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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed March 31, 2026, with respect to the objections to claims 4, 5, 16, and 18 have been fully considered and persuasive. Applicant has corrected the typographical errors, obviating the objections. Accordingly, the objections are withdrawn.
Applicant’s amendments and arguments, filed March 31, 2026, with respect to the rejection(s) under 35 U.S.C. 103 have been fully considered but they are not persuasive. Applicant argues that even assuming Seo meets the claimed glass fiber and mineral filler in a composition having a respective range, by wt%, Seo does not disclose that “a glass filler is hybridized with an “inorganic reinforcing material” such as, e.g., kaolin.” However, to the extent that the claimed “hybridized” is defined by the instant specification (para. [0113] and [0050]-[0051]), hybridization of the glass fiber with the inorganic reinforcing material is construed to be achieved “by using the inorganic reinforcing material together with the inorganic filler.” It is the position of the Office that Seo renders obvious the claimed inorganic filler that is a glass fiber (pg. 1, para. 1) and an inorganic reinforcing material that may be kaolin (pg. 7, para. 1) and the combined presence thereof is construed to read on the claimed “wherein the glass fiber is hybridized with the inorganic reinforcing material.” That is, claimed “wherein the glass fiber is hybridized with the inorganic reinforcing material” as defined within the instant specification does not appear to impart a structural limitation beyond the combined presence of the claimed inorganic filler that is a glass fiber and an inorganic reinforcing material that may be kaolin.
Applicant further argues that a person having ordinary skill in the art would not have been motivated to combine the teachings of Seo and Wang as Wang teaches a different filler that serves an entirely different structural and compositional function than the glass fiber of Seo and bears no relationship to the claimed hybridization of glass fiber with an inorganic reinforcing material such as kaolin. However, Wang is only relied upon for its teaching of SEBS as a suitable additive recognized within the art to improve the impact properties of polyphenylene oxide resin compositions and that it is known within the art to include an impact modifier which may be SEBS in addition to another PS-based component which may be HIPS, which is a component contemplated by Seo. Wang is not relied upon for a teaching regarding the hybridization of a glass fiber with an inorganic reinforcing material. A person having ordinary skill in the art would recognize that selection of a filler may differ based on the desired properties of the resultant composition while also recognizing the suitability of various blending components for, e.g., the intended purpose of improving impact strength of polyphenylene oxide resin compositions.
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
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.
Claims 1-6, 8, 10, 12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (KR100839173, English translation provided for citations, hereinafter referred to as “Seo”) in view of Wang et al. (US20200010674, hereinafter referred to as “Wang”).
As to Claim 1: Seo teaches a modified polyphenylene oxide resin composition (pg. 1, para. 1) comprising:
20 to 60 wt% of polyphenylene oxide
10 to 30 wt% of glass fiber (i.e., an inorganic filler)
10 to 20 wt% of mineral filler which may be, inter alia, kaolin (pg. 7, para. 1), which reads on the claimed inorganic reinforcing material according to the instant specification para. [0015], and
10 to 30 wt% of high-impact polystyrene
This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Seo suggests, that the overlapping portion is a useable range for relative amounts of a polyphenylene oxide, glass fiber (i.e., inorganic filler), mineral filler (i.e., inorganic reinforcing filler), and high impact polystyrene within a polyphenylene oxide resin composition having balanced properties (e.g., heat resistance, dimensional stability, electrical conductivity (final paragraph of pg. 4), and (pg. 9, para. 1)) for applications in, inter alia, semiconductor chip trays (pg. 4, para. 1). As construed from the instant specification para. [0113] and [0050]-[0051], hybridization of the glass fiber with the inorganic reinforcing material is achieved “by using the inorganic reinforcing material together with the inorganic filler.” As above, Seo renders obvious the claimed inorganic filler that is a glass fiber (pg. 1, para. 1) and an inorganic reinforcing material that may be kaolin (pg. 7, para. 1) and the combination thereof is construed to read on the claimed “wherein the glass fiber is hybridized with the inorganic reinforcing material.”
Seo is silent towards wherein the composition comprises an impact modifier that is separate from HIPS.
Wang teaches a related thermoplastic composition based on a polyphenylene oxide resin, further comprising 10 to 50 wt% polystyrene (PS) and 5 to 30 wt% of an impact modifier ([0029]) wherein said PS may be high impact PS (HIPS) ([0030]) and wherein said impact modifier may be SEBS ([0032]). Seo and Wang are considered analogous art because they are directed towards the same field of endeavor, namely, polyphenylene oxide resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a SEBS resin impact modifier, such as that taught by Wang, within the composition of Seo and the motivation would have been that Wang teaches that SEBS is a suitable additive recognized within the art to improve the impact properties of polyphenylene oxide resin compositions. Furthermore, the composition of Wang discloses that it is known within the art to include an impact modifier which may be SEBS in addition to another PS-based component which may be HIPS, which is a component contemplated by Seo. The amount for an impact modifier which may be SEBS taught by Wang overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range as taught by Wang, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for an amount of an impact modifier additive which may be SEBS suitable for improving the impact properties of polyphenylene oxide resin compositions.
As to Claim 2: Seo and Wang teach the composition of claim 1 (supra).
Seo teaches that the composition comprises 20 to 60 wt% of polyphenylene oxide (pg. 1, para. 1) and further teaches exemplary compositions comprising 40.5 wt% PPO resin (Table 1, Example 1), which is within the claimed range.
As to Claim 3: Seo and Wang teach the composition of claim 1 (supra).
Seo teaches that the composition comprises 20 to 60 wt% of polyphenylene oxide (pg. 1, para. 1) and further teaches exemplary compositions comprising 40.5 wt% PPO resin (Table 1, Example 1), which is within the claimed range.
As to Claim 4: Seo and Wang teach the composition of claim 1 (supra).
Seo teaches that the composition comprises 10 to 30 wt% high impact polystyrene (HIPS) (pg. 1, para. 1) and further teaches exemplary compositions comprising 25 wt% HIPS resin (Table 2, Example 11), which is within the claimed range.
As to Claim 5: Seo and Wang teach the composition of claim 1 (supra).
Seo teaches that the composition comprises 10 to 30 wt% high impact polystyrene (HIPS) (pg. 1, para. 1) and further teaches exemplary compositions comprising 25 wt% HIPS resin (Table 2, Example 11), which is within the claimed range.
As to Claim 6: Seo and Wang teach the composition of claim 1 (supra).
Seo teaches an exemplary composition comprising 40.5 wt% PPO and 16.8 wt% HIPS (Table 1, Example 1), which yields a PPO:HIPS ratio of:
40.5
w
t
%
P
P
O
16.8
w
t
%
H
I
P
S
≈
2.4
which is within the claimed range (i.e., wherein 4:6 ≈ 0.67 and 8:2 ≈ 4.0).
As to Claim 8: Seo and Wang teach the composition of claim 7 (supra).
Seo further teaches that the glass fiber may have a diameter of 20 µm or less and a length of 1 inch or less (i.e., ≤ 25.4 mm) (pg. 6, para. 1), which overlaps with the claimed range. This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Seo suggests, that the overlapping portion is a useable range for the dimensions (diameter and length) of a glass fiber suitable for blending with polyphenylene oxide resin compositions to improve mechanical rigidity, heat resistance, and dimensional stability (pg. 6, para. 1).
As to Claim 10: Seo and Wang teach the composition of claim 1 (supra).
Seo teaches that the composition may comprise a mineral filler which may be, inter alia, kaolin (pg. 7, para. 1).
As to Claim 12: Seo and Wang teach the composition of claim 1 (supra).
Seo is silent towards wherein the composition comprises an impact modifier that is separate from HIPS.
Wang teaches a related thermoplastic composition based on a polyphenylene oxide resin, further comprising 10 to 50 wt% polystyrene (PS) and 5 to 30 wt% of an impact modifier ([0029]) wherein said PS may be high impact PS (HIPS) ([0030]) and wherein said impact modifier may be SEBS ([0032]). Seo and Wang are considered analogous art because they are directed towards the same field of endeavor, namely, polyphenylene oxide resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a SEBS resin impact modifier, such as that taught by Wang, within the composition of Seo and the motivation would have been that Wang teaches that SEBS is a suitable additive recognized within the art to improve the impact properties of polyphenylene oxide resin compositions. Furthermore, the composition of Wang discloses that it is known within the art to include an impact modifier which may be SEBS in addition to another PS-based component which may be HIPS, which is a component contemplated by Seo.
As to Claims 14 and 16: Seo and Wang teach the composition of claim 1 (supra).
Seo is silent towards the permittivity and dielectric loss of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference 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. permittivity and dielectric loss 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.
As to Claim 15: Seo and Wang teach the composition of claim 1 (supra).
Seo is silent towards the impact strength of the composition measured in KJ/m2.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference 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. impact strength, 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.
As to Claim 17: Seo and Wang teach the composition of claim 1 (supra).
Seo is silent towards the flexural modulus measured in MP.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference 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. flexural modulus, 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.
As to Claim 18: Seo and Wang teach the composition of claim 1 (supra).
Seo is silent towards the head deflection temperature of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference 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. heat deflection temperature, 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.
Claims 13 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (KR100839173, English translation provided for citations, hereinafter referred to as “Seo”) in view of Wang et al. (US20200010674, hereinafter referred to as “Wang”) as evidenced by Kraton (KRATON G1652 Polymer Data Document, hereinafter referred to as “Kraton”).
As to Claim 13: Seo and Wang teach the composition of claim 1 (see above).
Seo is silent towards wherein the composition comprises a styrene-ethylene/butylene-styrene (SEBS) block copolymer.
Wang teaches a related thermoplastic composition based on a polyphenylene oxide resin, further comprising 10 to 50 wt% polystyrene (PS) and 5 to 30 wt% of an impact modifier ([0029]) wherein said PS may be high impact PS (HIPS) ([0030]) and wherein said impact modifier may be SEBS ([0032]). Seo and Wang are considered analogous art because they are directed towards the same field of endeavor, namely, polyphenylene oxide resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a SEBS resin impact modifier, such as that taught by Wang, within the composition of Seo and the motivation would have been that Wang teaches that SEBS is a suitable additive recognized within the art to improve the impact properties of polyphenylene oxide resin compositions. Furthermore, the composition of Wang discloses that it is known within the art to include an impact modifier which may be SEBS in addition to another PS-based component which may be HIPS, which is a component contemplated by Seo.
Wang does not explicitly disclose a styrene content for the SEBS block copolymer. However, Wang does teach an exemplary composition comprising KRATON SEBS G1652 (Table 3 of Wang). Kraton provides evidence that the commercially available KRATON G1652 has a polystyrene content of 28.1 to 30.0 % by mass (pg. 1 of Kraton), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range as taught by Wang, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for an amount of styrene within a SEBS block copolymer impact modifier suitable for addition to polyphenylene oxide resin compositions for the purpose of improving the impact properties of said composition.
Claim 11 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (KR100839173, English translation provided for citations, hereinafter referred to as “Seo”) in view of Wang et al. (US20200010674, hereinafter referred to as “Wang”) and further in view of Miyoshi et al. (US20100173139, hereinafter referred to as “Miyoshi”) as evidenced by BASF The Chemical Company (Performance Minerals Reinforcements For Plastics and Rubber, hereinafter referred to as “BASF”).
As to Claim 11: Seo and Wang teach the composition of claim 10 (see above).
Seo teaches that the composition may comprise a mineral filler which may be, inter alia, kaolin (pg. 7, para. 1), but is silent towards the particle size or pH of said kaolin.
Miyoshi teaches a related polyphenylene ether resin composition (Abstract) which may comprise analogous components to that of Seo including styrenics (e.g., HIPS) ([0145]) and glass fibers ([0063]). Miyoshi further teaches that the composition may comprise kaolin which may be the commercial product sold under the trade name TRANSLINK445 ([0256]). BASF provides evidence that that TRANSLINK 445 is provided in a pulverized state (i.e., in the form of a powder) and has a pH of 8-10 and a particle size of 1.4 µm (Table on pg. 4 of BASF), which are within the claimed ranges. Miyoshi is considered analogous art because they are directed towards the same field of endeavor, namely, polyphenylene oxide resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a kaolin having the claimed pH and particle size within the claimed range as the kaolin component contemplated by Seo and the motivation would have been that Miyoshi teaches that a kaolin having said claimed pH and particle size is recognized within the art as suitable for the intended use of a reinforcing inorganic filler for polyphenylene oxide resin compositions. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (KR100839173, English translation provided for citations, hereinafter referred to as “Seo”) in view of Wang et al. (US20200010674, hereinafter referred to as “Wang”).
As to Claim 21: Seo teaches a modified polyphenylene oxide resin composition (pg. 1, para. 1) comprising:
20 to 60 wt% of polyphenylene oxide
10 to 30 wt% of glass fiber (i.e., an inorganic filler)
10 to 20 wt% of mineral filler which may be, inter alia, kaolin (pg. 7, para. 1), which reads on the claimed inorganic reinforcing material according to the instant specification para. [0015], and
10 to 30 wt% of high-impact polystyrene
This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Seo suggests, that the overlapping portion is a useable range for relative amounts of a polyphenylene oxide, glass fiber (i.e., inorganic filler), mineral filler (i.e., inorganic reinforcing filler), and high impact polystyrene within a polyphenylene oxide resin composition having balanced properties (e.g., heat resistance, dimensional stability, electrical conductivity (final paragraph of pg. 4), and (pg. 9, para. 1)) for applications in, inter alia, semiconductor chip trays (pg. 4, para. 1). As construed from the instant specification para. [0113] and [0050]-[0051], hybridization of the glass fiber with the inorganic reinforcing material is achieved “by using the inorganic reinforcing material together with the inorganic filler.” As above, Seo renders obvious the claimed inorganic filler that is a glass fiber (pg. 1, para. 1) and an inorganic reinforcing material that may be kaolin (pg. 7, para. 1) and the combination thereof is construed to read on the claimed “wherein the glass fiber is hybridized with the inorganic reinforcing material.”
Seo is silent towards wherein the composition comprises an impact modifier that is separate from HIPS.
Wang teaches a related thermoplastic composition based on a polyphenylene oxide resin, further comprising 10 to 50 wt% polystyrene (PS) and 5 to 30 wt% of an impact modifier ([0029]) wherein said PS may be high impact PS (HIPS) ([0030]) and wherein said impact modifier may be SEBS ([0032]). Seo and Wang are considered analogous art because they are directed towards the same field of endeavor, namely, polyphenylene oxide resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a SEBS resin impact modifier, such as that taught by Wang, within the composition of Seo and the motivation would have been that Wang teaches that SEBS is a suitable additive recognized within the art to improve the impact properties of polyphenylene oxide resin compositions. Furthermore, the composition of Wang discloses that it is known within the art to include an impact modifier which may be SEBS in addition to another PS-based component which may be HIPS, which is a component contemplated by Seo. The amount for an impact modifier which may be SEBS taught by Wang overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range as taught by Wang, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for an amount of an impact modifier additive which may be SEBS suitable for improving the impact properties of polyphenylene oxide resin compositions.
Seo does not measure the shrinkage deviation of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach 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 (e.g., [0050]). Therefore, the claimed effects and physical properties, i.e. shrinkage deviation, 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.
As to Claim 22: Seo and Wang teach the composition of claim 21 (supra).
Seo is silent towards the permittivity of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference 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. permittivity and dielectric loss 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.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (KR100839173, English translation provided for citations, hereinafter referred to as “Seo”) in view of Wang et al. (US20200010674, hereinafter referred to as “Wang”).
As to Claim 23: Seo teaches a modified polyphenylene oxide resin composition (pg. 1, para. 1) comprising:
20 to 60 wt% of polyphenylene oxide
10 to 30 wt% of glass fiber (i.e., an inorganic filler)
10 to 20 wt% of mineral filler which may be, inter alia, kaolin (pg. 7, para. 1), which reads on the claimed inorganic reinforcing material according to the instant specification para. [0015], and
10 to 30 wt% of high-impact polystyrene
This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Seo suggests, that the overlapping portion is a useable range for relative amounts of a polyphenylene oxide, glass fiber (i.e., inorganic filler), mineral filler (i.e., inorganic reinforcing filler), and high impact polystyrene within a polyphenylene oxide resin composition having balanced properties (e.g., heat resistance, dimensional stability, electrical conductivity (final paragraph of pg. 4), and (pg. 9, para. 1)) for applications in, inter alia, semiconductor chip trays (pg. 4, para. 1). As construed from the instant specification para. [0113] and [0050]-[0051], hybridization of the glass fiber with the inorganic reinforcing material is achieved “by using the inorganic reinforcing material together with the inorganic filler.” As above, Seo renders obvious the claimed inorganic filler that is a glass fiber (pg. 1, para. 1) and an inorganic reinforcing material that may be kaolin (pg. 7, para. 1) and the combination thereof is construed to read on the claimed “wherein the glass fiber is hybridized with the inorganic reinforcing material.”
Seo is silent towards wherein the composition comprises an impact modifier that is separate from HIPS.
Wang teaches a related thermoplastic composition based on a polyphenylene oxide resin, further comprising 10 to 50 wt% polystyrene (PS) and 5 to 30 wt% of an impact modifier ([0029]) wherein said PS may be high impact PS (HIPS) ([0030]) and wherein said impact modifier may be SEBS ([0032]). Seo and Wang are considered analogous art because they are directed towards the same field of endeavor, namely, polyphenylene oxide resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a SEBS resin impact modifier, such as that taught by Wang, within the composition of Seo and the motivation would have been that Wang teaches that SEBS is a suitable additive recognized within the art to improve the impact properties of polyphenylene oxide resin compositions. Furthermore, the composition of Wang discloses that it is known within the art to include an impact modifier which may be SEBS in addition to another PS-based component which may be HIPS, which is a component contemplated by Seo. The amount for an impact modifier which may be SEBS taught by Wang overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range as taught by Wang, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for an amount of an impact modifier additive which may be SEBS suitable for improving the impact properties of polyphenylene oxide resin compositions.
Seo does not measure the impact strength of the composition measured in KJ/m2 or shrinkage deviation of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach 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 (e.g., [0050]). Therefore, the claimed effects and physical properties, i.e. shrinkage deviation and impact strength, 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.
As to Claim 24: Seo and Wang teach the composition of claim 23 (supra).
Seo is silent towards the permittivity of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference 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. permittivity and dielectric loss 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.
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.
Correspondence
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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