DETAILED ACTION
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 Amendment
Applicant’s amendment filed on 08/15/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-4, 6, 10, 12, 13 and 22-33 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 09/29/2025 is considered and signed IDS form is attached.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 10, 12, 13 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sugano et al. (JP H0912843 A cited in IDS) in view of Del Agua Hernandez et al. (WO 2017/145075 A1 cited in IDS), Goossens et al. (WO 2008/136839 A1 cited in IDS) and Fernandez (US 2017/0313815 A1). It is noted that the disclosures of Sugano et al. are based on a machine translation (cited in IDS) of the reference.
Regarding claims 1-4, Sugano et al. disclose a resin composition comprising 1 to 99 wt% of aromatic homopolycarbonate and 99 to 1 wt% of aromatic polyester such as polybutylene terephthalate (see Abstract). Given that there is no disclosure of any other kind of polyester, the aromatic polyester consists of polybutylene terephthalate. Accordingly, the combined amount of the aromatic homopolycarbonate and the aromatic polyester is 100 wt%. The aromatic homopolycarbonate is produced by the melt transesterification of dihydroxy compound such as 2,2-bis-(4-hydroxyphenyl)propane, i.e. bisphenol A and a carbonic diester such as diphenyl carbonate, i.e. diaryl carbonate (see Abstract and paragraphs 0014, 0015). The terminal hydroxyl group of the aromatic homopolycarbonate by the melt transesterification method is 3 mol% or more and less than 60 mol% (see paragraph 0011). Accordingly, the endcap level is 40 to 97 mol%. As evidenced by the present specification, the endcap level is defined as the percentage of polycarbonate chains which are not hydroxyl groups and the endcap level is determined using mol% of terminal hydroxyl group (see paragraph 0041 of published application). Given that the aromatic homopolycarbonate is produced by the melt transesterification process, the aromatic homopolycarbonate is a melt polycarbonate and the aromatic homopolycarbonate comprises 100 wt% of the melt polycarbonate. Accordingly, the aromatic homopolycarbonate consists of a melt polycarbonate.
Sugano et al. do not disclose the melt polycarbonate has a Fries branching content as presently claimed. Sugano et al. do not disclose the resin composition comprising an impact modifier. Sugano et al. do not disclose an end group of the aromatic polycarbonate that does not contain an OH end group corresponds to a molecule of an end-capping agent selected from paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol.
Del Agua Hernandez et al. disclose a melt polycarbonate having Fries branching content of less than 1500 ppm in order to improve moldability and impact strength (see Abstract and paragraphs 0038-0040).
In light of motivation for using the melt polycarbonate having Fries branching content of less than 1500 ppm disclosed by Del Agua Hernandez et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the melt polycarbonate having Fries branching content of less than 1500 ppm in Sugano et al. in order to improve moldability and impact strength, and thereby arrive at the claimed invention.
Sugano et al. in view of Del Agua Hernandez et al. do not disclose the resin composition comprising an impact modifier. Sugano et al. in view of Del Agua Hernandez et al. do not disclose an end group of the aromatic polycarbonate that does not contain an OH end group corresponds to a molecule of an end-capping agent selected from paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol.
Goossens et al. disclose a polycarbonate composition comprising polycarbonate prepared by melt polymerization (see Abstract). The polycarbonate composition comprises an impact modifier in amount of 0.01 to 10 wt% (see page 23, paragraph 2 and page 24, paragraph 2). The impact modifier can be core-shell polymer (see page 23, paragraph 2).
In light of motivation for using 0.01 to 10 wt% of impact modifier such as core-shell polymer disclosed by Goossens et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use impact modifier of Goossens et al. in the resin composition of Sugano et al. in view of Del Agua Hernandez et al. in order to improve impact properties, and thereby arrive at the claimed invention.
Sugano et al. in view of Del Agua Hernandez et al. and Goossens et al. do not disclose an end group of the aromatic polycarbonate that does not contain an OH end group corresponds to a molecule of an end-capping agent selected from paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol.
Fernandez disclose a melt polymerization of a carbonate compound and a dihydroxy compound to prepare a melt polycarbonate, and adding an end-capping agent such as paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol (see Abstract and paragraph 0013). The end-capping agent provides a polycarbonate with an end-capping level of greater than or equal to 50 wt% and improves the impact properties of the melt polycarbonate (see paragraph 0013 and 0080).
In light of motivation for using an end-capping agent such as paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol disclosed by Fernandez as described above, it therefore would have been obvious to one of the ordinary skill in the art to use an end-capping agent such as paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol while preparing the melt polycarbonate in Sugano et al. in view of Del Agua Hernandez et al. and Goossens et al. in order to improve impact properties of melt polycarbonate, and thereby arrive at the claimed invention.
Given that the resin composition of Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez is identical to that presently claimed, the resin composition of Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez has presently claimed properties.
Regarding claim 10, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez disclose the resin composition as set forth above. Given that the amount of filler can be 0 wt%, the filler is optional. Accordingly, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez meets the present claim.
Regarding claims 12 and 13, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez disclose the resin composition as set forth above. Further, Sugano et al. disclose a polycarbonate resin is used in electrical and home appliance parts (see paragraph 0002).
Therefore, as taught by Sugano et al., it would have been obvious to one of the ordinary skill in the art to prepare an article comprising the resin composition of Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez, wherein the article is an electrical appliance (electrical equipment), and thereby arrive at the claimed invention. That is, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez disclose an article comprising the composition and an electrical equipment comprising the article as presently claimed.
Regarding claim 22, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez disclose the resin composition as set forth above. Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez do not disclose the article as presently claimed.
As indicated by Goossens et al., it is well known that the polycarbonate compositions can be molded into useful shaped articles such as automotive headlight lenses (automotive part) (see page 31, paragraph 2).
Therefore, as taught by Goossens et al., it would have been obvious to one of the ordinary skill in the art to prepare an article comprising the resin composition of Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez, wherein the article is an automotive headlight lens, and thereby arrive at the claimed invention. The automotive head light lens reads on the article is a vehicular body part.
Claims 6, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sugano et al. (JP H0912843 A cited in IDS) in view of Del Agua Hernandez et al. (WO 2017/145075 A1 cited in IDS), Goossens et al. (WO 2008/136839 A1 cited in IDS) and Fernandez (US 2017/0313815 A1), as applied to claim 4 above, further in view of Chang et al. (US 9,045,633 B1 cited in IDS).
Regarding claims 6, 23 and 24, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez disclose the resin composition as set forth above.
Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez do not disclose the resin composition comprising a nucleating agent.
Chang et al. disclose a thermoplastic polycarbonate composition comprising an aromatic polycarbonate resin and a nucleating agent such as talc (see Abstract, col. 3, lines 8-11 and col. 7, lines 40-45). The amount of nucleating agent is about 0.1 to about 1.0 wt% in order to provide nucleation efficiency, heat resistance and impact resistance as well as surface appearance (see col.7, lines 50-51 and col. 7-8, lines 65-6).
In light of motivation for using about 0.1 to about 1.0 wt% of nucleating agent such as talc disclosed by Chang et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use about 0.1 to about 1.0 wt% of nucleating agent such as talc in the resin composition comprising aromatic polycarbonate of Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez in order to provide nucleation efficiency, heat resistance and impact resistance as well as surface appearance, and thereby arrive at the claimed invention.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Sugano et al. (JP H0912843 A cited in IDS) in view of Del Agua Hernandez et al. (WO 2017/145075 A1 cited in IDS), Goossens et al. (WO 2008/136839 A1 cited in IDS) and Fernandez (US 2017/0313815 A1), as applied to claim 1 above, further in view of Chang et al. (US 9,045,633 B1 cited in IDS) and Sun et al. (US 2015/0368458 A1 cited in IDS).
Regarding claims 25 and 27, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez disclose the resin composition as set forth above.
Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez do not disclose the resin composition comprising a nucleating agent. Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez do not disclose poly(butylene terephthalate) as presently claimed.
Chang et al. disclose a thermoplastic polycarbonate composition comprising an aromatic polycarbonate resin and a nucleating agent such as talc (see Abstract, col. 3, lines 8-11 and col. 7, lines 40-45). The amount of nucleating agent is about 0.1 to about 1.0 wt% in order to provide nucleation efficiency, heat resistance and impact resistance as well as surface appearance (see col.7, lines 50-51 and col. 7-8, lines 65-6).
In light of motivation for using about 0.1 to about 1.0 wt% of nucleating agent such as talc disclosed by Chang et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use about 0.1 to about 1.0 wt% of nucleating agent such as talc in the resin composition comprising aromatic polycarbonate of Sugano et al. in view of Del Agua Hernandez et al., Goossens et al. and Fernandez in order to provide nucleation efficiency, heat resistance and impact resistance as well as surface appearance, and thereby arrive at the claimed invention.
Sugano et al. in view of Del Agua Hernandez et al., Goossens et al., Fernandez and Chang et al. do not disclose poly(butylene terephthalate) as presently claimed.
Sun et al. disclose a thermoplastic composition comprising a blend of polycarbonate component and polybutylene component, wherein polybutylene component is polybutylene terephthalate (see Abstract and paragraph 0125). The polybutylene terephthalate has a weight average molecular weight from about 5,000 to about 130,000 g/mol as determined by gel permeation chromatography with polystyrene standards (see paragraph 0140). The polybutylene terephthalate is highly miscible with the polycarbonates when blended (see paragraph 0125).
In light of motivation for using polybutylene terephthalate has a weight average molecular weight from about 5,000 to about 130,000 g/mol disclosed by Sun et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use polybutylene terephthalate having a weight average molecular weight from about 5,000 to about 130,000 g/mol in Sugano et al. in view of Del Agua Hernandez et al., Goossens et al., Fernandez and Chang et al. in order to provide high miscibility with the polycarbonate, and thereby arrive at the claimed invention.
Regarding claim 26, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al., Fernandez, Chang et al. and Sun et al. disclose the resin composition as set forth above. Given that the amount of filler can be 0 wt%, the filler is optional. Accordingly, Sugano et al. in view of Del Agua Hernandez et al., Goossens et al., Fernandez, Chang et al. and Sun et al. meets the present claim.
Claims 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Sugano et al. (JP H0912843 A cited in IDS) in view of Fernandez (US 2017/0313815 A1). It is noted that the disclosures of Sugano et al. are based on a machine translation (cited in IDS) of the reference.
Regarding claims 28-31, Sugano et al. disclose a resin composition comprising 1 to 99 wt% of aromatic homopolycarbonate and 99 to 1 wt% of aromatic polyester such as polybutylene terephthalate (see Abstract). Accordingly, the combined amount of the aromatic homopolycarbonate and the aromatic polyester is 100 wt%. The aromatic homopolycarbonate is produced by the melt transesterification of dihydroxy compound such as 2,2-bis-(4-hydroxyphenyl)propane, i.e. bisphenol A and a carbonic diester such as diphenyl carbonate, i.e. diaryl carbonate (see Abstract and paragraphs 0014, 0015). The terminal hydroxyl group of the aromatic homopolycarbonate by the melt transesterification method is 3 mol% or more and less than 60 mol% (see paragraph 0011). Accordingly, the endcap level is 40 to 97 mol%. As evidenced by the present specification, the endcap level is defined as the percentage of polycarbonate chains which are not hydroxyl groups and the endcap level is determined using mol% of terminal hydroxyl group (see paragraph 0041 of published application). Given that the aromatic homopolycarbonate is produced by the melt transesterification process, the aromatic homopolycarbonate is a melt polycarbonate and the aromatic homopolycarbonate comprises 100 wt% of the melt polycarbonate. Accordingly, the aromatic homopolycarbonate consists of a melt polycarbonate.
Sugano et al. do not disclose an end group of the aromatic polycarbonate that does not contain an OH end group corresponds to a molecule of an end-capping agent selected from paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol.
Fernandez disclose a melt polymerization of a carbonate compound and a dihydroxy compound to prepare a melt polycarbonate, and adding an end-capping agent such as paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol (see Abstract and paragraph 0013). The end-capping agent provides a polycarbonate with an end-capping level of greater than or equal to 50 wt% and improves the impact properties of the melt polycarbonate (see paragraph 0013 and 0080).
In light of motivation for using an end-capping agent such as paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol disclosed by Fernandez as described above, it therefore would have been obvious to one of the ordinary skill in the art to use an end-capping agent such as paracumyl phenol, dicumyl phenol, or p-tert-butyl phenol while preparing the melt polycarbonate in Sugano et al. in order to improve impact properties of melt polycarbonate, and thereby arrive at the claimed invention.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Sugano et al. (JP H0912843 A cited in IDS) in view of Fernandez (US 2017/0313815 A1) as applied to claim 28 above, further in view of Del Agua Hernandez et al. (WO 2017/145075 A1 cited in IDS) and Goossens et al. (WO 2008/136839 A1 cited in IDS).
Regarding claim 32, Sugano et al. in view of Fernandez disclose the resin composition as set forth above.
Sugano et al. in view of Fernandez do not disclose the melt polycarbonate has a Fries branching content as presently claimed. Sugano et al. in view of Fernandez do not disclose the resin composition comprising an impact modifier.
Del Agua Hernandez et al. disclose a melt polycarbonate having Fries branching content of less than 1500 ppm in order to improve moldability and impact strength (see Abstract and paragraphs 0038-0040).
In light of motivation for using the melt polycarbonate having Fries branching content of less than 1500 ppm disclosed by Del Agua Hernandez et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the melt polycarbonate having Fries branching content of less than 1500 ppm in Sugano et al. in view of Fernandez in order to improve moldability and impact strength, and thereby arrive at the claimed invention.
Sugano et al. in view of Fernandez and Del Agua Hernandez et al. do not disclose the resin composition comprising an impact modifier.
Goossens et al. disclose a polycarbonate composition comprising polycarbonate prepared by melt polymerization (see Abstract). The polycarbonate composition comprises an impact modifier in amount of 0.01 to 10 wt% (see page 23, paragraph 2 and page 24, paragraph 2). The impact modifier can be core-shell polymer (see page 23, paragraph 2).
In light of motivation for using 0.01 to 10 wt% of impact modifier such as core-shell polymer disclosed by Goossens et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use impact modifier of Goossens et al. in the resin composition of Sugano et al. in view of Fernandez and Del Agua Hernandez et al. in order to improve impact properties, and thereby arrive at the claimed invention.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Sugano et al. (JP H0912843 A cited in IDS) in view of Fernandez (US 2017/0313815 A1) as applied to claim 28 above, further in view of Sun et al. (US 2015/0368458 A1 cited in IDS).
Regarding claim 33, Sugano et al. in view of Fernandez disclose the resin composition as set forth above.
Sugano et al. in view of Fernandez do not disclose poly(butylene terephthalate) as presently claimed.
Sun et al. disclose a thermoplastic composition comprising a blend of polycarbonate component and polybutylene component, wherein polybutylene component is polybutylene terephthalate (see Abstract and paragraph 0125). The polybutylene terephthalate has a weight average molecular weight from about 5,000 to about 130,000 g/mol as determined by gel permeation chromatography with polystyrene standards (see paragraph 0140). The polybutylene terephthalate is highly miscible with the polycarbonates when blended (see paragraph 0125).
In light of motivation for using polybutylene terephthalate has a weight average molecular weight from about 5,000 to about 130,000 g/mol disclosed by Sun et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use polybutylene terephthalate having a weight average molecular weight from about 5,000 to about 130,000 g/mol in Sugano et al. in view of Fernandez in order to provide high miscibility with the polycarbonate, and thereby arrive at the claimed invention.
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.
Claims 1-4, 6, 10, 12, 13, 22-24 and 28-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-14, 17-20 and 22 of copending Application No. 17/797,615 in view of Chang et al. (US 9,045,633 B1 cited in IDS).
Copending application 17/797,615 disclose a composition. The only differences between the present claims and copending claims are that copending claims (i) do not disclose type and amount of nucleating agent, (ii) disclose a specific type of impact modifier, (iii) disclose a specific melt polycarbonate, (iv) disclose aromatic polycarbonate having specific weight average molecular weight, and (v) disclose the combined amount of the polyester, the aromatic polycarbonate and the impact modifier.
Regarding (i), Chang et al. disclose a thermoplastic polycarbonate composition comprising an aromatic polycarbonate resin and a nucleating agent such as talc (see Abstract, col. 3, lines 8-11 and col. 7, lines 40-45). The amount of nucleating agent is about 0.1 to about 1.0 wt% in order to provide nucleation efficiency, heat resistance and impact resistance as well as surface appearance (see col.7, lines 50-51 and col. 7-8, lines 65-6).
In light of motivation for using about 0.1 to about 1.0 wt% of nucleating agent such as talc disclosed by Chang et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use about 0.1 to about 1.0 wt% of nucleating agent such as talc in the resin composition comprising aromatic polycarbonate of copending application in order to provide nucleation efficiency, heat resistance and impact resistance as well as surface appearance, and thereby arrive at the claimed invention.
Regarding (ii), the specific type of impact modifier in copending application is within the broad disclosure of any type of impact modifier in the present application.
Regarding (iii), the specific melt polycarbonate of copending application is within the broad disclosure of the melt polycarbonate of present application.
Regarding (iv), the specific aromatic polycarbonate of copending application is within the broad disclosure of the aromatic polycarbonate of present application.
Regarding (v), the specific combined amount of the polyester, the aromatic polycarbonate and the impact modifier in copending application is within the broad disclosure of any combined amount of the polyester, the aromatic polycarbonate and the impact modifier in the present application.
This is a provisional nonstatutory double patenting rejection.
Claims 28-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 17-22 of copending Application No. 17/797,615.
Copending application 17/797,615 disclose a composition. The only differences between the present claims and copending claims are that copending claims (i) disclose a specific type of impact modifier, (ii) disclose a specific melt polycarbonate, (iii) disclose the combined amount of the polyester, the aromatic polycarbonate and the impact modifier, (iv) disclose a nucleating agent, and (v) disclose polyester comprises poly(ethylene terephthalate).
Regarding (i), the specific type of impact modifier in copending application is within the broad disclosure of any type of impact modifier in the present application.
Regarding (ii), the specific melt polycarbonate of copending application is within the broad disclosure of the melt polycarbonate of present application.
Regarding (iii), the specific combined amount of the polyester, the aromatic polycarbonate and the impact modifier in copending application is within the broad disclosure of any combined amount of the polyester, the aromatic polycarbonate and the impact modifier in the present application.
Regarding (iv) and (v), while the copending claims disclose a nucleating agent and a poly(ethylene terephthalate) not recited in the present claims, in light of the open language of the present claims, i.e. comprising, it is clear that the present claims are open to the inclusion of additional components including a nucleating agent and a poly(ethylene terephthalate) as disclosed in the copending claims, and thereby one of ordinary skill in the art would arrive at the present invention from the copending one.
This is a provisional nonstatutory double patenting rejection.
Claims 28-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8-10, 16, 17, 21 and 24-27 of copending Application No. 17/797,781 in view of Goossens et al. (WO 2008/136839 A1 cited in IDS).
Copending application 17/797,781 disclose a composition. The only differences between the present claims and copending claims are that copending claims (i) do not disclose an impact modifier, (ii) disclose a polymer miscible with melt polycarbonate, (iii) disclose a heat distortion temperature, (iv) disclose a specific melt polycarbonate, (v) disclose polyester comprises poly(ethylene terephthalate), and (vi) disclose a nucleating agent.
Regarding (i), Goossens et al. disclose a polycarbonate composition comprising polycarbonate prepared by melt polymerization (see Abstract). The polycarbonate composition comprises an impact modifier in amount of 0.01 to 10 wt% (see page 23, paragraph 2 and page 24, paragraph 2).
In light of motivation for using 0.01 to 10 wt% of impact modifier disclosed by Goossens et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use impact modifier of Goossens et al. in the composition of copending application in order to improve impact properties, and thereby arrive at the claimed invention.
Regarding (ii), (v) and (vi), while the copending claims disclose a polymer miscible with melt polycarbonate, a poly(ethylene terephthalate) and a nucleating agent not recited in the present claims, in light of the open language of the present claims, i.e. comprising, it is clear that the present claims are open to the inclusion of additional components including a polymer miscible with melt polycarbonate, a poly(ethylene terephthalate) and a nucleating agent as disclosed in the copending claims, and thereby one of ordinary skill in the art would arrive at the present invention from the copending one.
Regarding (iii), a specific heat distortion temperature of composition of copending application is within broad disclosure of any heat distortion temperature of composition of present application.
Regarding (iv), the specific melt polycarbonate of copending application is within the broad disclosure of the melt polycarbonate of present application.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 08/15/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that however, it is respectfully submitted that the Non-Final Office Action dated May 7, 2025, has failed to establish that Sun suggests that a polybutylene terephthalate component having a weight average molecular weight from about 5,000 to about 130,000 g/mol is needed to provide highly miscibility with polycarbonates when blended, as opposed to polyesters, including polybutylene terephthalate. Rather, it is further respectfully submitted that it is the present application that discloses a poly(butylene terephthalate) having a weight average molecular weight of 60,000 to 150,000 g/mol as determined using gel permeation chromatography with polystyrene standards in a composition as claimed.
However, Sun et al. disclose polybutylene terephthalate having a weight average molecular weight from about 5,000 to about 130,000 g/mol are highly miscible with polycarbonates (see paragraphs 0125 and 0140). While Sun et al. may disclose other polyesters, the fact remains, it specifically discloses polybutylene terephthalate as claimed. Given that Sugano disclose a blend of polycarbonate and polybutylene terephthalate and given that Sun et al. provides proper motivation for using a specific polybutylene terephthalate, it would have been obvious to combine Sun et al. with Sugano et al.
Further, while applicant argues that the present claims require a polybutylene terephthalate having weight average molecular weight as claimed determined using gel permeation chromatography with polystyrene standards, absent evidence regarding how the weight average molecular weight is measured and given that Sun et al. disclose weight average molecular weight that overlaps that presently claimed, it is the examiner’s position that Sun et al. meets the claimed weight average molecular weight absent such evidence to the contrary.
Applicants argue that to facilitate prosecution of the subject application, the Applicant will consider filing a terminal disclaimer over copending Application Nos. 17/797,781 under separate cover, as appropriate, once allowable subject matter has been agreed upon.
It is noted that the double patenting rejection based on 17/797,781 was withdrawn in the last office action. However, in light of amendments (new claims 28-33), the double patenting rejection based on 17/797,781 is set forth above. Further, it is noted that the double patenting rejection based on 17/797,615 has been modified in light of amendments.
In light of amendments, claim objection is withdrawn.
In light of amendments, 112(b) paragraph rejections are withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787