DETAILED ACTION
Applicant’s response filed on 02/11/2026 has been fully considered. Claims 1, 3-25, and 29 are pending. Claims 1, 11, and 19-22 are amended. Claims 2 and 26-28 are canceled. Claim 29 is new.
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 .
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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-8 and 10-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 in line 3, claim 6 in line 4, and claim 10 in lines 1-2 recite the limitation “wherein the electro-conductive substance comprises a carbon nanotube”, which fails to further limit the subject matter of the claim upon which it depends because claim 1, from which claims 5, 6, and 10 depend, recites the limitation “wherein the electro-conductive substance comprises a carbon nanotube” in line 9. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3-25, and 29 are rejected 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).
Regarding claims 1 and 24, Onyu 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 primary particle size of the carbon-based filler is 1000 nm or less [0021], 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], which reads on a resin composition, comprising a thermoplastic resin, and an electro-conductive substance, wherein the electro-conductive substance optionally comprises a carbon nanotube, and which reads on a formed article comprising the resin composition of claim 1.
Onyu does not teach a specific embodiment wherein the electro-conductive substance comprises a 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 Onyu’s carbon nanotubes as Onyu’s carbon-based filler. The proposed modification would read on wherein the electro-conductive substance comprises a 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046].
The Office recognizes that all of the claimed physical properties are not positively taught by Onyu, 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, has an aggregate attributable to the electro-conductive substance, having an equivalent circle diameter of 30 µm or larger, wherein an area percentage of the aggregate is 0.80% or smaller. However, Onyu renders obvious all of 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 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], and that for particularly effective dispersion, two or more techniques among them are preferably selected [0014]. Also, Onyu teaches that the primary particle size of the carbon-based filler is 1000 nm or less [0021], and that the conductive resin composition can be molded by a conventional molded method such as extrusion molding or injection molding [0081]. Therefore, the claimed physical properties would naturally arise from the resin composition that is rendered obvious by Onyu. 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 3, Onyu teaches that 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 (B) is a polyester resin [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], which optionally reads on wherein the thermoplastic resin comprises a polybutylene terephthalate resin as claimed.
Onyu 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 Onyu’s polybutylene terephthalate as Onyu’s thermoplastic resin (B). 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 incompatibility of Onyu’s thermoplastic resin (B) with Onyu’s thermoplastic resin (A) and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 (B) is a polyester resin [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], and 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].
Regarding claim 4, Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, and that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], which reads on wherein the electro-conductive substance is present in the resin composition in a range of greater than 0% to less than 100% by mass.
Onyu does not teach with sufficient specificity wherein 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 content of Onyu’s conductive filler in Onyu’s conductive resin molded article to be from 0.01% by mass to 10% by mass. The proposed modification would read on wherein the electro-conductive substance is present in the resin composition in a range of from 0.01 to 10% 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 optimizing conductivity and economics of Onyu’s conductive resin molded article and for minimizing weight of Onyu’s conductive resin molded article because Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], that the carbon-based filler exhibits conductivity [0010], and that the carbon-based filler is economical and light weight [0010].
Regarding claim 5, Onyu teaches that 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 (B) is a polyester resin [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], which optionally reads on wherein the thermoplastic resin comprises a polybutylene terephthalate resin as claimed. Onyu teaches that the conductive filler is a carbon-based filler [0005], and that examples of the carbon-based filler include carbon nanotubes [0011], which optionally reads on wherein the electro-conductive substance comprises a carbon nanotube as claimed. Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, and that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], which reads on wherein the electro-conductive substance is present in the resin composition in a range of greater than 0% to less than 100% by mass.
Onyu 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 Onyu’s polybutylene terephthalate as Onyu’s thermoplastic resin (B). 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 incompatibility of Onyu’s thermoplastic resin (B) with Onyu’s thermoplastic resin (A) and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 (B) is a polyester resin [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], and 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].
Onyu does not teach a specific embodiment wherein the electro-conductive substance comprises a 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 Onyu’s carbon nanotubes as Onyu’s carbon-based filler. The proposed modification would read on wherein the electro-conductive substance comprises a 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046].
Onyu does not teach with sufficient specificity wherein 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 content of Onyu’s conductive filler in Onyu’s conductive resin molded article to be from 0.01% by mass to 10% by mass. The proposed modification would read on wherein the electro-conductive substance is present in the resin composition in a range of from 0.01 to 10% 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 optimizing conductivity and economics of Onyu’s conductive resin molded article and for minimizing weight of Onyu’s conductive resin molded article because Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], that the carbon-based filler exhibits conductivity [0010], and that the carbon-based filler is economical and light weight [0010], which means that the content of Onyu’s conductive filler in Onyu’s conductive resin molded article in % by mass would have affected conductivity, economics of Onyu’s conductive resin molded article, and weight of Onyu’s conductive resin molded article.
Regarding claim 6, Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], wherein the examples of polyester resins include polybutylene terephthalate [0072], which optionally reads on wherein the thermoplastic resin comprises a polybutylene terephthalate resin and a polystyrene-based resin as claimed. Onyu teaches that the conductive filler is a carbon-based filler [0005], and that examples of the carbon-based filler include carbon nanotubes [0011], which optionally reads on wherein the electro-conductive substance comprises a carbon nanotube as claimed.
Onyu 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 Onyu’s polybutylene terephthalate as Onyu’s thermoplastic resin (B). 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 incompatibility of Onyu’s thermoplastic resin (B) with Onyu’s thermoplastic resin (A) and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 (B) is a polyester resin [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], and 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].
Onyu 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 Onyu’s polyolefin resin obtained by polymerizing at least one kind of olefin that is styrene and that is a homopolymer or a copolymer as Onyu’s thermoplastic resin (A). 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 modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], that polyolefin resins have a relatively low surface tension, that the difference in surface tension between them and other thermoplastic resins can be increased [0046], 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], and 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].
Onyu does not teach a specific embodiment wherein the electro-conductive substance comprises a 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 Onyu’s carbon nanotubes as Onyu’s carbon-based filler. The proposed modification would read on wherein the electro-conductive substance comprises a 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046].
Regarding claim 7, Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, and that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], which optionally reads on wherein the carbon nanotube is present in the resin composition in a range of greater than 0% to less than 100% by mass.
Onyu does not teach a specific embodiment wherein 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 select Onyu’s carbon nanotubes as Onyu’s carbon-based filler, and to optimize the content of Onyu’s conductive filler that is carbon nanotubes in Onyu’s conductive resin molded article to be from 0.01% by mass to 10% by mass. The proposed modification would read on wherein the carbon nanotube is present in the resin composition in a range of from 0.01 to 10% 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046]. Also, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing conductivity and economics of Onyu’s conductive resin molded article and for minimizing weight of Onyu’s conductive resin molded article because Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], that the carbon-based filler exhibits conductivity [0010], and that the carbon-based filler is economical and light weight [0010].
Regarding claim 8, Onyu teaches that the thermoplastic resin includes a thermoplastic resin (A) and a thermoplastic resin (B) that is incompatible with the thermoplastic resin (A), that the thermoplastic resin (A) is a polyolefin resin, and the thermoplastic resin (B) is a polyester resin, that the conductive filler is a carbon-based filler [0005], that 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], that 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], 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]. As explained above for claim 6, Onyu renders it obvious to select Onyu’s polybutylene terephthalate as Onyu’s thermoplastic resin (B), to select Onyu’s polyolefin resin obtained by polymerizing at least one kind of olefin that is styrene and that is a homopolymer or a copolymer as Onyu’s thermoplastic resin (A), and to select Onyu’s carbon nanotubes as Onyu’s carbon-based filler. Onyu therefore renders obvious the resin composition of claim 6, having 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 as claimed.
Regarding claim 9, Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], 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], wherein polyolefin resins have a relatively low surface tension, and the difference in surface tension between them and other thermoplastic resins can be increased, wherein 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, wherein 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], wherein 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], which optionally reads on wherein a polystyrene-based resin is attributable to a masterbatch of the carbon nanotube.
Onyu 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 Onyu’s polyolefin resin obtained by polymerizing at least one kind of olefin that is styrene and that is a homopolymer or a copolymer as Onyu’s thermoplastic resin (A). One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], that polyolefin resins have a relatively low surface tension, that the difference in surface tension between them and other thermoplastic resins can be increased [0046], 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], and 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].
Onyu 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 Onyu’s carbon nanotubes as Onyu’s carbon-based filler. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046].
Therefore, Onyu renders it obvious wherein a polystyrene-based resin is attributable to a masterbatch of the carbon nanotube as claimed.
Regarding claim 10, Onyu teaches that the conductive filler is a carbon-based filler [0005], and that examples of the carbon-based filler include carbon nanotubes [0011], which optionally reads on wherein the electro-conductive substance comprises a carbon nanotube as claimed.
Onyu does not teach a specific embodiment wherein the electro-conductive substance comprises a 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 Onyu’s carbon nanotubes as Onyu’s carbon-based filler. The proposed modification would read on wherein the electro-conductive substance comprises a 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046].
The Office recognizes that all of the claimed physical properties are not positively taught by Onyu, namely that the resin composition has a dielectric constant at 76.5 GHz frequency of 4.50 or larger. However, Onyu renders obvious all of 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 that is rendered obvious by Onyu. 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 of the claimed physical properties are not positively taught by Onyu, namely that the resin composition has a dielectric loss tangent at 76.5 GHz frequency of 0.10 or larger. However, Onyu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the resin composition of claim 10 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 that is rendered obvious by Onyu. 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 12, Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, and that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], which optionally reads on wherein the content of the carbon nanotube in the resin composition is greater than 0 to less than 100% by mass.
Onyu does not teach a specific embodiment wherein 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 select Onyu’s carbon nanotubes as Onyu’s carbon-based filler, and to optimize the content of Onyu’s conductive filler that is carbon nanotubes in Onyu’s conductive resin molded article to be from 0.01% by mass to 10% by mass. The proposed modification would read on wherein the content of the carbon nanotube in the resin composition is 0.01 to 10% 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046]. Also, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing conductivity and economics of Onyu’s conductive resin molded article and for minimizing weight of Onyu’s conductive resin molded article because Onyu teaches that the conductive filler is a carbon-based filler, that the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], that the carbon-based filler exhibits conductivity [0010], and that the carbon-based filler is economical and light weight [0010].
Regarding claims 13 and 14, Onyu teaches that 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 [0005], where 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], which reads on wherein the thermoplastic resin comprises a thermoplastic resin (A) and a thermoplastic resin (B), with a content of the thermoplastic resin (B) in a range of greater than 0 parts by mass, per 100 parts by mass of the thermoplastic resin (A), wherein the thermoplastic resin (A) comprises a polyester resin.
Onyu does not teach a specific embodiment of a content of the thermoplastic resin (B) in a range of from 1.0 to 100 parts by mass, per 100 parts by mass of the thermoplastic resin (A). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the proportion of Onyu’s thermoplastic resin (A) that is a polyolefin resin to be within 1.0 to 100% by weight based on the weight of Onyu’s thermoplastic resin (B) that is a polyester resin. The proposed modification would read on a content of the thermoplastic resin (B) is in a range of from 1.0 to 100 parts by mass, per 100 parts by mass of the thermoplastic resin (A) as claimed, wherein the thermoplastic resin (A) comprises a polyester resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing formation of a network of Onyu’s thermoplastic resin (B) in Onyu’s molded body, for optimizing uneven distribution of Onyu’s conductive filler in Onyu’s network of Onyu’s thermoplastic resin (B), for optimizing the conductivity of Onyu’s molded body, and for optimizing formation of a sea-island structure in Onyu’s molded body because Onyu teaches that 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 [0005], where 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], where by setting the content of the thermoplastic resin (A) within the above range, it is possible to form a network of the thermoplastic resin (B) in the molded body, and further to unevenly distribute the conductive filler in the network of the thermoplastic resin (B) [0074], where if the content of the thermoplastic resin (A) is too small, the content of the thermoplastic resin (B) becomes relatively large, which reduces the density of the conductive filler and decreases the conductivity [0074], where if the content ratio of the thermoplastic resin (A) is too high, it becomes difficult for the thermoplastic resin (B) to form a network, it becomes difficult to form a sea-island structure, and it becomes difficult to obtain conductivity even if the conductive filler is unevenly distributed [0074], which means that the proportion of Onyu’s thermoplastic resin (A) that is a polyolefin resin in % by weight based on the weight of Onyu’s thermoplastic resin (B) that is a polyester resin would have affected formation of a network of Onyu’s thermoplastic resin (B) in Onyu’s molded body, uneven distribution of Onyu’s conductive filler in Onyu’s network of Onyu’s thermoplastic resin (B), the conductivity of Onyu’s molded body, and formation of a sea-island structure in Onyu’s molded body.
Regarding claim 15, Onyu teaches that 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 [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], where 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], which optionally reads on wherein the polyester resin comprises a polybutylene terephthalate resin as claimed.
Onyu 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 Onyu’s polybutylene terephthalate as Onyu’s thermoplastic resin (B). 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 incompatibility of Onyu’s thermoplastic resin (B) with Onyu’s thermoplastic resin (A) and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 (B) is a polyester resin [0005], wherein the examples of polyester resins include polybutylene terephthalate [0072], and 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].
Regarding claim 16, Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], which optionally reads on wherein the thermoplastic resin (B) comprises a polystyrene-based resin as claimed.
Onyu does not teach a specific embodiment wherein the thermoplastic resin (B) comprises a polystyrene-based resin as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Onyu’s polyolefin resin obtained by polymerizing at least one kind of olefin that is styrene and that is a homopolymer or a copolymer as Onyu’s thermoplastic resin (A). 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 modifying the uniformity of dispersion of Onyu’s carbon-based filler in Onyu’s thermoplastic resin because Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], that polyolefin resins have a relatively low surface tension, that the difference in surface tension between them and other thermoplastic resins can be increased [0046], 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], and 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].
Regarding claim 17, Onyu teaches that 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 [0005], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048], 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], wherein polyolefin resins have a relatively low surface tension, and the difference in surface tension between them and other thermoplastic resins can be increased, wherein 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, wherein 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], wherein 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]. As explained above for claim 10, Onyu renders it obvious to select Onyu’s carbon nanotubes as Onyu’s carbon-based filler. Therefore, Onyu renders it obvious wherein at least a part of the thermoplastic resin (B) is attributable to a masterbatch of the carbon nanotube as claimed.
Regarding claim 18, Onyu teaches that 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, wherein the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], and that where 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], which optionally reads on wherein a concentration of the carbon nanotube in the masterbatch is in a range of greater than 0% by mass.
Onyu does not teach a specific embodiment wherein 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 select Onyu’s carbon nanotubes as Onyu’s carbon-based filler, and to optimize the content of Onyu’s conductive filler that is a carbon-based filler that is carbon nanotubes in Onyu’s conductive resin molded article to be within 1 to 50% by weight based on the weight of Onyu’s thermoplastic resin (A) that is Onyu’s polyolefin resin. 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046]. Also, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing conductivity and economics of Onyu’s conductive resin molded article and for minimizing weight of Onyu’s conductive resin molded article because Onyu teaches that 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, wherein the content of the conductive filler in the conductive resin molded article is 0.1 to 35% by volume [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the content of the conductive filler is preferably 0.1% by volume or more, more preferably 0.3% by volume or more, even more preferably 0.5% by volume or more, particularly preferably 0.7% by volume or more, and especially preferably 1.0% by volume or more, that the upper limit of the conductive filler content is preferably 50% by volume or less, more preferably 35% by volume or less, even more preferably 25% by volume or less, particularly preferably 20% by volume or less, particularly preferably 10% by volume or less, and more preferably 5% by volume or less [0028], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], and that where 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], which means that the content of Onyu’s conductive filler that is a carbon-based filler that is carbon nanotubes in Onyu’s conductive resin molded article in % by weight based on the weight of Onyu’s thermoplastic resin (A) that is Onyu’s polyolefin resin would have affected conductivity and economics of Onyu’s conductive resin molded article and weight of Onyu’s conductive resin molded article.
Regarding claim 19, the Office recognizes that all of the claimed physical properties are not positively taught by Onyu, 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
media_image1.png
Greyscale
, wherein R is return loss measured by free space method, and T is transmission attenuation measured by the free space method. However, Onyu renders obvious all of 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 that is rendered obvious by Onyu. 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 of the claimed physical properties are not positively taught by Onyu, 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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Greyscale
, wherein R is return less measured by free space method. However, Onyu renders obvious all of 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 that is rendered obvious by Onyu. 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 of the claimed physical properties are not positively taught by Onyu, 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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Greyscale
, wherein T is transmission attenuation measured by free space method. However, Onyu renders obvious all of 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 that is rendered obvious by Onyu. 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 of the claimed physical properties are not positively taught by Onyu, 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, Onyu renders obvious all of 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 that is rendered obvious by Onyu. 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 and 25, Onyu teaches that the conductive resin molded body can be obtained by molding a conductive resin composition containing the conductive filler and the thermoplastic resin by a conventional molding method that is injection molding [0081], and that specific examples of the injection molded article include an electromagnetic wave shielding part [0082], which reads on the resin composition of claim 1, which is suitable for an electromagnetic wave absorber 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 of the claimed physical properties are not positively taught by Onyu, 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, Onyu renders obvious all of 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 that is rendered obvious by Onyu. 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)).
Response to Amendment
The Declaration under 37 CFR 1.132 filed 02/11/2026 is insufficient to overcome the rejection of claims 2-22 based upon 35 U.S.C. 103 as being unpatentable over Onyu et al. (JP 2018-123266 A, machine translation in English used for citation) as set forth in the last Office action because:
In response to the applicant’s argument that the results shown in Table A in the Declaration and in the instant application establish that the subject matter of claim 1 provides surprising and unexpected beneficial results that are not taught or suggested by Onyu (Declaration p. 2-4), the applicant’s arguments of unexpected results are not persuasive because the applicant’s results that are Examples 1-6 in Table A (Declaration p. 3) are not commensurate in scope with the claimed invention. This is because Examples 1-6 each comprise 100 parts by mass of polybutylene terephthalate resin, Examples 3-6 comprise 13.4 to 60 parts by mass of a polycarbonate resin, and Examples 5 and 6 comprise 40.3 to 45.0 parts by mass of a polystyrene resin as the thermoplastic resin, Examples 1-6 each comprise 1.1 to 3.4 parts by mass of multi-layered carbon nanotube as the electro-conductive substance, Examples 1-6 each comprise glass fiber, epoxy resin, stabilizer, and mold release agent, and Examples 3-6 comprises another stabilizer (Declaration p. 3), whereas claim 1 does not limit the amount and species of the thermoplastic resin, limits the electro-conductive substance to comprising a carbon nanotube but does not limit the amount of the carbon nanotube, and does not require the composition to further comprise ingredients other than the thermoplastic resin and the electro-conductive substance, as long as the claimed area percentage of the aggregate is satisfied. The applicant did not show that the results of Example 1-6 would occur regardless of the species or amount of the thermoplastic resin, regardless of the amount of the electro-conductive substance, and regardless of the resin composition further comprising any other ingredients or no other ingredients. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d))." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). The applicant did not show a sufficient number of results that would allow one of ordinary skill in the art to determine a trend in the exemplified data that would allow the artisan to reasonably extend the probative value thereof to any species or amount of the thermoplastic resin, to any amount of the electro-conductive substance, and to the case where the resin composition further comprises any other ingredients or no other ingredients. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof (MPEP 716.02(d)(I)). The applicant did not compare a sufficient number of examples within the scope of the claimed invention with a sufficient number of examples outside the scope of the claimed invention because Comparative Examples 1 and 2 were similar to Examples 3-6, except that they comprised graphite instead of multi-layered carbon nanotube (Declaration p. 3), but for the same reasons Examples 1-6 are not a sufficient amount of examples, Comparative Examples 1 and 2 are not a sufficient amount of comparative examples for the data to be commensurate in scope with the claimed invention. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d)(II)). The applicant’s arguments of unexpected results are not persuasive also because the applicant did not compare the claimed invention with the closest prior art, which in this case is Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) since it is the prior art cited in the rejection of the claims. Onyu’s thermoplastic resin is a polyolefin resin and a polyester resin [0005], whereas the thermoplastic resin in the Comparative Examples 1 and 2 was polybutylene terephthalate resin and polycarbonate resin, and Comparative Example 2 further comprised polystyrene (Declaration p. 3). The polybutylene terephthalate and polystyrene read on Onyu’s polyolefin resin and polyester resin, but the polycarbonate resin is not present in Onyu’s composition. Also, Comparative Examples 1 and 2 comprised glass fiber, epoxy resin, stabilizer, and mold release agent (Declaration p. 3), which are not necessarily present in Onyu’s composition. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness (MPEP 716.02(e)).
In response to the applicant’s argument that the tested inventive resin compositions of this application are representative of the resin compositions described in claim 1 above and would be expected to behave as do all other resin compositions described in claim 1 above, and that the applicant knows of no reason why this would not be the case (Declaration p. 4), the applicant has not provided sufficient evidence to show that Examples 1-6 are representative of the resin composition of claim 1 and has not provided sufficient evidence to show that Examples 1-6 would behave as all other resin compositions within the scope of claim 1. This is because Examples 1-6 are not commensurate in scope with claim 1 as explained in the previous paragraph.
Response to Arguments
Applicant’s arguments, see p. 7, filed 02/11/2026, with respect to the rejection of claim 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. The rejection of claim 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn.
Applicant’s arguments, see p. 7, filed 02/11/2026, with respect to the rejection of claims 1 and 23-25 under 35 U.S.C. 102(a)(1) as being anticipated by Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) have been considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant's arguments filed 02/11/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that a resin composition comprising carbon nanotubes produce an unexpected and superior effect in the electromagnetic wave absorbance and is critical for achieving these improvements based on Examples 1-6 and Comparative Examples 1-2 in Table A of the Declaration under 37 CFR 1.132 filed 02/11/2026 (p. 7-8), the applicant’s arguments of unexpected results are not persuasive because the applicant’s results that are Examples 1-6 in Table A (Declaration p. 3) are not commensurate in scope with the claimed invention. This is because Examples 1-6 each comprise 100 parts by mass of polybutylene terephthalate resin, Examples 3-6 comprise 13.4 to 60 parts by mass of a polycarbonate resin, and Examples 5 and 6 comprise 40.3 to 45.0 parts by mass of a polystyrene resin as the thermoplastic resin, Examples 1-6 each comprise 1.1 to 3.4 parts by mass of multi-layered carbon nanotube as the electro-conductive substance, Examples 1-6 each comprise glass fiber, epoxy resin, stabilizer, and mold release agent, and Examples 3-6 comprises another stabilizer (Declaration p. 3), whereas claim 1 does not limit the amount and species of the thermoplastic resin, limits the electro-conductive substance to comprising a carbon nanotube but does not limit the amount of the carbon nanotube, and does not require the composition to further comprise ingredients other than the thermoplastic resin and the electro-conductive substance, as long as the claimed area percentage of the aggregate is satisfied. The applicant did not show that the results of Example 1-6 would occur regardless of the species or amount of the thermoplastic resin, regardless of the amount of the electro-conductive substance, and regardless of the resin composition further comprising any other ingredients or no other ingredients. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d))." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). The applicant did not show a sufficient number of results that would allow one of ordinary skill in the art to determine a trend in the exemplified data that would allow the artisan to reasonably extend the probative value thereof to any species or amount of the thermoplastic resin, to any amount of the electro-conductive substance, and to the case where the resin composition further comprises any other ingredients or no other ingredients. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof (MPEP 716.02(d)(I)). The applicant did not compare a sufficient number of examples within the scope of the claimed invention with a sufficient number of examples outside the scope of the claimed invention because Comparative Examples 1 and 2 were similar to Examples 3-6, except that they comprised graphite instead of multi-layered carbon nanotube (Declaration p. 3), but for the same reasons Examples 1-6 are not a sufficient amount of examples, Comparative Examples 1 and 2 are not a sufficient amount of comparative examples for the data to be commensurate in scope with the claimed invention. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d)(II)). The applicant’s arguments of unexpected results are not persuasive also because the applicant did not compare the claimed invention with the closest prior art, which in this case is Onyu et al. (JP 2018-123266 A, machine translation in English used for citation, made of record on 11/13/2025) since it is the prior art cited in the rejection of the claims. Onyu’s thermoplastic resin is a polyolefin resin and a polyester resin [0005], whereas the thermoplastic resin in the Comparative Examples 1 and 2 was polybutylene terephthalate resin and polycarbonate resin, and Comparative Example 2 further comprised polystyrene (Declaration p. 3). The polybutylene terephthalate and polystyrene read on Onyu’s polyolefin resin and polyester resin, but the polycarbonate resin is not present in Onyu’s composition. Also, Comparative Examples 1 and 2 comprised glass fiber, epoxy resin, stabilizer, and mold release agent (Declaration p. 3), which are not necessarily present in Onyu’s composition. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness (MPEP 716.02(e)).
In response to the applicant’s argument that Onyu teaches that the best mode is a composition comprising graphite and that one of ordinary skill in the art would not have arride at the present invention using the teaching of Onyu (p. 8), although Onyu teaches that it is preferably to contain carbon black or graphite [0014], Onyu teaches that the conductive filler is a carbon-based filler [0005], and that examples of the carbon-based filler include carbon nanotubes [0011]. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123(II)). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Onyu’s carbon nanotubes as Onyu’s carbon-based filler. The proposed modification would read on wherein the electro-conductive substance comprises a 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 modifying conductivity of Onyu’s conductive resin molded body, for being economical and light weight, and for modifying the uniformity of dispersion of Onyu’s carbon-based filler in in Onyu’s thermoplastic resin because Onyu teaches that the conductive filler is a carbon-based filler [0005], that examples of the carbon-based filler include carbon nanotubes [0011], that the carbon-based filler exhibits conductivity [0010], that the carbon-based filler is economical and light weight [0010], that when a carbon-based filler is used as the conductive filler, the surface of the carbon-based filler particle is hydrophobic because the skeleton of the carbon-based filler is formed by carbon atoms [0046], and that an affinity due to hydrophobic-hydrophobic interactions and the like acts between the carbon-based filler and the thermoplastic resin mainly compose of carbon atoms and hydrogen atoms, making it possible to disperse the conductive filler more uniformly in the thermoplastic resin [0046].
In response to the applicant’s argument that the resin composition of Onyu does not necessarily possess the characteristics of the claimed product because the resin composition of Onyu does not necessarily have an area percentage of the aggregate of 0.80% or smaller, as recited in claim 1 because for example, Comparative Example 1 of the instant specification comprises a thermoplastic resin and an electro-conductive substance and is made through the same process steps and process conditions as Examples 1 and 2, and that Comparative Example 1 has an area percentage of aggregate of 0.98%, which is outside of the claimed range of 0.80% or smaller (p. 8), the applicant’s Comparative Example 1 does not prove that the resin composition of Onyu does not necessarily have the claimed area percentage of the aggregate of 0.80% or smaller. This is because Comparative Example 1 comprises PBT and PA1503 as the thermoplastic resin (specification [Table 2]), which is a polybutylene terephthalate resin and a polyamide resin (specification [0106]), whereas Onyu’s thermoplastic resin is a polyolefin resin and a polyester resin [0005], wherein examples of polyester resins include polybutylene terephthalate [0072], wherein the polyolefin resin is a polyolefin resin obtained by polymerizing at least one kind of olefin, and may be a homopolymer or a copolymer, wherein examples of such olefins include styrene [0048]. Also, Comparative Example 1 further comprises stabilizer, and mold releasing agent (specification [Table 2]), which are not necessarily present in Onyu’s composition. The Office recognizes that all of the claimed physical properties are not positively taught by Onyu, 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, has an aggregate attributable to the electro-conductive substance, having an equivalent circle diameter of 30 µm or larger, wherein an area percentage of the aggregate is 0.80% or smaller. However, Onyu renders obvious all of 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 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 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], and that for particularly effective dispersion, two or more techniques among them are preferably selected [0014]. Also, Onyu teaches that the primary particle size of the carbon-based filler is 1000 nm or less [0021], and that the conductive resin composition can be molded by a conventional molded method such as extrusion molding or injection molding [0081]. Therefore, the claimed physical properties would naturally arise from the resin composition that is rendered obvious by Onyu. 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)).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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