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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005220216 A (Nakagawa) abstract and machine translation.
Nakagawa discloses a thermoplastic resin composition comprising:
100 pbw of a polycarbonate resin (meets Applicants’ polycarbonate resin (A));
0.01 to 1 pbw of an alkali(alkaline earth) metal sulfonate;
1 to 50 pbw of a silicate filler such as wollastonite surface-treated with a C4-30 alkyl alkoxysilane such as dodecylmethyldimethoxysilane (C12), tetradecyl trimethoxysilane (C14), octadecyl trimethoxysilane (C18) (meets Applicants’ wollastonite (B) surface treated with a silane coupling agent having an alkyl group having C12 or more);
a fluorine-containing anti-dripping agent such as polytetrafluoroethylene (PTFE) (meets Applicants’ Teflon-based resin (F) per claim 5); and
customary amounts of other resins inclusive of graft copolymers such as (ABS) acrylonitrile/butadiene/styrene graft copolymer (meets Applicants’ graft copolymer (C)) (e.g., abstract, pages 11-13, 15-17, 26, examples).
In Table 1, Nakagawa sets forth Example 7 comprising, inter alia:
100 pbw of a polycarbonate-resin blend (meets Applicants’ polycarbonate resin (A));
0.04 pbw of an alkali(alkaline earth) metals sulfonate;
18.2 pbw of wollastonite surface-treated with isobutyltrimethoxysilane (differs from Applicants’ wollastonite (B) in that isobutyltrimethoxysilane does not contain an alkyl group having C12 or more); and
0.5 pbw of PTFE (meets Applicants’ Teflon-based resin (F) per claim 5).
In essence, Nakagawa’s Example 7 differs from claims 1 and 5 in neither including a wollastonite surface-treated with an alkoxysilane having a C12+ alkyl group nor a graft copolymer obtained by graft polymerizing aromatic vinyl-based monomer/vinyl cyanide-based monomer onto a diene-based rubbery polymer. With respect to the first difference, Nakagawa discloses the wollastonite can alternatively be surface treated with alkyl alkoxysilanes as presently claimed, e.g., alkyl alkoxysilanes having a C12, C14, C18 alkyl group. (page 15). Thus, it would have been obvious to one having ordinary skill in the art to use a wollastonite surface-treated with an alkoxysilane having a C12+ alkyl group for its expected additive effect and with the reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness, Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297. As to the second difference, while not expressly exemplified in the working examples, Nakagawa clearly discloses (page 26) further including customary amounts (implicitly includes presently claimed amount) of core-shell elastomers such as ABS graft copolymers for their expected impact property improvements. Accordingly, it would have been obvious to one having ordinary skill in the art to formulate a composition per Nakagawa comprising, inter alia:
- a polycarbonate-resin (meets Applicants’ polycarbonate resin (A));
- a wollastonite surface-treated with a silane coupling agent having an alkyl group having C12 or more (meets Applicants’ silane coupling agent-treated wollastonite (B);
- an ABS graft copolymer (meets Applicants’ graft copolymer (C)); and
- PTFE (meets Applicants’ Teflon-based resin (F) per claim 5),
wherein the amounts of polycarbonate resin, surface-treated wollastonite and ABS graft copolymer fall within the corresponding amounts presently claimed with the reasonable expectation of success. Given that Nakagawa discloses the compositions are governed by excellent impact strength, it would have been within the purview of one having ordinary skill in the art to manipulate the amount of ABS graft copolymer in accordance with the desired impact strength (inclusive of that presently claimed). Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to claims 6 and 7, Nakagawa discloses the production of molded articles, e.g., for use in producing vehicle parts (page 2).
Response to Arguments
Applicant’s arguments and amendments filed April 29, 2026 have been fully considered and are persuasive in overcoming the 35 USC 102 rejection over US 2021/0032409 (Baba). Baba does not disclose or suggest the further inclusion of a graft copolymer as presently claimed.
Applicant's arguments filed April 29, 2026 have been fully considered but they are not persuasive in overcoming the 35 USC 103 rejection over JP 2005220216 A (Nakagawa).
Applicants assert that Nakagawa is silent with respect to Charpy impact strength. Nakagawa, however, discloses the compositions are governed by excellent impact strength (implicitly including Charpy impact strength). Thus, it would have been obvious to one having ordinary skill in the art to manipulate the amount of ABS graft copolymer in Nakagawa’s composition in accordance with the desired impact strength (inclusive of that presently claimed).
Conclusion
THIS ACTION IS MADE FINAL. 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 Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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