DETAILED ACTION
This office action is in response to Remarks and Amendments filed June 5, 2025 in regards to a 371 application filed November 4, 2022 claiming priority to PCT/JP2021/017449 filed May 7, 2021 and foreign application JP2020-082231 filed May 7, 2020. Claims 1-15 have been elected with traverse. Claims 16-24 have been withdrawn as non-elected. Claims 1, 8, and 10 have been amended. Claims 2-4 have been cancelled without prejudice. Claims 1 and 5-15 are currently being examined.
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 Argument
In view of the Remarks and Amendments, the rejections of claims 1-15 under 35 USC § 102 have been withdrawn and new rejections of claims 1 and 5-15 under 35 USC § 103 have been made.
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.
Claims 1 and 5-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (WO 2020/022208 A1 wherein US 2021/029547 A1 is used as the English language translation).
In regards to claims 1 and 5-6, Yamanaka et al. disclose a galvanoscanning laser-weldable polybutylene terephthalate resin composition comprising polybutylene terephthalate resin, epoxy compounds, elastomers, inorganic fillers, and colorants in Examples 1-4, 11-14, and 21-23 of Tables 2-4. Yamanaka et al. teach that test pieces (articles) were laser welded using a galvanoscanning laser device [0209]. Yamanaka et al. disclose that per 100 parts by mass of a thermoplastic resin (A) that the thermoplastic resin contains 50 to 100 parts by mass of polybutylene terephthalate [Abstract; 0043]. Yamanaka et al. disclose, in addition, the composition comprises 0-30 parts by mass of an elastomer (B), 0.3-4 parts by mass of an epoxy compound (C) (i.e., reactive compound), 15-80 parts by mass of a reinforcing inorganic filler (D), and 1-15 parts by mass of a masterbatch (E) containing a silicone compound and a thermoplastic resin [0043; Claim 1].
Yamanaka et al. disclose the elastomer (B) may comprise copolymers such as epoxy group-containing (meth)acrylate ester compounds such as glycidyl (meth)acrylate [0075] and as well as the epoxy compound (C) comprising epoxidized butadiene elastomer polymer [0083, 0089]. Yamanaka et al. disclose the MFR of the elastomer is preferably, though not limiting, at least 10 g/10min which it has been held that if the range of the prior art and the claimed range (less than 9 g/10min) do not overlap, obviousness may still exist if the ranges are close enough that one would not expect a difference in properties, In re Woodruff 16 USPQ 2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner 227 USPQ 773 (Fed. Cir. 1985); In re Aller 105 USPQ 233 (CCPA 1955). Applicant has not provided the criticality of their composition as compared to one of Yamanaka et al. wherein the melt flow rate (MFR) effects the properties of the resin composition for Galvano-scanning laser welding.
In regards to claim 7, Yamanaka et al. teach thermoplastic resin (A) comprising a polycarbonate resin in Examples 21-24 [Table 4; Claim 4].
In regards to claims 8-9, Yamanaka et al. teach the inorganic filler (D) is glass fiber in Examples 1-4, 11-14, and 21-23 of Tables 2-4.
In regards to claims 10-12, Yamanaka et al. teach a laser light-transmissive/absorptive dye (i.e., colorant) comprising nigrosine and aniline black [0164, 0168].
In regards to claim 13, Yamanaka et al. teach a YAG laser at 1064 nm wavelength and formation of the resin composition injection molded onto a random unknown specimen and having differences of transmittance values at 1064 nm wavelength light, measured at positions 15 mm and 45 mm away from a gate is 2.1% or larger would be a product by process limitation and any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show the same process of making, see In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
In regards to claims 14-15, Yamanaka et al. teach a light absorptive colorant of carbon black [0162-0166].
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.
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/RONALD GRINSTED/ Examiner, Art Unit 1763
/BIJAN AHVAZI/ Primary Examiner, Art Unit 1763
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