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 .
Response to Amendment
Upon entry of the amendment filed on 09 July 2025, Claim(s) 33-35 is/are added and Claim(s) 1-32 is/are cancelled. The currently pending claims are Claims 33-35.
Based on applicants’ remarks and amendments (e.g. the specific combination of the polymer and additives), the 102 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to Pre -Grant publications are made to paragraph number under the ¶ format. Citations to other publications are made under the format “1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
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.
Claim(s) 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Otto in view of Inuzuka .
Otto discloses an EMI shielding composition comprising a thermoplastic polymer such as PA and PC-ABS, conductive additives such as MWCNT and metal powders and magnetic additives such as Ag-Cu-20, steel/carbon fibers having various D50 such as 50 microns (abs, pg. 3-6, 14 and Tables 1-4 with accompanying text). Further, Otto discloses the EMI shielding, the optimization of the loading amounts of fillers to up to % such s 75 % and mm range such as 2 mm (pg. 4, 10-12 and examples).
The Otto reference discloses the claimed invention but does not explicitly disclose the feature of specific combination of the thermoplastic (e.g. PA 6/66, PC+ABS, PPS) and the magnetic additive (e.g. Fe powder). It is noted that the Otto reference discloses various magnetic additives at known loading amount levels and the claim(s) call(s) for specific thermoplastic and magnetic additives combinations. In an analogous art, Inuzuka discloses an EMI shielding composition capable of achieving an attenuation of 60 dB comprising a thermoplastic polymer such as nylon 6 and nylon 66, conductive additives such as carbon fibers and metal fibers and magnetic additives such as steel and iron powders/fibers with various D50 values between 20-60 microns (abs, pg. 3-6). One of ordinary skill in the art would have recognized that applying the known components of Inuzaka to the teachings of Otto would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems and compositions for the benefit gain of enhancing the EMI shielding. See MPEP 2143. It is noted that the combination of Otto and Inuzaka meets the first combination specie of the Markush group. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution and loading amount optimization would be repugnant to a skilled artisan.
Regarding the claimed 20 dB attenuation and X-ray detection properties, if a prior art reference teaches the substantially identical composition, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed composition is exceedingly different from the claimed composition and/or the claimed properties are derived from a non-claimed component - thus the claimed properties would inevitably be absent.
Response to Arguments
Applicant’s arguments, see pg. 4-6, filed 09 July 2025, with respect to the 102 rejection(s) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as necessitated by the instant amendments. Further, the relevant arguments are addressed below.
Applicant argues that the cited references do not recite the combination of the specific polymer and the specific magnetic additive (pg. 4-6).
The examiner concurs that each reference would not meet the newly-amended claims; however, it is respectfully noted that the combination of the Otto and Inuzaka meet the claimed PC+ABS or PA 6 with the 70-80% of a Fe powder having a D50 of less than 45 microns.
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 TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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, Arrie Lanee Reuthers can be reached at 571.272.7026. 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.
/TRI V NGUYEN/Primary Examiner, Art Unit 1764
Prosecution Insights