DETAILED ACTION
Applicant’s response filed on 12/23/2025 has been fully considered. Claims 1-12, 14, and 15 are pending. Claims 1 and 4 are amended. Claim 13 is canceled.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
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 § 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 1-3, 6-8, 10, 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).
Regarding claims 1-3, 6, and 8, 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 that 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 thereof read on a thermoplastic composition comprising (a) about 43 wt% of one crystalline polyester, (b) about 18 wt% of polycarbonate polymer, (c) about 30 wt% of a reinforcing filler, and (d) about 8 wt% of a laser direct structuring (LDS) additive, 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, wherein the one crystalline polyester comprises polybutylene terephthalate (PBT), wherein the reinforcing filler comprises glass fiber, wherein the LDS additive comprises a heavy metal mixture oxide spinel, a metal oxide, a copper containing metal oxide, or a combination thereof. 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 as claimed.
Yamanaka does not teach a specific embodiment wherein the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof. 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 polycarbonate resin that is a copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure 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-siloxane (PC-Si) copolymer as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying thermoplastic properties and/or a water absorption rate of Yamanaka’s resin composition because Yamanaka teaches that the composition comprises [0168] 30 parts by mass of resin that is PC ([0184], TABLE 2, Examples 7), that the PC is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation [0167], that the polycarbonate resin may be a copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure [0083], and that the polycarbonate resin is a thermoplastic resin [0019, 0073] that has a water absorption rate of 0.15 mass % or more [0070].
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 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. 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 reinforcing filler comprises flat glass fiber as claimed.
Yamanaka does not teach a specific embodiment wherein the reinforcing filler 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 reinforcing filler 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 claim 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], and that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157], which optionally reads on wherein the reinforcing filler comprises talc as claimed.
Yamanaka does not teach a specific embodiment 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. The proposed modification would read on 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], and that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157].
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 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. 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, 6-8, 10, 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 1-4, 6, and 8, 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 that 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 thereof read on a thermoplastic composition comprising (a) about 43 wt% of one crystalline polyester, (b) about 18 wt% of polycarbonate polymer, (c) about 30 wt% of a reinforcing filler, and (d) about 8 wt% of a laser direct structuring (LDS) additive, 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, wherein the one crystalline polyester comprises polybutylene terephthalate (PBT), wherein the reinforcing filler comprises glass fiber, wherein the LDS additive comprises a heavy metal mixture oxide spinel, a metal oxide, a copper containing metal oxide, or a combination thereof. 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 [0083].
Yamanaka does not teach that the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof, and that the polycarbonate copolymer comprises a polycarbonate-isophthalate terephthalate 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. 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. 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 reinforcing filler comprises flat glass fiber as claimed.
Yamanaka does not teach a specific embodiment wherein the reinforcing filler 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 reinforcing filler 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 claim 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], and that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157], which optionally reads on wherein the reinforcing filler comprises talc as claimed.
Yamanaka does not teach a specific embodiment 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. The proposed modification would read on 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], and that talc is particularly preferred as filler other than the glass fillers because blending talc can improve plating productivity in LDS [0157].
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. 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 5 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) as applied to claim 1, and further 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 claim 5, Yamanaka as evidenced by Kobayashi renders obvious the thermoplastic composition according to claim 1 as explained above. Yamanaka teaches that the resin composition comprises [0168] 30 parts by mass of resin that is PC ([0184], TABLE 2, Examples 7), wherein the PC is polycarbonate resin that is Novarex 7030PJ manufactured by Mitsubishi Engineering-Plastics Corporation [0167], wherein 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 wherein the polycarbonate copolymer comprises a polycarbonate-siloxane (PC-SI) copolymer have a siloxane content of greater than 0 wt% and less than 100 wt%.
Yamanaka does not teach that the polycarbonate copolymer comprises a polycarbonate-siloxane (PC-SI) copolymer have a siloxane content of from about 10 wt% to about 30 wt%. However, Kim teaches a polycarbonate-polysiloxane copolymer comprising about 80 to about 95 wt % of polycarbonate block and about 5 to about 20 wt % of the 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 about 80 to about 95 wt % of polycarbonate block and about 5 to about 20 wt % of the polysiloxane block 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 copolymer comprises a polycarbonate-siloxane (PC-SI) copolymer have a siloxane content of from about 5 wt% to about 20 wt%, which reads on the claimed range. 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 a thermoplastic resin composition comprising the polycarbonate-polysiloxane copolymer having 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].
Claim 9 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) as applied to claim 1, and further in view of Jung et al. (US 2018/0171138 A1, cited in IDS).
Regarding claim 9, Yamanaka as evidenced by Kobayashi renders obvious the thermoplastic composition according to claim 1 as explained above. Yamanaka teaches that the resin composition may contain a variety of additives over than those mentioned above as long as the advantageous effect of the invention is not significantly impaired [0156], and that examples of such additives include fillers other than glass fibers [0156].
Yamanaka does not teach that the composition further comprises from about 1 wt% to about 10 wt% of a mineral filler that is different form the reinforcing filler, and that the mineral filler comprises calcium carbonate, dolomite, wollastonite, bariums sulfate, kaolin, feldspar, a barite, or a combination thereof. However, Jung teaches inorganic fillers that are wollastonite [0042] that are present in an amount of about 5, 6, 7, 8, 9, or 10 wt %, based on the total weight of a based resin including a polycarbonate resin, a polyester resin, and the inorganic fillers [0044], and that the thermoplastic resin composition is for laser direct structuring [0007] and further includes an additive for laser direct structuring [0008]. Yamanaka and Jung are analogous art because both references are in the same field of endeavor of a thermoplastic composition comprising a polyester, a polycarbonate, a reinforcing filler, and 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 Jung’s inorganic fillers that are wollastonite to modify Yamanaka’s resin composition in an amount of about 5, 6, 7, 8, 9, or 10 wt %, based on the total weight of the resin composition. The proposed modification would read on wherein the composition further comprises about 5 wt%, about 6 wt%, about 7 wt%, about 8 wt%, about 9 wt%, or about 10 wt% of a mineral filler that is different form the reinforcing filler, and wherein the mineral filler comprises wollastonite as claimed. One of ordinary skill in the art would have been motivated to do so because Jung teaches that the inorganic fillers that are wollastonite are beneficial for improving mechanical properties, impact resistance, and rigidity of a thermoplastic resin composition [0042], and that the inorganic fillers are present in an amount of about 5, 6, 7, 8, 9, or 10 wt %, based on the total weight of a based resin including a polycarbonate resin, a polyester resin, and the inorganic fillers [0044], which would have been beneficial for modifying mechanical properties, impact resistance, and rigidity of Yamanaka’s resin composition, which would have been desirable because Yamanaka teaches that the resin composition may contain a variety of additives over 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 fibers [0156], and that the resin composition has excellent mechanical properties [0012].
Claim 9 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 1, and further in view of Jung et al. (US 2018/0171138 A1, cited in IDS).
Regarding claim 9, Yamanaka as evidenced by Kobayashi and in view of Wu renders obvious the thermoplastic composition according to claim 1 as explained above. Yamanaka teaches that the resin composition may contain a variety of additives over than those mentioned above as long as the advantageous effect of the invention is not significantly impaired [0156], and that examples of such additives include fillers other than glass fibers [0156].
Yamanaka does not teach that the composition further comprises from about 1 wt% to about 10 wt% of a mineral filler that is different form the reinforcing filler, and that the mineral filler comprises calcium carbonate, dolomite, wollastonite, bariums sulfate, kaolin, feldspar, a barite, or a combination thereof. However, Jung teaches inorganic fillers that are wollastonite [0042] that are present in an amount of about 5, 6, 7, 8, 9, or 10 wt %, based on the total weight of a based resin including a polycarbonate resin, a polyester resin, and the inorganic fillers [0044], and that the thermoplastic resin composition is for laser direct structuring [0007] and further includes an additive for laser direct structuring [0008]. Yamanaka and Jung are analogous art because both references are in the same field of endeavor of a thermoplastic composition comprising a polyester, a polycarbonate, a reinforcing filler, and 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 Jung’s inorganic fillers that are wollastonite to modify Yamanaka’s resin composition in an amount of about 5, 6, 7, 8, 9, or 10 wt %, based on the total weight of the resin composition. The proposed modification would read on wherein the composition further comprises about 5 wt%, about 6 wt%, about 7 wt%, about 8 wt%, about 9 wt%, or about 10 wt% of a mineral filler that is different form the reinforcing filler, and wherein the mineral filler comprises wollastonite as claimed. One of ordinary skill in the art would have been motivated to do so because Jung teaches that the inorganic fillers that are wollastonite are beneficial for improving mechanical properties, impact resistance, and rigidity of a thermoplastic resin composition [0042], and that the inorganic fillers are present in an amount of about 5, 6, 7, 8, 9, or 10 wt %, based on the total weight of a based resin including a polycarbonate resin, a polyester resin, and the inorganic fillers [0044], which would have been beneficial for modifying mechanical properties, impact resistance, and rigidity of Yamanaka’s resin composition, which would have been desirable because Yamanaka teaches that the resin composition may contain a variety of additives over 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 fibers [0156], and that the resin composition has excellent mechanical properties [0012].
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) 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 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, filed 12/23/2025, with respect to amended claim 4 have been considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive. In response to the applicant’s argument that while Yamanaka generally states that the polycarbonate resin may be a polycarbonate copolymer comprising a siloxane, there is no suggestion to use a polycarbonate-siloxane copolymer in the composition of amended claim 1 because Yamanaka explains that the PC component is obtained by reacting a dihydroxy compound or a combination of dihydroxy compound with a small quantity of a polyhydroxy compound with phosgene or a carbonic acid diester (p. 6), Yamanaka’s teaching that the polycarbonate resin may be a copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure [0083] optionally reads on the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer as claimed. Although Yamanaka teaches that the polycarbonate resin is an optionally branched thermoplastic polymer or copolymer obtained by reacting a dihydroxy compound or a combination of dihydroxy compound and a small quantity of a polyhydroxy compound with phosgene or a carbonic acid diester [0080], this is a separate embodiment from Yamanaka’s embodiment of the polycarbonate resin being a copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure. Furthermore, if Yamanaka’s teaching that the polycarbonate resin is an optionally branched thermoplastic polymer or copolymer obtained by reacting a dihydroxy compound or a combination of dihydroxy compound and a small quantity of a polyhydroxy compound with phosgene or a carbonic acid diester [0080] applies to all polycarbonate copolymers in Yamanaka’s composition, it would apply to the aromatic polycarbonate moiety of Yamanaka’s copolymer of an aromatic polycarbonate and a polymer or oligomer having a siloxane structure. The claims do not exclude the claimed polycarbonate-siloxane (PC-Si) copolymer from comprising an aromatic polycarbonate moiety that is an optionally branched thermoplastic polymer or copolymer obtained by reacting a dihydroxy compound or a combination of dihydroxy compound and a small quantity of a polyhydroxy compound with phosgene or a carbonic acid diester.
In response to the applicant’s argument that the references fail to disclose the technical effects resulting from the use of a PC-Si copolymer or a PC-ITR copolymer in PBT-based composition on adhesion, warpage, or surface appearance properties of the thermoplastic compositions described therein (p. 6), 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 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. 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 presently claimed composition including the polycarbonate copolymer provides unexpected results in the form of adhesion, surface appearance, and/or warpage properties as shown in Ex1, Ex2, and C1 and Figures 2 and 3 (p. 6), the applicant’s arguments of unexpected results are not persuasive because the applicant’s results are not commensurate in scope with the claimed invention. Specifically, claim 1 recites a broad ranges of amounts of (a), (b), (c), and (d), does not limit the species of the at least one crystalline polyester, does not limit the species of the reinforcing filler, does not limit the species of the LDS additive, and does not exclude the composition from further comprising ingredients not recited in claim 1. In contrast, Ex1 and Ex2 in the specification of the instant application comprise the same amounts of (a), (b), (c), and (d), the same two species of crystalline polyester that are each a PBT, the same two species of reinforcing filler, the same one species of LDS additive, and further comprise eight ingredients that are not recited in claim 1 [0084]. The applicant did not show that the results of Ex1 and Ex2 would occur for all the claimed amounts of (a), (b), (c), and (d), regardless of the species of crystalline polyester, reinforcing filler, and LDS additive, and regardless of whether the composition further comprises ingredients that are not recited in claim 1. 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 applicant did not show a sufficient number of examples that would allow one of ordinary skill in the art to establish a trend in the exemplified data that would allow the artisan to reasonably extend the probative value thereof to all the claimed amounts of (a), (b), (c), and (d), all species of crystalline polyester, reinforcing filler, and LDS additive, and the case in which the composition further comprises ingredients that are not recited in claim 1. 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 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 arguments of unexpected results are not persuasive also because the applicant did not compare the claimed subject matter with the closest prior art, which is Yamanaka since it is the primary reference in the rejection. The only comparative example discussed by the applicant is C1, and C1 comprised PC/siloxane copolymer that is PCP encapped, branched THPE, HBN encapped PC and did not comprise PBT and therefore no polyester [0084]. In contrast, Yamanaka teaches that the resin composition comprises [0168] polyester that is PBT ([0184], TABLE 2, Examples 7) and resin that is PC ([0184], TABLE 2, Examples 7) that is polycarbonate [0167], and Yamanaka does not teach a specific embodiment wherein the polycarbonate polymer is a polycarbonate copolymer comprising a polycarbonate-siloxane (PC-Si) copolymer, a polycarbonate-isophthalate terephthalate resorcinol (PC-ITR) copolymer, or a combination thereof. 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)). C3 in the specification of the instant application comprised PBT and PCP and did not comprise PC/siloxane copolymer [0084], which makes it a comparative example closer to Yamanaka in scope. However, the applicant’s results are still not commensurate in scope with claim 1.
In response to the applicant’s argument that nothing in Yamanaka and Kobayashi discloses or suggests that the claimed properties are necessarily or inherently present in a composition resulting form Yamanaka as evidenced by Kobayashi (p. 6-7), the Office cited evidence in the specification of the instant application that shows that the claimed properties are due to only the claimed ingredients, amounts, process steps, and process conditions of claim 1. Specifically, 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 renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1 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. 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 it is improper for the Examiner to conclude that the improved adhesion, improved surface appearance, or reduced warpage properties specified in claim 1 would inherently be present in the composition resulting from the combination of Yamanaka and Kobayashi without providing any reasoning other that the formation of a hypothetical composition based on these references and that the Examiner’s argument is wholly insufficient to establish a prima facie argument for inherency of a property of a composition resulting from an obviousness analysis (p. 7), the Office’s reasoning is not only formation of the composition. The Office cited evidence in the specification of the instant application that shows that the claimed properties are due to only the claimed ingredients, amounts, process steps, and process conditions of claim 1. Specifically, 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 renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1 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. 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 prior art is alleged to teach the claimed composition in an obviousness analysis and the Examiner, without any reasoning other than the formation of the fictional composition resulting from the combination of Yamanaka and Kobayashi, alleges that the obviousness combination would inherently possess the claimed adhesion, surface appearance, and/or warpage properties and that each of these properties are affected by the components of the composition, and that inherency cannot be based on what is not known, and that this is particularly true with the composition of amended claim 1, which specifies that the composition comprises a polycarbonate-siloxane copolymer, a polycarbonate-isophthalate terephthalate resorcinol copolymer, or combination thereof, which is not explicitly disclosed or exemplified in the cited references (p. 8), the Office’s reasoning is not only the formation of the composition resulting from the combination of Yamanaka and Kobayashi. The Office cited evidence in the specification of the instant application that shows that the claimed properties are due to only the claimed ingredients, amounts, process steps, and process conditions of claim 1. Specifically, 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 renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1 comprising a polycarbonate-siloxane copolymer 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. 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 is reversible error to rely upon an allegedly inherent disclosure to support rejections under 35 U.S.C. 103 with no factual findings that the purported inherent feature was ever recognized by a person of ordinary skill in the art at the time of the invention and that the fact that a feature might be inherent in following the combined teachings of the prior art is quite immaterial if, as the record establishes here, one of ordinary skill in the art would not appreciate or recognized that inherent result (p. 8), the Office’s reasoning is not devoid of factual findings of the inherent feature. The Office cited evidence in the specification of the instant application that shows that the claimed properties are due to only the claimed ingredients, amounts, process steps, and process conditions of claim 1. Specifically, 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 renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1 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. 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 Examiner’s rejection on the other had is premised upon a hypothetical composition that was purportedly obvious to a person of ordinary skill in the art, that hypothetical compositions cannot possess properties, that they can only be expected to possess properties based upon the teachings of the applied prior art, that thus, the claimed properties are part and parcel of the subject matter as a whole of the claimed subject matter, and that absent evidence that the claimed compositions would have expectedly possess the claimed adhesion, surface appearance, and/or warpage properties, the obviousness rejection is legally and factually erroneous (p. 8-11), the Office cited evidence in the specification of the instant application that shows that the claimed properties are due to only the claimed ingredients, amounts, process steps, and process conditions of claim 1. Specifically, 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 renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1 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. 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 courts either vacated or reversed invalidity findings based on inherent obviousness, that the courts cautioned against the use of inherency in the context of obviousness, and that dismissing properties of a claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law (p. 9-10), the Office did not dismiss properties are merely inherent without considering unpredictability and unexpectedness. The Office stated above that the applicant’s arguments of unexpected results are not persuasive. The Office cited evidence in the specification of the instant application that shows that the claimed properties are due to only the claimed ingredients, amounts, process steps, and process conditions of claim 1. Specifically, 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 renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the thermoplastic composition of claim 1 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. 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)."
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767