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 .
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, 3-5, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over An (US 9,023,923) in view of An ‘688 (US 2015/0011688 A1) and Riise (US 8,450,382), and further in view of Namekata (US 2021/0002475). An, Riise, and Namekata were cited in a prior Office action.
Regarding claims 1, 3-5, 9-15, An teaches a flame-retardant composition including a polycarbonate component and a phosphazene flame retardant (col. 2, lines 9-14). The flame retardant may be a phenoxyphosphazene (col. 23, lines 14-15) present in amounts ranging from 1 to 20 wt% (col. 25, lines 28-30). An teaches use of a cyclic phenoxyphosphazene compound having a structure that reads on the claimed structure where k=1 and R is C1-C8 alkoxy (col. 24, lines 16-31).
The polycarbonate component may include a polysiloxane-carbonate copolymer (col 2, line 25) and an aromatic polycarbonate (col. 10, structure 14). The polysiloxane-carbonate copolymer may be present in amounts ranging from 2 to 82 wt% (col. 21, lines 59-60, 67).
An teaches use of polysiloxane-polycarbonate copolymer that contains from 1 to 50 wt% siloxane units (col. 20, lines 40-42). The polycarbonate copolymer may be used in amounts of 10 to 60 wt% (col. 9, lines 15-16), and may have weight average molecular weight ranging from 21,500 to 30,000 g/mol (col. 35, Table 7).
The composition may further include a graft polymer impact modifier in amounts of 1 to 30 wt% (col. 22, lines 12-14, 21, 51-52). Specifically, An teaches use of an impact modifier that is a graft copolymer having an elastomeric (rubbery) polymer substrate and a rigid polymeric shell grafted to the substrate (col. 22, lines 22-27). The impact modifier may have a silicone rubber substrate and may be grafted with a shell having monovinylic monomers such as acrylic acid, methacrylic acid, and methylmethacrylate (col. 22, lines 42-43).
Polytetrafluoroethylene (PTFE) may be used as an anti-drip agent in the composition in amounts ranging from 0.01 to 5.0 wt% (col. 26, lines 41-43, 63-64).
A mineral filler may further be included in amounts ranging from 0.1 to 20 wt% (col. 22, lines 57-58; col. 23, line 3).
An further teaches that the composition may include other additives such as antioxidants (col. 27, line 1).
An further teaches that the composition may be used to prepare molded articles, which may be formed using injection molding (col. 27, lines 56-57, 61-63). All of these prior art ranges overlap or encompass the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps or encompasses the claimed range. See MPEP 2144.05.
An does not teach use of aromatic polycarbonate that contains no ester groups. In the same field of endeavor, An ‘688 teaches use of bisphenol A-based (aromatic) linear polycarbonate (p. 5, [0065]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the aromatic polycarbonate of An ‘688 for use in the composition of An to arrive at the claimed invention, and because of its art-recognized suitability for the intended use. See MPEP 2144.07.
An is silent as to use of a UV absorber in the composition. In a similar field of endeavor, Riise teaches use of Irganox B900 (a known light stabilizer) in amounts ranging from 0 to 0.5 wt% (col. 42, line 3 and table 27). It would have been obvious to one of ordinary skill in the art to combine the composition of An with the stabilizer of Riise to arrive at the claimed invention, and to slow polycarbonate degradation, as taught by Riise (col. 42, line 5).
An is also silent as to use of aluminum hydroxide oxide (boehmite) in the composition. In a similar field of endeavor, Namekata teaches use of boehmite as inorganic filler (p. 3, [0034]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of An with the filler of Namekata to arrive at the claimed invention, and to achieve a composition with superior insulation reliability, adhesion property, and formability, as taught by Namekata (p. 1, [0011]).
Regarding claim 2, An as modified by An ‘688, Riise, and Namekata remains as applied to claim 1 above. An teaches that the polysiloxane-carbonate component may be one corresponding to formula (20) (col. 19, formula (20)). In this formula, E may be 3 to 500 (col. 18, lines 6-7, formula (20)). This is equivalent to the claimed n. Only one siloxane block is present, which corresponds to the claimed m=1. R may be a C1-13 monovalent organic group (col. 17, lines 60-61). This corresponds to the claimed R2. Ar is a C6-C30 arylene group. When Ar is C6 arylene (i.e. unsubstituted phenyl), the polysiloxane block reads on formula (XIII) where R1=H. Alternatively, when Ar is a dihydroxyarylene compound such as 2,2-bis(4-hydroxyphenyl)propane (i.e. bisphenol A), An’s formula (20) reads on the claimed formula (XIV) where R1=H and X=C3 alkylene.
Regarding claim 3, An as modified by An ‘688, Riise, and Namekata remains as applied to claim 1 above. An further teaches use of polysiloxane-polycarbonate copolymer that contains from 1 to 50 wt% siloxane units (col. 20, lines 40-42).
Regarding claims 4-5, An as modified by An ‘688, Riise, and Namekata remains as applied to claim 1 above. An further teaches use of a cyclic phenoxyphosphazene compound having a structure that reads on the claimed structure where k=1 and R is C1-C8 alkoxy (col. 24, lines 16-31).
Regarding claims 12-13 An as modified by An ‘688, Riise, and Namekata remains as applied to claim 1 above. An further teaches that the composition may be used to prepare molded articles, which may be formed using injection molding (col. 27, lines 56-57, 61-63).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over An in view of An ‘688, Riise, and Namekata, and further in view of Watanabe (US 2020/0263032 A1).
Regarding claims 6-8, An as modified by An ‘688, Riise, and Namekata remains as applied to claim 1 above. An further teaches that the impact modifier may be a graft polymer of silicone rubber and one or more monomers, including acrylic monomers such as methyl methacrylate or n-butyl acrylate, or monovinyl aromatic monomers such as alpha-methyl styrene (col. 22, lines 12-56).The polymer may further be a silicone rubber-butyl acrylate graft polymer that is further grafted with methyl methacrylate (col. 22, lines 12-56).
However, An is silent as to the monomer content of the impact modifier. In a similar field of endeavor, Watanabe teaches use of a silicone-acrylic graft copolymer having a weight ratio of organopolysiloxane units to (meth)acrylic ester units ranging from 50:50 to 90:10 (p. 3, [0037]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the impact modifier of An with the monomer content of Watanabe to arrive at the present invention and to increase the composition's releasability from a mold, as taught by Watanabe (p. 2, [0022]).
Response to Arguments
Applicant’s arguments, see page 6, filed 22 October 2025, with respect to the rejection(s) of claim(s) 1-13 under 35 U.S.C. 103 have been fully considered and are persuasive in light of the amended claim set. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of An, An ‘688, Riise, Namekata, and Watanabe.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762