DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The Applicants submitted claim amendments on 8/4/2026 in response to the office action mailed on 5/8/2026. The status of the claims are as follows.
Claim Rejections - 35 USC § 103
3. Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over (US 2019/0366621 A1) to Achten et al. (hereinafter Achten).
The above noted rejection is hereby withdrawn.
NEW Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over (US 2019/0366621 A1) to Achten et al. (hereinafter Achten) in view of the teachings of (EP 0305816 A2) to Wittmann et al. (hereinafter Wittmann).
Achten is directed toward a polycarbonate composition containing a flame retardant. Achten discloses at paragraph [0013] that the composition contains 20% to 99% of an aromatic polycarbonate, which reads on Applicants range of 50% to 90.38%. Achten discloses at paragraph [0128] that titanium dioxide fillers in common amounts are added. Achten discloses at paragraph [0150] that fillers may be added at 0.00% to 10% by weight, which reads on Applicants 5 to 20% by weight of titanium dioxide. Achten discloses at paragraph [0018] that 0.0% to 5% of at lease one anti dripping agent may be added, which reads on Applicants range of 0.1 to 0.8%. Achten discloses at paragraph [0015] that 0.0 to 1.0% by weight of a flame retarder is present, which reads on Applicants range of 0.02% to 0.15%. Achten discloses at paragraph [0143] that flame retardant compounds reading on Applicants sulfonate compounds. Achten discloses at paragraph [0016] that 0 to 50% of impact modifiers are present. Achten discloses at paragraph [0092] that impact modifiers comprises one or more graft copolymers. Achten discloses at paragraph [0094] that the graft base is an acrylate rubber. Achten discloses at paragraph [0096] that the graft is a C1-C8 methacrylate. Achten discloses at paragraph [0128] that additives such as UV absorbers are added. Achten discloses at paragraph [0124] that the antidrip is a PTFE polymer. Achten discloses at paragraph [0102] that graft polymer has a core shell structure. It has been held that the mere fact that a reference suggest a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It would be obvious for One skilled in the art would select Applicants composition from the list.
Wittman is directed toward flame resistant thermoplastic polycarbonate with titanium dioxide fillers. Achten and Wittman are both directed toward flame resistant thermoplastic polycarbonate with titanium dioxide fillers and therefore are analogous art. Wittman teaches ”a thermoplastic molding compositions made from aromatic polycarbonate, polyalkylene terephthalate, graft polymer, fluorinated polyolefin and phosphorus compound.” Wittman teaches “the filled or reinforced molding compositions can contain up to 60, preferably 10 to 60% by weight, based on the filled or reinforced molding composition, of fillers and / or reinforcing materials. Preferred reinforcing materials are glass fibers. Preferred fillers which can also have a reinforcing effect are glass spheres, mica, silicates, quartz, talc, titanium dioxide, wollastonite.” Wittman teaches that the preferred range for reinforcement is 10% and greater and therefore one skilled in the art would find it obvious to have a range above 10%. This is NOT teaching away from Achten, which is silent about having a higher range.
It would be obvious to one skilled in the art at the time of the disclosure of Achten in view of the teachings of Wittman to select from the list disclosed the Applicants composition and to have a titanium dioxide in the preferred range for structural reinforcement that would form a prime facie case of obviousness from claims 1-9.
Response to Arguments
7. Applicant’s arguments with respect to claims 1-9 have been considered but are moot because the new ground of rejection does not rely on any previous combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Office can use Wittman as the primary reference to negate the alleged “teaching away” of the current primary reference and therefore this argument is moot.
Conclusion
8. 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).
9. 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.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY D WASHVILLE whose telephone number is (571)270-3262. The examiner can normally be reached M-F 9-5.
11. 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.
12. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY D WASHVILLE/Primary Examiner, Art Unit 1766
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