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 .
Status of Claims
The examiner acknowledges the amendments to claims 1, 4-6, 11, and 13 as well as the addition of claim 16. Claims 1-16 are pending.
Specification
The disclosure is objected to because of the following informalities: on page 7, line 5, there is an unnecessary comma following such as.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed towards the use of the material, which is not a statutory category. While the applicant has amended the claim to read “a method of using”, the claim language does not recite a positive process step and as such, does not fall within a statutory category. The applicant must either rewrite the claim include a positive process step or cancel the claim. Because the claim does not fall within one of the statutory categories, the claim has not been further evaluated on its merits.
Claim Rejections - 35 USC § 112
The applicant has amended claims 4-6. As a result, the previous rejections under 112(b) for these claims are withdrawn.
Claim Rejections - 35 USC § 103
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lakeman (US 20160297963, US patent application reference #1 from IDS dated 6/20/2023) in view of Ishida (US 6,562,433).
Regarding Claims 1 and 16,
Lakeman teaches a polycarbonate composition that contains 40-98% by weight polycarbonate polymer (Abstract) which overlaps with the range of the instant claim and exemplifies the use of a bisphenol A-based polycarbonate (Paragraph 75), which is an aromatic polycarbonate. Lakeman further teaches that the composition includes 0.1 to 10% by weight of a compatibilizer (Abstract) which overlaps with the range of the instant claim and which contains an olefin which is preferably ethylene (Paragraph 22) which is copolymerized with an acrylate such as glycidyl methacrylate (Paragraph 22). Lakeman also teaches that the composition contains 0.1 to 10% by weight of an olefinic elastomer (Abstract) which overlaps with the range of the instant claim and that the composition may contain additives in amounts of 0.5 to 4% by weight (Paragraph 64) which is contained within the range of the instant claim. While Lakeman does teach that a polyester may be added, Lakeman exemplifies compositions in which no polyester is contained (Table 1, Examples 1 and 2). With regard to the smell of the composition, Lakeman is silent. However, as the compositions taught by Lakeman are comprised of the same components as those of the instant claim in overlapping amounts, it would necessarily follow that the compositions taught by Lakeman would meet the requirement as presented in the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to the overlapping ranges, one of ordinary skill in the art would naturally seek to alter the amount of compatibilizer to obtain a uniform composition and would similarly adjust the amount of elastomer to impart the desired cracking resistance, in particular relative to cleaning solutions as noted by Lakeman (Paragraph 2) which would often be used on automotive parts. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the component being used as an automotive interior article, as this language appears in the preamble and does not require any alteration of the composition, it is considered to be intended use and therefore does not further limit the claim.
In regard to the use of a mixture of aromatic polycarbonates from melt polymerization and interfacial polymerization, Lakeman teaches that the composition may include two or more polycarbonates including those that differ in melt flow rate or branching amounts (Paragraph 8) and further teaches that methods to prepare such polymers are well known (Paragraph 9). However, Lakeman fails to specifically teach the use of polymers from two different methods. Ishida teaches compositions containing polycarbonates (Abstract) in which a blend of melt polycarbonate and interfacial polycarbonate can be used (Column 4, Lines 23-28). Ishida teaches that this is to control the amount of Fries branching (Column 4, Lines 23-28) which Ishida further teaches is useful in order to balance the properties of ductility, which increases with low branching rates, with melt strength, which increases with higher branching rates (Column 2, Lines 1-18). As such, the ordinarily skilled artisan would recognize the need to balance these considerations and would adjust the amount of branching present in the polycarbonate component or components in order to fit the desired values for each and would further be motivated to mix a polymer from the melt process and a polymer from the interfacial process as Ishida notes that this is the simplest method to accomplish this goal (Column 4, Lines 23-28). It would therefore have been obvious prior to the effective filing date of the instant application to have used a combination of interfacial and melt process polycarbonate to obtain a material with the desired levels of melt strength and ductility.
Finally, in regard to the requirement that the interfacial polycarbonate that is end-capped and has at most 150 ppm hydroxyl end-groups, Lakeman is silent. However, Lakeman references US Patent 3,028,365 (Schnell) in its entirety, which teaches the use of monofunctional compounds to terminate the polymer chains for the purposes of molecular weight control (Column 2, Lines 61-69) and further teaches in example 12 a polycarbonate polymer that is terminated with 4-tert-butylphenol in a ratio of approximately 1:10 in relation to the bisphenol A diol (Column 6, Lines 37-50). As the obtained polymer has a molecular weight of 45,000 which is approximately 166 repeating units, it would logically follow that nearly all of the polymer would be end-capped when using 10% by molar ratio end-capping reagent, which would meet the requirements of the instant claims. Further, the ordinarily skilled artisan would be motivated to include end-capping groups in order to control the molecular weight of the polymer as noted by Schnell and it would therefore have been obvious prior to the effective filing date of the instant application to have used end-capped polymer in which nearly all reactive hydroxyl groups have been end-capped.
Regarding Claim 2,
The instant claim states that an article has its surface area coated by at most 50% of an additional layer, however no lower bound is listed. As such, the lower bound would be interpreted to be 0% coverage, which would indicate no coating. This renders this coating to be an optional embodiment.
Regarding Claim 3,
Lakeman teaches that the composition can be used to obtain an article through a variety of processes, including molding (Paragraph 69), which it would logically follow would including injection molding. As Lakeman teaches that typical polymer processing may be used (Paragraph 69), it would have been obvious prior to the effective filing date of the instant application to have formed an article by any standard process, including injection molding.
Regarding Claims 4 and 5,
Lakeman teaches that polycarbonates derived from bisphenol A are preferred (Paragraph 9) and teaches that melt flow rate is most preferably between 5 and 35 g/10 min measured at 300 °C, 1.2 kg (Paragraph 12), which is contained within the range of the instant claim. Finally, Lakeman teaches the use in examples 1 and 2 (Paragraph 75) of only a bisphenol A polycarbonate, meeting the requirement of bisphenol A polycarbonate content of the instant claim.
Regarding Claim 6,
Lakeman is silent on the melt flow rate of the composition. However, Lakeman does teach that the melt flow rate of the polycarbonate is most preferably between 5 and 35 g/10 min at 300 °C, 1.2 kg (Paragraph 12), that the melt flow rate of the compatibilizer is most preferably between 5 and 30 (Paragraph 25) and finally that the melt flow rate of the olefinic elastomer is most preferably between 5 and 60 (Paragraph 38). As these ranges overlap with the range for the composition of the instant claim, it would logically follow that by mixing components with melt flow rates within the allowable range for the composition that the melt flow rate of the mixture would also fall within this range. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 7,
Lakeman teaches that the olefin elastomer may be comprised of mixtures of two olefins such as ethylene, butene, hexene, and octene (Paragraph 36) which most preferably have densities between 0.867 and 0.880 g/cm3 (Paragraph 38) which is contained within the range of the instant claim and a melt flow rate of most preferably between 5 and 60 g/10 min according to ASTM D-1238 (Paragraph 38). The melt flow rate overlaps with the range of the instant claim. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 8,
Lakeman teaches that additives such as mold release agents, antioxidants, UV and thermal stabilizers, pigments, dyes, and fillers may be added (Paragraph 62).
Regarding Claim 9,
Lakeman teaches that the compatibilizer can be comprised of an olefin which is preferably ethylene (Paragraph 22) and acrylates such as glycidyl methacrylate (Paragraph 22).
Regarding Claims 10, 12, and 14-15,
Claims 10 and 12 are directed towards the type of article that is made from the composition, however the claim language does not specify any alterations to the composition to render it more suitable for use in these applications. Therefore, this language is considered to be intended use. As such, any composition meeting the requirements as laid out in claim 1 would logically be able to be used in these applications. As Lakeman teaches compositions that meet the requirements of claim 1, the composition would be capable of being used in the capacities as described in claims 10 and 12. Further, Lakeman teaches compositions with improved environmental stress cracking resistance (Paragraph 6), which would be valuable in automotive articles which will be exposed to harsh environments, including to chemical cleaners. As such, the ordinarily skilled artisan would be motivated to use such a material for automotive articles and it would therefore have been obvious prior to the effective filing date of the instant application to have used the compositions of Lakeman in automotive articles such as a cladding to utilize the favorable property of environmental stress cracking resistance.
Claims 14 and 15 are directed towards the type of vehicle in which the article is to be used. As the claim language does not describe any alterations that are required to be made to the composition in order to be more suitable for these applications, this language is also considered to be intended use and any composition that meets the requirements as described in claim 1 would be capable of being used in the listed fashion. Further, as Lakeman notes the improved environmental stress cracking resistance of the compositions (Paragraph 6), it would have been obvious prior to the effective filing date of the instant application to have used the composition in an automotive application as such components are often exposed to harsh environmental conditions where such a property would be valuable.
Regarding Claim 11,
Lakeman teaches that the composition has a heat deflection temperature of preferably 125 °C or more (Paragraph 14) and tensile elongation according to ASTM 638 of preferably 100% or more (Paragraph 14). While Lakeman does not list a range for the tensile modulus, Lakeman does demonstrate compositions (Table 1, examples 1 and 2) where the tensile modulus meets the required 2100 MPa minimum. Lastly, while Lakeman does not teach the Izod impact resistance, Lakeman does teach that the notched impact strength is between 10 and 180 kJ/m2 (Paragraph 14). Lakeman is additionally silent on the volatile organic content. However, as the compositions described by Lakeman contain the same components in overlapping amounts, it would logically follow that the compositions of Lakeman would have similar properties to those of the instant application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 6 and 7, the applicant argues that Lakeman does not teach the new requirement of the use of a combination of interfacial and melt polycarbonate where the interfacial polycarbonate is end-capped and has at most 150 ppm hydroxyl end groups. The examiner disagrees. While Lakeman alone does not teach the use of both types of polycarbonate, Lakeman does disclose the use of multiple polycarbonate polymers which can vary in parameters such as branching level and further teaches that the synthesis methods are known in the art, which is open ended and not restrictive to a particular method. Ishida teaches that there are differences in branching levels between melt and interfacial polymerization methods for polycarbonates and that the amount of branching affects the level of ductility and the melt strength and teaches that mixtures of the two types are the simplest method of achieving the desired values for these properties. When taken together, it is obvious to the ordinarily skilled artisan why such blends are useful and why the teachings of Ishida can be incorporated with those of Lakeman to improve the composition’s properties. Additionally, while Lakeman does not directly address end-capping, Lakeman does reference Schnell in its entirety, which speaks to the use of end-capping to control polymer molecular weight. As the molecular weight of the polymer is known to affect viscosity, it would be obvious to use end-capping to control the molecular weight and because Schnell teaches the use of end-capping reagents in an amount of approximately 1:10 by molar ratio with the diol component, it would logically follow that such high amounts would result in nearly complete end-capping, which would meet the applicant’s amended requirements.
As such, the addition of Ishida in combination with the teachings of Schnell incorporated by reference by Lakeman address the new limitations presented by the applicant.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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