles for the composition of Kim.
Double Patenting
Claims 1-5, 10, 13-14 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 12-13 of U.S. Patent No. 12,209,163 ('163) in view of Kim
(US2019/0169427 Al).
The double patenting rejection dated 04/06/2026 at para. 9 is MAINTAINED.
Response to Arguments
Applicant's arguments filed on 07/06/2026 have been fully considered but they are not persuasive.
The Examiner basically maintained the 35 USC 103 rejections dated 04/06/2026 but re-write the rejection on Claim 1 to make the rejection clearer.
Applicant’s argument: the currently amended claims are commensurate in scope with the showing of unexpected results.
Examiner’s answer: the Examiner summarized the instant exemplary compositions in the table below:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
And the constitutions of LCP1 – LCP5 are:
PNG
media_image2.png
200
400
media_image2.png
Greyscale
The Examiner did not see any component or any repeating unit is commensurate in scope with the instant Claim 1.
The essential difference between the example compositions and the comparative example compositions is that the example compositions contain LCP5 while the comparative example compositions contain LCP1, LCP3, or LCP4. However, Example 1 and comparative example 1 contain the same amount of LCP5; example 2 and comparative example 3 contain the same amount of LCP5. And the amount of LCP5 of the compositions is from 53.2 wt.% to 55.6 wt.%, but the claimed polymer content is 50 wt.% to 90 wt.%.
The exemplary compositions contain 30 or 32.5 wt.% fillers but claimed 10 wt.% to 40 wt.%.
The exemplary compositions contain 1 to 4 wt.% impact modifier but claimed 0.1 wt.% to 10 wt.%.
The LCP5 contains 79 + 20 =99 mol% of HBA+HNA but claimed hydroxycarboxylic acid in the amount of 70 mol% or more.
The LCP5 contains 20 mol% of HNA but claimed in the amount of 10 mol% to 30 mol%.
The LCP5 contains 1 mol% of TA but claimed aromatic dicarboxylic acids in an amount of from 0 to 5 mol%.
Applicant’s argument: Kim's Sample 6 exhibits a Charpy falls short of the 10 kJ/m2 minimum required by independent claim 1.
Examiner’s answer: Kim’s Sample 6 differs from the instant claimed composition at least the wt.% of polymer. The Examiner cited Sample 6 to explain that one ordinary skilled artisan would have expected a composition disclosed by Kim, which has each component and each repeating unit in the overlapping amount of the respective instant claimed amount, would result in the claimed tensile elongation and Charpy notched impact strength.
Applicant’s argument: Kim's preferred ranges of naphthenic monomer content all drive toward a preference of from 0 mol.% to about 5 mol.% of the polymer (e.g., 0 mol. %). As such, a person of ordinary skill in the art reading Kim would be discouraged from employing an LCP containing 10 mol.% to 30 mol.% 6-hydroxy-2-naphthoic acid.
Examiner’s answer: Kim explicitly teaches LCP constitutes repeating units derived from HNA about 1 mol% to about 35 mol% ([0029]). Para. [0028] of Kim teaches:
the total amount of repeating units derived from naphthenic hydroxycarboxylic and/or dicarboxylic acids (e.g., NDA, HNA, or a combination of HNA and NDA) is typically no more than 30 mol. %, in
some embodiments no more than about 15 mol. %, in some embodiments no more than about 10 mol. %, in some embodiments no more than about 8 mol. %, and in some embodiments, from 0 mol. % to about 5 mol. % of the polymer ( e.g., 0 mol. % ).
The Examiner does not read the paragraph disclosing the preferred ranges of naphthenic monomer content all drive toward a preference of from 0 mol.% to about 5 mol.%. Even if reading so, a preferred embodiment not controlling. Rather, all disclosures "including unpreferred embodiments" must be considered (see MPEP 2123 I).
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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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, Joseph Del Sole can be reached at 571-272-1130. 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.
/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights