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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 24, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on August 24, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 1, 3-4, 6-9 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.
Claim 1 recites limitations of:
“…and wherein the aromatic vinyl compound (D1) includes a bipolymer prepared from the vinyl compound and a vinyl cyanide compound, a content proportion of the aromatic vinyl compound unit is 50 to 95 mass% and a content proportion of the vinyl cyanide compound unit is 5 to 50 mass%, provided that the sum of the content proportions is 100 mass%.
Thus, claim 1 recites the aromatic vinyl compound (D1) being a biopolymer prepared from the vinyl compound and a vinyl cyanide; and further recites the amount of the aromatic vinyl compound of 50 to 95%mass. Therefore, it is not clear if “the vinyl compound” is the same as “the aromatic vinyl compound”, or any other vinyl compounds are assumed herein.
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.
5. Claims 1, 3-4, 6, 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tagami (JP 2010-116527, based on machine translation).
6. Tagami discloses a composition for foam molding comprising ([0005] of the translation):
A) 100 pbw of a combination of thermoplastic resins comprising ([0013] of the translation):
- 50-100%wt of styrene-based resins comprising [0055])-[0056] of the translation):
A11) a styrene-based copolymer obtained by using an aromatic vinyl compound ([0006], [0014]-[0018] of the translation), corresponding to a component (B) of instant claim 1;
A12) a rubber-reinforced styrene-based resin obtained by polymerizing an aromatic vinyl compound in the presence of a rubber polymer ([0006], [0027]-[0029], [0041] of the translation), corresponding to component (A) of instant claim 1; and
an aromatic polycarbonate ([0058]-[0059] of the translation), corresponding to a component (C) of instant claim 1;
B) 0.1-8 pbw of an ultra-high molecular weight copolymer having a weight average molecular weight (Mw) of 800,000 to 10,000,000, preferably 1,500,000-7,000,000 ([0078]) and comprising a copolymer of an aromatic vinyl compound (B1), specifically comprising a binary copolymer of 50-95%wt, or 55-85%wt of the aromatic vinyl compound and 5-50%wt, or 15-45%wt of a vinyl cyanide, with the total being 100%wt ([0083]-[0084] of the translation, as to instant claims 1, 8-9);
C) 0.1-5 pbw of a physical blowing agent;
D) 0.05-0.8 pbw of a chemical blowing agent ([0005] of the translation, as to instant claim 3); and
E) 0.1-5 pbw of talc ([0005] of the translation, as to instant claim 4).
7. Tagami further teaches the mixture of the rubber-reinforced styrene resin, the styrene-based resin and the polycarbonate used as the component A) ([0157] of the translation).
The specific example 1-1-5 shows the use of 35 pbw of the rubber-reinforced styrene resin; 15 pbw of acrylonitrile-styrene copolymer and 50 pbw of a polycarbonate as the component A) ([0157] of the translation). Thus, the polycarbonate is the major component in said blend. Though in said specific example the rubber-reinforced styrene resin is used in amount of 35 pbw and the acrylonitrile-styrene copolymer is used in amount of 15 pbw,
Tagami further teaches that the styrene-based copolymer and a rubber-reinforced styrene-based resin may be used in amounts of 10-90%wt to 90-10%wt, or 50-90%wt or 10-50%wt with the total of both being 100%wt ([0130] of the translation), which ranges are overlapping with those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
8. Thus, based on the teachings of Tagami, it would have been obvious to a one of ordinary skill in art that the rubber-reinforced styrene-resin can be used in amount lower than the styrene-based copolymer, and therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of the styrene-based copolymer A11), a rubber-reinforced styrene-based resin A12) and a polycarbonate, so that the rubber-reinforced styrene-resin A12) is used in amount of 1-20 pbw, the styrene-based copolymer A11) is used in amount of 30-49 pbw and the polycarbonate in amount of 50 pbw (i.e. the amount of the polycarbonate similar to the example 1-1-5), since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
9. As to instant claim 6, Tagami further teaches foam-molded articles made from said composition ([0140]).
10. Claims 1, 3-4, 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tagami (JP 2010-116527, based on machine translation) in view of Muraki et al (WO 2010/016556, based on machine translation).
11. The discussion with respect to Tagami (JP 2010-116527, based on machine translation) set forth in paragraphs 5-9 above, is incorporated here by reference.
12. Though Tagami discloses the foam molded articles formed from said composition, Tagami does not explicitly teach said foam molded articles being derived from core-back injection molding and further does not explicitly teach the relative weight ratios between the styrene-based resin and the rubber-reinforced styrene resin as claimed in instant invention.
13. However, Muraki et al discloses a composition for foam molding comprising:
A’) 10-90%wt, preferably 50-70%wt, of a polycarbonate resin, specifically an aromatic
polycarbonate (p. 5, lines 20-26, 38-43 of the translation);
B1) 5-90%wt of a rubber-reinforced resin consisting of a graft copolymer obtained by
polymerizing an aromatic vinyl compound b2) and vinyl cyanide comonomer (p. 8,
lines 9-20 of the translation) in the presence of a rubber polymer b1);
specifically ABS resin (p. 7, lines 32-37 of the translation);
B2) 0-85%wt of a vinyl resin consisting of a copolymer obtained by polymerizing an
aromatic vinyl compound b3);
C’) 0.05-5 pbw, based on 100 pbw of the components A’), B1) and B2), of a chemical
foaming agent (as to instant claim 3);
D’) 0.1-18 pbw, relative to 100 pbw of components A’), B1) and B2), of talc (p. 2, lines
8-22 of the translation),
wherein such composition is used for making foam molded articles by core-back injection foam molding (p. 3, lines 30-36 of the translation).
14. Thus, Muraki et al discloses substantially the same compositions as those of Tagami, but further teaches that rubber-reinforced styrene resin is used in amount of as low as 5%wt, and said compositions being used for making molded articles by specifically core-back injection foam molding.
15. Since both Tagami and Muraki et al are related to substantially the same resin compositions based on a major amount of an aromatic polycarbonate resin, minor amounts of rubber-modified styrenic copolymers such as ABS, and of an aromatic vinyl resin, used for making molded articles by injection molding and foaming, and thereby belong to the same field of endeavor, wherein Muraki et al teaches such compositions comprising the rubber-reinforced styrene resin component used in amount of as low as 5%wt, and the composition being used in core-back foam injection molding process for making said molded articles, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Muraki et al and Tagami, and to use, or obvious to try to use the composition of Tagami for making molded articles by a core-back foam injection molding process, and further use the rubber-reinforced styrene resin in a relatively lower amount, such as 5%wt, or 10%wt or 20%wt in the composition of Tagami, as taught by Muraki et al so to ensure a desired level of expansion of said composition during said molding process, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Claims 1, 3-4, 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Muraki et al (WO 2010/016556, based on machine translation) in view of Tagami (JP 2010-116527, based on machine translation).
17. Muraki et al discloses a composition for foam molding comprising:
A’) 10-90%wt, preferably 50-70%wt, of a polycarbonate resin, specifically an aromatic
polycarbonate (p. 5, lines 20-26, 38-43 of the translation);
B1) 5-90%wt of a rubber-reinforced resin consisting of a graft copolymer obtained by
polymerizing an aromatic vinyl compound b2) and vinyl cyanide comonomer (p. 8,
lines 9-20 of the translation) in the presence of a rubber polymer b1);
specifically ABS resin (p. 7, lines 32-37 of the translation);
B2) 0-85%wt of a vinyl resin consisting of a copolymer obtained by polymerizing an
aromatic vinyl compound b3);
C’) 0.05-5 pbw based on 100 pbw of the components A’), B1) and B2) of a chemical
foaming agent (as to instant claim 3);
D’) 0.1-18 pbw relative to 100 pbw of components A’), B1) and B2) of talc (p. 2, lines
8-22 of the translation, as to instant claim 4),
wherein such composition is used for making foam molded articles by core-back injection foam molding (p. 3, lines 30-36 of the translation, as to instant claims 6-7).
18. Muraki et al does not recite the composition further comprising a high molecular weight resin having Mw of 2,500,000-5,000,000 and comprising vinyl aromatic units.
19. However, Tagami discloses a composition for foam molding comprising ([0005] of the translation):
A) 100 pbw of a combination of thermoplastic resins comprising ([0013] of the translation):
- 50-100%wt of styrene-based resins comprising [0055])-[0056] of the translation):
A11) a styrene-based copolymer obtained by using an aromatic vinyl compound ([0006], [0014]-[0018] of the translation), corresponding to a component (B) of instant claim 1;
A12) a rubber-reinforced styrene-based resin obtained by polymerizing an aromatic vinyl compound in the presence of a rubber polymer ([0006], [0027]-[0029], [0041] of the translation), corresponding to component (A) of instant claim 1;
A3) an aromatic polycarbonate ([0058]-[0059] of the translation), corresponding to a component (C) of instant claim 1;
B) 0.1-8 pbw of an ultra-high molecular weight copolymer having a weight average molecular weight (Mw) of 800,000 to 10,000,000, preferably 1,500,000-7,000,000 ([0078]) and comprising a copolymer of an aromatic vinyl compound (B1), specifically comprising a binary copolymer of 50-95%wt, or 55-85%wt of the aromatic vinyl compound and 5-50%wt, or 15-45%wt of a vinyl cyanide, with the total being 100%wt ([0083]-[0084] of the translation, as to instant claims 1, 8-9);
C) 0.1-5 pbw of a physical blowing agent;
D) 0.05-0.8 pbw of a chemical blowing agent ([0005], as to instant claim 3); and
E) 0.1-5 pbw of talc (as to instant claim 4),
wherein Tagami teaches that the compositions comprising said ultra-high molecular weight copolymer component B) have excellent moldability, producing foam-molded articles having high expansion ratio with excellent balance between molded appearance and heat resistance ([0078] of the translation).
Tagami further teaches the mixture of the rubber-reinforced styrene resin, the styrene-based resin and the polycarbonate used as the component A) ([0157] of the translation).
As to instant claim 6, Tagami further teaches foam-molded articles made from said composition ([0140] of the translation).
20. Since both Tagami and Muraki et al are related to substantially the same resin compositions based on a major amount of an aromatic polycarbonate resin, minor amounts of rubber-modified styrenic copolymers such as ABS, and styrenic resin, used for making molded articles by injection molding and foaming, and thereby belong to the same field of endeavor, wherein Tagami further teaches that such compositions comprising a minor amount of an ultra-high molecular weight styrene-vinyl cyanide copolymer component B) are having excellent moldability, producing foam-molded articles having high expansion ratio with excellent balance between molded appearance and heat resistance ([0078]), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Muraki et al and Tagami, and to include, or obvious to try to include, at least partially, the styrene-vinyl cyanide copolymer comprising 55-85%wt of the styrene units and 15-45%wt of vinyl cyanide unites and Mw of 1,500,000-7,000,000, into the composition of Muraki et al, so to improve moldability of the composition of Muraki et al, producing foam-molded articles having high expansion ratio with excellent balance between molded appearance and heat resistance, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
21. All ranges in the composition of Muraki et al in view of Tagami are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Response to Arguments
22. Applicant's arguments filed on August 3, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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