DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-3, 6-10 are pending.
Claim Rejections - 35 USC § 103
Claims 1-3, 8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 2022/0275199).
Regarding claim 1: Tang is directed to a thermoplastic resin composition comprising:
100 parts polybutylene terephthalate resin
15-100 parts of an amorphous resin including a polycarbonate
30-150 parts by weight glass fibers ([0064]-[0065])
0.05-2 parts by mass of a nucleating agent including talcum powder (equivalent to talc).
The average particle diameter of the talc nucleating agent is not mentioned. However, the average diameter of the filler material including talcum powder is 0.001-20 μm, wherein the filler material includes talcum powder. Given that talcum powder is disclosed for both the filler and nucleating agent, it would have been obvious to have selected an average particle diameter of the talcum nucleating agent of 0.001-20 μm as well. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a particle diameter of talc within the scope of claim 1.
The glass fiber and talc are present in a weight ratio of about 50:1 to about 500:1 as disclosed in the working Examples 1, 4-6 of Table 1 comprising glass fibers and Hightron (talcum powder) all within the claimed ratio.
While Tang doesn’t mention a single resin composition simultaneously comprising the aforementioned components in a single composition in claimed amount, it would have been obvious to have selected such a composition since Tang discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a composition within the scope of claim 1.
Tang doesn't specifically recite the average potential energy or a metal bonding strength. However, the composition produced in Tang is substantially identical to the composition produced in the instant invention as discussed previously. Additionally, both the present invention and Tang are directed to improved bonding strength ([0003] Tang).
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Tang suggests a composition having a properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 2: The viscosity of the PBT resin is 0.42-2.0 dl/g ([0041]) (equivalent to as measured in accordance with ASTM D2857).
Regarding claim 3: The viscosity average molecular weight of the polycarbonate resin is 10,000-50,000. Given the weight average molecular weight is somewhat greater than the viscosity average molecular weight, one skilled in the art would understand the weight average molecular weight is well within the claimed range of 10,000-50,000.
Regarding claims 6-7: Tang doesn't specifically recite the melt flow index or notched Izod impact strength. However, the composition produced in Tang is substantially identical to the composition produced in the instant invention as discussed previously.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Tang suggests a composition having a properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 8: An article is disclosed.
Regarding claim 10: A melt flow is not recited. However, the composition produced in Tang is substantially identical to the composition produced in the instant invention as discussed previously.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Tang suggests a composition having a properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tang as applied to claim 1 above, and further in view of Ha et al. (US 2024/0157679).
Regarding claim 9: Tang doesn’t mention a composite member comprising a plastic member formed of the composition of claim 1, a metal member adjoining the plastic member adjoining the plastic member, and a glass member bonded to the plastic member.
Ha is directed to a glass laminate article including a resin layer on a surface of a core substrate of a metal and a glass layer on the resin layer. The resin includes polycarbonate and polybutylene terephthalate ([0071] Ha). One skilled in the art would have been motivated to have used the composition of Tang to produce glass laminate articles having a printed layer capable of preventing delamination of glass and maintains a high level of flatness ([0005] Ha). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the composition of Tang to produce a glass laminate to arrive at claim 9 of the present invention.
Response to Arguments
Applicant's arguments filed 3/5/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 5-7 Remarks) the present application includes Examples 1-10 and comparative examples, wherein comparative examples 7-10 demonstrating unexpected results of glass adhesive strength, metal bonding strength, fluidity, and impact strength and/or a balance thereof. Comparative examples 7-10 Table 4 demonstrate compositions lacking talc or particle diameter outside the claimed range have deteriorated properties. Further, the data demonstrates there is no reasonable expectation of success and rebuts a presumption of inherency.
The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
In the present case, specific components are utilized in the working examples including specific PBT having an inherent viscosity [TJJ: about 1.3 dl/g), specific PC resin of bisphenol-A polycarbonate resin, and flat glass fibers are utilized. In contrast, any PBT, PC, and glass fibers are within the scope of claim 1. Therefore claim 1 is not considered commensurate in scope with the showing of unexpected results.
Applicant argues (p. 7-8 Remarks) the claims are commensurate in scope with the evidence provided. The talc having an average particle diameter of about 3-6 um recited in claim 1, and comparative examples comprising talc outside the claimed range. Likewise, the examples demonstrate the weight ratio of glass fiber to talc throughout the range recited in claim 1, as well as comparative examples outside this range. Further, the skilled artisan would extend the results to other compositions within the scope of claim 1. Applicant cited In re Chupp.
This argument is not found persuasive since the claims are much broader than the evidence provided by Applicant. Specifically, the PBT and PC resins have specific inherent viscosity and weight average molecular weight, respectively. Likewise, flat glass fibers are utilized.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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