DETAILED ACTION
Notice of Pre-AIA or AIA Status
This communication responds to the Amendment filed April 27, 2026. Claims 2, 8 and 15 were cancelled. Claims 1, 3-7, 9-14 and 16 are currently pending.
The objection of claim 11 is WITHDRAWN due to Applicant’s responsive amendments.
In view of the amendment, a new ground of rejections of the claims under 103 were made.
This office action is made final.
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 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 1, 3-5, 10-11, 13-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1 as listed on the IDS dated 6/8/2023).
Regarding claim 1, Peng et al. teach a thermoplastic composition exhibiting low dielectric constant and dissipation factors for nano-molding technology (abstract), wherein the composition comprises:
-15-80% of a polymer resin, wherein the polymer resin comprises a blends of polyester such as a polyalkylene terephthalate [0014] and a polyester-polycarbonate copolymer including an ITR copolymer (POLY 3) ([0013], [0014], [0020] claim 1, Table 1A, Fig.1, Page 2)
- 0.1- 10 wt.% of an impact modifier (claim 1), wherein the impact modifier can be ethylene-ethyl acrylate, (IM3), ethylene-methyl acrylate glycidyl methacrylate terpolymer (IM), styrene ethylene butylene styrene (IM2) ([0066]-[0068], table 1A, Fig. 1, Page 2), thereby reading on the impact modifier comprising a copolymer consisting of two monomers.
-10-50 wt. % of a low dielectric constant glass fiber component (claim 1);
wherein the thermoplastic composition exhibits a dissipation factor Df of less than 0.01 at a frequency of 1.9 GHz when tested using a split post dielectric resonator and network analyzer on a sample size of 100 mm by 70 mm and 1.6 mm thickness (claim 1), which overlaps with the claimed range (less than 0.007), thereby a prima facie case of obviousness being established. MPEP 2144.05. 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.
Peng et al. further exemplifies the thermoplastic composition comprising a blend of 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 corresponds to the claimed ranges of polyester component and polycarbonate copolymer component), 3 wt.% of ethylene-methyl acrylate glycidyl methacrylate terpolymer (IM), 6 wt.% of styrene ethylene butylene styrene (Table 2B, Example 21) .
The difference between Peng et al. and the present claims is that the impact modifier of example 21 comprises ethylene-methyl acrylate glycidyl methacrylate terpolymer and styrene-ethylene butylene-styrene rather than an impact modifier copolymer consisting of two monomers.
However, Peng et al. teach that the impact modifier may also be ethylene-ethyl acrylate ([0066]-[0068], table 1A, Fig. 1, Page 2). 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 one of the impact modifiers of example 21 for ethylene-ethyl acrylate because Peng et al. specifically teach that this impact modifier can be substituted and it would be expected to have a reasonable expectation of success given that Peng et al. teach them as potential impact modifiers for use in the different examples.
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 1), 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 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), as required by the instant claim.
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 16, Peng et al. teach a thermoplastic resin composition for Nano molding technology (NMT) as discussed in the rejection of claim 1, wherein Peng et al. teach NMT refers to a process by which a plastic resin is injected onto a metal surface and a high bonding strength between the plastic and metal is critical for such applications, wherein a number of factors affect bonding strength, such as selection of metal, molding process to bond plastic to metal, treatment process on metal, and plastic resins [0002]-[0003]. Given that Peng et al. teach a composition substantially identical to the claimed invention for NMT same as the instant application, wherein the impact modifier comprises a copolymer consisting of two monomers (the ethylene-ethyl acrylate copolymer) and that the resultant composition can have a dissipation factor overlapping the claimed range which makes the range obvious (see rejection of claim 1); therefore, the thermoplastic composition of Peng et al. is expected to possess a higher claimed property of metal bonding strength compared with a comparative composition that does not comprise the claimed impact modifier component as recited in the instant claim. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1) 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.
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1) in view of Chakravarti et al. (US 2008/0119617 A1).
Peng et al. teach the thermoplastic composition of claim 1 as set forth above and it is incorporated herein by reference.
Regarding claims 7 and 9, Peng et. al teach the composition comprises 0.1-5 wt.% of an impact modifier [0069], which overlaps with the claimed range (1-5 wt.%), thereby a prima facie case of obviousness being established. MPEP 2144.05; wherein the impact modifier is selected from 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, a rubbery impact modifier, a core-shell impact modifier, an ethylene-ethyl acrylate copolymer, a styrene based copolymer (claims 10- 12, ([0066]-[0069]).
Peng et al. are silent on the impact modifier component as recited in the instant claim.
Chakravarti et al. teach a composition comprising a blend of from 1-99 wt.% of a polycarbonate component and from 1-99 wt.% of a polyester (abstract, claim 1) having improved toughness and impact strength [0003], wherein the composition comprises 2 to 30 wt.% of an impact modifier [0051] selected from SBS, SEBS, ethylene-ethyl acrylate copolymer, ethylene-glycidyl methacrylate copolymer or a combination thereof (claim 25). Chakravarti et al. teach ethylene-glycidyl methacrylate copolymer as a functional equivalent to the ethylene-ethyl acrylate copolymer as disclosed by Peng et al. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore, it would have been held that one of ordinary skill in the art could substitute the ethylene-ethyl acrylate copolymer of Peng et al. for the ethylene-glycidyl methacrylate copolymer of Chakravarti et al., thereby arriving at the claimed invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (US PG Pub 2020/0140679 A1) 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.
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive. Regarding the rejection of the claims over Peng, Applicant states “Peng, either alone or in combination with the other cited references, do not disclose or suggest an impact modifier comprising a copolymer consisting of two monomers. In response, attention is drawn to the rejection as set forth above, wherein Peng et al. teach a thermoplastic composition wherein the impact modifier can comprise a copolymer consisting of two monomers (the ethylene-ethyl acrylate copolymer) and that the resultant composition can have a dissipation factor overlapping the claimed range which makes the range obvious. Even the examples of Peng do not disclose all the elements together in one embodiment, it would have been obvious to select said components to arrive at the claimed composition as Peng et al. teaches that all elements may be used together and can provide a product with a dissipation factor that overlaps the claimed range. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). This is why the applicant's arguments are not found to be persuasive.
Regarding claim 6, Applicant states that compositions comprising the claimed DMBPC achieves surprisingly improved dielectric properties which are not disclosed or suggested in Chakravarti. In response, examiner acknowledges that Peng et al. in view of Chakravarti are silent on the improvement in dissipation factor by including DMBPC. However, the fact that the fat 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). Further, Applicant arguments related to unexpected results in dissipation factor and metal bonding strength are not persuasive. Applicant relies on data from Comparative example C 3.1 and examples E 3.1 and E3.2 (Tables 7 and 8) , that are not commensurate in scope with instant claim 1. Applicant has not provided sufficient data showing that either the upper or lower limit of the content of polyester (PBT); upper and lower limit of the content of the polycarbonate copolymer (polyester-polycarbonate copolymer, polycarbonate-dimethyl bisphenol cyclohexane copolymer, DMBPC); upper and lower limit of the content of the impact modifier, wherein the impact modifier comprises a copolymer consisting of two monomers and the upper and lower limit of the content of the glass fibers are critical. It is noted that claim 1 recites a generic impact modifier comprising a copolymer consisting of two polymers, the examples and comparative examples would not support unexpected results for all possible compositions encompassed by instant claim 1.
Furthermore, the bonding strength for C3.1 is 30.3 MPa, (which is greater than 28 MPa and is considered as a high value for the applicant) appears to be comparable with the bonding strength of E3.1 and E3.2 of 32.1 MPa and 28.8 MPa respectively. Additionally, the Dk and Df of examples E 3.1 and E3.2 are slightly lower than 2.943/0.0060 (E3.1) and 2.953/0.0062 (E3.2) vs. 3.01/0.0065(Comparative example C3.1). Thus, the data provided appears to show minor variations in dielectric properties. Without more data points the examiner is unpersuaded that the claimed range of polyester, the claimed range of the polycarbonate copolymer including DMBPC, the claimed range of impact modifier and the claimed range of glass fiber component are indeed critical.
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 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
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