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 .
Claims 1-3, 5, 8-11, and 13-15 are pending as amended on August 14, 2025. Claims 4, 6, 7, and 12 are cancelled. Support for amended claim 1 is found in original claim 12 and [0053] of the specification. Claims 5, 10, and 15 were amended for clarity.
Applicant is reminded that amendments to the claims should include markings to show the changes. See MPEP 714 II.C.(B).
The new grounds of rejection set forth below were necessitated by Applicant’s amendment to claim 1 narrowing the aliphatic polyester-polycarbonate copolymer and polycarbonate content, requiring 5-50 wt% of a polycarbonate-siloxane copolymer, and incorporating claim 12. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. See MPEP 608.01(j). The first amended claim has no number. This claim should be renumbered as claim 1 and is referred to as claim 1 for the purposes of examination.
Response to Arguments
Applicant's arguments filed August 14, 2025 have been fully considered.
Applicant argues (page 6) that Grieshaber (US 2017/0158853 A1) does not exemplify formulations with greater than 25 wt% of an aliphatic polyester-polycarbonate copolymer or compositions including a polycarbonate-siloxane copolymer. While Grieshaber does not exemplify such compositions, this does not negate a finding of obviousness under 35 U.S.C. 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize greater than 25 wt% of an aliphatic polyester-polycarbonate copolymer and a polycarbonate-siloxane copolymer given that Grieshaber teaches these components (Grieshaber, [0010] and [0210]).
In response to applicant's argument that Grieshaber does not recognize the improved surface gloss properties of its compositions (page 6), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, surface gloss is a result of the composition and modified Grieshaber teaches the composition of claim 1.
Applicant argues (page 7) that the balance of high-flow aliphatic polyester-polycarbonate (HFD) and polycarbonate-siloxane has the unexpected effect of improving gloss and surface finish properties. As evidence, Applicant compares composition C1.4 to C.14. C.14 lacks EXL (polycarbonate-siloxane copolymer) and HFD and has a worse surface finish than C1.4. Applicant also compares C1.4 and C1.12 with C1.13. C1.13 has less HFD than C1.4 and has a worse surface finish. C1.12 has more HFD than C1.13 and has a better surface finish. These results demonstrate that increasing HFD improves the surface gloss. Applicant argues that the data show that the gloss values observed in the optimized formulations are lower than would be predicted from the contributions of the individual components, but does not explain what surface gloss values would be expected. In addition, evidence of unexpected results has only been presented at the low end of the polycarbonate-siloxane content range. Consequently, Applicant has not established unexpected surface gloss as a result of the combination of 30-65 wt% aliphatic polyester-polycarbonate copolymer and 5-50 wt% polycarbonate-siloxane copolymer within the thermoplastic composition. In addition, evidence of nonobviousness must be commensurate in scope with the claims for which the evidence is offered to support. See MPEP 716.02(d). The instant examples are not commensurate in scope with claim 1 at least because the examples utilize the specific aliphatic polyester-polycarbonate, polycarbonate, IDP, and polycarbonate-siloxane copolymer described in Table 1 whereas claim 1 encompasses any aliphatic polyester-polycarbonate, polycarbonate, IDP, and polycarbonate-siloxane copolymer. If Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species and full breath of ranges encompassed by the claims.
Applicant argues (paragraph starting at the end of page 7) that it is impermissible hindsight to cite the present application as evidence in an inherency argument. Applicant’s data is used to support the position not create the position of obvious. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the combination of references teaches the claimed composition using only knowledge that was within the level of ordinary skill at the time and without rely upon Applicant’s disclosure. MPEP 2112 IV states that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is the natural result of the combination of prior art elements. In the case of the claimed surface gloss property, the examiner solely relies upon Applicant’s data in considering whether or not it would be reasonable to expect an improvement in the surface gloss to be a natural result of inclusion of the aliphatic polyester-polycarbonate copolymer. In the case of the claimed surface resistivity, the examiner relies upon Applicant’s data in considering whether or not it would be reasonable to expect the surface resistivity of the prior art composition to fall within the claimed range.
Applicant further argues (page 8-11) that it is improper to conclude that modified Grieshaber would have the claimed surface gloss and surface resistivity properties without evidence that the claimed compositions would have expectedly possessed the claimed properties. MPEP 2112 IV states that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is the natural result of the combination of prior art elements. The rejection over Grieshaber in view of Silvi (EP 3 845 602 A1) and Moniruzzaman (US 2019/0169429 A1, cite No. 3 on 6/08/2023 IDS) laid out below teaches a composition with 30-40 wt% aliphatic polyester-polycarbonate, 5-50 wt% polycarbonate, 10-30 wt% IDP, and 9-50 wt% polysiloxane-polycarbonate copolymer. Grieshaber is silent as to the surface gloss and surface resistivity. However, the instant examples report surface gloss and surface resistivity for a similar composition prepared by a similar method. C1.1-C1.13 comprise 8.2-59.7 wt% aliphatic polyester-polycarbonate based on sebacic acid and BPA, 8.2-54.7 wt% polycarbonate, 14-24 wt% IDP, and 5.5-17.5 wt% polysiloxane-polycarbonate copolymer (instant specification, Table 2A and 2B). Both modified Grieshaber and the instant specification prepare the compositions by melt blending (instant specification, [0024]; Grieshaber, [0164]).
Because modified Grieshaber teaches a substantially similar composition as the instant examples and every example in the instant specification has a surface resistivity of about 1010 ohms per square, it would be reasonable to expect the composition of modified Grieshaber to also have a surface resistivity within the broader claimed range of about 107 to about 1012 ohms per square. Similarly, Grieshaber is silent as to surface gloss properties as tested in accordance with ASTM D523 as compared to a comparative composition that does not include the aliphatic polyester-polycarbonate copolymer of element (a). However, the instant examples demonstrate that surface gloss properties are better with the aliphatic polyester-polycarbonate copolymer (referred to as HFD in the instant examples) of element (a). C1.14 is the only example without HFD. Examples C1.1-C1.7 and C1.9-C1.13 all contain HFD and have superior surface gloss properties to C1.14 (Table 3A). Only C1.8 has slightly lower surface gloss properties than C.14, but this example contains the least HFD (8.2 wt%) of any example other than C.14 and contains less than the claimed range and the range taught by modified Grieshaber. Therefore, it would be reasonable to expect improved surface gloss properties to be a natural result of inclusion of the aliphatic polyester-polycarbonate copolymer in the composition of modified Grieshaber.
Applicant argues (end of page 11-page 12) that a prima facie argument of inherency has not been established for the claimed heat distortion temperature and notched Izod strength and that whatever Grieshaber discloses about the properties of its compositions is irrelevant because Grieshaber has been modified.
In the case of the claimed heat distortion temperature, MPEP 2143.01 states that obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006). In this case, Grieshaber further teaches a heat distortion temperature of 120°C to 230°C at 1.8 MPa and 4 mm with ISO 75 (ISO bars (80x10x4 mm)), Grieshaber, [0143-0144]). It would have been obvious to one of ordinary skill to have targeted a heat distortion temperature of 120°C to 230°C at 1.8 MPa for the composition of modified Grieshaber in order to utilize a heat distortion temperature within the range that Grieshaber teaches is appropriate for the composition.
In the case of the claimed notched Izod strength, MPEP 2112 IV states that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is the natural result of the combination of prior art elements. The rejection laid out below relies upon Applicant’s data to demonstrate that it would be reasonable to expect the composition of modified Grieshaber to also have a notched Izod strength within the claimed range of at least 25 kJ/m2. In particular, every example presented by Applicant, even those that do not satisfy claim 1, have a notched Izod strength well within the claimed (above 50 kJ/m2). Because modified Grieshaber teaches a substantially similar composition, it is reasonable to expect the claimed notched Izod strength to be a natural result of the composition of modified Grieshaber.
Claim Rejections - 35 USC § 103
Claims 1-3, 5, 8-11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Grieshaber (US 2017/0158853 A1) in view of Silvi (EP 3 845 602 A1) and Moniruzzaman (US 2019/0169429 A1, cite No. 3 on 6/08/2023 IDS).
Regarding claims 1-3, 5, 9, 11, and 14, Grieshaber teaches a thermoplastic composition comprising a high heat polycarbonate, a poly(aliphatic ester)-polycarbonate copolymer, and one or more additional polymers such as polysiloxane-polycarbonate copolymers (Grieshaber, [0010]).
As the poly(aliphatic ester)-polycarbonate copolymer, Grieshaber teaches a high flow ductile polycarbonate copolymer having a sebacic acid content of about 5 wt% and a molecular weight of 18,000 (Grieshaber, PE-PC-1 in Table 1 where a copolymer with 6 mole% sebacic acid and 94 mole% BPA corresponds to 5 wt% units derived from sebacic acid), reading on claim 2. Grieshaber teaches 1 wt% to 40 wt% of the poly(aliphatic ester)-polycarbonate copolymer (Grieshaber, [0210]), overlapping with the claimed range of from about 30 wt% to about 65 wt% of an aliphatic polyester-polycarbonate copolymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
As the high heat polycarbonate, Grieshaber teaches polycarbonates derived from 2-phenyl-3,3-bis(4-hydroxyphenyl)phthalimidine (PPPBP) and bisphenol A (BPA) (Grieshaber, [0193]), reading on the high heat copolymer comprising polycarbonate and PPPBP recited in claim 9. A copolymer of PPPBP and BPA also reads on the polycarbonate component in element (b) is a polycarbonate copolymer (claim 14). The high heat polycarbonate is present in an amount of 5 to 50 wt% (Grieshaber, [0203]) and is different than the aliphatic polyester-polycarbonate copolymer.
While Grieshaber teaches that the composition can further comprise polysiloxane-polycarbonate copolymers, Grieshaber is silent as to the amount of polysiloxane-polycarbonate copolymer in the composition.
However, Silvi teaches thermoplastic compositions comprising a polycarbonate and a poly(carbonate-siloxane) copolymer (Silvi, abstract). Silvi teaches that the compositions exhibit improved physical properties compared to compositions that do not include the poly(carbonate-siloxane) copolymer, including volume resistivity, melt viscosity, impact strength, puncture impact energy, and surface resistivity (Silvi, abstract). Silvi further teaches that formulations with less than 2 wt% of total siloxane may not exhibit these improvements, but that compositions with greater than 14 wt% siloxane may exhibit molding issues such as phase segregation and delamination (Silvi, [0031]). The poly(carbonate-siloxane)s of Silvi have a siloxane content of from about 18 wt% to about 22 wt% (Silvi, [0050]). Given a poly(carbonate-siloxane) with 18-22 wt% siloxane and an overall siloxane content of 2-14 wt% in the composition, Silvi suggests a poly(carbonate-siloxane) content in the range of about 9 wt% (2/22=0.09) to about 77 wt% (14/18=0.77).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have substituted the unspecified poly(carbonate-siloxane) copolymer of Grieshaber with the poly(carbonate-siloxane) copolymer of Silvi in the amount taught by Silvi in order to achieve improved volume resistivity, melt viscosity, impact strength, puncture impact energy, and surface resistivity while avoiding molding issues such as phase segregation and delamination. A content of about 9-77 wt% overlaps with the claimed range of about 5-50 wt% of a polycarbonate-siloxane copolymer (claim 1). In addition, a siloxane content within the copolymer of 18-22 wt% falls within the claimed range of about 5-45 wt% and a total siloxane content of 2-14 wt% overlaps with the claimed range of about 1-8 wt% (claim 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Grieshaber teaches additives, including antistatic agents (Grieshaber, [0113]), but does not teach from greater than 5 wt% to about 30 wt% of an inherently dissipative polymer (IDP).
However, Moniruzzaman teaches an electrostatic dissipative thermoplastic composition comprising a polycarbonate polymer (Moniruzzaman, [0026]). Moniruzzaman teaches compositions including an intrinsically conductive/dissipative polymer and teaches that such a polymer can be melt processed with electrically insulative polymers to improve the conductive properties of the later (Moniruzzaman, [0043]). Specific examples of intrinsically conductive/dissipative polymers include copolyesteramides, polyether-polyamide block copolymers, polyetheresteramide block copolymers, polyurethanes containing a polyalkylene glycol moiety, and polyetheresters (Moniruzzaman, [0043]). Polyetheresteramide reads on the IDP comprises polyetheresteramide (PEEA), as recited in claim 3. Moniruzzaman teaches a concentration of 10 wt% to about 30 wt% in the thermoplastic composition (Moniruzzaman, [0048]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the additive of Grieshaber for the IDP taught by of Moniruzzaman in the concentration taught by Moniruzzaman in order to improve the conductive properties of the composition. A concentration of 10 wt% to 30 wt% IDP falls within the claimed range of from greater than 5 wt% to about 30 wt% of an IDP.
Grieshaber further teaches a heat distortion temperature of 120°C to 230°C at 1.8 MPa (Grieshaber, [0144]) and 4 mm with ISO 75 (ISO bars (80x10x4 mm)), Grieshaber, [0143]). It would have been obvious to one of ordinary skill to have targeted a heat distortion temperature of 120°C to 230°C at 1.8 MPa for the composition of modified Grieshaber in order to utilize a heat distortion temperature within the range that Grieshaber teaches is appropriate for the composition.
Grieshaber is silent as to the notched Izod impact strength at 23 °C and the surface resistivity.
However, modified Grieshaber teaches a substantially similar composition prepared in a substantially similar manner as the instant specification. Instant examples C1.1-C1.13 comprise 8.2-59.7 wt% aliphatic polyester-polycarbonate based on sebacic acid and BPA, 8.2-54.7 wt% polycarbonate, 14-24 wt% IDP, and 5.5-17.5 wt% polysiloxane-polycarbonate copolymer while C1.14 comprises no aliphatic polyester-polycarbonate and no polysiloxane-polycarbonate copolymer (instant specification, Table 2A and 2B). In comparison, modified Grieshaber teaches a narrower range of each component except the polysiloxane-polycarbonate copolymer, as discussed above. Both modified Grieshaber and the instant specification prepare the compositions by melt blending (instant specification, [0064]; Grieshaber, [0164]).
Despite the instant compositions comprising a broader content range of most components than modified Grieshaber and the instantly claimed composition, every composition in Table 2A and Table 2B has a notched Izod impact strength within the claimed range of at least 25 kJ/m2 at 23 °C. Even example C1.14 that does not comprise the aliphatic polyester-polycarbonate and the polysiloxane-polycarbonate copolymer has a notched Izod impact strength within the claimed range. Because modified Grieshaber teaches a substantially similar composition prepared in a substantially similar method to the instant examples, all of which have a notched Izod strength above 50 kJ/m2 at 23°C, it would be reasonable to expect the composition of modified Grieshaber to also have a notched Izod strength within the claimed range of at least 25 kJ/m2 as tested in accordance with ISO 180 at a thickness of 4.0 mm. Similarly, because every example in the instant specification has a surface resistivity of about 1010 ohms per square, it would be reasonable to expect the composition of modified Grieshaber to also have a surface resistivity within the broader claimed range of about 107 to about 1012 ohms per square (claim 11).
Similarly, Grieshaber is silent as to surface gloss properties as tested in accordance with ASTM D523 as compared to a comparative composition that does not include the aliphatic polyester-polycarbonate copolymer of element (a). However, the instant examples demonstrate that surface gloss properties are better with the aliphatic polyester-polycarbonate copolymer (referred to as HFD in the instant examples) of element (a). C1.14 is the only example without HFD. Examples C1.1-C1.7 and C1.9-C1.13 all contain HFD and have superior surface gloss properties to C1.14 (Table 3A). Only C1.8 has slightly lower surface gloss properties than C.14, but this example contains the least HFD (8.2 wt%) of any example other than C.14 and contains less than the claimed range and the range taught by modified Grieshaber. Therefore, it would be reasonable to expect the composition of modified Grieshaber to inherently have improved surface gloss properties as tested in accordance with ASTM D523 as compared to a comparative composition that does not include the aliphatic polyester-polycarbonate copolymer of element (a).
Regarding claim 8, modified Grieshaber teaches the thermoplastic composition according to claim 1. Grieshaber teaches that the composition can comprise anti-drip agents that can be fluoropolymers encapsulated by a rigid copolymer, for example styrene-acrylonitrile copolymer (SAN) (Grieshaber, [0132]). Grieshaber does not teach composition further comprises acrylonitrile butadiene styrene (ABS).
However, prior to the effective filing date of the claimed invention, fluoropolymer drip agents encapsulated by ABS were known as alternatives to fluoropolymer drip agents encapsulated by SAN, as evidenced by Moniruzzaman. Moniruzzaman teaches anti-dripping agents (Moniruzzaman, [0060]) that include fluoropolymer encapsulated by ABS or SAN (Moniruzzaman, [0061]). Given the disclosure of Moniruzzaman, one of ordinary skill in the art would have recognized fluoropolymer drip agents encapsulated by ABS as an alternative to fluoropolymer drip agents encapsulated by SAN.
Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). MPEP § 2143, rationale (B). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the fluoropolymer drip agents encapsulated by SAN of Grieshaber for the fluoropolymer drip agents encapsulated by ABS of Moniruzzaman. One would have had a reasonable expectation of successfully producing a flame retardant polycarbonate composition because Moniruzzaman also teach flame resistant polycarbonate compositions (Moniruzzaman, title).
Regarding claim 10, modified Grieshaber teaches the thermoplastic composition according to claim 1, wherein the composition further comprises at least one additional additive, wherein the at least one additional additive comprises a filler, anti-drip agent, antioxidant, antistatic agent, colorant, de-molding agent, lubricant, mold release agent, plasticizer, flame retardant, and combinations thereof (Grieshaber, [0113]).
Regarding claim 13, modified Grieshaber teaches the thermoplastic composition according to claim 1, wherein the composition comprises 9-50 wt% of a polycarbonate-siloxane copolymer. This overlaps with the range of at least 10 wt% recited in claim 13. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
As discussed for claim 1, modified Grieshaber teaches a substantially similar composition prepared in a substantially similar manner as the instant specification. Because every example in the instant specification comprising greater than 10 wt% of a polycarbonate-siloxane copolymer (C1.1-C1.11) has a notched Izod impact strength at -30 °C of at least 47 kJ/m2 as tested in accordance with ISO 180 at a thickness of 4.0 mm, it would be reasonable to expect the composition of modified Grieshaber to have a notched Izod impact strength at -30 °C within the claimed range of at least 30 kJ/m2.
Regarding claim 15, modified Grieshaber teaches the thermoplastic composition according to claim 1. Grieshaber further teaches an article formed from the thermoplastic composition according to claim 1 (Grieshaber, [0166]), wherein the article comprises one or more of a component of a lighting fixture (Grieshaber, [0168]); an enclosure (Grieshaber, [0169]); helmet (Grieshaber, claim 20); handheld device (handheld electronic device housings, Grieshaber, [0168]); telephone (housings for cell phones, Grieshaber, [0168]); car part (automotive components, Grieshaber, [0167]); or plastic tool (tools, Grieshaber, [0169]).
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.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766