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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on June 26, 2026 have been entered. Claims 1-7 and 9-11 are pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al (US 5451632 A).
Regarding Claim 1: Okumura teaches a resin composition comprising a polycarbonate-polyorganosiloxane (PC-PDMS) copolymer with repeat units reading on instant formula (I) (col. 2, lines 7-19, repeating units I) and instant formula (II) (col. 2, lines 36-51, structural unit III), which may be in the form of a block copolymer (col. 4, lines 8-17), and an inorganic filler such as a carbon fiber (col. 10, lines 65-69) surface coated with an epoxy resin (col. 11, lines 41-44). Okumura teaches that the composition comprises 2-95 wt% of the PC-PDMS copolymer, 0-90 wt% of a second polycarbonate, and 5-55 wt% of the inorganic filler (col. 11, lines 60-69). Based on calculations, the sum of PC-PDMS and carbon fiber is from 7-100 wt% of the composition. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the PC-PDMS and carbon fiber and would have been motivated to do so, especially on the high end of the range, to improve the stiffness (col. 12, lines 1-5) and flame resistance (col. 14, lines 48-52) of the composition.
Okumura teaches a flame retardant as an optional, but non-necessary, component (col. 16, lines 10-22).
Regarding Claim 2: Based on calculations, the content of the carbon fiber is from 5-2750 parts by weight per 100 parts of PC-PDMS. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the carbon fiber and would have been motivated to do so, especially on the lower end of the range, to balance the stiffness and mixability of the composition (col. 12, lines 1-6).
Regarding Claims 3-4: Okumura teaches phenol and phosphorus-based antioxidants (col. 15, lines 49-51).
Regarding Claim 5: Okumura teaches 0.08 parts by weight (800ppm) of an antioxidant, based on 100 parts of PC-PDMS (col. 23, lines 20-22).
Regarding Claim 6: Okumura teaches a chain length of the polyorganosiloxane segment is from 1-500 (col. 2, lines 36-51), with examples having chain lengths of 30-350 (col. 19, line 59-col. 20, line 13).
Regarding Claim 7: Okumura teaches 0.01-10wt% of the polysiloxane structural unit in the copolymer (col. 4, lines 28-39). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the polyorganosiloxane unit in the copolymer and would have been motivated to do so since Okumura teaches this amount allows for a balance of flame resistance, impact resistance, and heat resistance (col. 4, lines 28-39).
Regarding Claim 9: Okumura teaches molded articles (col. 37, lines 14-19).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al (US 5451632 A).
Okumura teaches a method of improving a property of a composition comprising a polycarbonate-polyorganosiloxane (PC-PDMS) copolymer with repeat units reading on instant formula (I) (col. 2, lines 7-19, repeating unit I) and instant formula (II) (col. 2, lines 36-51, structural unit III), which may be in the form of a block copolymer (col. 4, lines 8-17), and an inorganic filler such as a carbon fiber (col. 10, lines 65-69) surface coated with an epoxy resin (col. 11, lines 41-44). Okumura teaches that the composition comprises 2-95 wt% of the PC-PDMS copolymer, 0-90 wt% of a second polycarbonate, and 5-55 wt% of the inorganic filler (col. 11, lines 60-69). Based on calculations, the sum of PC-PDMS and carbon fiber is from 7-100 wt% of the composition. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the PC-PDMS and carbon fiber and would have been motivated to do so, especially on the high end of the range, to improve the stiffness (col. 12, lines 1-5) and flame resistance (col. 14, lines 48-52) of the composition. Okumura teaches a flame retardant as an optional, but non-necessary, component (col. 16, lines 10-22). The method comprises adjusting a blending ratio of PC-PDMS and carbon fiber to improve properties such as the flow of the composition (col. 14, lines 48-52).
Response to Arguments
Applicant's arguments filed on June 26, 2026 have been fully considered but they are not persuasive.
The amendments to claims 1 and 10 have omitted a halogen atom from general formula (I). Applicant argues that this overcomes the previous rejection because the polycarbonate-polyorganosiloxane copolymer of Okumura requires a polycarbonate repeating unit containing halogen atoms (repeating unit II). While this is true, Okumura further teaches a polycarbonate unit reading on general formula (I) of the instant claims (repeating unit I). Furthermore, instant claims 1 and 10 recite “a polycarbonate-polyorganosiloxane copolymer (A) comprising a polycarbonate block (A-1) comprising a repeating unit represented by the following general formula (I) and a polyorganosiloxane block (A-2) comprising a repeating unit represented by the following general formula (II).” The transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). Because the instant claims do not specifically exclude an additional polycarbonate block having halogen atoms in the polycarbonate-polyorganosiloxane copolymer, the amendments do not overcome the rejection over Okumura; therefore, the rejection is maintained.
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 CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
