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 .
This communication is responsive to the claim set filed on 05/04/2023 and Response to Restriction filed on 04/02/2026. Claims 1-15 are pending. Claims 1-12 are under consideration in this Office Action. Claims 13-15 are withdrawn.
Claims 1-12 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election of Group I, claims 1-12 in the reply filed on 04/02/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Interpretation
The Examiner had a hard time to understand Claim 1 lines 3-5: “a branched polycarbonate comprising bisphenol carbonate units, 0.01 to 1.0 mol% of a repeating unit derived from a monomer having a pendant ester group, or a combination thereof, and repeating units derived from a branching agent based on the total moles of the composition.” The clause is interpreted as --a branched polycarbonate comprising bisphenol carbonate units, a repeating unit derived from a monomer having a pendant ester group, or a combination thereof, and repeating units derived from a branching agent; wherein the repeating unit derived from a monomer having a pendant ester group is 0.01 to 1.0 mol% based on the total moles of the composition—in this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 8 recites the limitation "the high heat bisphenol monomer " in line 2. There is insufficient antecedent basis for this limitation in the claim because Claim 1 does not claim “a high heat bisphenol monomer.” For the purpose of compact prosecution, the claim is interpreted as depending on Claim 7.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenquist et al. (US2018/0223097 A1).
Regarding Claims 1 and 5, Rosenquist teaches a flame-retardant polycarbonate composition comprising a bisphenol A (BPA)-carbonate homopolymer (claim 8), a polycarbonate copolymer comprising a repeating units derived from BPA and a branching agent (claim 4 and Table 1), a flame-retardant additive (claim 1), wherein the exemplary flame-retardant additive is potassium diphenylsulfone sulfonate (Table 1) which is an aromatic sulfone sulfonate. Rosenquist further teaches the composition comprising a polycarbonate copolymer comprising BPA (claim 2 and Table 1) and a monomer having the structure of:
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wherein R is C2-C15 alkyl; each of m, n, p, and q are 0 or l; m + n = l; and p + q = 1 (claim 1); this monomer has the same structure as the monomer of the instant claim 5. It is noted that BPA and the monomer form a linear polycarbonate because p + q = 1. Rosenquist furthermore teaches the composition comprising the repeating units derived from the monomer from about 0.25 mole % to about 5 mol % of the composition. Moreover, Rosenquist teaches, if a branching agent involved, the branching agent can make up from about 0.01 mol % to about 0.5 mol % of the monomer repeating units in the polycarbonate copolymer ([0056]); thus, the composition can have linear polycarbonate copolymer wherein the ester monomer units in the amount of 0 mol% to about 5 mol % based on the total moles of the composition; the amount overlapping the claimed 0.01 to 1.0 mol%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Rosenquist.
Regarding Claim 2, Rosenquist does not have an exemplary embodiment of the instant Claim 1. Rosenquist is also silent on the claimed properties. However, Rosenquist teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. notched Izod impact, a haze, or a UL-94 flame test rating of V0 at a thickness of 1.0 millimeter or 0.8 millimeter, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 3, Rosenquist teaches that branching agent can make up from about 0.01 mol % to about 0.5 mol % of the monomer repeating units in the polycarbonate copolymer ([0056]); the amount falling within the claimed 0.01 to 1.43 mol%. Further, the E21 composition (Table 5B) contains nearly 100 mole% of PC-7 which is a branched polycarbonate of BPA, ethyl 3,5-dihydroxybenzoate (reading on the claimed pendant ester), and a branching agent (Table 1). The E21 composition has 0.35 mole% branching, i.e. the PC-7 has 0.35 mole% of branching.
Regarding Claim 4, the exemplary embodiments of Rosenquist have a composition containing a BPA homopolymer and a liner polycarbonate, a composition containing a BPA homopolymer and a branched polycarbonate, a composition containing a liner polycarbonate and a branched polycarbonate. The exemplary embodiments of Rosenquist do not have a composition containing a BPA homopolymer, a liner polycarbonate and a branched polycarbonate. Nonetheless, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” See MPEP 2144.06 I. The E1 composition of Rosenquist contains 24 pbw of PC-1 and 36 pbw of PC-2 (those are homopolymer), 1.25 pbw of PC-3 (a PC copolymer), 0.3 pbw of potassium diphenylsulfone sulfonate and 40 pbw of PC-4 (linear PC). Rosenquist further teaches that a linear PC and a branched PC being used at 1:1 ratio (E22). Thus, it would be obvious to one ordinary skilled artisan to have a composition containing 24 pbw of PC-1 and 36 pbw of PC-2, 1.25 pbw of PC-3, 0.3 pbw of potassium diphenylsulfone sulfonate and 20 pbw of PC-4 and 20 pbw of PC-7, i.e., a composition containing about 60 wt.% of PC homopolymer, about 20 wt.% of linear PC, about 20 wt.% of branched PC, and about 0.3 wt.% of potassium diphenylsulfone sulfonate.
Regarding Claim 6, Rosenquist teaches the structure of the ester monomer has R=C2-C15 alkyl ([005]) wherein alkyl may be branched ([0026]).
Regarding Claim 7, Rosenquist teaches a flame-retardant polycarbonate composition comprising a bisphenol A (BPA)-carbonate homopolymer (claim 8).
Regarding Claim 10, Rosenquist exemplifies the PC homopolymers include PC-1 having mw of 30,000 and PC-2 having mw of 22,000 (Table 1).
Regarding Claim 11, Rosenquist teaches branching agents include 1,3,5-tris((p-hydroxyphenyl)
isopropyl)benzene), trimesic acid, and benzophenone tetracarboxylic acid ([0037]).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenquist et al. (US2018/0223097 A1), as applied to Claim 1 above, and in further view of Wan et al. (US20140058023 A1).
The disclosure of Rosenquist on Claim 1 is incorporated herein by reference.
Rosenquist teaches that the flame-retardant polycarbonate composition comprises a BPA homopolycarbonate. The difference between Rosenquist and instant Claims 7-8 is that Rosenquist is silent that the flame-retardant polycarbonate composition may also comprise a high heat copolycarbonate.
However, Wan teaches a flame-retardant polycarbonate composition comprising a BPA homopolycarbonate and a high heat polycarbonate (E44 and E45) wherein the high heat polycarbonate comprising units derived from N-phenyl phenolphthalein bisphenol (CAS#6607-41-6) ([0109-0110] and Table 1). Wan further teaches the high heat polycarbonate enhances heat deflection temperature of a polycarbonate composition ([0111]). In view of such benefit, one ordinary skilled artisan would have been motivated, before the effective filing date of the instant application, to incorporate the high heat polycarbonate taught by Wan into the flame-retardant polycarbonate composition of Rosenquist to increase heat deflection temperature.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenquist et al. (US2018/0223097 A1), as applied to Claim 1 above, and in further view of Groote et al. (US9,598,577).
The disclosure of Rosenquist on Claim 1 is incorporated herein by reference.
Rosenquist discloses that the flame-retardant polycarbonate composition may comprise a polycarbonate-polysiloxane copolymer ([0043]).
The difference between Rosenquist and instant Claim 9 is that Rosenquist is silent on the siloxane content of the polycarbonate-polysiloxane copolymer.
However, Groote teaches a polycarbonate composition comprising a bisphenol A carbonate
homopolymer, a first poly(carbonate-siloxane) copolymer having a siloxane content from 5 wt % to 10 wt % of the copolymer and a second poly(carbonate-siloxane) copolymer having a siloxane content from 30% wt % to 60 wt % of the copolymer (ab.). Groote further teaches a polycarbonate composition comprising flame retardant additives, such as potassium diphenylsulfone sulfonate (10: 33-41).
One ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to use the poly(carbonate-siloxane) copolymers taught by Groote for the composition of Rosenquist because Groote discloses that the poly(carbonate-siloxane) copolymers are suitable polycarbonate-polysiloxane copolymers for a flame-retardant polycarbonate composition.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenquist et al. (US2018/0223097 A1), as applied to Claim 1 above, and in further view of Maas et al. (US2010/0075125).
The disclosure of Rosenquist on Claim 1 is incorporated herein by reference.
Rosenquist discloses that the flame-retardant polycarbonate composition comprises polycarbonate comprising repeating units derived from an ester and repeating units derived from bisphenol-A or from a branching agent (claim 3).
The difference between Rosenquist and the instant Claim 12 is that Rosenquist is silent that the branched polycarbonate also has an endcap group.
However, Maas teaches a flame-retardant composition (ti.) comprising a branched cyanophenyl end-capped polycarbonate (claim 1) and the branched cyanophenyl end-capped polycarbonate is obtained by reacting carbonate units with branching agent and cyano-phenol (Id.).
One ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to adopt the producing of the branched cyanophenyl end-capped polycarbonate taught by Maas for the branched polycarbonate of Rosenquist because the branched polycarbonate of Rosenquist is also produced by reacting carbonate units with branching agent and Maas teaches that a branched cyanophenyl end-capped polycarbonate is suitable for a flame-retardant polycarbonate composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/ Supervisory Patent Examiner, Art Unit 1763
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