DETAILED ACTION
This Office Action is in response to the Amendment filed on 2/5/2026.
Claim(s) 5 were cancelled.
Claim(s) 17-21 have been added.
Claims 1-3, 6-7, 9-21, are now pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6-7, 9-11, and 13-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 18, and 19 recites the limitation "the non-recycled thermoplastic copolymer (A) comprises" in line 8. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as “the non-recycled thermoplastic resin (A) comprises”.
Claims 2-3, 6-7, 9-11, 13-17, and 20-21 are rejected as they are dependent 112(b) rejected claim 1.
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, 6-7, 9-11, and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over US20150203680 to Motegi et al. in view of WO2011127651 to Chen et al. and US2014/0275382 to Ishida as evidenced by WO 9513322 to Nagel et al. For the purposes of examination, citations for Nagel are obtained from a machine translation of the document obtained from the European Patent Office website in February 2025.
Regarding claim 1-3, 6-7, 10-11, and 13-21, Motegi discloses a resin composition [title] comprising a 1-20 parts of an elastomer [0075] that is preferably methacrylate-acrylonitrile-butadiene-styrene [0073] reasonably reading on 20% to 80% of a non-recycled thermoplastic resin (A) (of claim 1); and a styrene based resin [0020] preferably acrylonitrile-butadiene-styrene copolymer (ABS) [0026] preferably at 10% to 70% by weight of all resin components [0030] reading on thermoplastic resin (B) in amounts of 20- 80 wt% (of claim 1) and 50-80 wt% (of claim 17) and reading on a vinyl cyanide compound-conjugated diene compound-aromatic vinyl compound copolymer (of claims 1, 17, and 18); and a white pigment preferably at 0.1 to 10 parts by weight [0083] such as titanium dioxide [0078] having a particle size of 0.001 to 0.5 µm (1 to 500 nm) [0079] reading on 0.01 to 10 parts by weight of an inorganic pigment (D) such as titanium dioxide wherein the inorganic pigment has an average particle diameter of 10 to 500 nm. Titanium dioxide is set forth in instant claim 11 as a species of inorganic pigment having a refractive index of 1.65 or more.
Motegi does not particularly teach the amounts of the (A-1) and (A-2) as required by instant claims 1, 6-7, and 18-19.
However, Motegi teaches these polymers such as MABS and MAS may be used in combination of two or more [0073] and wherein the monomers may be chosen from the viewpoint of mechanical properties and surface appearance [0071]. However, [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to select a vinyl cyanide compound-conjugated diene compound-aromatic vinyl compound graft copolymer corresponding to (A-1) and a vinyl compound-vinyl cyanide compound corresponding to (A-2) in the amounts as required in order to obtain the desired surface appearance and mechanical properties and thereby reading on the instant claim. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05(II)).
Motegi does not particularly teach the thermoplastic resin composition further comprises 1 to 10 parts of an ethylene compound-vinyl acetate compound copolymer (C) wherein the copolymer comprises 50-95% ethylene and 5-50% vinyl acetate compound.
However, Chen discloses a styrenic block copolymer composition [Chen, title] that comprises at least 50 wt% of styrenic block copolymers [Chen, 0012] therefore the remainder of the composition has an amount of 0-50 wt% other ingredients, such as polar olefin ethylene vinyl acetate [Chen, 0022]. In the inventive examples, the ethylene vinyl acetate copolymer comprises 28 wt% vinyl acetate compound [Chen, Table 1 (28%V EVA)]. The remainder of the copolymer can therefore be calculated to comprise roughly 72 wt% ethylene compound.
Chen and Motegi are analogous art as they are from the same field of endeavor, namely compositions comprising styrene block copolymer and polycarbonate.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Chen’s ethylene vinyl acetate with Motegi, thereby arriving at the claimed invention.
The motivation to modify Motegi with Chen is to add an impact modifier. Nagel provides evidence that ethylene-vinyl acetate copolymers with a vinyl acetate content of 5 to 85 mass % are known used as impact-modifying components for polycarbonate compositions [Nagel, 0020]. The presence of an impact modifier in Motegi would be desirable , as the reference expresses an objective to enhance impact resistance [Motegi, 0068].
Motegi does not teach the thermoplastic resin (B) is recycled.
However, Ishida teaches blends comprising recycled ABS [abstract]. Ishida and Motegi are analogous art as they are from the same field of endeavor, namely ABS blends.
Before the effective filing date of the instantly claimed invention, it would have been
obvious to one of ordinary skill in the art to substitute Ishida’s recycled ABS in place of Motegi’s self-polymerized ABS.
The motivation would have been that using recycled materials is desirable for sustainable use of these highly degradation resistant materials without detrimental environmental impact [0002] and provide thermoplastic polymer blends that comprise post-consumer recycled plastics of improved melt stability [0003]. Furthermore it is known to one of ordinary skill in the art that post-consumer materials are less expensive and require less time to acquire than self-polymerization.
With respect to the content of ethylene vinyl acetate copolymer and non-recycled thermoplastic resin (A) in the thermoplastic resin composition, the Office notes that the ethylene vinyl acetate copolymer range taught by Chen (at least 50%) and range of (A) (1-20 parts) is not identical to the claimed range (1 to 10 parts and 20-80 wt % respectively). However, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding claims 2-3, Motegi in view of Ishida and Chen does not teach the melt index retention rate or impact strength retention rate of the thermoplastic resin composition. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Motegi, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. melt index retention rate and impact strength retention rate - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 13, Motegi in view of Ishida and Chen teaches a molded article [title] comprising the thermoplastic resin composition according to claim 1.
Regarding Claim 14, Motegi in view of Ishida and Chen teaches the molded article in claim 13 as set forth and incorporated herein by reference.
Motegi in view of Ishida and Chen does not teach the number of foreign substances having a diameter of 100µm or more is less than 15 pieces/100 cm2. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Motegi, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. number of foreign substances having a diameter of 100µ or more - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 20, Motegi in view of Ishida and Chen discloses the thermoplastic resin composition of claim 1, that is free of a recycled polycarbonate resin.
Regarding Claim 21, Motegi in view of Ishida and Chen discloses the thermoplastic resin composition of claim 1, comprising titanium dioxide [0078].
Motegi does not then disclose carbon black in this embodiment.
However, Ishida discloses both titanium dioxide and carbon black are suitable pigments in the disclosed compositions [Ishida 0143].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a blend of a titanium dioxide and carbon black colorants to prepare the thermoplastic resin composition taught by Motegi in view of Ishida and Chen.
The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining various colorants would have been obvious given their known and shared intended use in the thermoplastic resin composition of Motegi in view of Ishida and Chen.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Motegi in view of Chen and Ishida as applied to Claim 1 above, as evidenced by US2018/0071995 to Kurokawa.
Regarding claim 9, Motegi in view of Ishida and Chen teaches the thermoplastic resin composition of claim 1, as set forth above and incorporated herein by reference.
Motegi in view of Ishida and Chen does not teach a recycled thermoplastic resin that has a glass transition temperature of 60 to 180°C.
However, Motegi does teach a thermoplastic resin (B) such as S-3000F [0115], i.e. a non-recycled polycarbonate resin. Kurokawa provides evidence that S-3000F has a glass transition temperature of 145°C [0054].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a recycled thermoplastic resin with a glass transition temperature of 145°C in the thermoplastic resin composition of Motegi
The motivation is that Motegi teaches that a polycarbonate thermoplastic resin with a glass transition temperature of 145°C is suitable for use in the disclose thermoplastic resin compositions.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US20150203680 to Motegi et al. in view of WO2011127651 to Chen et al., US2014/0275382 to Ishida, and US20190194445 to Shin et al., as evidenced by WO 9513322 to Nagel et al.
Regarding claim 12, Motegi teaches a method of preparing a thermoplastic resin composition [title] comprising pre-mixing [0107] such as kneading [0106] the composition and supplying it to an extruder [0107]. The composition comprises 1-20 parts of an elastomer [0075] that is preferably methacrylate-acrylonitrile-butadiene-styrene [0073] reasonably reading on 20% to 80% of a non-recycled thermoplastic resin (A); and a styrene based resin [0020] preferably acrylonitrile-butadiene-styrene copolymer (ABS) [0026] preferably at 10% to 70% by weight of all resin components [0030] reading on 20% to 80% by weight of a thermoplastic resin (B) wherein (B) is a vinyl cyanide compound-conjugated diene compound-aromatic vinyl compound copolymer; and a white pigment preferably at 0.1 to 10 parts by weight [0083] such as titanium dioxide [0078] having a particle size of 0.001 to 0.5 µm (1 to 500 nm) [0079] reading on 0.01 to 10 parts by weight of an inorganic pigment (D) such as titanium dioxide wherein the inorganic pigment has an average particle diameter of 10 to 500 nm. Titanium dioxide is set forth in instant claim 11 as a species of inorganic pigment having a refractive index of 1.65 or more.
Motegi does not particularly teach the amounts of the (A-1) and (a-2) as required by instant claim 1, or the amount of compounds set forth in claims 6 and 7.
However, Motegi teaches these monomers may be chosen from the viewpoint of mechanical properties and surface appearance [0071]. However, [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to select a vinyl cyanide compound-conjugated diene compound-aromatic vinyl compound graft copolymer corresponding to (A-1) and a vinyl compound-vinyl cyanide compound corresponding to (A-2) in the amounts as required in order to obtain the desired surface appearance and mechanical properties and thereby reading on the instant claim. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05(II)).
Motegi does not particularly teach the thermoplastic resin composition further comprises 1 to 10 parts of an ethylene compound-vinyl acetate compound copolymer (C)
However, Chen discloses a styrenic block copolymer composition [Chen, title] that comprises at least 50 wt% of styrenic block copolymers [Chen, 0012] therefore the remainder of the composition has an amount of 0-50 wt% other ingredients, such as polar olefin ethylene vinyl acetate [Chen, 0022].
Chen and Motegi are analogous art as they are from the same field of endeavor, namely compositions comprising styrene block copolymer and polycarbonate.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Chen’s ethylene vinyl acetate with Motegi, thereby arriving at the claimed invention.
The motivation to modify Motegi with Chen is to add an impact modifier. Nagel provides evidence that ethylene-vinyl acetate copolymers with a vinyl acetate content of 5 to 85 mass % are known used as impact-modifying components for polycarbonate compositions [Nagel, 0020]. The presence of an impact modifier in Motegi would be desirable , as the reference expresses an objective to enhance impact resistance [Motegi, 0068].
Motegi does not teach the ABS is recycled.
However, Ishida teaches blends comprising polycarbonate and recycled ABS [abstract]. Ishida and Motegi are analogous art as they are from the same field of endeavor, namely polycarbonate and ABS blends.
Before the effective filing date of the instantly claimed invention, it would have been
obvious to one of ordinary skill in the art to substitute Ishida’s recycled ABS in place of Motegi’s self-polymerized ABS.
The motivation would have been that using recycled materials is desirable for sustainable use of these highly degradation resistant materials without detrimental environmental impact [0002] and provide thermoplastic polymer blends that comprise post-consumer recycled plastics of improved melt stability [0003]. Furthermore it is known to one of ordinary skill in the art that post-consumer materials are less expensive and require less time to acquire than self-polymerization.
With respect to the content of ethylene vinyl acetate copolymer in the thermoplastic resin composition, the Office notes that the range taught by Chen is not identical to the claimed range. However, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Motegi does not expressly teach extruding at a temperature of 200°C to 280°C.
However, Shin teaches a thermoplastic resin composition [title] that is kneaded and extruded at a temperature of 230°C [Shin, 0075]. Motegi and Shin are analogous art as they are from the same field of endeavor, namely thermoplastic resin compositions comprising rubber-based graft copolymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use Shin’s temperature with Motegi’s process thereby arriving at the claimed invention.
The motivation would have been that Shin shows that 230°C is known in the art to be a suitable temperature for kneading and extruding.
Response to Arguments
Applicant's arguments filed 2/05/2026 have been fully considered but they are not persuasive.
Applicant states Motegi’s resin composition requires 30% polycarbonate resin and therefore Motegi does not teach the claimed copolymer (A) as it requires at least 72% aromatic vinyl copolymers. Applicant further states Motegi’s examples in tables 1-4 used at least 60% of polycarbonate and at most 40% of ABS, therefore one of ordinary skill would not have been guided by the teachings of Motegi to arrive at the claimed copolymer.
In response, it is noted that further search and consideration found that Motegi’s elastomer [0068] reasonably reads on the (A) component, as set forth in the rejection of claim 1 above.
Futhermore, it is noted that Examiner assumes the amount of “a minimum of 72% by weight of aromatic vinyl compound copolymers” stated in the remarks is referring to the contents of the instantly claimed non-recycled thermoplastic resin (A) that requires a minimum of 20% (A-1) and a minimum of 52 wt% (A-2), thus component (A) requires a minimum of 72% of aromatic vinyl compound copolymers. However, the instantly claimed base resin can comprise as little as 20 wt% of component (A), (20-80 wt%). Therefore, the amount of polycarbonate taught in Motegi does not interfere with the constituents of component (A).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123)
It is noted, that instant claim 1 states “a thermoplastic resin composition comprising” and “100 parts by weight of a base resin comprising” wherein the word comprising allows additional ingredients in the base resin. If applicant wishes to claim a composition without additional ingredients (such as polycarbonate), it is suggested to use language such as “consisting of” instead.
Applicant states neither Motegi, Chen, Ishida, or Shin fail to disclose or render obvious the claimed copolymer (A).
In response, attention is drawn to the updated rejection of claim 1 as set forth above, wherein Motegi in view of Ishida and Chen teaches an elastomer [0068] that reads on components (A), (A-1), and (A-2).
For these reasons, Applicant's arguments are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764