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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/24/2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1, 3, 4, 6-12, 14-16, 18-25, and 29 are objected to because of the following informalities: Claim 1 recites “giving has” in line 5, which should be “has” to be grammatically correct. Claim 1 recites “with wherein” in line 7, which should be “wherein” to be grammatically correct. Claim 1 recites “of is” in line 8, which should be “is” to be grammatically correct. Claims 11 and 19-22 recite “having wherein” in line 1, which should be “wherein” to be grammatically correct. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 10, 11, 19-25, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanaya et al. (US 2020/0010588 A1 is English language equivalent and is used for citation).
Regarding claim 1, Kanaya teaches an electrically conductive resin composition comprising 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], wherein the electrically conductive resin composition is produced by a method comprising [0028] providing a masterbatch comprising the thermoplastic resin, the carbon material, and the modified polyolefin wax, and [0029] melting kneading the masterbatch and the thermoplastic resin [0030], wherein the carbon material is a particulate carbon material [0126], wherein examples of the particulate carbon material include carbon nanotubes [0127], which reads on a resin composition, comprising a thermoplastic resin, and an electro-conductive substance, wherein the electro-conductive substance comprises a carbon nanotube, wherein the thermoplastic resin contains thermoplastic resins (A) and (B), wherein at least a part of the thermoplastic resin (B) is attributable to a masterbatch of the carbon nanotube, wherein a content of the thermoplastic resin (B) is, per 100 parts by mass of the thermoplastic resin (A), more than 1 part by mass and 13 parts by mass or less as claimed. The parts by mass are based on the calculations 1 / 99 * 100 = 1 and 10 / 75 * 100 = 13.
The Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition, when formed to a 2 mm thick test specimen and a cross section thereof is observed under a digital microscope, giving has an aggregate attributable to the electro-conductive substance, having an equivalent circle diameter of 30 µm or larger, with wherein an average percentage of the aggregate, having an equivalent circle diameter of 30 µm or large, of is 0.80% or smaller. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition as explained above. Furthermore, the specification of the instant application recites that Possible method for reducing the percentage of the aggregate attributable to the electro-conductive substance is exemplified by through dispersion of the electro-conductive substance in the thermoplastic resin [0014], that more specifically, the possible method is exemplified by thorough melt-kneading of a blend of the thermoplastic resin and the electro-conductive substance, portion-wise addition of the electro-conductive substance, when melt-kneading the thermoplastic resin and the electro-conductive substance, blending, with the thermoplastic resin, of a dispersion aid for enhancing dispersibility of the electro-conductive substance, blending of the electro-conductive substance in the form of masterbatch with the thermoplastic resin, so as to enhance the dispersibility making use of driving force of the electro-conductive substance that disperses from the masterbatch towards the thermoplastic resin during melt-kneading, and, choice of the electro-conductive substance having a shape advantageous for dispersion [0014]. Also, Kanaya teaches that the electrically conductive resin composition is produced by a method comprising [0028] providing a masterbatch comprising the thermoplastic resin, the carbon material, and the modified polyolefin wax, and [0029] melting kneading the masterbatch and the thermoplastic resin [0030]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 10, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has a dielectric constant at 76.5 GHz frequency of 4.50 or larger. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that possible schemes for elevating the dielectric constant of the resin composition are exemplified by choice of a material having large dielectric constant; possibly minimum use of a material that may lower the dielectric constant; thorough dispersion of a material having large dielectric constant in the resin; and increase of volume fraction of a material having large dielectric constant [0088], and that by blending an additive having large dielectric constant with a composition composed of two or more kinds of thermoplastic resin, the obtainable resin composition may have large dielectric constant [0088]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 11, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has a dielectric loss tangent at 76.5 GHz frequency of 0.10 or larger. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that schemes for elevating the dielectric loss tangent of the resin composition are basically same as the schemes for elevating the dielectric constant [0088], that careful choice is occasionally necessary, since some material may elevate the dielectric constant but concurrently lower the dielectric loss tangent [0088], that possible schemes for elevating the dielectric constant of the resin composition are exemplified by choice of a material having large dielectric constant; possibly minimum use of a material that may lower the dielectric constant; thorough dispersion of a material having large dielectric constant in the resin; and increase of volume fraction of a material having large dielectric constant [0088], and that by blending an additive having large dielectric constant with a composition composed of two or more kinds of thermoplastic resin, the obtainable resin composition may have large dielectric constant [0088]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 19, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has an absorbance at 76.5 GHz frequency of 50.0 to 100%, when formed to a thickness of 2 mm, and determined by Equation (A)
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46
588
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, wherein R is return loss measured by free space method, and T is transmission attenuation measured by the free space method. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that with the percentage of the aggregate, attributable to the electro-conductive substance and larger than a predetermined size, suppressed to a low level, the absorptivity of electromagnetic wave may be notably enhanced [0012], that in a special case where the masterbatch of the elector-conductive substance (particularly, carbon nanotube) in polybutylene terephthalate resin is blended with the resin composition in which polybutylene terephthalate resin serves as the major component of the thermoplastic resin (typically accounts for 80% by mass or more of the resin component), the smaller the intrinsic viscosity of the polybutylene terephthalate as the major component, the easier the electro-conductive substance can disperse tends to further improve the absorption property of electromagnetic wave [0026], that with the electro-conductive substance contained therein, the resin composition may be given absorptivity of electromagnetic wave [0054], that at or above the lower limit value of the content of the electro-conductive substance in the resin composition, the absorptivity of electromagnetic wave may be demonstrated effectively [0057, 0058], that with such structure, obtainable is a resin composition that demonstrates high absorbance [0087], that blending of the polybutylene terephthalate resin with the carbon nanotube can achieve a certain level of absorbance of electromagnetic wave [0087], that additional blending with the styrene-based resin can make the carbon nanotube more effectively disperse into the polybutylene terephthalate resin, to successfully enhance the absorbance of the obtainable resin composition [0087], that with such mode, the resin composition tends to demonstrate higher absorbance of electromagnetic wave [0087], that with such structure, providable is a resin composition that demonstrates high absorbance of electromagnetic wave [0093], and that at or above the lower limit value of the content of the thermoplastic resin (B), the absorptivity of electromagnetic wave tends to further improve [0097]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 20, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has a reflectance at 76.5 GHz frequency of 40.0% or smaller, when formed to a thickness of 2 mm, and determined by Equation (B):
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56
424
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, wherein R is return less measured by free space method. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that with the percentage of the aggregate, attributable to the electro-conductive substance and larger than a predetermined size, suppressed to a low level, this reduces reflectance of electromagnetic wave [0013], that the structure of this embodiment can also reduce the reflectance [0087], that with the structure of this embodiment, the resin composition may have lowered reflectance [0088], and that at or below the upper limit value of the content of the thermoplastic resin (B), the obtainable formed article may tend to further lower the reflectance [0098]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 21, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has a transmittance at 76.5 GHz frequency of 25.0% or smaller, when formed to a thickness of 2 mm, and determined by Equation (C):
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48
422
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, wherein T is transmission attenuation measured by free space method. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that with the percentage of the aggregate, attributable to the electro-conductive substance and larger than a predetermined size, suppressed to a low level, this also reduces the transmittance [0013], that the structure of this embodiment can also reduce the reflectance and transmittance of electromagnetic wave of the resin composition [0087], that with the structure of this embodiment, the resin composition may have lowered reflectance and transmittance of electromagnetic wave at 76.5 GHz frequency [0088], and that at or below the upper limit value of the content of the thermoplastic resin (B), the obtainable formed article may tend to further lower the transmittance [0089, 0097]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 22, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has a surface resistivity of 1.0×108 Ω or larger, when formed to a thickness of 2 mm, and measured in compliance with IEC60093. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the resin composition of this embodiment also preferably demonstrates a surface resistivity of 1.0×108 Ω or larger, when formed to a thickness of 2 mm [0086]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claims 23-25, Kanaya teaches a molded product obtained from the electrically conductive resin composition [0031], wherein the molded product is an electromagnetic wave shielding member of OA equipment [0032], which reads on the resin composition of claim 1, which is suitable for an electromagnetic wave absorber as claimed, a formed article comprising the resin composition of claim 1 as claimed, and an electromagnetic wave absorber formed of a resin composition of claim 1 as claimed.
Regarding claim 29, the Office recognizes that all the claimed physical properties are not positively taught by Kanaya, namely that the resin composition has a surface resistivity of 1.0×1011 Ω or larger, when formed to a thickness of 2 mm, and measured in compliance with IEC60093. However, Kanaya teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the resin composition of this embodiment also preferably demonstrates a surface resistivity of 1.0×108 Ω or larger, when formed to a thickness of 2 mm, which is even more preferably 1.0×1011 Ω or larger [0086]. Therefore, the claimed physical properties would naturally arise from the resin composition of Kanaya. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
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 3, 4, 6, 7, 9, 12, 14-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kanaya et al. (US 2020/0010588 A1 is English language equivalent and is used for citation) as applied to claims 1 and 10.
Regarding claim 3, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], and that examples of polyesters can include polybutylene terephthalate [0095], which optionally reads on wherein the thermoplastic resin comprises a polybutylene terephthalate resin as claimed.
Kanaya does not teach a specific embodiment wherein the thermoplastic resin comprises a polybutylene terephthalate resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s thermoplastic resin to be polybutylene terephthalate. The proposed modification would read on wherein the thermoplastic resin comprises a polybutylene terephthalate resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermoplastic properties of Kanaya’s electrically conductive resin composition because Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], and that examples of polyesters can include polybutylene terephthalate [0095].
Regarding claim 4, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches that the electrically conductive resin composition comprises 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], wherein the carbon material is a particulate carbon material [0126], wherein examples of the particulate carbon material include carbon nanotubes [0127], which reads on wherein the electro-conductive substance is present in the resin composition in a range of from 0.9 to 25% by mass. The % by mass is based on the calculations 1 / (100 + 10) * 100% = 0.9% and 25 / (100 + 1) * 100% = 25%.
Kanaya does not teach with sufficient specificity that the electro-conductive substance is present in the resin composition in a range of from 0.01 to 10% by mass. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the parts by mass of Kanaya’s carbon mater that is a particulate carbon material that is carbon nanotubes to be from 1 to 10.1 parts by mass, based on 100 parts by mass of the total of Kanaya’s thermoplastic resin and Kanaya’s carbon material. The proposed modification would read on wherein the electro-conductive substance is present in the resin composition in a range of from 0.9 to 10% by mass as claimed. The % by mass is based on the calculations 1 / (100 + 10) * 100% = 0.9% and 10.1 / (100 + 1) * 100% = 10%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an electrical conductivity and a mechanical strength of Kanaya’s electrically conductive resin composition because Kanaya teaches that the electrically conductive resin composition comprises 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], that when the carbon material is included in an amount of the lower limit mentioned above or more relative to the content of the thermoplastic resin, the electrically conductive resin composition to be obtained will have an excellent electrical conductivity [0038], that when the carbon material is included in an amount of the upper limit mentioned above or less, the electrically conductive resin composition to be obtained will have an excellent mechanical strength, [0038], that in order to achieve a high electrical conductivity, it is preferable to increase the amount of the carbon material [0038], that the carbon material is a particulate carbon material [0126], and that examples of the particulate carbon material include carbon nanotubes [0127].
Regarding claim 6, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], that examples of polyesters can include polybutylene terephthalate [0095], that the modified polyolefin is optionally a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins [0020, 0023], and that a styrene structure is optionally present in the molecular chain of the modified polyolefin wax [0140], which optionally reads on wherein the thermoplastic resin comprises a polybutylene terephthalate resin and a polystyrene-based resin as claimed.
Kanaya does not teach a specific embodiment wherein the thermoplastic resin comprises a polybutylene terephthalate resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s thermoplastic resin to be polybutylene terephthalate. The proposed modification would read on wherein the thermoplastic resin comprises a polybutylene terephthalate resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermoplastic properties of Kanaya’s electrically conductive resin composition because Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], and that examples of polyesters can include polybutylene terephthalate [0095].
Kanaya does not teach a specific embodiment wherein the thermoplastic resin further comprises a polystyrene-based resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s modified polyolefin to be a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins, wherein a styrene structure is present in the molecular chain of Kanaya’s modified polyolefin wax. The proposed modification would read on wherein the thermoplastic resin further comprises a polystyrene-based resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving affinity of Kanaya’s modified polyolefin for Kanaya’s carbon material because Kanaya teaches that the modified polyolefin is optionally a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins [0020, 0023], and that when a styrene structure is present in the molecular chain of the modified polyolefin wax, an excellent affinity is brought about due to its electrical interaction with a double bond present in the molecule of the carbon material [0140].
Regarding claim 7, Kanaya teaches that the electrically conductive resin composition comprises 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], wherein the carbon material is a particulate carbon material [0126], wherein examples of the particulate carbon material include carbon nanotubes [0127], which reads on wherein the carbon nanotube is present in the resin composition in a range of from 0.9 to 25% by mass. The % by mass is based on the calculations 1 / (100 + 10) * 100% = 0.9% and 25 / (100 + 1) * 100% = 25%.
Kanaya does not teach with sufficient specificity that the carbon nanotube is present in the resin composition in a range of from 0.01 to 10% by mass. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the parts by mass of Kanaya’s carbon mater that is a particulate carbon material that is carbon nanotubes to be from 1 to 10.1 parts by mass, based on 100 parts by mass of the total of Kanaya’s thermoplastic resin and Kanaya’s carbon material. The proposed modification would read on wherein the carbon nanotube is present in the resin composition in a range of from 0.9 to 10% by mass as claimed. The % by mass is based on the calculations 1 / (100 + 10) * 100% = 0.9% and 10.1 / (100 + 1) * 100% = 10%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an electrical conductivity and a mechanical strength of Kanaya’s electrically conductive resin composition because Kanaya teaches that the electrically conductive resin composition comprises 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], that when the carbon material is included in an amount of the lower limit mentioned above or more relative to the content of the thermoplastic resin, the electrically conductive resin composition to be obtained will have an excellent electrical conductivity [0038], that when the carbon material is included in an amount of the upper limit mentioned above or less, the electrically conductive resin composition to be obtained will have an excellent mechanical strength, [0038], that in order to achieve a high electrical conductivity, it is preferable to increase the amount of the carbon material [0038], that the carbon material is a particulate carbon material [0126], and that examples of the particulate carbon material include carbon nanotubes [0127].
Regarding claim 9, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches that the modified polyolefin is optionally a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins [0020, 0023], that a styrene structure is optionally present in the molecular chain of the modified polyolefin wax [0140], that the electrically conductive resin composition is produced by a method comprising [0028] providing a masterbatch comprising the thermoplastic resin, the carbon material, and the modified polyolefin wax, and [0029] melting kneading the masterbatch and the thermoplastic resin [0030], that the carbon material is a particulate carbon material [0126], and that examples of the particulate carbon material include carbon nanotubes [0127], which optionally reads on wherein a polystyrene-based resin is attributable to a masterbatch of the carbon nanotube as claimed.
Kanaya does not teach a specific embodiment wherein a polystyrene-based resin is attributable to a masterbatch of the carbon nanotube. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s modified polyolefin to be a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins, wherein a styrene structure is present in the molecular chain of Kanaya’s modified polyolefin wax. The proposed modification would read on wherein a polystyrene-based resin is attributable to a masterbatch of the carbon nanotube as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving affinity of Kanaya’s modified polyolefin for Kanaya’s carbon material because Kanaya teaches that the modified polyolefin is optionally a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins [0020, 0023], and that when a styrene structure is present in the molecular chain of the modified polyolefin wax, an excellent affinity is brought about due to its electrical interaction with a double bond present in the molecule of the carbon material [0140].
Regarding claim 12, Kanaya teaches the resin composition of claim 10 as explained above. Kanaya teaches that the electrically conductive resin composition comprises 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], wherein the carbon material is a particulate carbon material [0126], wherein examples of the particulate carbon material include carbon nanotubes [0127], which reads on wherein the content of the carbon nanotube in the resin composition is 0.9 to 25% by mass. The % by mass is based on the calculations 1 / (100 + 10) * 100% = 0.9% and 25 / (100 + 1) * 100% = 25%.
Kanaya does not teach with sufficient specificity that the content of the carbon nanotube in the resin composition is 0.01 to 10% by mass. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the parts by mass of Kanaya’s carbon mater that is a particulate carbon material that is carbon nanotubes to be from 1 to 10.1 parts by mass, based on 100 parts by mass of the total of Kanaya’s thermoplastic resin and Kanaya’s carbon material. The proposed modification would read on wherein the content of the carbon nanotube in the resin composition is 0.9 to 10% by mass as claimed. The % by mass is based on the calculations 1 / (100 + 10) * 100% = 0.9% and 10.1 / (100 + 1) * 100% = 10%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an electrical conductivity and a mechanical strength of Kanaya’s electrically conductive resin composition because Kanaya teaches that the electrically conductive resin composition comprises 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], that when the carbon material is included in an amount of the lower limit mentioned above or more relative to the content of the thermoplastic resin, the electrically conductive resin composition to be obtained will have an excellent electrical conductivity [0038], that when the carbon material is included in an amount of the upper limit mentioned above or less, the electrically conductive resin composition to be obtained will have an excellent mechanical strength, [0038], that in order to achieve a high electrical conductivity, it is preferable to increase the amount of the carbon material [0038], that the carbon material is a particulate carbon material [0126], and that examples of the particulate carbon material include carbon nanotubes [0127].
Regarding claim 14, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], which optionally reads on wherein the thermoplastic resin (A) comprises a polyester as claimed.
Kanaya does not teach a specific embodiment wherein the thermoplastic resin (A) comprises a polyester. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s thermoplastic resin to be polyesters. The proposed modification would read on wherein the thermoplastic resin (A) comprises a polyester as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermoplastic properties of Kanaya’s electrically conductive resin composition because Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048].
Regarding claim 15, Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], and that examples of polyesters can include polybutylene terephthalate [0095], which optionally reads on wherein the polyester resin comprises a polybutylene terephthalate resin as claimed.
Kanaya does not teach a specific embodiment wherein the polyester resin comprises a polybutylene terephthalate resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s thermoplastic resin to be polybutylene terephthalate. The proposed modification would read on wherein the polyester resin comprises a polybutylene terephthalate resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermoplastic properties of Kanaya’s electrically conductive resin composition because Kanaya teaches that representative examples of the thermoplastic resin include [0045] polyesters [0048], and that examples of polyesters can include polybutylene terephthalate [0095].
Regarding claim 16, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches that the modified polyolefin is optionally a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins [0020, 0023], and that a styrene structure is optionally present in the molecular chain of the modified polyolefin wax [0140], which optionally reads on wherein the thermoplastic resin (B) comprises a polystyrene-based resin as claimed.
Kanaya does not teach a specific embodiment wherein the thermoplastic resin (B) comprises a polystyrene-based resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Kanaya’s modified polyolefin to be a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins, wherein a styrene structure is present in the molecular chain of Kanaya’s modified polyolefin wax. The proposed modification would read on wherein the thermoplastic resin (B) comprises a polystyrene-based resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving affinity of Kanaya’s modified polyolefin for Kanaya’s carbon material because Kanaya teaches that the modified polyolefin is optionally a styrene-modified product of a copolymer of ethylene at least one α-olefin selected from C3-12 α-olefins [0020, 0023], and that when a styrene structure is present in the molecular chain of the modified polyolefin wax, an excellent affinity is brought about due to its electrical interaction with a double bond present in the molecule of the carbon material [0140].
Regarding claim 18, Kanaya teaches the resin composition of claim 1 as explained above. Kanaya teaches an electrically conductive resin composition comprising 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], that the electrically conductive resin composition is produced by a method comprising [0028] providing a masterbatch comprising the thermoplastic resin, the carbon material, and the modified polyolefin wax, and [0029] melting kneading the masterbatch and the thermoplastic resin [0030], that the carbon material is a particulate carbon material [0126], that examples of the particulate carbon material include carbon nanotubes [0127], and that the content mass ratio of the carbon material and the modified polyolefin wax in the masterbatch is for example 0.1 to 30 [0213], which reads on wherein a concentration of the carbon nanotube in the masterbatch is in a range of from 0.18 to 97% by mass. The % by mass is based on the calculations 0.1 / (0.1 + 1 + (0.1 + 1) * 99 / (1 + 1)) * 100% = 0.18% and 30 / (30 + 1) * 100% = 97%.
Kanaya does not teach with sufficient specificity that a concentration of the carbon nanotube in the masterbatch is in a range of from 1 to 50% by mass. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the parts by mass of Kanaya’s carbon material that is particulate carbon material that is carbon nanotubes in Kanaya’s masterbatch to be from 1 to 50 parts by mass, based on 100 parts by mass of the total of Kanya’s thermoplastic resin, Kanaya’s carbon material, and Kanaya’s modified polyolefin wax in Kanaya’s masterbatch, such that the content mass ratio of Kanaya’s carbon material and Kanya’s modified polyolefin wax in Kanya’s masterbatch is 0.1 to 30. The proposed modification would read on wherein a concentration of the carbon nanotube in the masterbatch is in a range of from 1 to 50% by mass as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for minimizing an extent of destruction of Kanaya’s particles of carbon material upon production of Kanaya’s masterbatch, and for optimizing electrical conductivity and mechanical strength of Kanaya’s electrically conductive resin composition because Kanaya teaches an electrically conductive resin composition comprising 75 to 99 parts by mass of a thermoplastic resin, 1 to 25 parts by mass of a carbon material, and more than 1 part by mass and 10 parts by mass or less of a modified polyolefin wax, based on 100 parts by mass of the total of the thermoplastic resin and the carbon material [0016], that the electrically conductive resin composition is produced by a method comprising [0028] providing a masterbatch comprising the thermoplastic resin, the carbon material, and the modified polyolefin wax, and [0029] melting kneading the masterbatch and the thermoplastic resin [0030], that the carbon material is a particulate carbon material [0126], that examples of the particulate carbon material include carbon nanotubes [0127], that the content mass ratio of the carbon material and the modified polyolefin wax in the masterbatch is for example 0.1 to 30 [0213], that when the content mass ratio of the carbon material and the modified polyolefin wax is 30 or less, since the proportion of the carbon material is not relatively too high, particles of the carbon material is not relatively too high, particles of the carbon material or the aggregated structure is unlikely to be destroyed upon production of the masterbatch, and reduction in the electrical conductivity upon completion of the electrically conductive resin composition is readily suppressed [0213], that when the content mass ratio is 0.1 or more, since the proportion of the modified polyolefin was is not relatively too high, the melt viscosity is not lowered too much, and the masterbatch is readily produced [0213], that when the carbon material is included in an amount of the lower limit mentioned above or more relative to the content of the thermoplastic resin, the electrically conductive resin composition to be obtained will have an excellent electrical conductivity [0038], that when the carbon material is included in an amount of the upper limit mentioned above or less, the electrically conductive resin composition to be obtained will have an excellent mechanical strength [0038], and that in order to achieve a high electrical conductivity, it is preferable to increase the amount of the carbon material [0038], which means that the parts by mass of Kanaya’s carbon material that is particulate carbon material that is carbon nanotubes in Kanaya’s masterbatch in parts by mass, based on 100 parts by mass of the total of Kanya’s thermoplastic resin, Kanaya’s carbon material, and Kanaya’s modified polyolefin wax in Kanaya’s masterbatch, would have affected an extent of destruction of Kanaya’s particles of carbon material upon production of Kanaya’s masterbatch, and electrical conductivity and mechanical strength of Kanaya’s electrically conductive resin composition.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 8, Kanaya et al. (US 2020/0010588 A1 is English language equivalent and is used for citation) renders obvious the resin composition of claim 6 as explained above.
Kanaya does not teach that the resin composition of claim 6 has a sea-island structure comprising a sea region where the polybutylene terephthalate resin is abundant, and an island region where the polystyrene-based resin is abundant, in which 30% by mass or more of the resin component comprised in the resin composition is attributable to the polybutylene terephthalate resin, and wherein more of the carbon nanotube is comprised in the sea region than in the island region. Although Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) teaches a conductive resin molded body containing a conductive filler and a thermoplastic resin, wherein the thermoplastic resin includes a thermoplastic resin (A) and a thermoplastic resin (B) that is incompatible with the thermoplastic resin (A), wherein the thermoplastic resin (A) is a polyolefin resin, and the thermoplastic resin (B) is a polyester resin, wherein the conductive filler is a carbon-based filler [0005], wherein examples of the carbon-based filler include carbon nanotubes [0011], wherein the expression “two types of resins that are incompatible with each other” means that the two types of resin do not substantially dissolve in each other [0030], wherein the two types of resins exist independently of each other, forming a sea (continuous phase)-islands (dispersed phase) structure [0030], that polyolefin resins have a relatively low surface tension, that the difference in surface tension between them and other thermoplastic resins can be increased, that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particles is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms, that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly composed of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046], that by employing a combination of a polyolefin resin and a polyester resin, the conductive filler can be unevenly distributed in the polyester resin, which has a high affinity with the conductive filler [0047], that the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, that examples of such olefins include styrene [0048], that the examples of polyester resins include polybutylene terephthalate [0072], and that in the molded article, the proportion of the thermoplastic resin (A) in the total content of the thermoplastic resin (A) and the thermoplastic resin (B) is 30 to 70% by volume [0074], Onyu does not teach or suggest modifying Kanaya’s resin composition to read on the claimed limitation of claim 8 because the amounts of the polybutylene terephthalate resin and the polystyrene-based resin taught by Onyu do not overlap with the claimed amounts and do not overlap with those taught by Kanaya.
Response to Arguments
Applicant’s arguments, see p. 7, filed 08/24/2026, with respect to the rejection of claims 6-8, 10-12, 14-16, and 18 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, have been fully considered and are persuasive. The rejection of claims 6-8, 10-12, 14-16, and 18 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, has been withdrawn.
Applicant’s arguments, see p. 7-9, filed 08/24/2026, with respect to the rejection of claims 1, 3, 4, 6, 7, 9-12, 14-16, 18-25, and 29 under 35 U.S.C. 103 as being unpatentable over Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see p. 7-9, filed 08/24/2026, with respect to the rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) have been fully considered and are persuasive. The rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) has been withdrawn.
Correspondence
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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