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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7,10,12,14,15 and 17 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ishikawa 2020/0010683 as evidenced by Okamoto 2017/0044363.
Ishikawa exemplifies (#26) a blend of 64 parts FN1700, 20 parts FN2200), 16 parts A-1a, 4.7 parts CR741, 0.3 parts CD097E and 0.1 parts Irgafos168.
FN1700 and FN2200 are BPA polycarbonates (see paragraph 200,202 of Okamoto 2017/0044363).
CR741 (paragraph 257) is a phosphate flame retardant.
A-1a (table 1) is a polycarbonate-siloxane with an average of 30% siloxane which meets applicant’s 1st polycarbonate-siloxane. The polycarbonate-siloxane provides:
0.3 x 16
----------------------------------------- = 4.6% siloxane in overall composition
16 + 20 + 64 + 4.7 + 0.3 + 0.1
This polycarbonate-siloxane A-1a is actually combination of many different chains lengths having an average of 30% siloxane. Table 1 reports that some of the polycarbonate-siloxane chains have a siloxane content of 48% siloxane – qualifying as applicant’s 2nd polycarbonate-siloxane, some have a siloxane content of 30% siloxane – qualifying as applicant’s 1st polycarbonate-siloxane and some have a siloxane content of 21% siloxane – also qualifying as applicant’s 1st polycarbonate-siloxane. See paragraphs 119-121,126 for definitions of wM1, wM2 and wM3.
From Ishikawa’s fig 2, it appears the content of polycarbonate siloxane with greater than 30% siloxane (based on area beneath the curve) is ~1/5 that of the entire polycarbonate-siloxane. Therefore, the 16 parts of total polycarbonate-siloxane is actually ~13 parts of the low molecular weight polycarbonate-siloxane (ie applicant’s 1st polycarbonate-siloxane) and 3 parts of the high molecular weight polycarbonate-siloxane (ie applicant’s 2nd polycarbonate-siloxane).
This assessment can be visualized below with the fraction of polycarbonate-siloxane having a siloxane content of 10-30% represented by the colored in area on the left and the fraction of polycarbonate-siloxane having a siloxane content of 30-50% represented by the colored in area on the right.
PNG
media_image1.png
762
1364
media_image1.png
Greyscale
In regards to applicant’s dependent claims:
The cited example has a VO rating. Ishikawa does not report the other properties of claim 2. Given the same components in the same amounts are present as claimed by applicant, the same properties are expected.
Ishikawa reports Mv for the polycarbonates instead of Mw by PC standards as in applicant’s claim 3. However, the values for Mv and Mw are expected to be reasonably close – certainly within the broad range of the claim.
Ishikawa’s polycarbonate-siloxane is based on PDMS and BPA – meeting applicant’s claim 4.
The polycarbonate-siloxane chains having a siloxane content of 48% siloxane – qualify as applicant’s 2nd polycarbonate-siloxane. The polycarbonate-siloxane having a siloxane content of 21% siloxane qualify as applicant’s 1st polycarbonate-siloxane in applicant’s claim 5.
Arbitrarily, the small amount of front “tail end” of Ishikawa’s fig 2, of 0-10% siloxane can be considered part of applicant’s 1st polycarbonate-siloxane as applicant’s molecular weights are actually averages – not absolute values. Presumably, applicant’s claim 6 is intended to permit some low siloxane content polycarbonate-siloxane as long as the 1st polycarbonate-siloxane’s average siloxane content is in the 10-30% range.
CR741 is an oligomeric phosphate (see paragraph 137 of Ishii 2006/0142438). The phosphorous content would be ~9% - meeting applicant’s claim 7.
CD097E is PTFE (paragraph 261) and Irgafos168 (paragraph 262) is an antioxidant which qualify as applicant’s claim 10 additives.
The material is extruded (paragraph 263) and injected molded into test articles (paragraph 266) – meeting applicant’s claims 14 and 15.
Claims 1-8,10,12,14,15 and 17 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ishikawa 2020/0010683.
Ishikawa exemplifies (#23) a blend of 60.8 parts FN1700, 20 parts FN2200), 19.2 parts A-1b, 3.1 parts CR741, 0.3 parts CD097E and 0.1 parts Irgafos168.
FN1700 and FN2200 are BPA polycarbonates (see paragraph 200,202 of Okamoto 2017/0044363).
CR741 (paragraph 257) is a phosphate flame retardant.
A-1b (table 1) is a polycarbonate-siloxane with an average of 25% siloxane which meets applicant’s 1st polycarbonate-siloxane. The polycarbonate-siloxane provides:
0.25 x 19.2
----------------------------------------- = 4.6% siloxane in overall composition
19.2 + 20 + 60.8 + 3.1 + 0.3 + 0.1
This polycarbonate-siloxane A-1b is actually combination of many different chains lengths having an average of 25% siloxane. Table 1 reports that some of the polycarbonate-siloxane chains have a siloxane content of 41% siloxane – qualifying as applicant’s 2nd polycarbonate-siloxane, some have a siloxane content of 36% siloxane – qualifying as applicant’s 2nd polycarbonate-siloxane and some have a siloxane content of 23% siloxane – also qualifying as applicant’s 1st polycarbonate-siloxane. See paragraphs 119-121,126 for definitions of wM1, wM2 and wM3.
From Ishikawa’s fig 2, it appears the content of polycarbonate siloxane with greater than 30% siloxane (based on area beneath the curve) is ~1/5 that of the entire polycarbonate-siloxane. Therefore, the 19.2 parts of total polycarbonate-siloxane is actually ~ 4 parts of the low molecular weight polycarbonate-siloxane (ie applicant’s 1st polycarbonate-siloxane) and 15 parts of the high molecular weight polycarbonate-siloxane (ie applicant’s 2nd polycarbonate-siloxane) -meeting applicant’s claim 12.
In regards to applicant’s dependent claims:
The cited example has a VO rating. Ishikawa does not report the other properties of claim 2. Given the same components in the same amounts are present as claimed by applicant, the same properties are expected.
Ishikawa reports Mv for the polycarbonates instead of Mw by PC standards as in applicant’s claim 3. However, the values for Mv and Mw are expected to be reasonably close – certainly within the broad range of the claim.
Ishikawa’s polycarbonate-siloxane is based on PDMS and BPA – meeting applicant’s claim 4.
The polycarbonate-siloxane chains having a siloxane content of 41 and 36% siloxane – qualify as applicant’s 2nd polycarbonate-siloxane. The polycarbonate-siloxane having a siloxane content of 23% siloxane qualify as applicant’s 1st polycarbonate-siloxane in applicant’s claim 5.
CR741 is an oligomeric phosphate (see paragraph 137 of Ishii 2006/0142438). The phosphorous content would be ~9% - meeting applicant’s claim 7.
The fraction of polycarbonate-siloxane (wM2) having 36% siloxane content has a molecular weight of 16,000-56,000 – meeting applicant’s claim 8.
CD097E is PTFE (paragraph 261) and Irgafos168 (paragraph 262) is an antioxidant which qualify as applicant’s claim 10 additives.
From Ishikawa’s fig 2, it appears the content of polycarbonate siloxane with greater than 30% siloxane (based on area beneath the curve) is ~1/5 that of the entire polycarbonate-siloxane. Therefore, the 19.2 parts of total polycarbonate-siloxane is actually ~ 4 parts of the low molecular weight polycarbonate-siloxane (ie applicant’s 1st polycarbonate-siloxane) and 15 parts of the high molecular weight polycarbonate-siloxane (ie applicant’s 2nd polycarbonate-siloxane) -meeting applicant’s claim 12.
The material is extruded (paragraph 263) and injected molded into test articles (paragraph 266) – meeting applicant’s claims 14 and 15.
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.
Claims 1-4,6-8,10,12,14 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa 2020/0010683.
Ishikawa exemplifies (#26) a blend of 64 parts FN1700, 20 parts FN2200), 16 parts A-1a, 4.7 parts CR741, 0.3 parts CD097E and 0.1 parts Irgafos168.
FN1700 and FN2200 are BPA polycarbonates (see paragraph 200,202 of Okamoto 2017/0044363).
CR741 (paragraph 257) is a phosphate flame retardant.
A-1a (table 1) is a polycarbonate-siloxane with an average of 30% siloxane which meets applicant’s 1st polycarbonate-siloxane. The polycarbonate-siloxane provides:
0.3 x 16
----------------------------------------- = 4.6% siloxane in overall composition
16 + 20 + 64 + 4.7 + 0.3 + 0.1
Applicant’s 2nd polycarbonate-siloxane of greater than 30% siloxane is not present in the cited example. However, the difference between applicant’s 1st and 2nd polycarbonate-siloxanes (ie 30% vs >30%) is trivial. There is no expected meaningful difference between a polycarbonate-siloxane of 30% siloxane and a polycarbonate-siloxane of 30.001% siloxane. The two would be expected to have the same properties.
A prima facie case of obviousness exists where the claimed ranges/amounts do not overlap but are close (MPEP2144.05 I; Titanium Metals v Banner 227 USPQ 773). In the instant situation a fraction of the polycarbonate-siloxane can be considered applicant’s 1st polycarbonate-siloxane, while the remaining fraction is a polycarbonate-siloxane extremely close to applicant’s claimed 2nd polycarbonate-siloxane.
In regards to applicant’s dependent claims:
The cited example has a VO rating. Ishikawa does not report the other properties of claim 2. Given the same components in the same amounts are present as claimed by applicant, the same properties are expected.
Ishikawa reports Mv for the polycarbonates instead of Mw by PC standards as in applicant’s claim 3. However, the values for Mv and Mw are expected to be reasonably close – certainly within the broad range of the claim.
Ishikawa’s polycarbonate-siloxane is based on PDMS and BPA – meeting applicant’s claim 4.
CR741 is an oligomeric phosphate (see paragraph 137 of Ishii 2006/0142438). The phosphorous content would be ~9% - meeting applicant’s claim 7.
Ishikawa reports Mv instead of Mw by GPC as in applicant’s claim 8. However, the values for Mv and Mw are expected to be reasonably close – certainly within the broad range of the claim. Also note Ishikawa suggests a wide Mv of 9,000-50,000 which undoubtedly overlaps the claimed range.
CD097E is PTFE (paragraph 261) and Irgafos168 (paragraph 262) is an antioxidant which qualify as applicant’s claim 10 additives.
The material s extruded (paragraph 263) and injected molded into test articles (paragraph 266) – meeting applicant’s claims 14 and 15.
Claim 9 rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa 2020/0010683 in view of Wen 2013/0313493.
Ishikawa applies as explained in the above rejections.
Ishikawa does not suggest utilizing a recycled polycarbonate as the polycarbonate.
Wen (abstract) teaches using a recycled polycarbonate as the blending partner for polycarbonate + polycarbonate-siloxane compositions.
It would have been obvious utilize a recycled polycarbonate as Ishikawa’s polycarbonate to reduce costs.
Claims 11 and 18 rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa 2020/0010683 in view of Gerace 2007/0148257 or Park 2012/0302663.
Ishikawa applies as explained in the above rejections.
Ishikawa does not suggest the inclusion of an antimicrobial agent.
Gerace (paragraph 4) and Park (paragraph 73) suggest antimicrobial agents as additives to polycarbonate compositions. Such an addition for its expected effect would have been obvious.
Claim 13 rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa 2020/0010683 in view of Shan WO2019/123029.
Ishikawa applies as explained in the above rejections.
Ishikawa employs multiple polycarbonates of varying molecular weight as the polycarbonate, but not the specific Mw’s of this claim.
Shan produces polycarbonate + polycarbonate-siloxane compositions wherein the polycarbonate is a combination of a polycarbonate of 21,000-23,000 Mw with a polycarbonate of 29,000-31,000 Mw (see table 1,3,4,5 of Shan). Apparently this combination provides a favorable balance between processability and mechanical properties.
It would have been obvious to employ any known combination of polycarbonates as Ishikawa’s polycarbonate.
Claim 16 rejected under 35 U.S.C. 103 as being unpatentable over Shan WO2019/123029.
Shan claims (#7) a blend of 85-98% bisphenol polycarbonate, 2-15% polycarbonate-siloxane and 0.05-1% flame retardant.
The polycarbonate-siloxane has 35-65% siloxane (eg claim 4).This polycarbonate-siloxane overlaps (and renders obvious) applicant’s 2nd polycarbonate-siloxane. The amount of siloxane in the entire blend should be 0.5-10% (eg claim 1).
The flame retardant can be phosphazenes etc (eg claim 14). The phosphazene may cyclic (paragraph 52).
A second polycarbonate-siloxane of 5-25% siloxane may be added (eg claim 11). This second polycarbonate-siloxane is used in amounts of 10-25% (paragraph 30) which meets applicant’s 1st polycarbonate-siloxane.
Although no example meets all of applicant’s claimed limitations, it is clear the claimed subject matter falls within the general teachings of the reference.
This rejection would be applicable to most of applicant’s claims, but cannot be applied in a final rejection as claim 1 is nearly identical to original claim 12.
Applicant's arguments filed 3/2/26 have been fully considered but they are not persuasive.
Applicant argues that Ishikawa does not employ separate polycarbonate-siloxanes – one of 10-30% siloxane and one of 30-55% siloxane.
This is not convincing. Fig 2 of Ishikawa clearly shows the polycarbonate-siloxane has a range of siloxane contents. Applicant cannot deny that polycarbonate-siloxane of 10-30% siloxane is present. Applicant cannot deny that polycarbonate-siloxane of >30% siloxane is present. The fact that Ishikawa supplies all the polycarbonate-siloxane from a single source is not relevant to the composition claims. The same final product results whether:
1) provided to the homopolycarbonate as separately polymerized polycarbonate-siloxanes;
2) provided to the homopolycarbonate as separately polymerized polycarbonate-siloxanes initially combined in a preliminary mixing step;
Or
3) provided to the homopolycarbonate as single polymerized polycarbonate-siloxane that has both high siloxane and low siloxane fractions
In fact, a hypothetical process claim of obtaining a 1st polycarbonate-siloxane, then obtaining a 2nd polycarbonate-siloxane, then blending both simultaneously into homopolycarbonate would also be suggested by Ishikawa. Ishikawa (fig 1) fractionates his polycarbonate-siloxane into separate polycarbonate-siloxanes of different siloxane contents to investigate the properties thereof. After such investigation, Ishikawa could easily mix these separate fractions into the homopolycarbonate. Again, the same final product results.
Applicant does not deny that the relative amounts of the low siloxane content and high siloxane content polycarbonate-siloxanes in Ishikawa meet the claims.
Applicant provides no meaningful response to the obviousness rejection. The difference between applicant’s 1st and 2nd polycarbonate-siloxanes (ie 30% vs >30%) is trivial. There is no expected meaningful difference between a polycarbonate-siloxane of 30% siloxane and a polycarbonate-siloxane of 30.001% siloxane. The two would be expected to have the same properties. See MPEP2144.05 (I) and Titanium Metals v Banner regarding the obviousness of ranges that do not overlap but are merely close.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/26/26
Prosecution Insights