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 amendment filed by Applicant on April 22, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include limitations of the high-molecular-weight resin (D) having a weight average molecular weight greater than or equal to 2,500,000 and less than or equal to 5,000,000, and the high-molecular- weight resin (D) is a polymer resin or a copolymer resin including structural units derived from an aromatic vinyl compound (D1). These limitations in their combination were not previously presented. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1, 4, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nodera et al (US 2002/0099116).
4. Nodera et al discloses a composition comprising ([0016]):
- 100 pbw of:
A) 30-100%wt of a polycarbonate resin, specifically an aromatic polycarbonate
([0029]) (corresponding to component (C) of instant claim 1) and
B) 0-70%wt of a styrenic resin, specifically a rubber-modified styrenic resin
produced through polymerization of rubber-like polymers with styrene; specifically
ABS produced through polymerization of polybutadiene with acrylonitrile and
styrene ([0036]) (corresponding to component (A) of instant claim 1);
-1-50 pbw of C) a flame retardant;
- 1-20 pbw of D) a methyl methacrylate polymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 ([0052]), comprising a copolymer of at least 30%wt of methyl methacrylate with other copolymerizable vinyl monomers including aromatic vinyl compounds such as styrene ([0050]) (corresponding to component (D) of instant claim 1); and
further optionally
- 1-30 pbw of F) a rubber-like elastomer, specifically styrene-butadiene rubber (corresponding to component (B) of instant claim 1) and
- 2-30 pbw of G) an inorganic filler (Abstract, [0066], as to instant claim 4).
5. Based on the teachings of Nodera et al that the component (D) comprises a copolymer of at least 30%wt of methyl methacrylate with other copolymerizable vinyl monomers including aromatic vinyl compounds such as styrene, it would have been obvious to a one of ordinary skill in the art to choose and use the copolymer of methyl methacrylate with an aromatic vinyl units including styrene, having Mw of as high as 5,000,000, as the component D) in the composition of Nodera et al, 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).
6. Specifically exemplified compositions include 80 pbw of an aromatic polycarbonate, 20 pbw of HIPS, providing the total amount of both polycarbonate and HIPS of 100pbw, and based on the 100 pbw of the sum of the polycarbonate and HIPS, of 3-6 pbw of a high molecular weight methyl methacrylate copolymer having Mw of 3,000,000 (Table 1 of Nodera et al).
7. The composition is used for producing molded articles by molding and foaming ([0069]).
8. It is further noted that the limitation “for foam molding” of claim 1 is an intended use limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
9. All ranges in the composition of Nodera et al 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).
10. Claims 1, 3-4, 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nodera et al (US 2002/0099116) in view of Muraki et al (WO 2010/016556, based on machine translation).
11. The discussion with respect to Nodera et al (US 2002/0099116) set forth in paragraphs 3-9 above, is incorporated here by reference.
12. Though Nodera et al discloses the composition being used for making molded articles by injection molding and foaming ([0069]), Nodera et al does not recite said composition comprising a chemical foaming agent and the molding being a core-back foam injection molding.
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 composition as that of Nodera et al, but further teaches said compositions comprising chemical foaming agents and being used for making molded articles by core-back injection foam molding.
15. Since both Nodera et al 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, 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 further comprising chemical foaming agents, and 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 Nodera et al, and to use, or obvious to try to use the composition of Nodera et al for making molded articles by a core-back foam injection molding process, and further include a chemical foaming agent into the composition of Nodera et al, 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, 6-7 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 Nodera et al (US 2002/0099116).
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, Nodera et al discloses a composition comprising ([0016]):
- 100 pbw of:
A) 30-100%wt of a polycarbonate resin, specifically an aromatic polycarbonate
([0029]) (corresponding to component (C) of instant claim 1) and
B) 0-70%wt of a styrenic resin, specifically a rubber-modified styrenic resin
produced through polymerization of rubber-like polymers with styrene; specifically
ABS produced through polymerization of polybutadiene with acrylonitrile and
styrene ([0036]) (corresponding to component (A) of instant claim 1);
-1-50 pbw of C) a flame retardant;
- 1-20 pbw of D) a methyl methacrylate polymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 ([0052]), comprising a copolymer of at least 30%wt of methyl methacrylate with other copolymerizable vinyl monomers including aromatic vinyl compounds such as styrene ([0050]) (corresponding to component (D) of instant claim 1); and
- 1-30 pbw of F) a rubber-like elastomer, specifically styrene-butadiene rubber (corresponding to component (B) of instant claim 1) and
- 2-30 pbw of G) an inorganic filler (Abstract, [0066], as to instant claim 4),
wherein Nodera et al explicitly teaches that when the methyl methacrylate copolymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 (component D)) is dispersed in the polycarbonate composition through kneading, it improves the melt elasticity of the composition ([0052]).
Based on the teachings of Nodera et al that the component (D) comprises a copolymer of at least 30%wt of methyl methacrylate with other copolymerizable vinyl monomers including aromatic vinyl compounds such as styrene, it would have been obvious to a one of ordinary skill in the art to choose and use the copolymer of methyl methacrylate with an aromatic vinyl units including styrene, having Mw of as high as 5,000,000, as the component D) in the composition of Nodera et al, 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).
20. Specifically exemplified compositions include 80 pbw of an aromatic polycarbonate, 20pbw of HIPS, providing the total amount of both polycarbonate and HIPS of 100pbw, and based on the 100 pbw of the sum of the polycarbonate and HIPS, of 3-6 pbw of a high molecular weight methyl methacrylate copolymer (Table 1 of Nodera et al).
21. The composition is used for producing molded articles by molding and foaming ([0069]).
22. Since both Nodera et al 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, used for making molded articles by injection molding and foaming, and thereby belong to the same field of endeavor, wherein Nodera et al further teaches such compositions comprising a minor amount of methyl methacrylate copolymer having a weight average molecular weight of at least 1,000,000, or preferably 1,500,000-5,000,000 to improve the melt elasticity of the composition, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Muraki et al and Nodera et al, and to include, or obvious to try to include, at least partially, the methyl methacrylate copolymer with styrene units having a weight average molecular weight of preferably 1,500,000-5,000,000, into the composition of Muraki et al, so to improve the melt elasticity of the composition of Muraki et al used for molding as well, 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
Response to Arguments
23. Applicant's arguments filed on April 22, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
24. With respect to Applicant’s arguments regarding the criticality of the presence of vinyl aromatic units in the high molecular weight polymer component (D), it is noted that:
1) Instant claims are silent with respect to any properties of the composition; it is not clear what properties and at what level are the goal of instant invention.
2) The Table, presented on page 6 of Applicant’s arguments and cited as being taken from paragraph [0169] of instant specification, is not the same as the Table presented in said paragraph [0169], which Table in paragraph [0169] is silent with respect to “uneven gloss”. Given the evaluation of “uneven gloss” was determined by Applicant and presented as evidence of criticality, said evidence presented in Attorney arguments is not evidence unless it is an admission. See MPEP § 2145. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
3) The presence/absence of “gloss” is presented in Table on page 6 of Arguments referring to only two specific components D), i.e. D-1) comprising styrene units and D-2) not comprising styrene units. The scope of instant claims is significantly broader than the specific component D-1) used in examples of instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
4) Even assuming that the commercial high molecular weight acrylic resin METABLEN P-531A (component D-2 in said Table), which is a copolymer of methyl methacrylate with butyl acrylate, produces ”uneven gloss” of the molded articles, there is no evidence that any other methyl methacrylate copolymers including other commercial products METABLEN and other methyl methacrylate copolymers with styrene units, as disclosed by Nodera et al, will provide said “uneven gloss”.
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 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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