DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-12 is/are pending.
Claim(s) 1-12 is/are rejected.
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 .
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.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
SUN ET AL (US 2015/0368458),
in view of KATO (US 2022/0298376),
as indicated in the previous Office Action mailed 07/30/2025.
SUN ET AL ‘458 discloses a glass fiber-reinforced thermoplastic composition, wherein the molding composition comprises:
(b) about 20-50 wt% polyester (e.g., polybutylene terephthalate (PBT); polyethylene terephthalate (PET); polycyclohexanedimethylene terephthalate (PCT); etc.)
(a) about 5-25 wt% polycarbonate;
(f) greater than 0 wt% to about 60 wt% of a glass fiber (e.g., having a flat cross-section; etc.);
(e) greater than 0 wt% to about 3 wt% of an ethylene / alkyl acrylate / glycidyl (meth)acrylate terpolymer (corresponding to the recited “epoxy-modified olefin copolymer”) (e.g., ethylene / methyl acrylate / glycidyl methacrylate terpolymer; etc.);
(c) greater than 0 wt% to about 5 wt% of a polyester ether elastomer (corresponding to the recited “poly(ether ester) copolymer”);
wherein, upon molding, the thermoplastic composition can exhibit a notched Izod impact strength of 140 J/m (~14 kgf‧cm/cm) or more. (entire document, e.g., paragraph 0001-0002, 0004, 0050-0051, 0055, 0067, 0125-0135, 0144, 0146, 0157, 0163, 0164, 0211-0216, 0222, etc.)
KATO ‘376 discloses that it is well known in the art to utilize flat glass fiber as filler in resin compositions (e.g., PBT and/or polycarbonate; etc.) in order to produce molded articles with improved mechanical strength and dimensional stability, wherein the flat glass fiber can have:
• a rectangular cross-section with rounded corners;
• a minor axis L1 (corresponding to the recited “short-side length”) of 1-10 microns;
• a major axis L2 (corresponding to the recited “long-side length”) of 3-50 microns;
• a L2/L1 ratio (corresponding to the recited “cross-section aspect ratio”) of 1.5-8.
(Figure 1B, etc.; paragraph 0006-0012, 0016, 0030-0032, 0087-0090, etc.)
Regarding claims 1-4, 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use effective amounts of known flat glass fiber as disclosed in KATO ‘376 as the glass fiber (f) in the thermoplastic composition of SUN ET AL ‘458 in order to produce molded articles with excellent mechanical properties (e.g., impact strength, stiffness, etc.) and dimensional stability.
Further regarding claim 1, the Examiner has reason to believe that the wt% ranges disclosed in SUN ET AL ‘458 at least partially overlap the parts by weight ranges recited in claim 1, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594. For example, a glass fiber-reinforced thermoplastic composition in accordance with SUN ET AL ‘458:
• about 43 wt% polyester
• about 9 wt% polycarbonate;
• about 43 wt% glass fiber;
• about 2 wt% epoxy-modified olefin copolymer;
• about 2 wt% polyester ether elastomer;
corresponds to a composition containing:
• 100 parts by weight polyester
• 20 parts by weight polycarbonate;
• 100 parts by weight glass fiber;
• 5 parts by weight epoxy-modified olefin copolymer;
• 5 parts by weight polyetherester copolymer;
with an epoxy-modified olefin copolymer : polyetherester copolymer ratio of about 1:1.
Regarding claim 5, one of ordinary skill in the art would have utilized known, commercially available polyether ester elastomeric copolymer derived from conventional dicarboxylic acids, diols, and polyoxyalkylene diols as the polyester ether elastomer component in the thermoplastic compositions of SUN ET AL ‘458 in order to adjust the performance properties (e.g., tensile properties, impact strength, etc.) of molded articles for specific applications.
Regarding claim 6, one of ordinary skill in the art would have: (i) incorporated effective amounts of known adhesion-promoting additives and/or polymers; (ii) utilized known adhesion-increasing surface treatments (e.g., primers; surface roughening; etc.) in order to obtain the adhesion strength (e.g., 36-50 MPa, etc.) between the thermoplastic compositions of SUN ET AL ‘458 and other components (e.g., metal; etc.) required by specific end-uses.
Regarding claims 7-8, one of ordinary skill in the art would have: (i) incorporated effective amounts of known mechanical property-modifying additives (e.g., particular fillers; other reinforcing fibers; etc.) and/or polymers (e.g., impact modifiers, etc.); and/or (ii) selected the amount and type of glass fiber; and/or (iii) incorporated additional layers; in the thermoplastic compositions of SUN ET AL ‘458 in order to obtain molded articles with: (1a) the dart drop height (e.g., 75-120 cm, etc.) and (1b) notched Izod impact strength adhesion strength (e.g., 10-30 kgf‧cm/cm, etc.); or (2) tensile strength (e.g., 117,000-140,000 kgf/cm2; etc.) required by specific applications.
Regarding claims 10-12, one of ordinary skill in the art would have utilized the thermoplastic compositions of SUN ET AL ‘458 in known and/or conventional polyester-based molding compositions applications (e.g., insert molding with metal inserts; etc.) to form known composite articles (e.g., electrical articles; electronic components; automotive components; etc.)
The Examiner cautions that if Applicant chooses to argue that the physical properties recited in claims 6-8, 12 cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as mentioned above) using routine experimentation, this may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and that Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement.
Claim(s) 5-6, 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
SUN ET AL (US 2015/0368458), in view of KATO (US 2022/0298376),
as applied to claims 1-12 above,
and further in view of KR 2019-0067967 (KOH-KR ‘967),
as indicated in the previous Office Action mailed 07/30/2025.
KOH-KR ‘967 discloses that it is well known in the art to apply glass fiber-reinforced polyester-based molding compositions to metal components in order to form useful resin / metal composite products. The reference further discloses that it is well known in the art to incorporate polyester-based elastomers and glycidyl-modified polymers in glass fiber-reinforced polyester-based molding compositions in order to improve adhesion of the molding compositions to metal components (e.g., aluminum or alloys thereof; etc.), wherein the polyester-based elastomers are generally polyether esters derived from:
• at least one aromatic dicarboxylic acid (e.g., terephthalic acid; isophthalic acid; 2,6-napthalene dicarboxylic acid; etc.) (corresponding to the recited “C4 to C20 dicarboxylic acid”);
• at least one aliphatic diol (e.g., ethylene glycol; propylene glycol; neopentyl glycol; 1,4-butanediol; 1,4-cyclohexanedimethanol; etc.) (corresponding to the recited “C1 to C10 diol”);
• at least one polyalkylene oxide (e.g., polyethylene glycol; polypropylene glycol; polytetramethylene glycol; etc.) (corresponding to the recited “poly(oxyalkylene) diol”);
wherein the bonding strength between molding composition and a metal component can be improved to more than 33 MPa (e.g., 33-60 MPa, etc.). (paragraph 0001-0004, 0010, 0017, 0024-0025, 0046-0048, 0054, 0057-0069, etc.)
Regarding claims 5-6, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use effective amounts of known polyester-based elastomers and glycidyl-modified olefin copolymers as adhesion-improving additives (as suggested in KOH-KR ‘967) in the polyester-based thermoplastic compositions of SUN ET AL ‘458 used in resin / metal composites to prevent delamination between resin and metal components, in addition to improving other performance properties (e.g., impact properties; etc.).
Regarding claims 10-12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the thermoplastic compositions of SUN ET AL ‘458 in known and/or conventional polyester-based molding applications (as suggested in KOH-KR ‘967) to form useful, durable resin / metal composite articles (e.g., electrical articles; electronic components; automotive components; etc.).
Regarding claims 6, 12, one of ordinary skill in the art would have: (i) incorporated effective amounts of known adhesion-promoting additives and/or polymers (as suggested in KOH-KR ‘967); (ii) utilized known adhesion-increasing surface treatments (e.g., primers; surface roughening; etc.) in order to obtain excellent adhesion strength (e.g., 36-60 MPa, etc.) between the thermoplastic compositions of SUN ET AL ‘458 and metal components as required by specific end-uses.
Regarding claim 12, one of ordinary skill in the art would have: (i) incorporated effective amounts of known mechanical property-modifying additives (e.g., particular fillers; other reinforcing fibers; etc.) and/or polymers (e.g., impact modifiers, etc.); and/or (ii) selected the amount and type of glass fiber; and/or (iii) incorporated additional layers; in the thermoplastic compositions of SUN ET AL ‘458 in order to obtain molded articles with: (1) the dart drop height (e.g., 75-120 cm, etc.); (2) notched Izod impact strength adhesion strength (e.g., 10-30 kgf‧cm/cm, etc.); and (3) tensile strength (e.g., 117,000-140,000 kgf/cm2; etc.) to meet the performance requirements of specific applications.
The Examiner cautions that if Applicant chooses to argue that the physical properties recited in claims 6, 12 cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as mentioned above) using routine experimentation, this may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and that Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that “the Office has not established prima facie obviousness and that the claims are patentable over the cited documents.” However, Applicant has not provided specific arguments directed to the alleged deficiencies of the prima facie obviousness established by the rejections under 35 U.S.C. 103 in the present Office Action.
(B) Applicant argues that “The claimed compositions, however, surprisingly and unexpectedly exhibit good properties in terms of metal adhesion and mechanical properties, as well as exhibit a good balance of these often contradictory properties.” Applicant further argues that “The present application includes examples exemplifying the claimed thermoplastic resin compositions and demonstrating the unexpected / unpredictable benefits thereof. See, e.g., the examples in Tables 1 and 2 on pages 14 and 15 of the present application including (A) polyester resin; (B) polycarbonate resin; (C) flat glass fibers; (D1) epoxy-modified olefin copolymer; and (E) poly(ether ester) copolymer, in amounts within the ranges recited in claim 1, and also including a weight ratio of (D1) epoxy-modified olefin copolymer and (E) poly(ether ester) copolymer within the range recited in claim 1.
However, while the specification provides some evidence of unexpected results and/or criticality with respect to the recited composition containing the recited components (A), (B), (C), (D1) and (E), wherein said composition further has a specified ratio of (D1) to (E), the showings provided by the specification are not commensurate in scope with the present claims -- for example, but not limited to:
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• the type of thermoplastic resin composition as a whole -- the inventive Examples of the specification only utilize a thermoplastic resin composition containing:
(A) 100 parts by weight (pbw) of a single type of polyester resin (i.e., polybutylene terephthalate (PBT) with an inherent viscosity of about 1.3 dl/g);
(B) 10-20 pbw of a single type of polycarbonate (i.e., a bisphenol-A polycarbonate (PC) with a Mw of 25,000 g/mol);
(C) 60-140 pbw of a single type of flat glass fiber (i.e., having a short-side length of about 7 μm, a cross-section aspect ratio of about 4, and a pre-processing length of about 3 mm);
(D1) 2-13 pbw of a single type of epoxy-modified olefin copolymer (i.e., glycidyl methacrylate-modified ethylene-methyl acrylate copolymer);
(E) 0.8-7.5 pbw of a single type of poly(ether ester) copolymer (i.e., poly(1,4-butylene terephthalate-co-tetramethylene oxalate) copolymer (PBT-co-PTMO));
• wherein the ratio of (D1):(E) is 1:0.11 to 1:1.04;
• wherein components (A), (B), (C), (D1), and (E) constitute the effective entirety of the thermoplastic resin composition.
However, independent claim 1 contain only minimal limitations on the compositions of components (A), (B), (C), (D1), and (E), while dependent claims 2-5 each contain a moderate limitation on a single component of the resin composition.
Furthermore, the present claims utilize the open term “comprising” with respect to the composition of the thermoplastic resin composition, which allows for the presence of any amount(s) and any type(s) of additional components (e.g., other polyesters; other non-polyester polymers, organic additives, inorganic additives, etc.) as long as: (i) components (A), (B), (C), (D1), (E) are present in the recited amounts; and (ii) components (D1) and (E) are present in the recited weight ratio.
Given the Applicant’s assertions of the “unexpected / unpredictable benefits” attributed to the claimed resin composition (e.g., with respect to metal adhesion and mechanical properties such as impact strength and tensile strength), Applicant has not provided sufficient evidence that the unexpected improvements in metal adhesion and mechanical properties relied upon by Applicant would be present with different types of components (A), (B), (C), (D1), and (E).
For example, claims 1, 6-12 encompass resin compositions which can deviate substantially from the resin compositions used in inventive Examples 1-9 -- e.g., but not limited to:
• a resin composition containing:
(A) 100 pbw of polyethylene terephthalate (PET) or polycyclohexylenedimethylene terephthalate (PCT) or a liquid crystal polyester or an aliphatic polyester;
(B) 5-25 pbw of an aliphatic polycarbonate;
(C) 50-150 pbw of a flat glass fiber with a short-side length of about 2 μm, a cross-section aspect ratio of about 10, and a pre-processing length of about 15 mm;
(D1) 1.5-15 pbw of an epoxy-modified olefin copolymer which is a glycidyl-modified polyethylene or a glycidyl acrylate-modified propylene-butyl methacrylate copolymer or an epoxy-modified polybutene or an epoxy-modified polyethylene-propylene copolymer;
(E) 0.5-10 pbw of a polyethylene terephthalate-polytetrahydrofuran elastomer;
with a (D1):(E) ratio of 1:2.0 or 1:3.5.
• a resin composition containing:
(A) 100 pbw of PBT;
(B) 5-25 pbw of bisphenol-A PC;
(C) 50-150 pbw of a flat glass fiber;
(D1) 1.5-15 pbw of an glycidyl methacrylate-modified ethylene-methyl acrylate copolymer;
(E) 0.5-10 pbw of PBT-co-PTMO;
• with a (D1):(E) ratio of 1:0.1 to 1:1.1;
• and further containing 10-50 parts of another polymer (e.g., other polyesters, other thermoplastic resins, other elastomers, etc.);
• and further containing 10 to 40 parts of other additives (e.g., polymeric impact modifiers, flame retardants, particulate fillers, pigments, release agents, etc.);
Similarly, claims 2-5 each encompass resin compositions with restrictions on only one of components (A), (C), (D1), and (E), but wherein the types of the other four components can deviate substantially from the components used in inventive Examples 1-9.
Since the Examiner has reason to believe that: (i) the types of components (A), (B), (C), (D1), and (E); and (ii) the (D1):(E) ratio; can materially -- and potentially unpredictably -- affect the metal adhesion and mechanical properties of a thermoplastic composition (in particular, the type of polyester which would be reasonably expected to materially affect the mechanical properties of a composition; the presence of adhesion-modifying additives such as release agents; etc.), Applicant has not provided sufficient objective evidence that the unexpected improvements in metal adhesion and mechanical properties relied upon by Applicant would be present with thermoplastic resin compositions which are encompassed by the present claims, but which deviate materially from the compositions used in inventive Examples 1-9, particularly in view of the showings in the specification with the criticality of the (D1):(E) ratio.
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• the type of metal used in resin / metal composite material -- the inventive Examples of the specification only utilize aluminum as the metal member in inventive Examples in the specification.
The Examiner has reason to believe that the type of metal (i.e., aluminum) used in the metal member in a metal / resin composite material can materially affect the adhesion between said metal and the thermoplastic resin composition (for example, the presence or absence of metal surface pre-treatments; the roughness or smoothness of the metal member; difference in surface energy; presence or absence of oxide surface layers; etc.).
Given the Applicant’s assertions of the “unexpected / unpredictable benefits” attributed to the claimed resin composition (e.g., with respect to metal adhesion and mechanical properties such as impact strength and tensile strength), Applicant has not provided sufficient evidence that the unexpected improvements in metal adhesion and mechanical properties relied upon by Applicant would be present with different types of metal members (e.g., titanium, iron, zinc, tin-coated steel, copper, etc.) used in a resin / metal composite material.
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While Applicant is not required to provide evidence of unexpected results and/or criticality for every possible embodiment encompassed by the present claims, any showings of criticality and/or unexpected results provided by the specification or Applicant should be reasonably representative of the full scope of the claimed invention and/or provide sufficient evidence that can be reasonably extended by one of ordinary skill in the art over the scope of the present claims.
MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
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Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
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I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
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The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
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II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
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To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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May 30, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights