DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 17, 2026 has been entered.
Claim Rejections - 35 USC § 112
Claims 1-7 and 10-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, it is unclear whether “free of methyl methacrylate-butadiene-styrene” means free of the unreacted monomers or free of the copolymer therefrom.
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 1-7, 10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0317142 (Chen) per IDS filed 12/11/2023.
Chen discloses a polycarbonate composition comprising:
(A) 10 to 75 wt.% of a polycarbonate having bisphenol carbonate units (meets Applicants’ bisphenol A polycarbonate homopolymer and content thereof);
(B) 10 to 30 wt.% of a polyester;
(C) 10 to 40 wt.% of a polysiloxane-polycarbonate copolymer having a siloxane content of 1 to 50 wt.% [0072] (overlaps Applicants’ polycarbonate-siloxane copolymer having a siloxane content of 30 to 70 wt.%); and
(D) 1 to 20 wt.% of a phosphazene flame retardant inclusive of Rabitle FP-110 (meets Applicants’ hexaphenoxycyclotriphosphazene per Table 1 and overlaps content thereof) (e.g., abstract, [0004], [0024], [0065], [0072], [0079], [0115], [0119], Tables 1 and 5, claims).
Illustratively, in Example 1 (Table 5), Chen sets forth a composition comprising ~44.63 wt.% bisphenol A homopolycarbonate (PC) (meets Applicants’ bisphenol A polycarbonate homopolymer and content thereof), ~20 wt.% polybutylene terephthalate (PBT), ~25 wt.% polysiloxane-polycarbonate copolymer with a siloxane content of 20 wt.% (differs from Applicants’ polycarbonate-siloxane copolymer in that the siloxane content is below the presently claimed 30 to 70 wt.%) and ~9 wt.% hexaphenoxycyclotriphosphazene flame retardant (FP-110) (meets Applicants’ hexaphenoxycyclotriphosphazene but the content thereof is above the presently claimed 0.5 to 4.5 wt.%), wherein the polysiloxane-polycarbonate copolymer is present in an amount to provide ~1.8 wt.% total siloxane content ((0.09)(20) = ~1.8%) based on total composition (meets Applicants’ total siloxane content).
In essence, Chen differs from claim 1 in that the polysiloxane-polycarbonate copolymer used in the examples does not have a siloxane content falling within the presently claimed 30 to 70 wt.% and the ~9 wt.% hexaphenoxycyclotriphosphazene content is above that presently claimed. With respect to the first difference, Chen discloses that the polysiloxane-polycarbonate copolymer may have a siloxane content of up to 50 wt.% [0072], wherein higher siloxane contents provide copolymers that are more optically opaque [0072]. Thus, it would have been obvious to one having ordinary skill in the art to use a polysiloxane-polycarbonate copolymer having a siloxane content of from 30 to 50 wt.% for its expected additive effect and with the reasonable expectation. As to the second difference, Chen discloses the hexaphenoxycyclotriphosphazene may be used in amounts as low as 2 wt.% [0119]. Thus, it would have been obvious to one having ordinary skill in the art to use lower amounts of Chen’s hexaphenoxycyclotriphosphazene (inclusive of that presently claimed) in accordance with the desired flame retardant properties.
As to claim 2, Chen’s polycarbonate composition per Example 1 exhibits a UL-94 rating and impact strength falling within the scope of the present claims (Table 5). Thus, it would be expected that such would also meet the presently claimed tensile elongation retention.
As to claim 3, Chen’s exemplified polycarbonate (PC) has a weight average molecular weight of 29,900 (Table 1).
As to claim 4, Chen depicts [0070] polysiloxane-polycarbonate copolymers comprising bisphenol A carbonate repeating units and poly(dimethyl siloxane) repeating units.
As to claim 5, Chen’s polysiloxane-polycarbonate copolymer has a weight average molecular weight of 2,000 to 100,000 [0077], rendering obvious the presently claimed weight average molecular weigh with the reasonable expectation of success.
As to claim 6, Chen’s examples are free of polysiloxane-polycarbonate copolymers having less than 10 wt.% of siloxane units.
As to product-by-process claim 7, it is not seen that the patentability of the presently claimed composition depends on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 227 USPQ 964. In any event, it would have been within the purview of one having ordinary skill in the art to use recycled materials in Chen’s composition in the interest of environmental concerns.
As to claim 10, Chen’s exemplified compositions (Table 1) further include an anti-drip (TSAN) additive.
As to claim 12, it would have been within the purview of Chen’s inventive disclosure, and obvious to one having ordinary skill in the art, to modify the composition per Example 1 to comprise the presently claimed polycarbonate and polycarbonate-siloxane copolymer contents in accordance with the ultimate properties desired. Differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to claim 13, it would have been within the purview of one having ordinary skill in the art to formulate a composition per Chen comprising a mixture of polycarbonate homopolymers having differing molecular weights (inclusive of those presently claimed) for their expected additive effect. In this regard, Chen discloses that “at least one” homopolycarbonate can be used [0032].
As to claim 14, Chen’s compositions are produced by melt blending [0126] in an extruder.
As to claim 15, Chen’s compositions are used to form molded articles.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0317142 (Chen ‘142) described hereinabove in view of US 2017/0247539 (Chen ‘539).
Chen ‘142 does not expressly disclose the use of antimicrobial agents. From Chen ‘539 [0054], it is known that antimicrobial agents can be suitably included in similarly-constituted compositions comprising a polycarbonate, a polycarbonate-siloxane copolymer and a phosphazene flame retardant. Thus, it would have been obvious to one having ordinary skill in the art to further include an antimicrobial agent into Chen’s compositions for its expected additive effect.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 10-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,873,375. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims embrace similarly-constituted compositions comprising a bisphenol A homopolycarbonate in amounts as presently claimed, a polycarbonate-siloxane having a siloxane content of 30 to 50 wt.% (per claim 3) and hexaphenoxycyclotriphosphazene flame retardant in amounts as presently claimed. It would be expected that the polycarbonate-siloxane, given its total content and siloxane content, would provide a compositional siloxane content falling within the presently claimed 0.5 to 20 wt.% content.
Response to Arguments
Applicant’s arguments and amendments filed June 17, 2026 have been fully considered and are persuasive in overcoming the 35 USC 103 rejection over WO 2019/062472 (Huang).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/
Primary Examiner, Art Unit 1765
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