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 .
Continued Examination Under 37 CFR 1.114
Applicant’s Request for Continued Examination is acknowledged. Claim 1 is amended. Claims 1-4, 7-10 are pending.
Response to Arguments
In their arguments dated 6/12/2026 the applicants indicated that examiner picks and chooses elements of different prior art references not because of any real motivation in the art but rather merely based on Applicant’s claims. Applicants further indicated that the examiner has not shown or explained why one of ordinary skill in the art would be motivated to make the combinations and that such a person skilled in the art would have any reasonable expectation of success.
First, not sure what applicant’s mean by “different prior art references” since all claims are rejected by Ishii. Yu is relied upon for the amounts directed specifically at PBT/PCT ratio because one distinct properties the two polymers have such as Tg, Tm, viscosity or crystallization, so the reasons for utilizing specific amounts of each have to be balanced and evidence for such balance has to be in writing. Ishii also teaches styrene/glycidyl acrylate but does not state that the two monomers make random copolymer. While this examiner understands that the formation of polymers depends on the monomer selectivity or tendency of a monomer to add to a growing polymer, what matters is what examiner knows, but what examiner can prove, hence the use of Nakamura.
With respect to picking and choosing: Ishii does disclose a lot of options for polymers; however, the applicants failed to observe or mention preferred embodiments, which are minimized down to group of 5 polyesters with PBT and PCT being within the group of 5. Additionally, Ishii clearly states that two or more polyesters can be utilized [0035]. It should be further noted, that Ishii discloses use of blends that develop anisotropy as they melt [0038]. The blend of PBT and PCT can achieve that because the anisotropy depends on the specific blend and monomer content. Again, Yu had to be utilized to reflect that. The examiner will also include a paper by Sandhya to further support examiner’s position as presented in the arguments and office action itself. Specific attention should be drawn to a table on p. 6908 depicting the properties of the two polymers as well as discussion of their thermal properties and tailoring these properties by altering the amounts and/or forming copolymers. The blend of the polyesters are considered to be well developed art, and the blending the two components would have been a knowledge one of ordinary skill in the art would have to possess.
Furthermore, the examiner did not rely on reasonable expectation of success because all components themselves are disclosed in the single prior art reference of Ishii.
It is true that Ishii does not explicitly use PCT in the examples, however, the rejection did not rely on examples. It should be noted that examples, by no means will teach away from the rest of the reference and are by no means exclusionary. When considering a reference for use in rejection the entirety of the prior art has to be considered not only examples. If PCT was in the examples, the rejection would have been anticipatory rejection, not an obviousness. Consequently, if Ishii narrowed the scope of the polyesters to only 5, applicant’s argument of picking and choosing has not ground, because PCT is explicitly disclosed in Ishii as one of the 5 polyesters, which is further supported by MPEP 2144.08 II A 4(a).
When considering the size of the genus (in this case polyesters) MPEP states that it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962). With 5 polyester listed as the preferred embodiment, the number of combinations one can envisage is truly limited.
MPEP also states that structural similarity between species discloses may provide a reason for one of ordinary skill in the art to choose the claimed species. In the instant application the PBT and PCT are polyester both based on terephthalic acid.
Polyester component is utilized in an amount of 65-99 wt.% [0025] (applicant’s total amount is up to 90.1)
Phosphorus based flame retardant (phosphinic salt) 1-35 wt.% [0051] encompasses claimed 15-18 wt.%. More preferred amount is 5-25 wt.% [0058].
Additional flame retardants components E and F, wherein E is utilized in 0.001-0.7 wt.% and a second flame retardant F (melamine polyphosphate) [0098] wherein total content of E and F is 1.0-25 wt.% [0099].
Vinyl compound is limited to preferred two one of which is a copolymer of styrene and epoxy containing monomers [0112] wherein all epoxy containing monomers are acrylics [0114]. The content of vinyl polymer is 0.05-10 wt.% most preferably 0.5-5 wt.% [0115]. It all has to add up to 100 wt.%. Looking at how the content of components is described it is always based on 100 parts of the composition. This is reflected throughout the disclosure of Ishii.
With respect to applicant’s arguments directed to specific combination of components to obtain a specific mechanical property, following should be noted: compounds and their properties are mutually exclusive, consequently if the rejection established that the components are the same, the properties of the composition will flow from each of the components utilized therein. Having said that, the claim does not show specificity of the components in the examples. Examples utilized a PBT with intrinsic viscosity of 0.8-1.1, PCT under specific tradename with intrinsic viscosity of 0.75, the flame retardant is Exolit OP2140, melamine polyphosphate is Melapur 200 and compatilibizer is Addico 9302, with specific molecular weight and glycidyl content.
Claim 1 on the other hand encompass any PBT, any PCT, generic phosphorus-based flame retardant, wherein supplement can be any molecular weight melamine polyphosphate, compatibilizer can be any molecular weight styrene-glycidyl methacrylate copolymer and any glycidyl content. Consequently, instant specification and examples do not enable for composition comprising any PBT, any PCT, any phosphorous flame retardant any melamine polyphosphate and any styrene-glycidyl methacrylate.
With respect to the content of additives, it should be noted that all components in the composition of Ishii are based on 100 wt.% of the composition. Again, the examples were not relied upon to teach specific content but ranges within which each component can be utilized, which also reflect the manner in which applicants claimed the amounts of their invention.
Declaration by co-inventor Yong Jei Sohn:
The declaration is directed to hydrolysis resistance of the composition of the present invention and retention of IZOD impact strength and tensile strength. In the declaration the evaluation criteria applied were defined as follows:
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Additionally, Table 1 from instant specification as filed was reproduced and explained:
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402
754
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Issue #1
Evaluation criteria: at first, the examiner questioned who decides what is considered 70% vs. 69% or 68%? This is because the evaluation criteria or discussion how the 70% was achieved were not explained in the specification. However, there is still an issue of how the hydrolysis resistance was determined. The composition is not subject to known established methods to truly show the hydrolysis resistance. There are several ASTM and KIS established methods which are a key to determining hydrolysis resistance of polyesters all of which are performed after hydrolysis exposure. These methods are:
ASTM D638 - tensile properties (utilized by the applicants)
ASTM D695 – compression properties (changes in compressive strength)
ASTM D746 – brittleness test (impact resistance and brittleness)
ASTM D178 – drum peel if the article is coating or a film
ASTM D3835 – capillary rheometric (changes in melt stability)
ASTM D3418 – DSC (changes in glass transition temperature)
ASTM D1204 – Dimensional stability (swelling or dimensional testing).
Hydrolysis treatment includes immersing polyesters in distilled water or a saline solution at a temperature that accelerates the degradation, and the properties are measured periodically.
Applicants further utilized method ASTM D256 to measure Izod Impact, which is IZOD Pendulum Impact resistance that measures impact toughness. Specifically, the energy absorbed before fracture under sudden impact, which do not replicate the molecular changes cause by hydrolytic degradation . While hydrolysis resistance is materials ability to resist degradation when exposed to water, which is a chemical and environment property. In polyesters water acts as plasticizer increasing chain mobility and reducing intermolecular interaction which in turn reduces the impact resistance. Consequently, Izod impact as claimed or disclosed is not viewed as a proper method to determine true hydrolysis resistance because the method will not distinguish between the actual degradation and between water being a plasticizer.
Examples in Table 1:
As it was mentioned in the arguments above, the composition subject to the testing is very specific. The list of components is as follows:
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Comparing to the claims (assuming there are no modifications to the polyesters):
Examples
Claim 1
PBT having intrinsic viscosity of 0.8-1.1
PBT having any viscosity and any molecular weight.
PCT Skypura 3502 with intrinsic viscosity if 0.75 and Tm or 280oC or higher
PCT having any viscosity, any melting point and any molecular weights.
Metal phosphinate (Exolit OP 1240)
Any phosphorus-based flame retardant known
Melamine polyphosphate (Melapur 200)
Melamine polyphosphate with any degree of polymerization
Styrene and glycidyl methacrylate polymer (Addico 9302)
Styrene glycidyl methacrylate copolymer of any molecular weight and glycidyl content
It is further noted that claim language “comprising” is open to additional component which are not disclosed in the claims such as other thermoplastic polymer, for example polyamide.
Term “resin” and “polymer” are not the same. The two differ in their composition and properties. Polymer refers to a large molecule made up of specific repeat units chemically bonded to one another. Resins are usually viscous substance used as binders and cures into rigid thermosetting plastic. Resins include chemical modifications.
While examiner appreciates applicant’s explanation of the experimental results, following has to be brought up:
Examples do not reflect all the components encompassed by the instant claim 1. The specification does not disclose any examples or any data which shows that all components encompassed by the instant claims will give the same result.
Comparative example 4 shows that the content of PBT is critical, because with higher amounts the applicants can still obtain properties comparable to that of inventive examples 1-3. While flame retardancy is lower, that is expected because the content of the flame retardant is lower. The flame retardancy depends on the content of flame retardant, as such lower flame resistance result is not unexpected.
Comparative example 6, while applicants stated that higher amounts of compatibilizer do not provide additional improvements, at the same time they do not adversely affect the properties either. Consequently, content of the compatibilizers is also viewed as not critical band the properties of the composition of CE6 are not distinguished from the properties of the inventive composition in examples 1-3.
In summary, the declaration and specification are not commensurate with the scope of the claims. Consequently, the rejections of record are not overcome and are restated here to reflect the amendments to the claim.
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 Lin (CN 107974057 translation provided)
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.
Additional flame retardants components E and F, wherein E is utilized in 0.001-0.7 wt.% and a second flame retardant F (melamine polyphosphate) [0098] wherein total content of E and F is 1.0-25 wt.% [0099].
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].
The content of vinyl polymer is 0.05-10 wt.% most preferably 0.5-5 wt.% [0115]. It all has to add up to 100 wt.%. Looking at how the content of components is described it is always based on 100 parts of the composition. This is reflected throughout the disclosure of Ishii.
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 5 polyesters, which is not a laundry list. While the PBT and PCT can be used in a mixture, their content has not been disclosed by Ishii. The careful balance between the two claimed polyesters is important because PBT is crystalline and PCT is amorphous.
Yu discloses another flame retardant molding composition for use in automotive industry, which recites PBT and PCT resins. 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. The two resins [0063] have structures similar to each other and have SP values close to each other, and thus compatibilizy is high and transesterification occurs easily. The amorphous resin is introduced into the crystalline resin to and in addition to transesterification it will achieve anisotropy that Ishii needs. 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 utilize 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, which result from the chemical and structural similarities between the two polymers as explained in both Yu and Ishii.
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 state that these polymers are random polymers, even though term copolymer reads on random copolymer or block copolymer (there are only two choices really), so other references may not be necessary.
Lin discloses specifically a blend of PBT and PCT that comprises flame retardants. The important aspects of the teachings of Lin is in the selection of compatibilizers specifically suitable for use in PBT/PCT blends. According to claim 5, these compatibilizers are copolymers of vinyl monomer with glycidyl methacrylate, wherein styrene glycidyl methacrylate is explicitly claimed, wherein term copolymer meets both block and random copolymers. The reasons why such compatibilizers are utilized is to reduce warpage of the PBT/PCT alloy. The compatibilizer of Lin is also reported to improve PBT and PCT bond which results in better compatibility.
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 Lin and thereby obtain the claimed invention. Lin states that the claimed compatibilizers contribute to PBT and PCT blend having low warpage due to improved bonding between the two polyesters. At the same time, because of improved bonding and compatibility, the 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. This is because the reactive glycidyl functionality responsible for compatibilization is present in both random and block copolymers
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).
Relevant Prior Art
US 2020/0385572 teaches use of Addico trandames in polyester compositions.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 28, 2026
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