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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 12, 2022, January 23, 2023, September 10, 2024, November 19, 2024, December 19, 2024, and July 22, 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on August 1, 2025 is acknowledged.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 1, 2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horio et al. (JP2016017156, English translation provided for citations, hereinafter referred to as “Horio”).
As to Claim 1: Horio teaches an aromatic polycarbonate resin composition and molded articles thereof ([0001]) having optical properties necessary for application as a light-guiding part for a vehicle used for a daytime running light ([0007]), which meets the claimed structural limitation of an aromatic polycarbonate resin. The Examiner acknowledges that Horio does not explicitly teach the claimed optical properties, however, the instant claim 1 does not recite a structural or compositional feature that is necessary to achieve the claimed properties besides an aromatic polycarbonate resin. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. Horio teaches a composition that comprises the components required to achieve the claimed properties including (e.g., Example 1 of the instant specification): 100 parts of an aromatic polycarbonate resin and 0.001 to 1 part by mass of a phosphorus-based antioxidant ([0007] of Horio). Horio also teaches examples comprising the same components in the same amounts for which the instant specification presents evidence exhibit the claimed properties (e.g., Example 3 of the instant specification comprises 100 parts of Aromatic polycarbonate resin (a) FN1500 manufactured by Idemitsu Kosan Co., Ltd. and 0.05 parts of Antioxidant (b-1) ADK STAB PEP-36 having the structure bis(2,6-di-tert-butyl-4-methylphenyl)pentaerythritol) diphosphite, such as Example 1 of Horio comprising 100 parts of Idemitsu FN 1500 and 0.05 parts of STAB PEP-36 (pg. 12 of Horio). The examples of Horio are processed in a substantially similar fashion including melt-kneading in a vented twin-screw extruder with a cylinder temperature of 260 ˚C ([0031] and Table 1, Example 1 of Horio) (analogous to the production of resin composition of the instant specification para. [0074]).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Horio teaches all of the ingredients in the amounts disclosed in the instant specification made by a substantially similar process such that a person having ordinary skill in the art using the plain meaning of the claim language in light of the specification as it would be understood to result in the claimed properties. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a difference (Y2−Y1) between a y(Y1) of the molded body for optical characteristic measurement in a CIE 1931 color system at a position of a light-guiding path distant from the entering portion by 125 mm and a y(Y2) thereof in the CIE 1931 color system at a position of the light-guiding path distant from the entering portion by 525 mm is 0.055 or less, and the y(Y2) thereof in the CIE 1931 color system at the position of the light-guiding path distant from the entering portion by 525 mm is 0.40 or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Horio teaches the composition of claim 1 (supra).
Example 1 of Horio comprises 100 parts of Idemitsu FN 1500 (i.e., an aromatic polycarbonate resin) and 0.05 parts of STAB PEP-36 having the structure bis(2,6-di-tert-butyl-4-methylphenyl)pentaerythritol diphosphate (see [0040] of Horio) (Table 1, pg. 12 of Horio Original Document). The instant specification teaches that ADK STAB PEP-36 having the structure bis-(2,6-di-tert-butyl-4-methylphenyl)pentaerythritol-diphosphite may be a phosphite-based antioxidant ([0058] of the instant specification).
As to Claim 3: Horio teaches the composition of claim 1 (supra).
Horio further teaches wherein the aromatic polycarbonate resin composition is processed into a 125 mm x 13 mm x 5 mm product (i.e., a 5-millimeter thick plate) ([0040]). Horio teaches that that the cylinder temperature for injection molding may be 260 ˚C ([0031] and Table 1, Example 1 of Horio), and that the mold temperature (construed to read on the claimed die temperature) may be 80 ˚C ([0031]).
Horio does not teach a cycle time or a retention time for the experiments or the presence of a coloring source derived from the antioxidant. However, the instant claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Horio teaches a composition which anticipates the claimed composition, and there is no evidence that the cycle time or retention time would materially affect the structure of the final product or the properties thereof. Furthermore, the instant specification teaches that the claimed “coloring source compound derived from the antioxidant” results from the decomposition of the antioxidant under heat (see instant specification para. [0062]). Horio teaches that that the cylinder temperature for injection molding may be 260 ˚C ([0031] and Table 1, Example 1 of Horio), and that the mold temperature (construed to read on the claimed die temperature) may be 80 ˚C ([0031]) and thus, it is the position of the Examiner that the composition of Horio would inherently result in the claimed “coloring source compound derived from the antioxidant” in the claimed amount having the claimed conjugate number merely by the presence of the antioxidant at the process temperatures as Horio teaches the same temperature for processing the composition which may include the same antioxidant as the instant invention.
As to Claim 4: Horio teaches the composition of claim 1 (supra).
Example 1 of Horio comprises 100 parts of Idemitsu FN 1500 (i.e., an aromatic polycarbonate resin) and 0.05 parts of STAB PEP-36 having the structure bis(2,6-di-tert-butyl-4-methylphenyl)pentaerythritol diphosphate (see [0040] of Horio) (Table 1, pg. 12 of Horio Original Document), which reads on the claimed phosphorus-based antioxidant.
As to Claim 5: Horio teaches the composition of claim 1 (supra).
Example 1 of Horio comprises 100 parts of Idemitsu FN 1500 (i.e., an aromatic polycarbonate resin) (Table 1, pg. 12 of Horio Original Document) which ahs a viscosity average molecular weight of 14,500 g/mol ([0040]).
As to Claim 6: Horio teaches the composition of claim 1 (supra).
Example 1 of Horio comprises 100 parts of Idemitsu FN 1500 (i.e., an aromatic polycarbonate resin) and 0.01 parts of Rikemal S-100A (stearic acid monoglyceride, see [0018] of Horio) (Table 1 of Horio Original Document), which reads on the claimed fatty acid ester.
As to Claims 7-9: Horio teaches the composition of claim 1 (supra).
Horio further teaches wherein the aromatic polycarbonate resin composition is processed into a 125 mm x 13 mm x 5 mm product (i.e., a 5-millimeter thick plate) ([0040]). Horio teaches that that the cylinder temperature for injection molding may be 260 ˚C ([0031] and Table 1, Example 1 of Horio), and that the mold temperature (construed to read on the claimed die temperature) may be 80 ˚C ([0031]).
Horio does not teach a cycle time or a retention time for the experiments. However, the instant claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Horio teaches a composition which anticipates the claimed composition, and there is no evidence that the cycle time or retention time would materially affect the structure of the final product or the properties thereof.
Furthermore, it is the position of the Office that the claimed resin composition is capable of undergoing the processing steps. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., see instant specification paras. [0046]-[0049]). Therefore, the claimed effects and physical properties, i.e. any of light transmittance, YI, and average spectral light transmittance, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Horio et al. (JP2016017156, English translation provided for citations, hereinafter referred to as “Horio”) in view of Sakaki et al. (JP6674526, English translation provided for citations, hereinafter referred to as “Sakaki”).
As to Claims 10: Horio teaches the composition of claim 1 (see above).
Horio is silent towards wherein the composition comprises an acyclic epoxy compound.
Sakaki teaches an aromatic polycarbonate resin composition and optical molded articles (Title) formed thereof wherein the aromatic polycarbonate resin composition comprises a phosphorus antioxidant, fatty acid ester (Abstract), and may further comprise an epoxy compound (F) which may have the structure 3',4'-eрохуcyclohexylmethyl-3,4-epoxycyclohexane carboxylate (i.e., an alicyclic epoxy compound) in an amount of 0.001 to 0.2 parts by mass based on 100 parts by mass of the aromatic polycarbonate (pg. 2, para. 1 of Sakaki). Sakaki teaches an exemplary composition comprising 3',4'-eрохуcyclohexylmethyl-3,4-epoxycyclohexane carboxylate (F1) in an amount of 0.02 parts by mass based on 100 parts by mass of the aromatic polycarbonate (pg. 23, Table 1, Ex. 8 of Sakaki). Horio and Sakaki are considered analogous art because they are directed towards the same field of endeavor, namely, aromatic polycarbonate resin compositions and optical molded articles formed thereof. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include within the composition of Horio an alicyclic epoxy compound such as 3',4'-eрохуcyclohexylmethyl-3,4-epoxycyclohexane carboxylate in an amount within the claimed range, such as 0.02 parts by mass based on 100 parts by mass of the aromatic polycarbonate and the motivation would have been that Sakaki teaches that such alicyclic compounds are known within the art a suitable additives for aromatic polycarbonate resin compositions and optical molded articles formed thereof and furthermore because Sakaki teaches that addition of the same improves optical properties while preventing degradation or deterioration of the articles (pg. 8, para. 2-5 of Sakaki).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767