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 .
Response to Arguments
In their response dated 2/20/2026 the applicants narrowed down the scope of the claims, with respect to the content of each component. Applicants further limited the synergist to melamine polyphosphate and compatibilizer to styrene-glycidyl methacrylate random copolymer.
The applicants amendment further included the comparison of the examples of the prior art to the content of each component as claimed. Please note, that once scanned the color red is not reflected. Instead the text shows up pale gray sometimes hard to read.
The examiner appreciates the Table summarizing the content, however; the comparison cannot just include examples. Examples in no way limit the entirety of the teachings of the prior art. Comparison of the examples and disclosing all the component for each reference does not address the grounds of rejection because Yu and Nakamura were utilized for a very specific reason. Consequently, applicant’s arguments failed to address grounds of rejection as stated in the office action dated 11/20/2025.
The rejection in office action dated 11/20/2025 is an obviousness rejection. The prior art of Ishii teaches polyester composition which can comprise blends of the polyesters, wherein the polyesters include PBT and PCT. Ishii teaches phosphorous based flame retardants, and a synergist which include melamine polyphosphate. Instant specification provides ranges for all of the components wherein phosphinic acid salt range of 5-25 wt.% [0057], flame retardant synergist includes melamine polyphosphate and is utilized in amount of 25 parts or less [0098-0099]. Ishii also teaches compatibilizer that is based on ethylene, styrene and glycidyl methacrylate, wherein glycidyl methacrylate is grafted on to styrene [0125].
Ishii already disclosed PBT and PCT polyesters, Yu was utilized to show the content of each that is good for molding composition. Important to note is that both Ishii and Yu disclose compositions that are used to make automotive parts, which means that one of ordinary skill in the art would have to possess knowledge of mixing various polymers, including PBT and PCT and how their own properties would mutually combine to form molding composition. The PBT in Ishii is utilized in amount of 50-80 parts and PCT is utilized in 20-50 parts. Range of PBT overlaps with claimed range and range of PCT fully encompasses claimed range.
Ishii also teaches vinyl resin modified with epoxy [0116] using peroxide. The vinyl compound includes styrene [0108] with polystyrene resin wherein monomer grafted thereon includes glycidyl acrylate [0114]. The vinyl compound is utilized in amount of 0.05-20 wt.%. While one could argue that glycidyl group is randomly distributed throughout polystyrene, however; Ishii says that it is a graft polymer not random copolymer. Hence Nakamura was cited to explicitly provide term “random copolymer”. Most importantly Ishii already teaches the importance of having epoxy group to improve properties such as impact resistance and compatibility because epoxy groups will react with incorporated into composition.
It should also be noted that if applicant’s narrower ranges for each component are utilized there is still approximately 13% of other components that can be utilized in the composition but are not disclosed.
With respect to unexpected results, there is more to it than just varying too many components at the same time. Even with the varying amounts, Ishii alone meets the UL 94 test of V-1 or higher. In fact most of Ishii’s examples show V-0 rating. With respect to the properties of Izod Impact strength while Ishii did not disclose them, a sound rationale was set forth to which applicants did not respond. Additionally, applicant’s examples disclose tensile strength, wherein 1 kgf/cm2 is equal to 0.98 MPa. The tensile strength of instant invention (example 1) would be 44 MPa (before PCT), which is what Ishii encompasses. With respect to hydrolysis resistance, circles, crosses and triangles cannot be properly evaluated because these tests are subject to human’s interpretation as to what is considered good, average or poor. This type of result will vary from one human to another regardless how skilled they are. Consequently, hydrolysis resistance is too subjective to be compared to any prior art. Consequently, the examiner cannot confirm how unexpected these results really are.
In summary, rejections of record are not overcome and will be restated to reflect the amendment to the claims.
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.
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 1-4, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (US 2011/0275743) in view of Yu (US 2015/0141560) and Nakamura (US 5,006,610).
With respect to claims 1-3, Ishii discloses following molding composition for use automotive industry:
Component A: 65-99 wt.% of polyester resin (claim 1), wherein polyester is defined as being combination of two or more, wherein particularly preferred polyester include PBT and PCT (bottom of [0035], which narrows the list of polyesters to choose from dramatically.
Component B: 1-35 wt.% of phosphorus compound which is phosphinic acid salt (claim 1).
Components E and F: additional flame retardant that comprises phosphorus containing flame retardant (E), and nitrogen containing flame retardant (F) (claim 7). Compound F is defined as preferably melamine polyphosphate. Exemplary tradename is MPP-A CAS number 20208-95-1 [0098] and wherein melamine polyphosphates are known synergists for phosphinic acid ester flame retardants.
The vinyl compound, although not claimed, is a vinyl resin [0107] for its influence on impact resistance, ductility and due to presence of glycidyl group compatibility. Examples of resins that can be used include polystyrene [0109-0110], which can be grafted or copolymerized with unsaturated carboxylic acid or epoxy compound [0112]. The epoxy compounds include glycidyl methacrylates and glycidyl acrylates, which can be grafted onto polystyrene or copolymerized with styrene monomer [0114].
As it was mentioned above Ishii discloses preferred polyesters that can be utilized in mixture of two or more, include PBT and PCT out of 6 which is not a laundry list. While the PBT and PCT are explicitly taught that they can be used in a mixture, their content has not be disclosed by Ishii.
Yu discloses another flame retardant molding composition for use in automotive industry, which recites PBT and PCT. Abstract the mixture comprises 50-80 parts of crystalline polyester and 20-50 parts of amorphous polyester. Preferred crystalline polyester is PBT or PET [0051] having intrinsic viscosity of 0.4-1.5 dl/g preferably 0.7-7 dl/g [0053]. Preferred amorphous polyester is PCT [0058] sold under tradename Eastar AN-004 and Kodar therm X6761 which have intrinsic viscosity of 0.7-0.85 dl/g and melting point higher than 280oC. The viscosities of the two polymers further meet limitations of instant claims 2 and 3 of the instant invention.
According to Yu combination of the two polyesters in claimed ranges provide composition having high fluidity during injection molding along with improved impact resistance of the molded article. These are the same properties required from the composition of Ishii.
In the light of the above disclosure it would have been obvious to one of ordinary skill in the art at the time instant invention was filed to utilized PBT and PCT of Ishii in the amounts disclosed in Yu. Such modification would result in molded article wherein the composition has excellent fluidity during injection molding and still provide flame retardant, injection molded article that is used in automotive industry.
With respect to compatibilizers, as it was mentioned above Ishii discloses polymers which are graft or copolymers between monomers such as styrene and glycidyl acrylates. However Ishii does not explicitly states that these polymers are random polymers.
Nakamura discloses a polyester composition for use in automotive industry. The composition comprises aromatic polyester which is also used in making molded article and which also comprises epoxy compound that imparts to the composition dimensional stability and improves mechanical properties. Specifically, compound in col. 2, line 30, which is styrene polymer functionalized with glycidyl methacrylate. Nakamura clearly states that using such component in amount lower than 0.05 parts does not result in composition having good impact resistance. At the same time if amounts are too high the deflection temperature decreases.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize styrene-glycidyl acrylate compound of Nakamura and thereby obtain the claimed invention. Nakamura states that the compound is highly reactive with polyester (bottom of col. 8) which improves compatibility of the polyester composition. At the same time, mechanical properties of the composition are improved as well. Consequently using polymer of Ishii in a form of random polymer would not affect the properties of the teachings of Ishii. Random polymer would also improve compatibility and mechanical properties as required by Ishii and can still be used to make injection molded articles for automotive industry.
With respect to claim 4, the phosphinic compound of Ishii is exolit OP 1240, which is the same phosphinic compound utilized in applicant’s examples. As such by virtue of tradename the compounds are the same.
With respect to claim 7, other additives include hindered phenolic antioxidants [0199], UV absorbers [0200], Tinuvin light stabilizer [0201] and the like.
With respect to claim 8, the composition of Ishii is used to make a molded article (See rejection of claim 1 above and claim 8 of Ishii)
With respect to claim 9, Impact strength in Ishii is defined as Izod impact test [0214-0215]. While conversion from kgf/cm2 to kJ/m2 can be made by first converting kgf to N then to kJ and cm2 can be converted to m2, the two disclosures utilize very different methods and are used in different physical contexts and therefore are fundamentally different measurements. However, absent showing of evidence showing otherwise, since the polymers of Ishii meet the limitation of the instant invention along with flame retardant system and additives, all of which are utilized in amounts that fall within the amounts of instant claim, the property of Isod impact will be within the same range as that of instant claim 9. Specifically, "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.
With respect to claim 10, composition of Ishii has a flame retardancy rating of V1 or higher (see Table 2 or 4 as an example).
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 11, 2026