DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 9, 2026 has been entered.
Status of Claims
Claims 1-9 are pending in the current application.
Claim 1 is amended in the current application.
Claim 9 is newly added in the current application.
Response to Arguments
Applicant's amendments and remarks filed April 9, 2026 have been fully considered.
Applicant argues the newly amended claimed invention exhibits surprising and unexpected results.
This is not persuasive for the following reasons. The grounds of rejection have been updated below to reflect the present claim amendments, where all new limitations are clearly taught and do not distinguish over the prior art of record.
Furthermore, 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." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). 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. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See MPEP 716.02(d), I. In the present instance, the claimed invention is not sufficiently commensurate in scope with the inventive examples to demonstrate that all embodiments falling within the claimed scope are all necessarily capable of exhibiting the asserted surprising and unexpected results. For example:
Examples 1-11 of Tables 2 and 3 utilize two specific polycarbonate-polyorganosiloxane copolymer (A) having an average chain length of the polyorganosiloxane block (A-2) of n=37 and n=88. One of ordinary skill in the art would not be able to ascertain from these two species that all other configurations of polycarbonate-polyorganosiloxane copolymers having a much broader average length range of 20-100 of the (A-2) block would necessarily exhibit the asserted surprising and unexpected results. Applicant asserts that one skilled in the art would have been able to extrapolate from the provided examples and supplemental specification guidance. Examiner disagrees, because extrapolation is not a reasonable methodology for asserting superior or unexpected results. 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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d), II. Extrapolation relies upon projecting trends beyond experimental data points, and fails to provide sufficient comparison of data both inside and outside of a claimed range. No experimental data is provided above an average chain length of 88 nor below an average chain length of 37, and one of ordinary skill in the art would not be able to reasonably determine a trend without any experimental data. Interpolation between experimental data points would provide reasonable guidance to expand upon and establish a trend within the boundaries of data points (such as for average chain length values of 40, 50, 60, and 70), therefore, an average chain length of 37-88 would need to be recited within claim 1 to be considered sufficiently commensurate in scope with the experimental data.
Examples 1-11 of Tables 2 and 3 all utilize only one specific copolymer (B) identified as AS100. One of ordinary skill in the art would not be able to ascertain from this singular species that all other configurations of copolymer (B) having any length, content, and ratios of (X1), (X2), and (X3) segments would necessarily exhibit the asserted surprising and unexpected results. Although the amendments to claim 1 further characterize the copolymer (B) as a graft copolymer with specific content ranges, it is noted that the content of each component of copolymer (B) is still much more broadly recited when compared to the singular species A100. One of ordinary skill in the art would not be able to ascertain from this single species that all other configurations of graft copolymer (B) would necessarily exhibit the asserted surprising and unexpected results.
Lastly, Examples 1-11 of Tables 2 and 3 all utilize a specific ratio of 100 parts by mass of polycarbonate-polyorganosiloxane copolymer (A) to 2-11 parts by mass of the AS100 copolymer (B). Present claim 1 recites a ratio between copolymers (A) and (B) of 100 parts by mass of (A) to 1-15 parts by mass of AS100 copolymer (B), and one of ordinary skill in the art would not be able to ascertain that ratios outside of the aforementioned ratio of copolymers (A) and (B) would necessarily exhibit the asserted surprising and unexpected results. Claim 1 is not sufficiently commensurate in scope with the experimental data.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Applicant argues that Shoji utilizes an acid-modified polyethylene in order to improve slid-ability of polycarbonate, whereas the present invention does not utilize an acid-modified polyethylene.
This is not persuasive for the following reasons. It is noted that the features upon which applicant relies (i.e., a composition free from an acid-modified polyethylene and a quantitative property pertaining to slid-ability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, the present claims utilize “comprising” terminology, where this transitional phrase is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03. Therefore, the present claims permit the inclusion of unrecited elements such as acid-modified polyethylene.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the ethylene-vinyl acetate copolymer segment as its main chain and including the styrene-based polymer segment as a side chain thereof." There is insufficient antecedent basis for the limitation “the ethylene-vinyl acetate copolymer segment” and “the styrene-based polymer segment” in the claim. Although depicted by general formulas (X2) and (X3), claim 1 does not previously recite “ethylene-vinyl acetate copolymer segment,” and general formulas (X2) and (X3) do not require that these two constituent units form together to yield a repeating segment of ethylene-vinyl acetate; for example, general formulas (X1), (X2), and (X3) could form an alternating structure or random structure, where (X2) and (X3) are not sequential and do not form an ethylene-vinyl acetate copolymer segment. For the purposes of examination, claim 1 is instead interpreted as reciting “an ethylene-vinyl acetate copolymer segment as its main chain and including a styrene-based polymer segment as a side chain thereof.”
Claims 2-9 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from claim 1 as rejected above and do not remedy the aforementioned deficiency.
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.
Claim 2-4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth 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 2 recites “the constituent unit (b-1) represented by the general formula (X1) forms a side chain of the copolymer (B).” Claim 2 depends from claim 1, where claim 1 recites “the copolymer is a graft copolymer … and including a styrene-based polymer segment as a side chain thereof.” Claim 2 recites the same scope set forth by claim 1, but with different verbiage, and fails to further limit the scope of claim 1. Therefore, claim 2 is considered to be an improper dependent claim under 35 USC 112(d).
Claim 3 recites “the constituent unit (b-2) represented by the general formula (X2) and the constituent unit (b-3) represented by the general formula (X3) form a main chain of the copolymer (B).” Claim 3 depends from claim 1, where claim 1 recites “the copolymer is a graft copolymer including an ethylene-vinyl acetate copolymer segment as its main chain ….” Claim 3 recites the same scope set forth by claim 1, but with different verbiage, and fails to further limit the scope of claim 1. Therefore, claim 3 is considered to be an improper dependent claim under 35 USC 112(d).
Claim 4 recites “a content of the copolymer (B) is from 0.5 part by mass or more to 20 parts by mass or less with respect to 100 parts by mass of the polycarbonate-based resin (S).” Claim 4 depends from claim 1, where claim 1 recites “a content of the copolymer (B) is from 1 part by mass or more to 15 parts by mass or less with respect to 100 parts by mass of the polycarbonate-based resin (S).” Claim 4 improperly broadens the content range set forth by claim 1, therefore, claim 4 is considered to be an improper dependent claim under 35 USC 112(d).
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim 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.
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shoji (JP 2018-141076 A) in view of Okamoto et al. (WO 2020/009100 A1, herein US 2021/0261730 A1 utilized as English language equivalent for all citations).
Regarding Claim 1, Shoji teaches a polycarbonate resin composition for a molded article comprising a polycarbonate-based resin (A), an ethylene-vinyl acetate graft copolymer (B) having a styrene-based copolymer segment, and a release agent (D) (Shoji, [0007]-[0008]). Shoji’s ethylene-vinyl acetate copolymer (B) having a styrene-based copolymer segment has a styrene-based segment that satisfies general formula (X1) of claim 1, an ethylene segment that satisfies general formula (X2) of claim 1, and a vinyl acetate segment that satisfies general formula (X3) of claim 1. Shoji teaches the styrene-based segment is a graft side chain of the graft copolymer (B) and is included in an amount of 10-50 parts by mass with respect to 100% by mass of the ethylene-vinyl acetate copolymer main chain; the vinyl acetate segment is included in an amount of 1-20% by mass with respect to 100% by mass of the ethylene-vinyl acetate copolymer main chain; and the ethylene segment with another optional olefin makes up the remainder (80-99% by mass, where the optional olefin can be included in an amount of 0-20% by mass, and thereby leaving the ethylene segment amount being 60-99% by mass) with respect to 100% by mass of the ethylene-vinyl acetate copolymer main chain (Shoji, [0042]-[0049]). Shoji’s styrene-based segment content range is identical to the claimed range of 10-50% by mass, and therefore, satisfies the claimed range (MPEP 2131.03). Shoji’s ethylene segment content range encompasses the claimed range of 80-99% by mass, and therefore, renders obvious the claimed range (MPEP 2144.05). Shoji’s vinyl acetate segment content range is identical to the claimed range of 1-20% by mass, and therefore, satisfies the claimed range (MPEP 2131.03). Shoji teaches the ethylene-vinyl acetate graft copolymer (B) is included in an amount of 4-15 parts by mass based on 100 parts by mass of the polycarbonate-based resin (A) (Shoji, [0052]). Shoji’s range is encompassed within the claimed range of 1-15 parts by mass, and therefore, satisfies the claimed range (MPEP 2131.03). Shoji teaches the polycarbonate-based resin (A) having structure -[-O-X-O-C=O-]- where X is an aromatic unit such as 4,4’-dihydroxybiphenyl that satisfies general formula (I) of claim 1 (Shoji, [0012]-[0016]). Shoji teaches the polycarbonate-based resin (A) may be constituted as a copolymer having a siloxane structure unit to enhance flame retardancy and impact resistance (Shoji, [0039]).
Shoji remains silent regarding a block copolymer having both the structure of general formula (I) and general formula (II) of claim 1.
Okamoto, however, teaches a polycarbonate resin composition for a molded article comprising a polycarbonate-polyorganosiloxane block copolymer (A) having a polycarbonate block represented by general formula (I) and a polyorganosiloxane block represented by general formula (II) as depicted below that satisfy general formula (I) and general formula (II) of claim 1, respectively (Okamoto, Abstract, [0009]-[0013]). Okamoto teaches the polyorganosiloxane block represented by general formula (II) has an average chain length of 20 to 65 (Okamoto, [0013], [0051]-[0061]). Okamoto’s average chain length falls within the claimed range of 20 to 100, and therefore, satisfies the claimed range (MPEP 2131.03).
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Okamoto – General Formulae (I) & (II)
Since Shoji and Okamoto both disclose polycarbonate resin compositions for molded articles comprising polycarbonate-based resins that contain a siloxane segment, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Okamoto’s polycarbonate-polyorganosiloxane block copolymer as the polycarbonate-based resin (A) in Shoji’s composition to yield a material that exhibits enhanced flame retardancy and impact resistance as taught by Shoji (Shoji, [0039]), and also that exhibits excellent sliding characteristics without impairing other physical properties, excellent impact resistance, and excellent transparency as taught by Okamoto (Okamoto, [0009], [0051]-[0053]).
Regarding Claim 2, modified Shoji teaches the styrene-based copolymer segment forms a side-chain of the ethylene-vinyl acetate copolymer (B) (Shoji, [0042]).
Regarding Claim 3, modified Shoji teaches the ethylene and vinyl acetate copolymer segments form a main-chain of the ethylene-vinyl acetate copolymer (B) (Shoji, [0042]).
Regarding Claim 4, modified Shoji teaches the content of the ethylene-vinyl acetate copolymer (B) is from 4-15 parts by mass relative to 100 parts by mass of the polycarbonate resin (A) (Shoji, [0052]). Modified Shoji’s range is encompassed within the claimed range of 0.5-20 parts by mass, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 5, modified Shoji teaches the polycarbonate resin composition for a molded article further comprises a release agent (D) (Shoji, [0058]-[0066]).
Regarding Claim 6, modified Shoji teaches the release agent (D) is a fatty acid ester such as esters of pentaerythritol (Shoji, [0058]-[0066]).
Regarding Claim 7, modified Shoji teaches the polyorganosiloxane block represented by general formula (II) has an average chain length of 20 to 65, and more preferably 50 or more and 100 or less (Okamoto, [0013], [0051]-[0052]). Okamoto’s more preferred average chain length is identical to the claimed range of 50 or more to 100 or less, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 8, modified Shoji teaches a molded body comprising the polycarbonate resin composition discussed above for claim 1 (Shoji, [0007]-[0009], [0072]-[0073]).
Regarding Claim 9, modified Shoji teaches the polyorganosiloxane block represented by general formula (II) has an average chain length of 20 to 65 (Okamoto, [0013], [0051]-[0061]). Modified Shoji’s average chain length overlaps with the claimed range of 37 to 88, and therefore, renders obvious the claimed range (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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