DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The foreign priority has been submitted in English, however none of the individual FP give support for the entirety of the claims. See the Table on page 4 of the remarks filed 11/24/25. ‘686 has the most support thus the Examiner gives claims 1-11, 21-28 support of ‘686 and an effective date of ‘2/25/21. The remaining claims thusly have an effective date of the filing of the PCT: 2/24/22
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/29/25, 11/24/25, 9/23/25, 9/2/25 have been considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 11/24/25 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/001812 and 18/006749 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant argues the priority has been perfected and thus WO ‘487 should be removed.
The Examiner agrees in part. The priority date for the claims is as set forth above. The WO document and the instant application have the same inventors and same assignee (same exact inventive entity) and was published/filed within a year prior to the 2/24/21 PCT filing date of the instant application. Regardless of the perfection of foreign priority, the WO document is removed as prior art.
Applicant argues the claims recite a surface resisitivity of 1011 ohm/cm2 or larger which is not met by Masabumi or Seong.
The Examiner disagrees. The units of the claimed resisitivity and the units of the resistivity of the prior art references is not the same. The units claimed are ohms. The units of the references are ohm/cm2. Thus, arguments that the references do not meet such are not persuasive. Further, Masabumi embraces the same end product (PS masterbatch mixed with PBT) thus the property seems to be embraced by the reference. Seong also embraces a PBT bulk resin blended with a minor amount of PS further comprising CNTs. It would seem the CNTs would naturally segregate the same way as in Applicant’s invention, embracing the claimed properties. Arguments therein are thusly not persuasive.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejection over Claim(s) 1-11, 13-28 under 35 U.S.C. 102(a1) and 102a2 as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Iseki (WO 2021/256487), US 2023/0242747 is used as an equivalent English document (this rejection corresponds to the ODP over 18/001812 below) is withdrawn. The WO document has the same inventive entity (same inventors, same assignee) therefor exemptions under 102a1 and 102a2 apply.
Rejection over Claim(s) 1-9, 14-18, 20-28, 30 under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Masabumi (JP2003100147A, English translation provided) is overcome by amendment.
Claim(s) 1-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masabumi (JP2003100147A, English translation previously provided).
Elements of Masubumi are as previously set forth. The specification shows that a masterbatch of polystyrene/CNTs mixed with PBT gives the claimed properties. Masabumi renders obvious the use of PS for the masterbatch and PBT for the bulk resin, see the below rejection. Masabumi discloses surface resistance in ohm/cm2 which is a different surface resistance measurement than instantly claimed (which is just in ohm). Since Masabumi embraces the same end product needed to give the claimed property, the new property of the claim is also expected to be embraced by Masabumi.
Masabumi discloses conductive materials comprising carbon nanotubes [0001] having excellent surface resistance [0001] (a property seemingly desired by claim 24). The composition comprises 1-2% carbon nanotubes in the final composition [0014], (meeting the wt% carbon nanotubes of claim 3), the resin material may be polybutylene terephthalate, polystyrene and those others of [0017]. Polystyrene [0040] and polybutylene terephthalate [0047] are exemplified. Thus, Masabumi embraces a composition comprising 1-2 wt% carbon nanotubes and PBT or PS. Masabumi discloses wherein a masterbatch is formed with 15-20 wt% carbon nanotubes [0026, 0032], before adding the remaining polymer material. See Example 1 wherein 2 kg of PS having carbon nanotubes therein is mixed (a masterbatch) with 18 kg of polystyrene. Masabumi thusly exemplifies 20 parts masterbatch of B in resin A.
Masabumi prefers using the same resin for both [0026], but, this then also embraces not using the same resin for both, rendering the use of PS/CNT masterbatch added/mixed with PBT prima facie obvious.
The dielectric constant and loss tangent of claims 1 and 2 seem to thusly be embraced and elements above meet claims 1-3. If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Elements above meet claims 4-9. When using PS for one resin, and PBT for the other, the content of the sea being larger than the islands (of claim 12) would implicitly occur since all that is required here is mixing a master batch of one resin with a second resin, with the masterbatch being added in a smaller amount (this concept is exemplified, as discussed above in Masabumi, e.g. adding 2kg masterbatch to 18 kg resin). Using PS/CNT masterbatch mixed with PBT is prima facie obvious, as set forth above, thus claim 14 is met (e.g. the SP is a property of the individual polymer and A will be greater than B using the above mix), elements above meet claims 15-18, 20. Since the composition is embraced, the properties of claims 21-24 are deemed to be embraced (prima facie obvious) in view of Masabumi.
Molded articles are produced [0038], which meet claims 25-28, 30 wherein since the composition requirements are met the article must be capable of acting as an electromagnetic wave absorber.
Since Masabumi discloses the preferred resins (PS and PBT) the SP value difference of claim 19 must be embraced. Thus, elements above render prima facie obvious claims 10-13, 19, 29
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masabumi in view of Yamamoto JP2013007058A (English translation provided, ref cited in the instant specification).
Masabumi includes elements as set forth above. Masabumi discloses polybutylene (and other resins) mixed with carbon nanotubes to form compositions that may be melt extruded, pelletized and molded [0032, 0047]. Masabumi does not disclose the use of mold releasing agents and/or stabilizers therein.
Yamamoto discloses polybutylene resin compositions (title) (thus akin to the resin of Masabumi) that may be extrusion molded (akin to Masabumi) (page 26 para 5). Yamamoto discloses the use of mold release agents (page 2 para 5) and heat stabilizers (page 12 para 2). One would recognize that mold release agents would help the resin release from the mold, and, heat stabilizers would help stabilize the composition from high temperatures.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Masabumi the use of mold release agents and/or stabilizing agents, as taught by Yamamoto, in order to aid in the release of the resin from molds and/or stabilize the composition from heat.
Claim(s) 1-11, 13-28, 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seong (KR 20200036267A, English translation provided).
Elements of this rejection are as previously set forth. Seong embraces using a combination of 2 different polymers, and, CNTs therein. The CNTs would naturally segregate to one of the polymers preferentially. PBT is used as the main resin, and, it can be mixed with others such as polystyrene (as previously set forth over claim 4). When this happens it seems the claimed properties would be embraced. Thus, the new limitations are met. The dispersing agent [0046] meets the ‘stabilizing agent’ requirements of new claim 32 since it helps disperse (and thusly stabilize) the fillers therein.
Seong discloses polybutylene terephthalate (PBT) resin compositions [0001] having excellent heat conduction and electromagnetic wave shielding performance and molded products therefrom [0001]. The composition comprises PBT (meeting the claimed thermoplastic resin) and a filler comprising a carbon material and graphite [0010]. The PBT is 37-67% of the composition [0011], the filler ranges from 30-60% of the composition [0011] wherein the filler contains the carbon material and graphite in a ratio of 0.5:9.5-9.5:0.5. This calculates to 1.5-57% of either filler as long as the total of both together is from 30-60%. Thus, the composition can have 1.5-57% carbon material. The carbon material may be carbon nanotube [0035] (meeting the claimed carbon nanotube).
Since this amount of carbon nanotube embraces the range of claim 3, and, the composition requirements are met (base of PBT), the dielectric constant of claim 1 is deemed to be embraced by the reference. if there is any difference between the above composition and the composition of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
For the same reasons as above the properties of claim 2 are also deemed to be embraced. Elements above meet claim 3. The PBT may be mixed with other plastics such as styrene based compounds [0020] including ABS, ASA and SAN type styrene thermoplastic resins [0029] in a ratio of 1:9 to 9:1 [0029], thus embracing 3.7-60.3% of either PBT or styrene resin, embracing claim 4. Elements above meet claim 5 (PBT is a polyester), 6, 7. Claims 8 and 9 are product by process limitation. The process of making not being pertinent unless Applicant shows a distinct product is produced. Herein, even if a masterbatch is used one expects the nanotubes to disperse throughout the resin creating the same end product. As such claims 8 and 9 are met. Elements above meet claims 10, 11, 13 (product by process, as above). Claims 14, 18-19 is deemed to be met since the claimed thermoplastic resins are met. Elements above (product by process) meet claim 15 and also meet claims 16-17, 20. Since the composition requirements are met the properties of claims 21-24 are met. The end molded article discussed above, or those described in [0018] meet claims 25-28 wherein since the composition requirements are met the article must be capable of acting as an electromagnetic wave absorber.
Double Patenting
Rejection over Claims 1-11, 13-28 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 15-17 of copending Application No. 18001812 (reference application) is overcome by terminal disclaimer.
Rejection over Claims 1-30 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 8-9, 19-22, 25-26 of copending Application No. 18006749 (reference application) is overcome by terminal disclaimer.
.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759