DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Applicants’ Claim Amendment filed 02/17/2026
2. The claim objection set forth in paragraph 5 of the previous Office action mailed 11/17/2025 is no longer applicable and thus, withdrawn because the applicants amended claims 16-20 to correct their informalities.
See also Page 11 of Applicants’ Remarks filed 02/17/2026.
3. The 112(b) rejection set forth in paragraph 6 of the previous Office action mailed 11/17/2025 is no longer applicable and thus, withdrawn in light of applicants’ arguments provided at page 12 of their Remarks filed 02/17/2026 and applicants’ amendment of claims 16 and 23-24 to provide the same with clarity. Claims 31 and 32 were also amended to conform to the newly amended claim 16.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting I
4. Claims 16-25 and 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-14 of U.S. Patent No. 12,545,779 in view of Minkwitz et al. (US 2015/0065622)1.
The prior double patenting rejection based on the claims of co-pending US Application No. 17/768,134 forth in paragraph 7 of the previous Office action mailed 11/17/2025 is carried over and incorporated herein. The above has been modified in light of the issuance of the co-pending US Application No. 17/768,134 (now published as US Patent No. 12,545,779).
Double Patenting II
5. Claims 16-25 and 28-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-16, 19-24, and 27-29 of co-pending US Application No. 17/766,877 (hereinafter referred to as “US Appl. ‘877”; corresponding to US PG PUB 2024/0093018) in view of Minkwitz et al. (US 2015/0065622)2.
This rejection is adequately set forth in paragraph 8 of the previous Office action mailed 11/17/2025 and is thereby incorporated herein.
Double Patenting III
6. Claims 16-25 and 28-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-24 and 29-35 of co-pending US Application No. 17/768,045 (hereinafter referred to “US ‘045”; corresponding to US PG PUB 2024/0026146) in view of Minkwitz et al. (US 2015/0065622)3.
This rejection is adequately set forth in paragraph 9 of the previous Office action mailed 11/17/2025 and is thereby incorporated herein.
Claim Rejections - 35 USC § 103
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.
7. Claims 16-25 and 28-34 are rejected under 35 U.S.C. 103 as being unpatentable over Schultz et al. (WO 2019/0206774; utilized US 2020/0148872 as its Equivalent) in view of Minkwitz et al. (US 2015/0065622)5.
This rejection is adequately set forth in paragraph 10 of the previous Office action mailed 11/17/2025 and is thereby incorporated herein.
Response to Applicants’ Arguments in their Remarks filed 02/17/2026
8. The applicants’ arguments in their Remarks have been fully considered but are not found persuasive for the following reasons:
(A) The applicants at pages 12 and 13 of their Remarks request that the double patenting rejections based on the claims of US Application nos. 17/768,134 (now published as US Patent 12,545,779), 17/766,877, and 17/768,045 of record be held in abeyance until otherwise allowable subject matter is identified.
However, since no allowable subject matter is currently present, the applicants’ request for rejoinder is not granted at this time.
(B) The applicants at pages 13 and 14 of their Remarks argue that even though Schulz discloses carbon black as potentially suitable pigment which may be present in preferred amounts of 0.1-5 wt%, this reference is silent to any effects of the carbon black on the surface gloss or weathering stability, and in contrast, the instant application disclosure provides that it has been surprisingly discovered that the use of carbon black in black molding compositions at loadings of 1.5 wt%, and above is a successful method to improve the weathering stability of black high gloss surface parts. The applicants also rely on paragraphs [0269]-[0270] of specification (US 2024/0117171 A1) for further support. Thus, for these reasons, the applicants conclude that a person of ordinary skill in the art would not have been motivated based on Schulz to select an amount of 1.5-3 wt% of carbon black with associated effects, as presently claimed.
However, these arguments are not convincing at this time. Contrary to applicants’ argument, independent claim 1 does not require the effects of the carbon black on the surface gloss or weathering stability to be taught or suggested by the prior art. The claim 1 only requires that the carbon black be present in an amount of 1.5-3 wt% based on the total weight of the molding composition to which Schulz teaches as mentioned in the previous Office action. Specifically, Schulz suggests using 0.1-5 wt.% of pigments including carbon black in the thermoplastic molding composition (Paragraph [0131] and [0133]), and this amount overlaps with the claimed 1.5-3 wt. % of carbon black (B). Thus, one of ordinary skill in the art to employ the claimed overlapping amount of carbon black pigment in the thermoplastic resin composition for the purposes of preparing molded articles.
Moreover, as to the surprising results argued by applicants, it is well settled that the applicants have the burden of showing that the claimed invention as whole imparts unexpected results. Here, (1) the applicants do not include any details of a meaningful comparison (i.e., side-by-side experimental evidence) between the claimed invention and the closest prior art holding all variables constant except for the novel features of the claimed invention. Additionally, (2) the applicants have not shown why the limited showing in the examples in the instant specification relied upon by applicants is commensurate in scope with the degree of protection sought by the very broad claims of the instant application, see MPEP § 716.02. While the examples in the instant specification are limited to specific compositions with specific amounts of graft copolymer, matrix polymer, particular types of carbon blacks, and specific light stabilizers, the claims are not so limited. The applicants have not shown that the alleged unexpected properties applicable to the specific composition exemplified in the specification are applicable to the myriad of other materially different compositions embraced by the claims. Accordingly, the applicants fail to rebut the prima facie case of obviousness established in the record.
(C) The applicants argue at page 14 of their Remarks that Schulz discloses the optional addition of HALS stabilizers but the examples comprise light stabilizers and further stabilizers in unspecified amounts.
However, this argument is not persuasive because the prior art as a whole is not limited to its examples. See MPEP section 2123, II (Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments), “Disclosed examples and preferred embodiments in a prior art reference do not teach away from its broader disclosure or alternative, non-preferred embodiments.”
Instead, as mentioned in the previous Office action, Schulz broadly mentions the addition of hindered amine light stabilizers to their thermoplastic polymer composition useful for the production of molded articles but does not specify them as those recited in claims, and thus, this missing claimed feature is remedied by secondary reference, Minkwitz. Accordingly, Schulz and Minkwitz collectively suggests the claimed specific hindered amine light stabilizers and their amounts for the reasons provided in the previous Office action.
(D) The applicants argue at pages 14-16 of their Remarks that Minkwitz fail to remedy the deficiencies of Schulz because Minkwitz relates to improved molding compositions on the basis of polycarbonates and acrylonitrile/styrene/acrylate molding compositions and only suggests using 1 wt. % of carbon black and 73 wt% of polycarbonate in its example, and thus one of ordinary skill in the art would not have considered Minkwitz for modifying the disclosure of Schulz, at least not without adding polycarbonate.
First, while Minkwitz does not disclose all the features of the claimed invention, it is utilized as a teaching reference and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention. Rather, this reference teaches a certain concept and in combination with Schulz discloses the presently claimed invention.
Moreover, contrary to applicants’ argument, the combination of Schulz and Minkwitz would suggest the claimed thermoplastic molding composition. Specifically, Schulz, like Minkwitz, also teaches the presence of polycarbonate (see, for example, Paragraph [0083] of Schulz) together with their styrene-based polymers, for the purposes of preparing a thermoplastic molding composition. Thus, Schulz does not away from the addition of polycarbonates taught by Minkwitz. Even the present claims do not preclude or exclude any additional components such as polycarbonates by virtue of using the transitional phrase “comprising”. Additionally, as mentioned in the previous Office action, Minkwitz provides reason, rationale and motivation to add the claimed amounts of the specific light stabilizers to the composition of Schulz.
Accordingly, applicants’ arguments against Minkwitz are not convincing at this time.
Correspondence
9. 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.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/18/2022.
2 Cited in the IDS submitted by applicants on 05/18/2022.
3 Cited in the IDS submitted by applicants on 05/18/2022.
4 Cited in the IDS submitted by applicants on 05/18/2022.
5 Cited in the IDS submitted by applicants on 05/18/2022.