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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on August 18, 2026 has been entered.
Claim Rejections - 35 USC § 112
Claims 1 and 6-10 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.
In claim 1, line 4, the redundant phrase “a graft copolymer (C) or a graft copolymer (C)” is indefinite and confusing.
In claim 1, the passage per line 5, requiring the presence of vinyl-based copolymer (D), conflicts with the lower limit of the “0 to 20 parts by weight” recitation per line 24, which does not require the presence of vinyl-based copolymer (D). Clarification is requested as to whether the vinyl-based copolymer (D) is required or not.
In claim 1, line 11, it is unclear what is meant by “modified” monomers copolymerizable with TFE.
In claim 1, line 11, there is no express antecedent basis for the “TFE”.
In claim 1, lines 11-12, it is unclear what the confusing phrase “which is different from the polycarbonate resin (A), the graft copolymer (C) and the vinyl-based copolymer (D)” is referring to.
In claim 1, line 18, it is unclear how the broader “an aromatic vinyl-based monomer and a vinyl cyanide-based monomer” further limits the narrower antecedently-recited “styrene-acrylonitrile” per line 16.
In claims 9 and 10, there is no express antecedent basis for the “Teflon-based resin”.
In claims 9 and 10, there is no express antecedent basis for the combination of resin (E) and resin (F). Notably, said resins are defined as alternatives in claim 1.
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 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over
US 2003/004251 (Hashimoto) in view of JP 2019151801 A (Baba).
Hashimoto discloses a resin composition comprising:
100 pbw of a resin component consisting of:
50 to 100 wt.% of an aromatic polycarbonate resin (A) (meets Applicants’ polycarbonate resin (A)); and
0 to 50 wt.% of a styrene unit component-containing resin (B-2) such as ABS graft copolymer (meets Applicants’ graft copolymer (C));
1 to 100 pbw of wollastonite particles that can be surface treated with a silane-based coupling agent (generically embraces Applicants’ wollastonite (B) surface treated with a silane coupling agent having an alkyl group having C12 or more); and
0.05 to 3 pbw of polytetrafluorethylene (meets Applicants’ homo-PTFE (F)) (e.g., abstract, [0066-0068], [0096], [0135-0138], [0141], [0190-0213], examples, claims).
In Table 10, Hashimoto expressly sets forth compositions having high impact strengths comprising, inter alia:
85 pbw polycarbonate resin (PC-1) (meets Applicants’ polycarbonate resin (A));
15 pbw ABS graft copolymer (ABS-1/ABS-2) (meets Applicants’ graft copolymer (C));
15 pbw wollastonite (W-1) (differs from Applicants’ wollastonite (B) in not being surface treated with a silane coupling agent having an alkyl group having C12 or more); and
0.5 pbw PTFE (meets Applicants’ homo-PTFE (F)).
In essence, Hashimoto’s Table 10 compositions differ from claims 1 and 8 in that the wollastonite is not surface-treated with a silane coupling agent having an alkyl group having C12 or more and the contents of polycarbonate, wollastonite and PTFE vary from the corresponding contents presently claimed. With respect to the first difference, Hashimoto discloses the wollastonite can alternatively be surface treated with a silane coupling agent [0096] but does not expressly disclose a silane coupling agent having an alkyl group having C12 or more. In this regard, Baba, directed to a similar-such polycarbonate resin composition, indicates that wollastonite can be successfully surface-modified with silane coupling agents such as hexadecyltrimethoxysilane to improve the surface impact properties thereof. Thus, it would have been obvious to one having ordinary skill in the art to use as Hashimoto’s silane surface-treated wollastonite one that has been surface-treated with an alkoxysilane such as hexadecyltrimethoxysilane, as taught by Baba, for its expected additive impact effect and with the reasonable expectation of success. As to the second difference, it is within the purview of Hashimoto’s inventive disclosure [0097-0098]/[0138], and obvious to one having ordinary skill in the art, to formulate compositions per Hashimoto’s Table 10 wherein the contents of polycarbonate, wollastonite and PTFE fall within the corresponding contents presently claimed with the reasonable expectation of success. 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. Hashimoto’s modified compositions would be expected to exhibit high impact strength (inclusive of that presently claimed).
As to claims 6 and 7, it is within the purview of Hashimoto’s inventive disclosure [0225], and obvious to one having ordinary skill in the art, to fabricate molded articles for outer auto parts with the reasonable expectation of success.
As to claims 9 and 10, Hashimoto discloses [0068] the content of the diene-based rubbery polymer preferably comprises 5 to 39.9 wt.% of the ABS resin. Thus, it would have been within the purview of one having ordinary skill in the art to use an ABS resin such that its diene-based rubbery content falls within the presently claimed amounts in accordance with the ultimate properties desired.
Response to Arguments
Applicants’ arguments filed August 18, 2026 with respect to the 35 USC 103 rejection over JP 2005220216 A (Nakagawa) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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