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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-26 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims call for certain siloxane contents based on the entire composition. However, the original specification never discussed such a concept. While applicant’s compositions inherently have such a value and one of ordinary skill could calculate possible extremes based on the amount of polycarbonate-siloxane and the siloxane content of the individual polycarbonate-siloxane, there is simply no reason to do so in the original specification.
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.
Claims 1-4,6,9,11,13,14,16,18,20,23 and 25 rejected under 35 U.S.C. 103 as being unpatentable over JP2011026584 in view of JP60501007.
WO84/03898 is relied as a translation of JP60501007.
The J’584 exemplifies (#11) a blend of 100 parts polycarbonate, 11.1 parts SiPC and 15.2 parts CB-1. SiPC is Lexan EXL1413T (table 1) which is a polycarbonate-polysiloxane (paragraph 29). The CB-1 is ENSACO 250G carbon black (table 1; paragraph 34). Collectively, the polycarbonate + SiPC is applicant’s preferred “thermoplastic resin”. The ENSACO250G is one of applicant’s preferred carbon blacks (table 5 of spec). Based on 100% of the entire composition, the exemplified blend is:
79.2% polycarbonate
8.8% polycarbonate-siloxane
12.03% carbon black
The polycarbonate-siloxane’s siloxane content is less than the claimed 20% according to applicant’s response of 2/24/26 (page 7). However, the reference (paragraph 29) refers the reader to JP501007/1985 for making the polycarbonate-siloxane. That reference teaches the siloxane content of the polycarbonate-siloxane may be 10-75% (see WO84/03898 page 5 line 33-35 as a translation). These polycarbonate-siloxanes are made from a polysiloxane and a dihydric phenol such as bisphenol A (page 10 line 1-6 of WO84/03898).
It would have been obvious to employ a polycarbonate-siloxane having a siloxane content of anywhere within the 10-75% range such as 20% as J’584’s polycarbonate-siloxane as the reference directly points to the secondary reference for its production details.
The cited example has only 8.8% of the PC-Si block polymer instead of claim 7’s about 10% minimum. However, J584 (paragraph 33) suggests the amount may vary (preferably 5-25pph). A slight increase from 8.8% to about 10% would have been obvious.
While the references do not report applicant’s electrical/absorption properties, it is assumed these are present because the proposed rejection results in a blend conforming to all of applicant’s material and amount limitations.
In regards to applicant’s dependent claims:
Claim 6’s polycarbonate is already required by claim 1. J’584 (paragraph 9) also suggests mixtures of thermoplastics thar include polycarbonate.
Presumably, a sheet of the exemplified blend will be microwave absorptive – meeting applicant’s claim 13.
J’584 (paragraph 35) suggests the additives of applicant’s claim 14.
Applicant (table 5) admits ENSACO250G has the properties of applicant’s claim 16.
The polycarbonate of the cited example is Iupilon S3000 (table 1). This is known to be a BPA polycarbonate (see paragraph 105 of Weidner 2002/0037966) -meeting applicant’s claim 18.
The proposed 20% siloxane containing polycarbonate-siloxane used at 10% in the entire composition would provide 2% siloxane based on the entire composition – meeting applicant’s claim 23.
The proposed 20% siloxane containing polycarbonate-siloxane used at 25% in the entire composition would provide 5% siloxane based on the entire composition – meeting applicant’s claims 23 and 25.
Claims 12,13,15,17,19,24 and 26 rejected under 35 U.S.C. 103 as being unpatentable over JP2011026584 in view of JP60501007 in further view of JP2019161210.
WO84/03898 is relied as a translation of JP60501007.
JP2011026584 and JP60501007 apply as explained immediately above.
JP20110265584 recognizes its electrically conductive carbon black filled polycarbonate composition is useful as packaging for electrical devices. Automotive radars are not listed as an end use.
JP2019161210 (claim 1) teaches carbon black filled thermoplastics can function as electromagnetic wave shielding/absorptive bodies in millimeter wave radar devices in automobiles (paragraph 2). The thermoplastic (claim 4) may be polycarbonate.
It would have been obvious to utilize JP2011026584’s PC/PC-siloxane/carbon black electromagnetic wave shielding composition in any article needing electromagnetic wave shielding. Millimeter wave radar devices of automobiles are one of such obvious articles given carbon filled thermoplastics in general are taught for such an end use by J’210.
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive.
Applicant argues J’584 has no examples with the newly claimed 20% siloxane containing polycarbonate-siloxane or the 10% minimum of polycarbonate-siloxane.
This is not convincing. Lack of an anticipatory example in the reference does constitute a teaching away from broader disclosure (MPEP2123 II.).
The difference between applicant’s “about 10% polycarbonate-siloxane” and the cited example’s 8.8% is so small that there is automatically an assumption that the two have the same properties (MPEP2144.05; Titanium Metals v Banner 227USPQ773).
J’584 clearly directs the reader to the secondary reference for making the polycarbonate-siloxane. The secondary reference teaches the siloxane content may vary widely. This is an extremely strong case of obviousness.
To counter the strong case of obviousness, applicant merely points to applicant’s examples and comparison examples. However, applicant’s fig 1 shows the presence (ie E1-E5) of the 20% siloxane containing polycarbonate-siloxane versus the absence (ie CE1-CE5) of the polycarbonate-siloxane. The amount of the polycarbonate-siloxane is zero or 25%. It is not apparent how this data has any relevance to the J’584 reection(s) which exemplifies the inclusion of a polycarbonate-siloxane. The data does not compare the closest prior art (MPEP716.02(e)).
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 DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/28/26
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