DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 08/21/2025 is acknowledged. The previous rejection is maintained in this office action. Claims 1-12 are examined on the merits in this office action.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2015/0368458 A1 cited in IDS) in view of Lee et al. (US 2008/0269401 A1 cited in IDS).
Regarding claims 1, 2, 4 and 9, Sun et al. disclose a thermoplastic composition comprising about 5 to about 25 wt% of a polycarbonate component, about 20 to about 50 wt% of a polybutylene terephthalate component (polyester resin), about 0 to about 3 wt% of an ethylene/alkyl (methyl) acrylate/glycidyl methacrylate terpolymer component (epoxy-modified olefin copolymer) and about 0 to about 60 wt% of a glass fiber component (see Abstract, paragraph 0051, and Table 1). According to the present claim, the amount of polyester resin is 33.3 to 62.9 wt% (33.3 = 100/300 x 100 and 62.9 = 100/159 x 100), the amount of polycarbonate is 3.1 to 10 wt% (3.1 = 5/159 x 100 and 10 = 30/300 x 100), the amount of glass fiber is 31.4 to 50 wt% (31.4 = 50/159 x 100 and 50 = 150/300 x 100), the amount of the epoxy-modified polyolefin is 1.3 to 3.3 wt% (1.3 = 2/159 x 100 and 3.3 = 10/300 x 100) and the amount of maleic anhydride-modified ethylene-propylene terpolymer is 1.3 to 3.3 wt% (1.3 = 2/159 x 100 and 3.3 = 10/300 x 100). Sun et al. disclose a molded article formed of the thermoplastic composition (see paragraph 0211).
Sun et al. do not disclose a maleic anhydride-modified ethylene-propylene-diene monomer terpolymer.
Lee et al. disclose a composition comprising a polycarbonate resin, a polyester resin and an impact modifier, wherein the amount of the impact modifier is about 0.5 to about 20 parts by weight based on about 100 parts by weight of the polycarbonate resin and the polyester resin (see Abstract). That is, amount of impact modifier is 0.5 to 16.7 wt% (0.5 = 0.5/100.5 x 100 and 16.7 = 20/120 x 100). The impact modifier can be a core-shell graft copolymer such as maleic anhydride-modified ethylene-propylene-diene terpolymer (see paragraphs 0039 and 0040). The impact modifier provides impact modifying effects and mechanical strength (see paragraph 0047).
In light of motivation for using 0.5 to 16.7 wt% of impact modifier such as such as maleic anhydride-modified ethylene-propylene-diene terpolymer disclosed by Lee et al. as described above, it therefore would have been obvious to one of ordinary skill in the art to use 0.5 to 16.7 wt% of impact modifier such as such as maleic anhydride-modified ethylene-propylene-diene terpolymer of Lee et al. in the thermoplastic composition of Sun et al. in order to provide impact modifying effects and mechanical strength, and thereby arrive the claimed invention.
Accordingly, Sun et al. in view of Lee et al. disclose the thermoplastic composition comprising 1.3 to 3.3 wt% of epoxy-modified olefin copolymer and 0.5 to 16.7 wt% of maleic anhydride-modified ethylene-propylene-diene terpolymer. Therefore, a weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene terpolymer is 2.6 to 0.2 (2.6 = 1.3/0.5 and 0.2 = 3.3/16.7). According to the present claim, the weight ratio is 2 to 0.5 (2 = 1/0.5 and 0.5 = 1/2).
Regarding claims 5-8, Sun et al. in view of Lee et al. disclose the thermoplastic resin composition as set forth above. Given that the thermoplastic resin composition of Sun et al. in view of Lee et al. is identical to that presently claimed, it is inherent or obvious that the thermoplastic resin composition of Sun et al. in view of Lee t al. has presently claimed properties.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2015/0368458 A1 cited in IDS) in view of Lee et al. (US 2008/0269401 A1 cited in IDS) as applied to claim 1 above, further in view of Wang (US 2015/0353732 A1 cited in IDS).
Regarding claim 3, Sun et al. in view of Lee et al. disclose the thermoplastic resin composition as set forth above. While Sun et al. disclose the thermoplastic resin composition comprises glass fibers, Sun et al. in view of Lee et al. do not disclose glass fibers as presently claimed.
Wang discloses a composition comprising a polycarbonate component, a polyester component and a filler such as glass fiber (see Abstract and paragraph 0189). The filler provides impact strength (see paragraph 0186). The glass fiber can be Nittobo (flat) glass fiber CSG3PA820 (see paragraph 0189), which is identical to that utilized in the present invention (see paragraph 0073 of the published application) and therefore would necessarily have a rectangular cross-section with a curved corner, cross-section aspect ratio and short-side length as presently claimed.
In light of motivation for using glass fiber disclosed by Wang as described above, it therefore would have been obvious to one of ordinary skill in the art to glass fiber of Wang as the glass fiber in Sun et al. in view of Lee et al. in order to provide impact strength, and thereby arrive at the claimed invention.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2015/0368458 A1 cited in IDS) in view of Lee et al. (US 2008/0269401 A1 cited in IDS) as applied to claim 1 above, further in view of McGuire, JR. (US 2012/0275285 A1).
Regarding claims 10 and 11, Sun et al. in view of Lee et al. disclose the thermoplastic resin composition as set forth above. While Sun et al. disclose a molded article (plastic member) formed of the thermoplastic resin composition, Sun et al. in view of Lee et al. do not disclose a composite material as presently claimed.
McGuire, JR. disclose a composite housing comprising a rigid plastic layer such as polycarbonate and a metal layer comprising aluminum (see paragraphs 0024, 0043). Therefore, as taught by McGuire, JR. it would have been obvious to one of ordinary skill in the art to prepare a composite housing comprising a plastic member formed of the thermoplastic resin composition of Sun et al. in view of Lee et al. and a metal member adjoining the plastic member, and thereby arrive at the claimed invention.
Regarding claim 12, Sun et al. in view of Lee et al. and McGuire, JR. disclose the composite material as set forth above. Given that composite material of Sun et al. in view of Lee et al. and McGuire, JR. is identical to that presently claimed, it is inherent or obvious that the composite material of Sun et al. in view of Lee et al. and McGuire, JR. has presently claimed properties.
Response to Arguments
Applicant's arguments filed 08/21/2025 have been fully considered but they are not persuasive because of following reasons.
Applicants argue that nonetheless, Applicant respectfully submits that the Office uses an incorrect wt% range of epoxy-modified olefin copolymer to calculate the hypothetical weight ratio range relied upon in the rejection.
While the examiner has inadvertently used incorrect wt% range (1.3 to 3.3 wt%) of epoxy-modified olefin copolymer to calculate the hypothetical weight ratio range, when correct wt% range (0 to 3 wt%) of epoxy-modified olefin copolymer is used (which correct range was cited in paragraph 8 of the previous action), the weight ratio of epoxy-modified olefin copolymer and maleic-anhydride-modified-propylene-diene monomer terpolymer still overlaps with that presently claimed. For instance, based on 0 to 3 wt% of epoxy-modified olefin copolymer and 0.5 to 16.7 wt% of maleic anhydride-modified ethylene-propylene-diene terpolymer, the weight ratio of epoxy-modified olefin copolymer and maleic-anhydride-modified-propylene-diene monomer terpolymer is 0 to 6 wt% (0 = 0/16.7 and 6 = 3/0.5), which overlaps with that presently claimed.
Applicants argue that the present inventors, however, have unexpectedly found that the claimed thermoplastic resin compositions can surprisingly exhibit good metal adhesion, as well as impact resistance, rigidity, heat retention stability, and a balance thereof. Data in the application (e.g., data of Table 4 on page 16 of the application) demonstrates that compositions as claimed including all of the recited types of components in amounts within the ranges recited in claim 1, and also including a weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene-diene monomer terpolymer within the range recited in claim 1, can unexpectedly / unpredictably exhibit properties (e.g., contradictory properties) such as metal bonding strength, sheet impact strength, notched Izod impact strength, sheet impact strength after retention, and/or flexural modulus, and/or a balance thereof. In contrast, comparative data in the application (e.g., Comparative Examples 10 and 11 from Table 4 of the application, replicated in the table above) demonstrates that compositions including the same components in amounts within the claimed ranges but including a weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene- diene monomer terpolymer outside of the upper or lower end point of the range recited in claim 1, can have deteriorated properties, such as deteriorated metal bonding strength, sheet impact strength, notched Izod impact strength, sheet impact strength after retention, and/or flexural modulus, and/or may not exhibit properties a balance of such properties.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that (i) the examples recite a specific polyester resin in specific amounts, while the present claim recite any polyester resin in broad amounts, (ii) the examples recite a specific polycarbonate resin in specific amounts, while the present claim recite any polycarbonate resin in broad amounts, (iii) the examples recite a specific flat glass fiber in specific amounts, while the present claim recite any flat glass fiber in broad amounts, (iv) the examples recite a specific epoxy-modified olefin copolymer in specific amounts, while the present claim recite any epoxy-modified olefin copolymer in broad amounts, (v) the examples recite a specific maleic anhydride-modified ethylene -propylene diene monomer terpolymer in specific amounts, while the present claim recite any maleic anhydride-modified ethylene -propylene diene monomer terpolymer in broad amounts, and (vi) the examples recite a specific weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene -propylene diene monomer terpolymer, while the present claim has broad recitation of weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene monomer terpolymer. Further, there is no data at lower end and upper end for amounts of polycarbonate resin, flat glass fiber, epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene monomer terpolymer recited in present claims.
Applicants argue that the data also demonstrates that the Sun compositions modified as argued in the Office Action do not necessarily (inherently) have the same properties as the claimed compositions and thus rebuts a conclusion otherwise.
However, present claim 1 does not recite any properties of claimed composition. Even if claim 1 did recite properties, it is examiner’s position that given that Sun et al. in view of Lee et al. disclose the thermoplastic resin composition including polyester resin, polycarbonate resin, flat glass fiber, epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene monomer terpolymer identical to that presently claimed with their amounts and weight ratio overlapping with that presently claimed, within the overlapping ranges, the thermoplastic resin composition of Sun et al. in view of Lee et al. necessarily inherently has properties identical to the present invention, absent evidence to the contrary.
Applicants argue that further, the data demonstrates there is no reasonable expectation of success with respect to the ability to formulate a composition having the same properties as the claimed compositions. Reasonable expectation of success requires a motivation to do more than merely vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result. Jn re Stephan, 868 F.3d 1342 (Fed. Cir. 2017).
Given that both Sun et al. and Lee et al. disclose thermoplastic composition comprising polycarbonate resin and polyester resin, and given that Lee et al. provides a proper motivation for using impact modifier such as maleic anhydride-modified ethylene -propylene diene monomer terpolymer, there would be a reasonable expectation of success when combining Lee et al. with Sun et al., absent evidence to the contrary.
Further, given that Sun et al. in view of Lee et al. disclose the thermoplastic resin composition including polyester resin, polycarbonate resin, flat glass fiber, epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene monomer terpolymer identical to that presently claimed with their amounts and weight ratio overlapping with that presently claimed, within the overlapping ranges, the thermoplastic resin composition of Sun et al. in view of Lee et al. necessarily inherently has properties identical to the present invention, absent evidence to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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