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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/02/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 16 recites “the specimen”, which should be “the 2 mm thick injection-molded specimen”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: Claim 1, lines 16-17 recite “the specimen”, which should be “the 2 mm thick injection-molded specimen”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Claim 6, lines 3-4 recite “the specimen”, which should be “the 2 mm thick specimen”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12, line 5 recite “the specimen”, which should be “the 2 mm thick plastic member”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12, line 7 recite “specimen”, which should be “plastic member”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12, line 9 recite “specimen”, which should be “plastic member”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12, line 11 recite “injection-molded specimen (plastic member)”, which should be “injection-molded plastic member”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12, line 11 recite “the specimen”, which should be “the 2 mm thick injection-molded plastic member”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim 12, line 12 recite “the specimen”, which should be “the 2 mm thick injection-molded plastic member”. Appropriate correction is required.
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, 4, 6, 7 and 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 and 4, 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 flat glass fiber component (see Abstract, paragraph 0051, 0163, 0222 and Table 1). According to the present claim, the amount of polyester resin is 43.7 to 53.8 wt% (43.7 = 100/229 x 100 and 53.8 = 100/186 x 100), the amount of polycarbonate is 5.4 to 6.6 wt% (5.4 = 10/186 x 100 and 6.6 = 15/229 x 100), the amount of flat glass fiber is 37.6 to 43.7 wt% (37.6 = 70/186 x 100 and 43.7 = 100/229 x 100), the amount of the epoxy-modified polyolefin is 1.6 to 2.6 wt% (1.6 = 3/186 x 100 and 2.6 = 6/229 x 100) and the amount of maleic anhydride-modified ethylene-propylene terpolymer is 1.6 to 3.5 wt% (1.6 = 3/186 x 100 and 3.5 = 8/229 x 100).
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 0 to 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 0 to 6 (0 = 0/16.7 and 6 = 3/0.5). According to the present claim, the weight ratio is 2 to 0.6 (2 = 1/0.5 and 0.6 = 1/1.8).
Accordingly, Sun et al. in view of Lee et al. disclose the thermoplastic resin composition as presently claimed. Given that Sun et al. in view of Lee et al. disclose the thermoplastic resin composition including the polyester resin, the polycarbonate resin, the flat glass fiber, the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer identical to that presently claimed, with their amounts overlapping with that presently claimed and with ratio of the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer overlapping with that presently claimed, within the overlapping ranges, the thermoplastic resin composition necessarily inherently has properties (metal bonding strength and dart drop height) as presently claimed.
Regarding claims 6 and 7, Sun et al. in view of Lee et al. disclose the thermoplastic resin composition as set forth above. Given that Sun et al. in view of Lee et al. disclose the thermoplastic resin composition including the polyester resin, the polycarbonate resin, the flat glass fiber, the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer identical to that presently claimed, with their amounts overlapping with that presently claimed and with ratio of the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer overlapping with that presently claimed, within the overlapping ranges, the thermoplastic resin composition necessarily inherently has properties (dart drop height, notched Izod impact strength and flexural modulus) as presently claimed.
Regarding claim 9, Sun et al. disclose a molded article formed of the thermoplastic composition (see paragraph 0211).
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 cited in IDS).
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 Sun et al. in view of Lee et al. disclose the thermoplastic resin composition including the polyester resin, the polycarbonate resin, the glass fiber, the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer identical to that presently claimed, with their amounts overlapping with that presently claimed and with ratio of the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer overlapping with that presently claimed, within the overlapping ranges, the plastic member prepared from the thermoplastic resin composition necessarily inherently has properties (metal bonding strength, dart drop height, notched Izod impact strength and flexural modulus) as presently claimed.
Response to Arguments
Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive because of following reasons.
Applicants argue that applicant again respectfully submits that the Office has not established prima facie obviousness. The cited documents do not teach or suggest a composition including all of the elements recited in the claims, including, without limitation, all of the recited component amount ranges, epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene- diene monomer terpolymer weight ratio range, and composition properties.
In light of amendments, new grounds of rejections are set forth above.
Applicants argue that in addition, without any admissions, Applicant again respectfully submits that the data of record supports the patentability of the claims. Reference is again made to the Examples of Tables 1 and 2 on pages 15-16 of the present application, which demonstrate that compositions including amounts and weight ratios of components within the ranges recited in claim 1 can exhibit good properties in terms of metal adhesion, sheet impact strength, Notched Izod impact resistance, sheet impact strength heat stability, flexural modulus, and a balance thereof. In contrast, reference is also again made to the Comparative Examples (e.g., Comparative Examples 1-8 and 10-11) of Tables 3 and 4 on page 16 of the present application, which demonstrate that compositions including amounts or weight ratios of components outside of the ranges recited in claim 1 can exhibit deteriorated properties (e.g., reduced metal adhesion, sheet impact strength, Notched Izod impact resistance, sheet impact strength heat stability, and/or flexural modulus), as compared to the claimed compositions.
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, while the present claim recite any polyester resin, (ii) the examples recite a specific polycarbonate resin, while the present claim recite any polycarbonate resin, (iii) the examples recite a specific flat glass fiber, while the present claim recite any flat glass fiber, (iv) the examples recite a specific epoxy-modified olefin copolymer, while the present claim recite any epoxy-modified olefin copolymer, (v) the examples recite a specific maleic anhydride-modified ethylene -propylene diene monomer terpolymer, while the present claim recite any maleic anhydride-modified ethylene -propylene diene monomer terpolymer.
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, 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 overlapping with that presently claimed and weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene monomer terpolymer 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 overlapping with that presently claimed and weight ratio of epoxy-modified olefin copolymer and maleic anhydride-modified ethylene-propylene diene monomer terpolymer 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 applicant again respectfully submits that the data of record evidence unexpected / unpredictable benefits of compositions including amounts and weight ratios of components throughout the ranges recited in claim 1, as compared to the same compositions except including amounts or weight ratios of components outside of the ranges recited in claim 1.
However, the data is not persuasive for the same reasons as set forth above.
Applicants argue that applicant also again respectfully submits that to the extent that the Office continues to argue that the data is not commensurate in scope with the claims, the data also demonstrates a trend, based on e.g., amounts and/or weight ratios of components recited in claim 1, that the skilled artisan can clearly and reasonably extrapolate or extend the probative value thereof to other compositions within the scope of the claims. The data further demonstrates that compositions including amounts or weight ratios of components outside of the upper and lower end points of the claimed ranges, yet within the broad range that the Examiner alleges is taught by the cited documents, do not necessarily have the same properties as claimed.
However, given that the amounts of the polyester resin, the polycarbonate resin, the flat glass fiber, the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer are commensurate in scope with the scope of the present claim, this argument is moot.
Applicants argue that applicants argue that the courts have established that nonobviousness of a broader claim can be supported by evidence based on unexpected results from testing of a single member of a claimed subgenus and/or a narrow portion of claimed range when 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 Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987) (evidence that a compound or composition possesses superior and unexpected properties in one of a spectrum of common properties can be sufficient to rebut a prima facie case of obviousness); In re Kollman, 595 F.2d 48, 56 (CCPA 1979) (Evidence of the unobviousness of a broad range can be proven by a narrower range when one skilled in the art could ascertain a trend that would allow him to reasonably extend the probative value thereof.).
However, given that the amounts of the polyester resin, the polycarbonate resin, the flat glass fiber, the epoxy-modified olefin copolymer and the maleic anhydride-modified ethylene-propylene-diene monomer terpolymer are commensurate in scope with the scope of the present claim, this argument is moot.
Conclusion
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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/KRUPA SHUKLA/Examiner, Art Unit 1787
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