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 .
This communication responds to the application and amended claim set filed June 8/2023. Claims 1-15 are currently pending.
Priority
This application is the national stage entry of PCT/IB2021/061654, filed December 13, 2021, which claims priority to EP20213872.3, filed December 14, 2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 11 is objected to because of the following informalities:
In claim 11, line 3, it is suggested the phrase “styrene-ethylene/1 butene-styrene (SEBS)”
be replaced with “styrene-ethylene/butylene-styrene (SEBS)”. Appropriate correction is required.
Claim Interpretation
Regarding the claim language “ an impact modifier component comprising a copolymer comprising two monomers” is interpreted as an impact modifier component comprising a copolymer that include at least two monomers and it is consistent with the claim language of claims 1 and 7 that includes the term "comprising" which is inclusive and open-ended and case law has held that the term "comprising" does not exclude additional, unrecited elements. (Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004), MPEP 2111.03).
Regarding claim 8, the language “ impact modifier component does not include a terpolymer” is interpreted as an impact modifier component that does not include a terpolymer but may include 2, 4 or more monomers contained in the copolymer. Since claim 7 must be broader, claim 8 further narrow the scope of claim 7. Then, by definition, claim 7 is interpreted as an impact modifier comprising additional co-monomers beyond than the “two monomers” recited in the instant claim, (i.e. a terpolymer).
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng et al. (US PG Pub 2020/0140679 A1 as listed in the IDS dated 6/8/2023) .
Regarding claims 1 and 2, Peng et al. teach a thermoplastic composition exhibiting low dielectric constant and dissipation factors for nano-molding technology, wherein the composition comprises 15-80% of a polymer resin, 10-50 wt. % of a low dielectric constant glass fiber component and 0.1- 1- wt.% of an impact modifier including an ethylene copolymer with reactive functional groups selected from anhydride, carboxyl, hydroxyl and epoxy [0066], thereby reading on the impact modifier, wherein the polymer resin comprises a polyester such as a polyalkylene terephthalate [0014] and a polyester-polycarbonate copolymer [0020], thereby reading on the polyester component and a polyester-polycarbonates copolymer component (claim 1). Peng et al. further teach in the example 21, a thermoplastic composition comprising 23 wt.% of polybutylene terephthalate low (PBTlow) and 22.4 wt.% of PBThigh, (which corresponds to 45.4 wt. % of polyester component); 15 wt.% of a polyester-polycarbonate copolymer [0026] SLX 90/10SABIC (which correspond to the polycarbonate copolymer component used in the examples 2.1-2.4 of the instant specification, Table 5); 3 wt.% of ethylene-methyl acrylate glycidyl methacrylate copolymer and 6 wt.% of styrene-ethylene-butylene-styrene copolymer and 15 wt.% of low Dk/Df glass fiber (Table 1, Table 2B), as required by the instant claims.
Regarding claims 3-4, Peng et al. teach the thermoplastic composition, wherein the polyester component include polyethylene terephthalate (PET), poly(1,4-butylene terephthalate) (PBT), and poly(propylene terephthalate) (PPT) and combinations thereof ([0017], [0019]Table 2B), as required by the instant claim.
Regarding claim 5, Peng et al. teach the thermoplastic composition comprises a polyester-polycarbonate copolymer comprising polycarbonate and polyester unit derived from the reaction of isophthalic acid, terephthalic acid and resorcinol (ITR) including as examples SABIC LEXAN® SLX resin [0024]-[0026], as required by the instant claim.
Regarding claim 7, Peng et. al teach the composition comprises a chemically reactive impact modifier having at least one reactive group such an ethylene copolymer with reactive functional groups including epoxy groups [0066], which implies the use of copolymers including ethylene and an epoxy group as impact modifiers. Peng et al. further teach a rubbery impact modifier such as ethylene acrylate terpolymers including ethylene acrylate glycidyl methacrylate [0066]. Furthermore, example 21 teaches the use of ethylene-methyl acrylate-glycidyl methacrylate copolymer (Table 1 and Table 2B), as required by the instant claim.
Regarding claim 10, Peng et al. teach the composition comprises glass fiber having a dielectric constant (Dk) of about 4.5 and a dissipation factor (Df) of about 0.0007 (Dk/Df GF at Table 1, [0058]), as required by the instant claim.
Regarding claim 11, Peng et al. teach the thermoplastic composition, wherein the impact modifier further comprises styrene ethylene butylene styrene copolymer (SEBS) (claims 11 and 12, IM2 at table 1 and example 21, table 2B), as required by the instant claim.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1 as listed in the IDS dated 6/8/2023) in view of Chakravarti et al. (US 2009/0030128 A1).
Peng et al. teach the thermoplastic composition of claim 1 as set forth above and it is incorporated herein by reference. Peng et al. teaches polycarbonate component include bisphenol A-based polycarbonate [0024].
Peng et al. are silent on the polycarbonate copolymer component comprises a polycarbonate-dimethyl bisphenol cyclohexane copolymer (DMBPC) as recited in the instant claim.
However Chakravarti et al. teach a thermoplastic resin composition comprising a polyester and a polycarbonate copolymer, wherein the polycarbonate copolymer is derived from at least 20 mole% to 80 mole% of an aromatic diol and from 20 mole percent to 80 mole percent of an aromatic dihydroxy compound (e.g. bisphenol)[0033]. Chakravarti et al. further teach 1,1-bis(4'-hydroxy-3'-methylphenyl)cyclohexane (hereinafter also referred to as DMBPC) is used as an aromatic dihydroxy compound comonomer for preparing polycarbonates, wherein the polycarbonate-DMBPC copolymer is characterized with high glass transition temperatures ([0003], [0036]-[0037]), which implies the improvement of heat resistance properties in the composition. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of both references to substitute the polyester-polycarbonate of Peng with polycarbonate-DMBPC copolymer of Chakravarti et al., with the predictable result of improved thermal properties (high Tg) as required by Peng et al. [0004], thereby arriving to the claimed invention. Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Chakravarti et al.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1 as listed in the IDS dated 6/8/2023) in view of Miller et al. (US 2015/0225567).
Peng et al. teach the thermoplastic composition of claim 7 as set forth above and it is incorporated herein by reference.
Regarding claim 8, Peng et. al teach the composition comprises a chemically reactive impact modifier having at least one reactive group such an ethylene copolymer with reactive functional groups such as epoxy, anhydride, carboxyl or hydroxyl to improve the impact properties [0066], which implies the use of copolymers including ethylene and an epoxy group as impact modifiers.
Peng et al. are silent on the impact modifier component as recited in the instant claim.
Miller et al. teach polyepoxide modifiers to improve the impact strength of a thermoplastic composition [0002]. Miller et al. further teach the polyepoxide impact modifier is as a copolymer formed from an epoxy-functional (meth)acrylic monomeric component and a α-olefin monomeric component and provide as example poly(ethylene-co-glycidyl methacrylate) (Lotader AX8840)[0022]. Given that Peng et al. teach a generic reactive impact modifier and because the copolymer of ethylene-glycidyl methacrylate provides reactive epoxy groups that chemically interact with the polymer matrix, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the generic impact modifier of Peng et al. for the Lotader AX8840 (with the expected result of improving the impact performance, consistent with Peng’s teaching.
Claims 9 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1 as listed in the IDS dated 6/8/2023).
Peng et al. teach the thermoplastic composition of claims 1 and 7 as set forth above and it is incorporated herein by reference.
Regarding claim 9, Peng et al. teach a rubbery impact modifier such as ethylene acrylate terpolymers including ethylene acrylate glycidyl methacrylate. Furthermore, example 21 teaches the use of 3 wt.% ethylene-methyl acrylate-glycidyl methacrylate copolymer (Table 1 and Table 2B).
Peng et al. and the claim differ in that Peng et al. do not teach the claimed ranges for the impact compatibilizer as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Peng et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claims 13 and 14, Peng et al. teach the thermoplastic composition further comprises one or more additional polymer resins exhibiting a low dielectric constant including general purpose polystyrene, polypropylene homopolymer or a propylene/α-olefin copolymer in an amount of 10 to 42 wt.([0071]-[0072],[0074], DkPoly1, Dk Poly of Table 2A and Table 2B). Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Peng et al.
Regarding claim 15, Peng et al. teach the thermoplastic composition exhibits a dissipation factor Df of less than 0.01 at a frequency of 1.9 GHZ. Peng et al. further teach examples 19-20 exhibit a dissipation factor of less than 0.007 and example 21 (which correspond to the composition of claim 1) exhibit a dissipation factor of 0.00774.
Peng et al. and the claim differ in that Peng et al. do not teach the claimed ranges for the impact compatibilizer as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Peng et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1 as listed in the IDS dated 6/8/2023) in view of Guo et al. (WO 2019/116267 A1, as listed in the IDS dated 6/8/2023).
Examiner will refer to the US equivalent of Guo et al. , US2020/0377718 A1
Regarding claim 12, Peng et al. teach the thermoplastic composition of claim 11 as set forth above and it is incorporated herein by reference.
Peng et al. is silent on the composition comprising an ionomer as recited in the instant claim.
However, Guo et al teach the composition includes about 20 wt. % to about 80 wt. % of a first resin consisting of polybutylene terephthalate (PBT); about 1 wt. % to about 20 wt. % of a second resin that is different from the first resin, wherein the second resin can be polycarbonate, a resorcinol-based aryl polyester and copolymers thereof [0030]; from about 0.5 wt. % to about 10 wt. % of a first processing aid; and from about 10 wt. % to about 60 wt. % of a reinforcing filler including glass fiber [0003]. Guo et al. further teach the first processing aid includes a low molecular weight ionomer such as ethylene-acrylic acid zinc ionomer. Guo et al. offers the motivation of incorporating the ethylene-acrylic acid zinc ionomer due to its ability to improve impact performance, ductility [0002] and the dielectric properties of the composition [0037]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the ethylene-acrylic acid zinc ionomer taught by Guo et al. on the thermoplastic composition of Peng et al., thereby arriving the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763