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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 10, 13, 14, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US 6,262,166; cited in a prior Office Action) in view of Tadayuki (JP 2015127357 A).
Regarding claim 9, Yoshida’s Example 5 includes 55.9 parts PPE-1, 14.8 parts PS-1, 6.3 parts PS-3 and 28 parts GF. (Table 5.) It has 55.9 + 4.6 + 14.8 + 6.3 + 18.5 + 17 + 28 + 37 = 182 parts total (See id.). At 55.9/182 = 31%, the PPE-1 content is within the recited 20% to 50% for a polyphenylene ether-based resin (a).
Example 5’s PS-1 includes homopolystyrene. (8:60-65.) But, at 14.8/182 = 8%, its content is not within the recited 15% to 50%.
Yoshida however teaches 3% to 50% for polystyrene or rubber-modified polystyrene among total polyphenylene ether resin, polystyrene and/or rubber-modified polystyrene and styrene/ acrylonitrile copolymer. (4:65 – 5:10.) Example 5 has 55.9 + 4.6 + 14.8 + 6.3 + 18.5 = 100 parts polystyrene or rubber-modified polystyrene among total polyphenylene ether resin, polystyrene and/or rubber-modified polystyrene and styrene/ acrylonitrile copolymer. (See table 5.) So, Yoshida’s teaching would imply a range for polystyrene and/or rubber-modified polystyrene 100 x [3%, 50%] = 3 to 50 parts.
Example 5’s polystyrene and/or rubber-modified polystyrene is 14.8/(14.8 + 6.3) = 70.1% homopolystyrene. So, when the above range is applied to example 5, it would imply 70.1% x [3, 50] = 2.1 to 35.1 parts homopolystyrene. This amount is [2.1, 35.1]/182 = 1.2% to 19.3% homopolystyrene in the total composition taught by Yoshida, from example 5 in view of its other teachings. This range overlaps the recited 15% to 50% for homopolystyrene. This record presumptively shows that it would have been obvious to make Yoshida’s resin having 15% to 19.3% homopolystyrene. (See MPEP § 2144.05.) It would have been obvious to one of ordinary skill in this application’s art, before this application’s effective filing, to use this ranged range because Yoshida may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art. (See MPEP § 2123.)
Example 5’s GF is glass fiber. (9:55-60.) At 28/182 = 15.4%, its content is within the recited 5% to 35%.
Yoshida teaches inclusion of 1-30 parts by weight of a phosphoric acid ester compound (D) as a flame retardant per 100 parts of components (A)-(C) (col. 5, lines 21-23; col. 6, lines 20-21). This is equivalent to approximately 0.9-23 wt% of flame retardant. The composition is suggested for use in various electronic appliances (col. 7, lines 30-35).
Yoshida does not teach hydrotalcite as claimed. In a similar composition, Tadayuki teaches use of 0.05-5 parts by mass of hydrotalcite flame retardant with respect to a total of 55 to 90 parts by mass of polyphenylene ether resin (p. 2). This range corresponds to amounts of 0.056-9.1 wt%. This prior art range encompasses the claimed range. A prima facie case of obviousness exists where the prior art range encompasses the claimed range. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Yoshida with the flame retardant of Tadayuki to arrive at the claimed invention, and to expand the usefulness of Yoshida’s composition to modern solar-powered electronics with extended service life, as taught by Tadayuki (p. 1).
Regarding claims 10 and 23, example 5 has 6.3 parts PS-3 (table 5), which is rubber-reinforced polystyrene (9:1-5) corresponding to the recited rubber-modified polystyrene (d-2). At 6.3/182 = 3.5%, this proportion is within the recited 1% to 25%.
Regarding claim 13, Yoshida’s glass fibers are surface-treated with aminosilane. (9:55-60.)
Regarding claim 14, example 5 has 4.6 parts PPE-3 (table 5), which is “modified polyphenylene ether resin obtained by melt-kneading 100 parts by weight of PPE-3, 2 parts by weight of maleic anhydride.” (8:55-60.) At 4.6/182 = 2.5%, PPE-3 is within the recited 0.1% to 9%. The present specification acknowledges maleic anhydride as unsaturated carboxylic acid anhydride. (¶ 29.)
Regarding claim 21, the claimed esters are recited as optional. To the extent that the limitations are not required, the prior art reads on claim 21.
Claims 11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida in view of Tadayuki as applied to claim 9 above, further in view of Koevoets (US 2013/0142976 A1; cited in Applicant’s IDS).
Regarding claims 11 and 22, Yoshida and Tadayuki remain as applied to claim 9 above. Yoshida further suggests inclusion of additives such as a mold release agent (col. 7, lines 14-17). Neither Yoshida nor Tadayuki teaches polyethylene as claimed.
Koevoets teaches a composition comprising PPE, polystyrene, and glass fibers (Abstract). Koevoets teaches that polyethylene (a polyolefin resin) can be included in amounts of about 1-2 wt% as a mold release agent (p. 3, [0023]).
It would have been obvious to one of ordinary skill in the art at the time of filing to select 1-2 wt% of polyethylene for use as Yoshida’s mold release agent, as Koevoets demonstrates it to be suitable for use in this capacity in a similar composition. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida in view of Tadayuki as applied to claim 9 above, further in view of Arai et al. (JP 2009/091400 A; cited in Applicant’s IDS).
Regarding claim 12, Yoshida and Tadayuki remain as applied to claim 9 above. Yoshida further suggests inclusion of additives such as a mold release agent (col. 7, lines 14-17). Neither Yoshida nor Tadayuki teaches the claimed fatty acid compound.
Arai teaches a composition comprising PPE, a styrene-based resin, and a reinforcing filler (Abstract). Arai further teaches that inclusion of 0.01-5 parts by weight of a fatty acid, ester, or metal salt results in excellent mold release characteristics. This range overlaps the recited 1 to 10000 mass ppm. Arai also teaches 0.3 parts for various species within the group (Table 1). Because 0.3% = 3 per thousand = 3,000 ppm, this teaching is within the recited 1 to 10000 mass ppm.
It would have been obvious to one of ordinary skill in the art at the time of filing to include Arai’s fatty acid, ester, or metal salt in the indicated amount in Yoshida’s composition for the benefit of excellent mold releasability, and because Yoshida expressly suggests inclusion of mold release agents.
Response to Arguments
Applicant's arguments filed 16 December 2025 have been fully considered but they are not persuasive. Regarding the affidavit filed 26 September 2025, Applicant argues that the amended range of hydrotalcite leads to unexpected results. Assuming arguendo that the results are indeed unexpected, the amended range nevertheless remains encompassed by the prior art range taught in Tadayuki. While the prior art teaches use of hydrotalcite for the purpose of flame retardancy, rather than for hot water resistance, the claimed ingredient is taught in the claimed amounts.
The Applicant argues that flame retardancy and hot water resistance are unexpectedly improved by the claimed invention.
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. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d).
Independent claim 9 requires 20-50 mass% of a PPE having an undefined molecular weight. Examples 1-36 presented in the instant specification employ two PPEs having Mw of either 52,000 or 74,000, included in amounts of 21-47 mass%.
Claim 9 requires 15-50 mass% of a homopolystyrene (c) having an undefined molecular weight. The examples in the specification falling within the scope of the claims employ a single commercially available atactic homopolystyrene in amounts of 16.70-44.20 mass%.
Claim 9 requires 5-35 mass% of glass fibers having unspecified dimensions. The examples employ four species of surface-treated glass fibers having average diameter of either 10 or 13 microns and unspecified length in amounts of 10-33 mass%.
Neither the materials nor the amounts of the claimed component in the examples are commensurate in scope with the claims in general. The examples presented in the specification are therefore insufficient to either establish non-obviousness of the claimed composition. See MPEP 716.02(d). Unexpected results must still be reasonably commensurate in scope with the claims.
Applicant further argues that Tadayuki addresses different problems and achieves different effects, and therefore that the cited prior art provides no reasonable expectation of success in achieving the advantageous effects sought by the Applicant. While Applicant correctly notes that Tadayuki focuses on heat aging resistance under air rather than hot water resistance, these features are not present in the claim language. As written, claim 9 merely requires specific ingredients in specific amounts, and all of these ingredients are taught by the combined references in the claimed amounts.
The reasonable expectation of success requirement refers to the likelihood of success in combining or modifying prior art disclosures to meet the limitations of the claimed invention. See MPEP 2143.02. As discussed above, one of ordinary skill in the art would be motivated to combine the cited references in order to expand the usefulness of Yoshida’s composition to modern solar-powered electronics with extended service life, as taught by Tadayuki (p. 1). Although this motivation is unrelated to hot water resistance, the teachings of Yoshida and Tadayuki nevertheless indicate to one of ordinary skill in the art that combining the claimed ingredients in the claimed amounts is reasonably likely to result in a successful composition. Therefore, the claims still do not contain a limitation not found in the prior art, and remain rejected.
Applicant further requests rejoinder of claims 15-18 on the premise that claim 9 is allowable in light of the recent arguments. However, claim 9 remains rejected. Claims 15-18 are not rejoined.
All of Applicant’s arguments are believed to have been addressed in full above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762