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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/26/2026 has been entered.
In the amendments filed on 04/27/2026, claims 1, 4, 5, 7, 9-12, 14, and 15 are pending. Claims 1, 4, 5, 7, 9, and 10 are amended. Claims 2, 3, 6, 8, and 13 are canceled.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12, 14, and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the thermoplastic composition comprising (a) from 30 wt% to 99 wt% crystalline polybutylene terephthalate (PBT), does not reasonably provide enablement for the thermoplastic composition comprising (a) from 30 wt% to 99 wt% polybutylene terephthalate (PBT) that is not crystalline. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The specification is not enabling for the thermoplastic composition comprising (a) from 30 wt% to 99 wt% polybutylene terephthalate (PBT) that is not crystalline. The breadth of the claims is that claim 1 recites *a thermoplastic composition comprising (a) from 30 wt% to 99 wt% polybutylene terephthalate (PBT)” in lines 1-3, which reads on polybutylene terephthalate (PBT) that is not required to be crystalline. The nature of the invention and the amount of direction provided by the inventor are that the specification of the instant application recites that the present disclosure relates to crystalline polyester-based laser direct structuring (LDS) compositions, and in particular to compositions including a crystalline polyester [0001], that aspects of the disclosure relate to thermoplastic compositions including: (a) from about 1 wt% to about 99 wt% of at least one crystalline polyester [0005], and that in particular aspect that at least one crystalline polyester includes polybutylene terephthalate (PBT) [0005]. The state of the prior art, the level of one of ordinary skill, and the level of predictability in the art is that polybutylene terephthalate (PBT) is not necessarily crystalline and can be amorphous, crystalline, semi-crystalline, or a combination thereof. The existence of working examples is that the specification of the instant application recites examples with PBT195 or PBT315 that is PBT [0081, 0084], that PBT is polybutylene terephthalate [0005, 0010, 0035, 0061, 0062], and that the polybutylene terephthalate is crystalline polyester [0005, 0010, 0035, 0061, 0062]. There is no recitation in the specification of the instant application of the thermoplastic composition comprising (a) from 30 wt% to 99 wt% polybutylene terephthalate (PBT) that is not crystalline. In order to make and use the invention as claimed, one of ordinary skill in the art would therefore need to carry out experimentation for every known species of polybutylene terephthalate (PBT) while varying extent of crystallinity, extent of amorphous structure, and extent of semi-crystalline structure in order to find the thermoplastic composition having the claimed improved adhesion, improved surface appearance, and reduced warpage. The quantity of experimentation needed to make or use the invention based on the content of the disclosure is therefore an undue quantity of experimentation. The Office has considered all of the In re Wands factors.
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, 4, 5, 7, 9-12, 14, and 15 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 “cooper chromite black spinel” in line 10, which is indefinite because the composition of cooper chromite black spinel is unclear because it does not exist. Based on the specification of the instant application [0042], for further examination of the claims, this limitation is interpreted as “copper chromite black spinel”.
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, 5, 7, 9-11, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Kim et al. (WO 2019/132292 A1, cited in IDS, US 2021/0070984 A1 is English language equivalent and is used for citation).
Regarding claims 1 and 5, Yamanaka teaches a resin composition consisting of [0168] 70 parts by mass of polyester that is PBT, 30 parts by mass of resin that is PC, 13.1 parts by mass of LDS agent that is LDS-Cu, 48.9 parts by mass of glass fiber, 0.2 parts by mass of stabilizer that is SA1, 0.5 parts by mass of stabilizer that is SA2, and 0.5 parts by mass of release agent that is MR ([0184], TABLE 2, Examples 7), wherein the PBT is polybutylene terephthalate resin that is Novaduran 5008 manufactured by Mitsubishi Engineering-Plastics Corporation, the PC is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation, the LDS-Cu is copper-chromium oxide, the SA1 is phosphorus stabilizer, the SA2 is phenolic stabilizer, the MR is paraffin wax [0167], the LDS is laser direct structuring [0005], and the copper-chromium oxide is a spinel type heavy metal composite oxide [0089]. Kobayashi provides evidence that NOVADURAN 5008 is a crystalline thermoplastic resin that is polybutylene terephthalate resin and is made by Mitsubishi Engineering-Plastics Corporation ([0233], TABLE 1). Yamanaka’s teachings therefore read on a thermoplastic composition comprising (a) 43 wt% polybutylene terephthalate (PBT), (b) 18 wt% of a polycarbonate polymer, (c) about 30 wt% of a glass filler, and (d) about 8 wt% of a laser direct structuring (LDS) additive comprising cooper chromite block spinel, wherein the combined weight percent value of all components does not exceed 100 wt%, and all weight percent values are based on the total weight of the composite. The wt% of (a) is based on calculation 70 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 43%. The wt% of (b) is based on the calculation 30 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 18%. The wt% of (c) is based on the calculation 48.9 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 30%. The wt% of (d) is based on the calculation 13.1 / / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 8%. Yamanaka teaches that the polycarbonate resin may be a copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure [0083], which optionally reads on the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer.
Yamanaka does not teach that the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 22 wt%, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof and that the polycarbonate copolymer comprises the polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 22 wt%. However, Kim teaches a polycarbonate-polysiloxane copolymer comprising about 80 to about 95 wt % of a polycarbonate block and about 5 to about 20 wt % of a polysiloxane block, and that within these ranges, a thermoplastic resin composition comprising the polycarbonate-polysiloxane copolymer can have good heat resistance and impact resistance [0044], wherein the thermoplastic resin composition further comprises a polyester resin [0010]. Yamanaka and Kim are analogous art because both references are in the same field of endeavor of a thermoplastic composition comprising a polyester and a polycarbonate-siloxane copolymer. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Kim’s polycarbonate-polysiloxane copolymer comprising a polycarbonate block and a polysiloxane block to substitute for Yamanaka’s PC that is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation, to optimize the amount Kim’s polycarbonate block in Kim’s copolymer to be about 80 to about 82 wt%, and to optimize the amount of Kim’s polysiloxane block in Kim’s copolymer to be about 18 to about 20 wt%. The proposed modification would read on wherein the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 20 wt% as claimed, wherein the polycarbonate copolymer comprises the polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 20 wt% as claimed. One of ordinary skill in the art would have been motivated to do so because Kim teaches that the polycarbonate-polysiloxane copolymer comprising about 80 to about 95 wt % of polycarbonate block and about 5 to about 20 wt % of the polysiloxane block is beneficial for being useful in a thermoplastic resin composition [0044], that within these ranges, the thermoplastic resin composition can have good heat resistance and impact resistance [0044], which would have been desirable for Yamanaka’s composition because Yamanaka teaches that thermoplastic polyester resins exhibit excellent heat resistance [0002], that heat resistance is desirable [0150], and that impact resistance is desirable [0101, 0105], which means that the amount Kim’s polycarbonate block in Kim’s copolymer in wt% and the amount of Kim’s polysiloxane block in Kim’s copolymer in wt% would have affected the heat resistance and impact resistance of the composition, which means that optimizing the amount Kim’s polycarbonate block in Kim’s copolymer in wt% and the amount of Kim’s polysiloxane block in Kim’s copolymer in wt% would have been beneficial for optimizing the heat resistance and impact resistance of the composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Yamanaka, namely that the composition has improved adhesion, as determined in accordance with ASTM D3359, improved surface appearance as evaluated by observing content of floating reinforcing filler in a molded sample of the composition or by improved gloss as measured according to an L*a*b* color methodology, or reduced warpage was evaluated by visually observing flatness of a molded disk having a diameter of 135 mm and a thickness of from 0.9 mm to 1.2 mm, as compared to a comparative composition that does not include the polycarbonate copolymer. However, Yamanaka as evidenced by Kobayashi and in view of Kim renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition as explained above. Furthermore, the specification of the instant application recites that the composition has improved adhesion, surface appearance and/or warpage properties as compared to a comparative composition that does not include the polycarbonate copolymer [0005], that the present disclosure relates to polyester/PC copolymer blends which address the chemical resistance problem of PC and the warpage problem of crystalline polymers [0010], that the composition has improved adhesion, as determined in accordance with ASTM D3359, as compared to a comparative composition that does not include the polycarbonate copolymer [0046], that the composition has improved surface appearance as compared to a comparative composition that does not include the polycarbonate copolymer [0047, 0074], that the composition has improved surface appearance as compared to a comparative composition that does not include PBT [0047], and that the composition has reduced warpage as compared to a comparative composition that does not include the polycarbonate copolymer [0048, 0075]. Therefore, the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim. 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 7, Yamanaka teaches that the resin composition comprises [0168] 48.9 parts by mass of glass fiber ([0184], TABLE 2, Examples 7), wherein the glass fiber is T-127 manufactured by Nippon Electric Glass Co., Ltd. ([0167], TABLE 1), wherein it is preferable for the glass fibers to have heteromorphic cross-sectional shapes [0123], and here, heteromorphic cross-sectional shape means that the flatness, which is expressed by the long axis/short axis ratio of a cross section perpendicular to the length direction of a fiber, is, for examples, 1.5 to 10 [0123], which optionally reads on wherein the glass fiber comprises flat glass fiber as claimed.
Yamanaka does not teach a specific embodiment wherein the glass fiber comprises flat glass fiber. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yamanaka’s glass fibers that have heteromorphic cross-sectional shapes that have a flatness and a long axis/short axis ratio of a cross section perpendicular to the length direction of the fiber that is 1.5 to 10 to substitute for Yamanaka’s glass fiber that is T-127 manufactured by Nippon Electric Glass Co., Ltd. The proposed modification would read on wherein the glass fiber comprises flat glass fiber as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying reinforcing effect of Yamanaka’s glass fibers in Yamanaka’s resin composition, which would have been beneficial for modifying mechanical properties of Yamanaka’s resin composition because Yamanaka teaches that the resin composition comprises [0168] 48.9 parts by mass of glass fiber ([0184], TABLE 2, Examples 7), that the glass fiber is T-127 manufactured by Nippon Electric Glass Co., Ltd. ([0167], TABLE 1), that it is preferable for the glass fibers to have heteromorphic cross-sectional shapes [0123], that here, heteromorphic cross-sectional shape means that the flatness, which is expressed by the long axis/short axis ratio of a cross section perpendicular to the length direction of a fiber, is, for examples, 1.5 to 10 [0123], and that the fibers have a reinforcing effect [0121].
Regarding claims 9 and 10, Yamanaka teaches that the resin composition may containing a variety of additives other than those mentioned above as long as the advantageous effect of the invention is not significantly impaired [0156], that examples of such additives include fillers other than glass fillers [0156], that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157], and that in examples the resin composition comprises 20 parts by mass of talc and a total of 60 + 40 + 13.1 + 60.0 + 20.0 + 0.4 + 0.5 = 194 or 60 + 40 + 16.2 + 60.7 + 20.0 + 4.1 + 0.4 + 0.4 = 201.8 parts by mass of other ingredients ([0184], TABLE 2, Examples 3, 5), which optionally reads on wherein the composition further comprises about 10 wt% of a mineral filler that is different than the reinforcing filler, and wherein the mineral filler comprises talc as claimed. The wt% is based on the calculations 20 / (60 + 40 + 13.1 + 60.0 + 20.0 + 0.4 + 0.5) * 100% = 10% and 20 / (60 + 40 + 16.2 + 60.7 + 20.0 + 4.1 + 0.4 + 0.4) * 100% = 10%.
Yamanaka does not teach a specific embodiment wherein the composition further comprises from about 1 wt% to about 10 wt% of a mineral filler that is different than the reinforcing filler, and wherein the reinforcing filler comprises talc. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yamanaka’s fillers that are talc to substitute for a fraction of Yamanaka’s 48.9 parts by mass of glass fiber, and to select the amount of Yamanaka’s fillers that are talc to be 20 parts by mass per 194 or 201.8 parts by mass of Yamanaka’s resin composition. The proposed modification would read on wherein the composition further comprises about 10 wt% of a mineral filler that is different than the reinforcing filler, and wherein the reinforcing filler comprises talc as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving plating productivity in LDS because Yamanaka teaches that the resin composition may containing a variety of additives other than those mentioned above as long as the advantageous effect of the invention is not significantly impaired [0156], that examples of such additives include fillers other than glass fillers [0156], that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157], and that in examples the resin composition comprises 20 parts by mass of talc and a total of 60 + 40 + 13.1 + 60.0 + 20.0 + 0.4 + 0.5 = 194 or 60 + 40 + 16.2 + 60.7 + 20.0 + 4.1 + 0.4 + 0.4 = 201.8 parts by mass of other ingredients ([0184], TABLE 2, Examples 3, 5), which means that 20 parts by mass of talc per 194 or 201.8 parts by mass of Yamanaka’s resin composition would have been beneficial for providing an amount of Yamanaka’s talc that is suitable for Yamanaka’s resin composition.
Regarding claim 11, Yamanaka teaches that in addition to the components mentioned above, the resin composition preferably contains an elastomer [0101], and that by incorporating an elastomer, it is possible to improve the impact resistance of the resin composition [0101], which optionally reads on wherein the composition further comprises at least one impact modifier as claimed.
Yamanaka does not teach a specific embodiment wherein the composition further comprises at least one impact modifier. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yamanaka’s elastomer to modify Yamanaka’s resin composition. The proposed modification would read on wherein the composition further comprises at least one impact modifier as claimed. One of ordinary skill in the art would have been motivated to do so because Yamanaka teaches that in addition to the components mentioned above, the resin composition preferably contains an elastomer [0101], and that by incorporating an elastomer, it is possible to improve the impact resistance of the resin composition [0101].
Regarding claim 14, the Office recognizes that all of the claimed physical properties are not positively taught by Yamanaka, namely that the composition has improved gloss, as tested in accordance with ASTM D523, as compared to a comparative composition that includes polycarbonate instead of the at least one crystalline polyester. However, Yamanaka as evidenced by Kobayashi and in view of Kim renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that the composition has improved gloss, as tested in accordance with ASTM D523, as compared to a comparative composition that includes polycarbonate instead of the at least one crystalline polyester [0049, 0076]. Therefore, the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim. 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 15, Yamanaka teaches that the polyester resin composition is for laser direct structuring, which exhibits high platability [0001], and that plating is formed on a surface of a molded resin article by means of laser direct structuring [0162], which reads on wherein the composition is a laser direct structuring (LDS) composition suitable for use in LDS applications as claimed.
Claims 1, 4, 7, 9-11, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Wu et al. (US 2018/0065392 A1).
Regarding claims 1 and 4, Yamanaka teaches a resin composition consisting of [0168] 70 parts by mass of polyester that is PBT, 30 parts by mass of resin that is PC, 13.1 parts by mass of LDS agent that is LDS-Cu, 48.9 parts by mass of glass fiber, 0.2 parts by mass of stabilizer that is SA1, 0.5 parts by mass of stabilizer that is SA2, and 0.5 parts by mass of release agent that is MR ([0184], TABLE 2, Examples 7), wherein the PBT is polybutylene terephthalate resin that is Novaduran 5008 manufactured by Mitsubishi Engineering-Plastics Corporation, the PC is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation, the LDS-Cu is copper-chromium oxide, the SA1 is phosphorus stabilizer, the SA2 is phenolic stabilizer, the MR is paraffin wax [0167], the LDS is laser direct structuring [0005], and the copper-chromium oxide is a spinel type heavy metal composite oxide [0089]. Kobayashi provides evidence that NOVADURAN 5008 is a crystalline thermoplastic resin that is polybutylene terephthalate resin and is made by Mitsubishi Engineering-Plastics Corporation ([0233], TABLE 1). Yamanaka’s teachings therefore read on a thermoplastic composition comprising (a) 43 wt% polybutylene terephthalate (PBT), (b) 18 wt% of a polycarbonate polymer, (c) about 30 wt% of a glass filler, and (d) about 8 wt% of a laser direct structuring (LDS) additive comprising cooper chromite block spinel, wherein the combined weight percent value of all components does not exceed 100 wt%, and all weight percent values are based on the total weight of the composite. The wt% of (a) is based on calculation 70 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 43%. The wt% of (b) is based on the calculation 30 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 18%. The wt% of (c) is based on the calculation 48.9 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 30%. The wt% of (d) is based on the calculation 13.1 / / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 8%. Yamanaka teaches that the polycarbonate resin may be a copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure [0083], which optionally reads on the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer.
Yamanaka does not teach that the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 22 wt%, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof, and that the polycarbonate copolymer comprises the polycarbonate-isophthalate resorcinol (PC-ITR) copolymer. However, Wu teaches (isophthalate-terephthalate-resorcinol)-carbonate copolymers (ITR-PC) [0024] that is a polycarbonate [0017] that is a thermoplastic resin that is a polymer base resin that is present in a composition [0012] with laser marking properties [0002] and further comprising a laser marking additive [0005] that is optionally a laser direct structuring additive [0068], optionally polyesters [0029], and optionally a reinforcing filler [0075]. Yamanaka and Wu are analogous art because both references are in the same field of endeavor of a thermoplastic composition comprising a polycarbonate copolymer, optionally a polyester, optionally a reinforcing filler, and optionally a laser direct structuring additive. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Wu’s (isophthalate-terephthalate-resorcinol)-carbonate copolymers (ITR-PC) to substitute for Yamanaka’s PC that is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation. The proposed modification would read on wherein the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer as claimed, wherein the polycarbonate copolymer comprises the polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer as claimed. One of ordinary skill in the art would have been motivated to do so because Wu teaches that the (isophthalate-terephthalate-resorcinol)-carbonate copolymers (ITR-PC) are beneficial for possessing may desired features, including toughness, transparency, and weatherability, for having desirable thermal flow properties, for being readily manufactured on a commercial scale using interfacial polymerization techniques, which allows synthetic flexibility and composition specificity in the synthesis of the ITR-PC copolymers [0024], and for being a polycarbonate [0017] that is a thermoplastic resin that is a polymer base resin that is beneficial for being useful in a composition [0012] with laser marking properties [0002] and further comprising a laser marking additive [0005] that is optionally a laser direct structuring additive [0068], optionally polyesters [0029], and optionally a reinforcing filler [0075], which would have been desirable for Yamanaka’s PC that is a polycarbonate resin in Yamanaka’s resin composition because Yamanaka teaches that the resin composition [0168] is for laser direct structuring [0001], that the polycarbonate resin may be a copolymer [0083], and that impact resistance of the resin composition is desired [0101, 0105, 0165], and because Wu’s composition is substantially similar in composition and use to Yamanaka’s resin composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Yamanaka, namely that the composition has improved adhesion, as determined in accordance with ASTM D3359, improved surface appearance as evaluated by observing content of floating reinforcing filler in a molded sample of the composition or by improved gloss as measured according to an L*a*b* color methodology, or reduced warpage was evaluated by visually observing flatness of a molded disk having a diameter of 135 mm and a thickness of from 0.9 mm to 1.2 mm, as compared to a comparative composition that does not include the polycarbonate copolymer. However, Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition as explained above. Furthermore, the specification of the instant application recites that the composition has improved adhesion, surface appearance and/or warpage properties as compared to a comparative composition that does not include the polycarbonate copolymer [0005], that the present disclosure relates to polyester/PC copolymer blends which address the chemical resistance problem of PC and the warpage problem of crystalline polymers [0010], that the composition has improved adhesion, as determined in accordance with ASTM D3359, as compared to a comparative composition that does not include the polycarbonate copolymer [0046], that the composition has improved surface appearance as compared to a comparative composition that does not include the polycarbonate copolymer [0047, 0074], that the composition has improved surface appearance as compared to a comparative composition that does not include PBT [0047], and that the composition has reduced warpage as compared to a comparative composition that does not include the polycarbonate copolymer [0048, 0075]. Therefore, the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. 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 7, Yamanaka teaches that the resin composition comprises [0168] 48.9 parts by mass of glass fiber ([0184], TABLE 2, Examples 7), wherein the glass fiber is T-127 manufactured by Nippon Electric Glass Co., Ltd. ([0167], TABLE 1), wherein it is preferable for the glass fibers to have heteromorphic cross-sectional shapes [0123], and here, heteromorphic cross-sectional shape means that the flatness, which is expressed by the long axis/short axis ratio of a cross section perpendicular to the length direction of a fiber, is, for examples, 1.5 to 10 [0123], which optionally reads on wherein the glass fiber comprises flat glass fiber as claimed.
Yamanaka does not teach a specific embodiment wherein the glass fiber comprises flat glass fiber. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yamanaka’s glass fibers that have heteromorphic cross-sectional shapes that have a flatness and a long axis/short axis ratio of a cross section perpendicular to the length direction of the fiber that is 1.5 to 10 to substitute for Yamanaka’s glass fiber that is T-127 manufactured by Nippon Electric Glass Co., Ltd. The proposed modification would read on wherein the glass fiber comprises flat glass fiber as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying reinforcing effect of Yamanaka’s glass fibers in Yamanaka’s resin composition, which would have been beneficial for modifying mechanical properties of Yamanaka’s resin composition because Yamanaka teaches that the resin composition comprises [0168] 48.9 parts by mass of glass fiber ([0184], TABLE 2, Examples 7), that the glass fiber is T-127 manufactured by Nippon Electric Glass Co., Ltd. ([0167], TABLE 1), that it is preferable for the glass fibers to have heteromorphic cross-sectional shapes [0123], that here, heteromorphic cross-sectional shape means that the flatness, which is expressed by the long axis/short axis ratio of a cross section perpendicular to the length direction of a fiber, is, for examples, 1.5 to 10 [0123], and that the fibers have a reinforcing effect [0121].
Regarding claims 9 and 10, Yamanaka teaches that the resin composition may containing a variety of additives other than those mentioned above as long as the advantageous effect of the invention is not significantly impaired [0156], that examples of such additives include fillers other than glass fillers [0156], that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157], and that in examples the resin composition comprises 20 parts by mass of talc and a total of 60 + 40 + 13.1 + 60.0 + 20.0 + 0.4 + 0.5 = 194 or 60 + 40 + 16.2 + 60.7 + 20.0 + 4.1 + 0.4 + 0.4 = 201.8 parts by mass of other ingredients ([0184], TABLE 2, Examples 3, 5), which optionally reads on wherein the composition further comprises about 10 wt% of a mineral filler that is different than the reinforcing filler, and wherein the mineral filler comprises talc as claimed. The wt% is based on the calculations 20 / (60 + 40 + 13.1 + 60.0 + 20.0 + 0.4 + 0.5) * 100% = 10% and 20 / (60 + 40 + 16.2 + 60.7 + 20.0 + 4.1 + 0.4 + 0.4) * 100% = 10%.
Yamanaka does not teach a specific embodiment wherein the composition further comprises from about 1 wt% to about 10 wt% of a mineral filler that is different than the reinforcing filler, and wherein the reinforcing filler comprises talc. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yamanaka’s fillers that are talc to substitute for a fraction of Yamanaka’s 48.9 parts by mass of glass fiber, and to select the amount of Yamanaka’s fillers that are talc to be 20 parts by mass per 194 or 201.8 parts by mass of Yamanaka’s resin composition. The proposed modification would read on wherein the composition further comprises about 10 wt% of a mineral filler that is different than the reinforcing filler, and wherein the reinforcing filler comprises talc as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving plating productivity in LDS because Yamanaka teaches that the resin composition may containing a variety of additives other than those mentioned above as long as the advantageous effect of the invention is not significantly impaired [0156], that examples of such additives include fillers other than glass fillers [0156], that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157], and that in examples the resin composition comprises 20 parts by mass of talc and a total of 60 + 40 + 13.1 + 60.0 + 20.0 + 0.4 + 0.5 = 194 or 60 + 40 + 16.2 + 60.7 + 20.0 + 4.1 + 0.4 + 0.4 = 201.8 parts by mass of other ingredients ([0184], TABLE 2, Examples 3, 5), which means that 20 parts by mass of talc per 194 or 201.8 parts by mass of Yamanaka’s resin composition would have been beneficial for providing an amount of Yamanaka’s talc that is suitable for Yamanaka’s resin composition.
Regarding claim 11, Yamanaka teaches that in addition to the components mentioned above, the resin composition preferably contains an elastomer [0101], and that by incorporating an elastomer, it is possible to improve the impact resistance of the resin composition [0101], which optionally reads on wherein the composition further comprises at least one impact modifier as claimed.
Yamanaka does not teach a specific embodiment wherein the composition further comprises at least one impact modifier. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yamanaka’s elastomer to modify Yamanaka’s resin composition. The proposed modification would read on wherein the composition further comprises at least one impact modifier as claimed. One of ordinary skill in the art would have been motivated to do so because Yamanaka teaches that in addition to the components mentioned above, the resin composition preferably contains an elastomer [0101], and that by incorporating an elastomer, it is possible to improve the impact resistance of the resin composition [0101].
Regarding claim 14, the Office recognizes that all of the claimed physical properties are not positively taught by Yamanaka, namely that the composition has improved gloss, as tested in accordance with ASTM D523, as compared to a comparative composition that includes polycarbonate instead of the at least one crystalline polyester. However, Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that the composition has improved gloss, as tested in accordance with ASTM D523, as compared to a comparative composition that includes polycarbonate instead of the at least one crystalline polyester [0049, 0076]. Therefore, the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. 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 15, Yamanaka teaches that the polyester resin composition is for laser direct structuring, which exhibits high platability [0001], and that plating is formed on a surface of a molded resin article by means of laser direct structuring [0162], which reads on wherein the composition is a laser direct structuring (LDS) composition suitable for use in LDS applications as claimed.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Kim et al. (WO 2019/132292 A1, cited in IDS, US 2021/0070984 A1 is English language equivalent and is used for citation) as applied to claim 11, and further in view of Jung et al. (US 2016/0311999 A1).
Regarding claim 12, Yamanaka as evidenced by Kobayashi and in view of Kim renders obvious the thermoplastic composition according to claim 11 as explained above.
Yamanaka does not teach that the at least one impact modifier comprises polyethylene-glycidyl methacrylate (PE-GMA), styrene-ethylene/1-butene-styrene (SEBS), or a combination thereof. However, Jung teaches an impact modifier that is a styrene-ethylene-butylene-styrene copolymer [0069] that is present in a polycarbonate resin composition useful for laser direct structuring [0008] further including a polycarbonate resin [0009], inorganic fillers [0010], and optionally a polyester carbonate copolymer resin [0037]. Yamanaka and Jung are analogous art because both references are in the same field of endeavor of a thermoplastic composition comprising optionally a polyester, and comprising a polycarbonate, and a reinforcing filler, wherein the composition is for laser direct structuring. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Jung’s impact modifier that is a styrene-ethylene-butylene-styrene copolymer to modify Yamanaka’s resin composition. The proposed modification would read on wherein the at least one impact modifier comprises styrene-ethylene/1-butene-styrene (SEBS) as claimed. One of ordinary skill in the art would have been motivated to do so because Jung teaches that the impact modifier that is a styrene-ethylene-butylene-styrene copolymer is beneficial for improving impact resistance of a polycarbonate resin composition [0069] useful for laser direct structuring [0008] further including a polycarbonate resin [0009], inorganic fillers [0010], and optionally a polyester carbonate copolymer resin [0037], which would have been desirable of Yamanaka’s resin composition because Yamanaka teaches that in addition to the components mentioned above, the resin composition preferably contains an elastomer [0101], and that by incorporating an elastomer, it is possible to improve the impact resistance of the resin composition [0101].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Wu et al. (US 2018/0065392 A1) as applied to claim 11, and further in view of Jung et al. (US 2016/0311999 A1).
Regarding claim 12, Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious the thermoplastic composition according to claim 11 as explained above.
Yamanaka does not teach that the at least one impact modifier comprises polyethylene-glycidyl methacrylate (PE-GMA), styrene-ethylene/1-butene-styrene (SEBS), or a combination thereof. However, Jung teaches an impact modifier that is a styrene-ethylene-butylene-styrene copolymer [0069] that is present in a polycarbonate resin composition useful for laser direct structuring [0008] further including a polycarbonate resin [0009], inorganic fillers [0010], and optionally a polyester carbonate copolymer resin [0037]. Yamanaka and Jung are analogous art because both references are in the same field of endeavor of a thermoplastic composition comprising optionally a polyester, and comprising a polycarbonate, and a reinforcing filler, wherein the composition is for laser direct structuring. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Jung’s impact modifier that is a styrene-ethylene-butylene-styrene copolymer to modify Yamanaka’s resin composition. The proposed modification would read on wherein the at least one impact modifier comprises styrene-ethylene/1-butene-styrene (SEBS) as claimed. One of ordinary skill in the art would have been motivated to do so because Jung teaches that the impact modifier that is a styrene-ethylene-butylene-styrene copolymer is beneficial for improving impact resistance of a polycarbonate resin composition [0069] useful for laser direct structuring [0008] further including a polycarbonate resin [0009], inorganic fillers [0010], and optionally a polyester carbonate copolymer resin [0037], which would have been desirable of Yamanaka’s resin composition because Yamanaka teaches that in addition to the components mentioned above, the resin composition preferably contains an elastomer [0101], and that by incorporating an elastomer, it is possible to improve the impact resistance of the resin composition [0101].
Response to Arguments
Applicant’s arguments, see p. 5-12, filed 04/27/2026, with respect to the rejection of claims 1, 7, 10, 11, 14, and 15 under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) have been fully considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant’s arguments, see p. 5-12, filed 04/27/2026, with respect to the rejection of claims 1, 4, 7, 10, 11, 14, and 15 under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Wu et al. (US 2018/0065392 A1) have been fully considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant’s arguments, see p. 5-12, filed 04/27/2026, with respect to the rejection of claim 9 under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) as applied to claim 1, and further in view of Jung et al. (US 2018/0171138 A1, cited in IDS) have been fully considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant’s arguments, see p. 5-12, filed 04/27/2026, with respect to the rejection of claim 9 under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Wu et al. (US 2018.0065392 A1) as applied to claim 1, and further in view of Jung et al. (US 2018/0171138 A1, cited in IDS) have been fully considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant’s arguments, see p. 5-12, filed 04/27/2026, with respect to the rejection of claim 12 under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) as applied to claim 11, and further in view of Jung et al. (US 2016/0311999 A1) have been fully considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant’s arguments, see p. 5-12, filed 04/27/2026, with respect to the rejection of claim 12 under 35 U.S.C. 103 as being unpatentable over Yamanaka (US 2019/0010324 A1, cited in IDS) as evidenced by Kobayashi (US 2024/0149569 A1) and in view of Wu et al. (US 2018.0065392 A1) as applied to claim 11, and further in view of Jung et al. (US 2016/0311999 A1).
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that claim 1 corresponds to the data provided in the application, namely Ex1 and Ex2, which show improved adhesion, surface appearance, and warpage as compared to comparative compositions C0-C3, that Ex3 falls outside the range of claim 1, that accordingly the amended claim 1 is commensurate with the technical effects described in the application data, and that the compositions according to amended claim 1 exhibit unexpected results (p. 6, 7), the applicant’s arguments of unexpected results are not persuasive because the applicant’s results are not commensurate in scope with the claimed invention. This is because claim 1 limits the amount of the polybutylene terephthalate (PBT) to from 30 wt% to 99 wt%, does not limit the PBT to being crystalline, limits the amount of the polycarbonate copolymer to from 1 wt% to 30 wt%, limits the polycarbonate copolymer to comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 22 wt%, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof, limits the amount of the glass fiber to from about 10 wt% to about 50 wt%, limits the amount of the laser direct structuring (LDS) additive to from about 1 wt% to about 10 wt%, limits the laser direct structuring (LDS) additive to comprising cooper chromite black spinel, and does not exclude the thermoplastic composition to further comprising other ingredients as long as the improved adhesion, improved surface appearance, and reduced warpage are as claimed. The applicant’s results are only two examples Ex1 AND Ex2 that are within the scope of claim 1 and comprise 47.2 wt% of polybutylene terephthalate (PBT) [0084] that is crystalline [0088], 10 wt% of a polycarbonate/siloxane (PC-Si) copolymer having a siloxane content of 20 wt% or SLX 90/10 PCP capped [0084] that is an PC-ITR copolymer [0081], 30 wt% of glass fiber that is flat glass fiber, 5 wt% of copper chromite black spinel [0084] that is an LDS additive [0081], 1 wt% of fine talc, 4 wt% of Lotader AX8900, 2 wt% of High MW SEBS, 0.1 wt% of Irgafos 168, 0.1 wt% of Irganox 1010, 0.1 wt% of benzotriazole, 0.1 wt% of pentaerythritol tetastearate, and 0.1 wt% of MZP [0084]. The last nine ingredients are not recited in claim 1, the end points of the claimed amounts are not included in the examples, only one amount of each ingredient is provided in the examples, and only one species of each ingredient is provided in the examples, except for the PBT, which provides two species. The applicant did not show a sufficient number of examples 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 over the entire scope of claim 1 for the entire claimed range of polybutylene terephthalate (PBT), for the entire claimed range of polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of form about 18 wt% to about 22 wt%, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof, for the entire claimed range of glass fiber, for the entire claimed range of laser direct structuring (LDS) additive comprising copper chromite black spinel, and for compositions further comprising any other ingredient known to one of ordinary skill in the art as long as the improved adhesion, improved surface appearance, and reduced warpage are as claimed. 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 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 also did not compare a sufficient number of examples inside the scope of claim 1 with a sufficient number of examples outside the scope of claim 1. 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 because the closest prior art is Yamanaka (US 2019/0010324 A1) since it is the primary reference cited in the rejection of the claims. As explained in the rejections of claim 1 that are set forth in this Office action, Yamanaka’s teachings read on the claimed amount of (a) polybutylene terephthalate (PBT), the claimed amount of (c) glass fiber, the claimed amount of the laser direct structuring (LDS) additive comprising copper chromite black spinel, and an amount of polycarbonate polymer that reads on the claimed amount of (b) polycarbonate copolymer. In contrast, comparative examples C0 and C1 do not comprise (a) polybutylene terephthalate (PBT), comparative example Ex3 does not comprise the claimed amount of (a) polybutylene terephthalate (PBT), comparative example C2 does not comprise a polycarbonate polymer, and comparative example C3 comprises a polycarbonate polymer but further comprises nine other ingredients that are not present in Yamanaka’s resin composition [0084]. 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 Yamanaka fails to disclose a PC-Si copolymer having the claimed siloxane content, that the working examples in Yamanaka are not the claimed PC-Si copolymer, that thus Yamanaka does not disclose or suggest the PC-Si component, nor claimed siloxane range as recited in claim 1, and that accordingly Yamanaka also fails to recognize the improvements associated with the claimed siloxane loading as discussed below (p. 6-7), the rejection of the claims is not based on Yamanaka’s individually teaching the claimed PC-Si copolymer. The rejection of claim 1 is based on the combination of Yamanaka as evidenced by Kobayashi and in view of Kim rendering it obvious that the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 20 wt% as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to the applicant’s argument that Yamanaka only exemplifies compositions having high levels of LDS additives and glass fibers (p. 7), Yamanaka teaches the claimed amount of the (c) glass fiber and the claimed amount of the (d) LDS additive. Specifically, Yamanaka teaches 13.1 parts by mass of LDS agent that is LDS-Cu and 48.9 parts by mass of glass fiber ([0184], TABLE 2, Examples 7), wherein the LDS-Cu is copper-chromium oxide [0167], and the LDS is laser direct structuring [0005], which reads on (c) about 30 wt% of a glass filler, and (d) about 8 wt% of a laser direct structuring (LDS) additive comprising cooper chromite block spinel. The wt% of (c) is based on the calculation 48.9 / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 30%. The wt% of (d) is based on the calculation 13.1 / / (70 + 30 +13.1 + 48.9 + 0.2 + 0.5 + 0.5) * 100% = 8%.
In response to the applicant’s argument that there is no suggestion from Yamanaka to arrive at the unique combination of PC-Si copolymer and siloxane content, glass fiber, and LDS additive, as specified in claim 1 (p. 7), the rejection of the claims is not based on Yamanaka individually teaching the claimed combination of PC-Si copolymer and siloxane content, glass fiber, and LDS additive, as claimed in claim 1. The rejection of claim 1 is based on Yamanaka teaching the combination of glass fiber and LDS additive as claimed in claim 1 and on the combination of Yamanaka as evidenced by Kobayashi and in view of Kim rendering obvious the combination of PC-Si copolymer and siloxane content, together with of glass fiber and LDS additive as claimed in claim 1. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to the applicant’s argument that the Examiner alleges that Kobayashi discloses a PC-Si copolymer and concludes that it would have been obvious, from Kobayashi, to include a PC-Si copolymer in the composition of Yamanaka (p. 7), the Office does not and never has alleged that Kobayashi discloses a PC-Si copolymer. The Office does not and never had concluded that it would have been obvious, from Kobayashi, to include a PC-Si copolymer in the composition of Yamanaka. The Office alleges, in the rejection of claim 1 that is set forth in this Office action, that before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Kim’s polycarbonate-polysiloxane copolymer comprising a polycarbonate block and a polysiloxane block to substitute for Yamanaka’s PC that is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation, to optimize the amount Kim’s polycarbonate block in Kim’s copolymer to be about 80 to about 82 wt%, and to optimize the amount of Kim’s polysiloxane block in Kim’s copolymer to be about 18 to about 20 wt%. The proposed modification would read on wherein the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer having a siloxane content of from about 18 wt% to about 20 wt% as claimed. One of ordinary skill in the art would have been motivated to do so because Kim teaches that the polycarbonate-polysiloxane copolymer comprising about 80 to about 95 wt % of polycarbonate block and about 5 to about 20 wt % of the polysiloxane block is beneficial for being useful in a thermoplastic resin composition [0044], that within these ranges, the thermoplastic resin composition can have good heat resistance and impact resistance [0044], which would have been desirable for Yamanaka’s composition because Yamanaka teaches that thermoplastic polyester resins exhibit excellent heat resistance [0002], that heat resistance is desirable [0150], and that impact resistance is desirable [0101, 0105], which means that the amount Kim’s polycarbonate block in Kim’s copolymer in wt% and the amount of Kim’s polysiloxane block in Kim’s copolymer in wt% would have affected the heat resistance and impact resistance of the composition, which means that optimizing the amount Kim’s polycarbonate block in Kim’s copolymer in wt% and the amount of Kim’s polysiloxane block in Kim’s copolymer in wt% would have been beneficial for optimizing the heat resistance and impact resistance of the composition.
In response to the applicant’s argument that Wu provides no discussion of plating, metallization, or adhesion, which are distinct from the properties named by the Examiner, and that accordingly, Wu neither teaches not suggests the claimed compositions in LDS compositions (p. 8), the rejection of the claims individually is not based on Wu individually teaching the claimed thermoplastic composition. The rejection of claim 1 is based on the combination of Yamanaka as evidenced by Kobayashi and in view of Wu rendering obvious the claimed thermoplastic composition. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It is noted that plating and metallization 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). For adhesion, the Office recognizes that all of the claimed physical properties are not positively taught by Yamanaka, namely that the composition has improved adhesion, as determined in accordance with ASTM D3359. However, Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition as explained in the rejection of claim 1 that is set forth in this Office action. Furthermore, the specification of the instant application recites that the composition has improved adhesion, surface appearance and/or warpage properties as compared to a comparative composition that does not include the polycarbonate copolymer [0005], that the present disclosure relates to polyester/PC copolymer blends which address the chemical resistance problem of PC and the warpage problem of crystalline polymers [0010], that the composition has improved adhesion, as determined in accordance with ASTM D3359, as compared to a comparative composition that does not include the polycarbonate copolymer [0046], that the composition has improved surface appearance as compared to a comparative composition that does not include the polycarbonate copolymer [0047, 0074], that the composition has improved surface appearance as compared to a comparative composition that does not include PBT [0047], and that the composition has reduced warpage as compared to a comparative composition that does not include the polycarbonate copolymer [0048, 0075]. Therefore, the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. 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)).
In response to the applicant’s argument that the Examiner alleges that the claimed improvements in adhesion, surface appearance, and warpage would naturally arise from the prior art compositions based on applicant statements in the present specification (p. 8), the Office does not allege that the claimed improved adhesion, improved surface appearance, and reduced warpage would naturally arise from the prior art compositions based only on the applicant’s specification. The Office only cites the applicant’s specification for evidence that the claimed improved adhesion, improved surface appearance, and reduced warpage would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. Based on the applicant’s specification, the claimed properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition, and Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition, as explained in the rejection of claim 1 that is set forth in this Office action.
In response to the applicant’s argument that the present specification is not prior art and cannot be relied on to establish that a prior art composition inherently possesses as claimed property (p. 8), the Office did not cite the specification of the instant application as prior art. The Office cited the specification of the instant application as evidence that the claimed properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition.
In response to the applicant’s argument that inherency must be established based on the teachings of the prior art and not applicant’s disclosure, and that for at least this reasons, the Office action fails to set forth a prima facie case for inherency of the claimed properties (p. 8), the Office only cites the applicant’s disclosure as evidence that the claimed properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition. The Office relies on the combination of Yamanaka as evidenced by Kobayashi and in view of Kim or the combination of Yamanaka as evidenced by Kobayashi and in view of Wu to render obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office therefore concludes that the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. This is proper and is consistent with the MPEP. Specifically, 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)).
In response the applicant’s argument that the reasoning in the Office action is wholly insufficient to establish a prima facie argument for inherency of a property of a composition resulting from an obviousness analysis (p. 8), the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103 (MPEP 2112). "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness (MPEP 2112)." In the rejection of claim 1, the Office cites the applicant’s disclosure as evidence that the claimed properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition. The Office relies on the combination of Yamanaka as evidenced by Kobayashi and in view of Kim or the combination of Yamanaka as evidenced by Kobayashi and in view of Wu to render obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office therefore concludes that the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim or that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. This is proper and is consistent with the MPEP. Specifically, 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)).
In response to the applicant’s argument that the prior art is alleged to teach the claimed composition in an obviousness analysis, that the Examiner, without any reasoning other than the formation of the fictional composition resulting from the combination, that the Examiner alleges that the obviousness combination would inherently possess the claimed adhesion, surface appearance, and warpage properties, and that these properties are affected by the components of the composition, and inherency cannot be based on what is not known (p. 9-10), the Office’s reasoning is not based only on the formation of the composition resulting from the combination of references. In the rejection of claim 1, the Office cites the specification of instant application as evidence that the claimed properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office explains that the combination of Yamanaka as evidenced by Kobayashi and in view of Kim or the combination of Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office therefore concludes that the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim or that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. This is consistent with the MPEP. Specifically, 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)). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103 (MPEP 2112). "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness (MPEP 2112)."
In response to the applicant’s argument that the adhesion, surface appearance, and warpage properties are part and parcel of the subject matter as a whole of the claimed subject matter, and that absent evidence that the claimed composition would have expectedly possessed the claimed adhesion, surface appearance, and warpage properties, the obviousness rejection is legally and factually erroneous (p. 10), the Office’s reasoning in the rejection of claim 1 acknowledges that the adhesion, surface appearance, and warpage properties are part and parcel of the subject matter as a whole of the claimed subject matter. In the rejection of claim 1, the Office cites the specification of instant application as evidence that the claimed adhesion, surface appearance, and warpage properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office explains that Yamanaka as evidenced by Kobayashi and in view of Kim or Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office therefore concludes that the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim or that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. This is consistent with the MPEP. Specifically, 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)). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103 (MPEP 2112). "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness (MPEP 2112)."
In response to the applicant’s argument that the mere fact that a certain thing may result from a given set of circumstances is not sufficient to render the result inherent (p. 10), the Office’s position in the rejection of the claims is not based on a position that the claimed properties “may result from a given set of circumstances”.
In response to the applicant’s argument that that which may be inherent is not necessarily known, that that which is unknown cannot be obvious, and distinguishing a prior case finding obviousness based on inherency because, in that case, neither party disputed that the claimed features were expected in light of the dosages disclosed in the prior art (p. 11), the Office cites, in the rejection of claim 1, the specification of instant application as evidence that the claimed adhesion, surface appearance, and warpage properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office explains that Yamanaka as evidenced by Kobayashi and in view of Kim or Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office therefore concludes that the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim or that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. This is consistent with the MPEP. Specifically, 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)). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103 (MPEP 2112). "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness (MPEP 2112)."
In response to the applicant’s argument that it was the PTO’s burden to show that achieving a cloud pint above 70°C would have been obvious to a person of ordinary skill in the art, and that to the extent the Board shifted the burden to Stepen to show the criticality of the cloud point element, the Board erred (p. 11-12), the Office met its burden by showing that the claimed properties would naturally arise from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Kim and from the thermoplastic composition that is rendered obvious by Yamanaka as evidenced by Kobayashi and in view of Wu. The Office cites the specification of instant application as evidence that the claimed adhesion, surface appearance, and warpage properties are a result of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office explains that Yamanaka as evidenced by Kobayashi and in view of Kim or Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1. The Office therefore concludes that the claimed physical properties would naturally arise from the thermoplastic composition that is rendered obvious by the prior art. This is consistent with the MPEP. Specifically, 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)). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103 (MPEP 2112). "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness (MPEP 2112)."
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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