DETAILED ACTION
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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/23/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-5, 7, 10-16, and 19 is 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.
Regarding Claim 1,
The applicant has amended claim 1 to include the language that component C has a terminal group and points to paragraph 23 for support for this amendment. However, paragraph 23 states that “It is assumed that the substituent derived from a carboxylic acid or anhydride thereof in the side chain of the polymer (B) of the present invention reacts with
the terminal of the thermoplastic resin to form a block polymer of the thermoplastic resin, thereby forming a kind of compatibilizing agent.” which only mentions reaction of the thermoplastic resin. As claim 1 requires two thermoplastic resins, this language does not support the assertion that thermoplastic resin C must contain a terminal to react because when grouped together with thermoplastic resin A, the terminology “the thermoplastic resin” could be reasonably interpreted by the ordinarily skilled artisan to mean the blend and therefore does not require that all thermoplastic components must contain a terminal, merely that only some elements of the resin contain terminals. Thus if the thermoplastic resin used as component A contained terminals, this would meet the requirement. Further, there is no definition provided in the specification for what the applicant means by a terminal, making it unclear as to what is required on the basis of this statement and what relation there is between a terminal and a terminal group. As such, the requirement for a terminal group as called for in claim 1 does not appear to be supported by the statements of the originally submitted disclosure.
This is a New Matter rejection.
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 1-5, 7, 10-16, and 19 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.
Regarding Claim 1,
The applicant states that the composition includes two thermoplastic resins A and C and goes on to enumerate that resin C can be one of a group consisting of polyphenylene sulfide, polyether ether ketone, polyether ketone ketone, polyether ketone, or polystyrene, but does not provide a similar list for resin A. As constructed, it is unclear whether resin A is required to be different than resin C, which renders the claim to be indefinite. The applicant is required to amend the claim to state whether these two polymers can be the same. For the purposes of examination, the claim will be interpreted to allow thermoplastic resins A and C to be the same or different.
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 1-5, 7, 10-16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoe (US 20130331500) in view of Kimura (JP-H02-214774).
Regarding Claims 1-5 and 7,
Yokoe teaches a composition that is comprised of a thermoplastic resin (Paragraph 34) that can be a variety of different polymers, including polyphenylene sulfide, polyesters, polyamides, and polystyrene (Paragraph 34) and where polyphenylene sulfide and polyesters are among the most preferred options for heat resistance and mechanical considerations (Paragraph 34). The polyphenylene sulfide resin may optionally be modified to include a functional group such as an acid anhydride (Paragraph 42). Yokoe also teaches that these may be used in combinations of two or more (Paragraph 34). However Yokoe does not teach the specific composition of polymer B. Kimura teaches a modified poly(phenylene sulfide) polymer which contains the following monomeric units:
PNG
media_image1.png
154
270
media_image1.png
Greyscale
where units of formula II can comprise up to 99.9% of the repeat units and in which up to 20 parts by weight are modified to have an appended carboxylic acid or anhydride (Page 2, Lines 6-11). In formula I, all substituents can independently be 1-4 carbon alkyl chains or hydrogen (Page 2, Lines 11-17), meeting the requirements of the instant claims. X in this case is equal to a benzene ring, meeting the requirements of the instant claims. As the carboxylic acid or anhydride is added via post-polymerization modification by radical reaction (Page 3, Lines 22-25), the nature of the modified units can be of either type as specified in claim 5, based upon the monomeric units used. Kimura also teaches that the use of unsaturated dicarboxylic acids and anhydrides, specifically maleic and itaconic acids and anhydrides (Page 3, Lines 2-10). Kimura additionally teaches that the incorporation amount of the modification agent is 0.05 to 20 parts by weight in order to maintain the mechanical properties and heat resistance of the composition (Page 3, Lines 15-22). The range for this modification (monomer 3 of the instant claims) overlaps with the range of the instant claims. As Kimura notes, the amount of unsaturated acid or anhydride incorporated affects the physical properties including the heat resistance, thus affording the ordinarily skilled artisan the motivation to adjust the levels in order to maintain the desired heat resistance of the composition. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of the overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. Regarding the incorporation range of the alkyl substituted monomers, Kimura teaches that at least 0.1% must be present in order for the modification reaction to proceed (Page 2, Lines 26-35). One of ordinary skill in the art would be motivated to adjust the incorporation amount of the alkyl substituted monomers in order to have sufficient sites for the addition of the unsaturated acid or anhydride and to additionally modify other physical properties of the polymer such as melt viscosity. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of the overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Kimura also teaches that this modified polyphenylene sulfide improves the compatibility with other resins (Page 1, Lines 33-36). As such, the ordinarily skilled artisan would be motivated to incorporate this more compatibilized version of the polyphenylene sulfide to improve the mechanical properties of the resulting blend, as taught by Kimura (Page 2, lines 58-62). As Yokoe teaches the use of polyphenylene sulfides that have been modified with acid anhydrides (Paragraph 34), it would have been obvious prior to the effective filing date of the instant application to have combined the modified polyphenylene sulfide of Kimura with the composition of Kimura to obtain the predictable result of a composition with improved mechanical properties due to the improved blend compatibility afforded by the modified polyphenylene sulfide with a reasonable expectation of success.
With regard to the relative amounts of the components, Yokoe is silent. However, given the broad ranges of incorporation for the components (up to 500 parts of component C, up to 900 of component B relative to 100 parts of component A) and that Yokoe discloses the use of multiple resins, it would have been obvious prior to the effective filing date of the instant application to have incorporated the polymers in any suitable amount to achieve the desired mechanical properties such as moldability and heat resistance (pointed to by Yokoe in Paragraph 34).
Finally, regarding the requirement that component C contain terminal groups, Yokoe teaches that the thermoplastic resin can be a polymer alloy of two or more resins (Paragraph 34). As such, component C can be any of the listed thermoplastic polymers mentioned above, which would contain a terminal group, meeting the requirements of the instant claims. Additionally, Yokoe teaches that the PEEK polymer used in the composition is only required to be 60% or more by weight cyclic polymer with the remainder comprising linear polymer (Paragraph 94). Therefore, if PEEK is selected as component C, it would include terminal groups, meeting the requirement of the instant claim.
Regarding Claims 10, 12, and 13,
Yokoe in view of Kimura teaches a composition including a modified poly(phenylene sulfide) and a thermoplastic polyester as well as molding the composition as discussed above in regard to claim 1. The combination does not explicitly teach the use of a liquid crystalline polyester. However, as liquid crystalline polyesters are a subset of polyesters more generally, it would logically follow that polyesters that are liquid crystalline would be included. Additionally, Yokoe teaches the use of p-hydroxybenzoic acid as well as 6-hydroxy-2-naphthoic acid (Paragraph 70) and that copolymers can be used (Paragraph 72). As such, Yokoe teaches the use of structural components required for the instant claims. It would therefore have been obvious prior to the effective filing date of the instant application to have used any polyester, including copolymer polyesters with any ratio of individual monomers.
With regard to the formation of island and sea phases and the size of the island phase, the appearance of such structures is related to the miscibility of the polymers that comprise the island and sea phases, with some degree of incompatibility resulting in their formation. As such, any composition comprising two polymers with a sufficient level of incompatibility will afford an island and sea structure. The size of the islands is related to the amount of polymer comprising the island and as such, it would necessarily follow that altering the amount of the island-forming polymer would change the size of the island. Thus, the size of the island would be determined by the amount of polymer, rendering the size to be a result-effective variable.
With regard to the dielectric properties, the dielectric loss tangent and dielectric constant would be a function of polymers used as well as their relative incorporation amounts. It would necessarily follow that a composition comprised of the same amounts of the same components would have the same dielectric properties. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 11, 16, and 19,
Yokoe teaches that the composition may be used to generate a variety of molded products through various molding methods (Paragraph 135).
Regarding Claims 14 and 15,
While Yokoe teaches the use of modified polyphenylene sulfides, Yokoe does not teach a specific method for their generation. However, Kimura teaches that the monomers corresponding to formula I and II are mixed in solvent with a sodium sulfide solution containing base and solvent in Reference Example 1 (Page 6, Lines 22-35) and Reference Example 2 (Page 6, Line 35 to Page 7, Page 7, Line 6) in which both examples have amounts of monomer within the range of the instant claim. Regarding the monomers corresponding to formula 2, Reference Example 1 uses a dihaloxylene, which would correspond to m=2, while Reference Example 2 uses a dihalotoluene, corresponding to m=1. In a subsequent step (Reference Example 3), the polymer is then reacted in a melt kneader with maleic anhydride in a ratio of 100:1 by weight (Page 7, Lines 7-10), meeting the requirements of the instant claim. Kimura also teaches that this modified polyphenylene sulfide improves the compatibility with other resins (Page 1, Lines 33-36). As such, the ordinarily skilled artisan would be motivated to incorporate this more compatibilized version of the polyphenylene sulfide to improve the mechanical properties of the resulting blend, as taught by Kimura (Page 2, lines 58-62). As Yokoe teaches the use of polyphenylene sulfides that have been modified with acid anhydrides (Paragraph 34), it would have been obvious prior to the effective filing date of the instant application to have combined the modified polyphenylene sulfide of Kimura with the composition of Kimura to obtain the predictable result of a composition with improved mechanical properties due to the improved blend compatibility afforded by the modified polyphenylene sulfide with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 10 through 12, the applicant argues that Yokoe requires the use of cyclic PEEK in the composition and that cyclic PEEK would not have a terminal group. Because of this, the applicant argues that Yokoe does not teach the requirements of the instant claims. The examiner disagrees. Firstly, the applicant’s language for claim is uses comprising, which is open ended and would allow for the use of elements not contained within the required components. As such, Yokoe allows for compositions that would meet the requirements of the instant claims without utilizing the cyclic PEEK polymer, as noted in the rejection, with the cyclic PEEK polymer in the composition but not as one of the applicant’s required components. Indeed, Yokoe allows for the incorporation of the cyclic PEEK in amounts as low as 0.5% by weight relative to the thermoplastic components (Paragraph 122). However, in the alternative in which the cyclic PEEK represents component C, Yokoe also teaches the cyclic PEEK is not less than 60% cyclic (Paragraph 94) and that the impurity components contained within the cyclic PEEK “are mainly linear poly(ether ether ketone).” (Paragraph 94). As such, Yokoe teaches a PEEK component that would contain terminal groups based on the inclusion of linear PEEK as disclosed.
On page 11, the applicant asserts that the ordinarily skilled artisan would not be motivated to combine Kimura with Yokoe. The examiner disagrees. Yokoe teaches that polyphenylene sulfide is especially preferred (Paragraph 34), that such resins may be modified with unsaturated carboxylic acids (Paragraph 34), and further discloses the following preferred repeat units:
PNG
media_image2.png
86
264
media_image2.png
Greyscale
PNG
media_image3.png
386
242
media_image3.png
Greyscale
which includes the applicant’s required units, but does not provide guidance as to the level of incorporation of these monomers. This deficiency is removed by Kimura, which provides further details as to the polyphenylene sulfide polymer. As such, Kimura is sought only to provide guidance as to the components and amounts for the modified polyphenylene sulfide polymer. While the applicant argues that Yokoe has already solved the dispersibility issue and thus there would be no need to seek further teachings, the examiner argues that not every solution is workable for each use case and that there can be other factors, including material toughness, strength, and flexibility that would require differing solutions. Indeed Yokoe affords the ordinarily skilled artisan this freedom by disclosing that polyphenylene sulfide resins, including those with all the monomers required by the instant application along with the teaching that this resin may be further elaborated with carboxylic acid functionality. As such, Yokoe teaches that modified polyphenylene sulfide resins are useful in the composition when including the cyclic PEEK resin in spite of the applicant’s assertion that the cyclic PEEK polymer is the only required solution.
Finally, on page 12 the applicant argues that Yokoe in view of Kimura does not teach the combination of dispersibility, dielectric constant, and processability of the composition of the instant application. However, Yokoe in fact notes processability as a key feature of the taught composition (Paragraph 2) and its use in electronic parts (Paragraph 138). Further, these properties would be a function of the composition, which Yokoe in view of Kimura teaches, and as noted in the rejection, it would necessarily follow that the composition of Yokoe in view of Kimura, being comprised of the same components as the instant application, would have these properties as well. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
In summation, the applicant’s arguments are not found to be persuasive for the reasons stated. Therefore, the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
Prosecution Insights