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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on April 22, 2026 have been entered. Claims 1-15 are pending in the application.
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 (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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 5-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kim et al (US 2012/0129989 A1).
Regarding Claims 1-2: Kim teaches a composition comprising a polycarbonate and a polyester (para. 0009), wherein the polyester is a polyethylene terephthalate homopolymer (para. 0047), i.e. substantially free of isophthalic acid moieties. Kim does not teach talc as an essential ingredient as includes working examples that are completely free of talc (p.6, Table 1).
Regarding Claim 3: Kim teaches that, per 100 parts of a base resin component, the composition comprises 55-80 parts by weight of the polycarbonate and 20-45 parts by weight of the polyester, as well as varying amounts of further components (para. 0009). Kim provides a working example wherein the content of polycarbonate is 53wt% and the content of polyester is 34wt%, based on the total weight of the composition (p.6, Table 1, Example 1).
Regarding Claim 5: Kim teaches a nucleating agent (para. 0094).
Regarding Claim 6: “Wherein the nucleating agent is added “is-situ” during the polymerization” is a product-by-process limitation. MPEP § 2113 states that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. Therefore, the structure implied by the process step of adding the nucleating agent in-situ during the polymerization of the polyethylene terephthalate will be considered when assessing patentability of Claim 6. However, the Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II).
Kim teaches the inclusion of a nucleating agent in the composition (para. 0094).
Regarding Claim 7: Kim teaches that the polycarbonate has a weight average molecular weight of 10000-40000 (para. 0011), with an example having a molecular weight of 26000 (para. 0102).
Regarding Claim 8: Kim teaches an impact modifier (para. 0014).
Regarding Claim 9: Not disclosed is the Vicat softening temperature of the composition compared to the softening temperature of an otherwise identical composition wherein the polyethylene terephthalate contains isophthalic moieties. However, Kim teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claims 10-12: Kim teaches molded products such as automobile exteriors (para. 0021) and an automobile containing said product (para. 0003).
Regarding Claim 13: Kim teaches automotive parts (para. 0021).
Claim 14 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mueller et al (WO 01/34703 A1, using the machine translation for the citations below).
Mueller teaches a composition comprising polycarbonate and a polyester comprising polyethylene terephthalate (p.1, line 1), wherein the polyethylene terephthalate preferably consists solely of terephthalic acid as the acid component (p.4, lines 8-10) and therefore is substantially free of isophthalic acid moieties.
Not disclosed is the Vicat softening temperature of the composition compared to the softening temperature of an otherwise identical composition wherein the polyethylene terephthalate contains isophthalic moieties. However, Mueller teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 15 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Mueller et al (WO 01/34703 A1, using the machine translation for the citations below).
Mueller teaches a polyester comprising polyethylene terephthalate (p.1, line 1), wherein the polyethylene terephthalate preferably consists solely of terephthalic acid as the acid component (p.4, lines 8-10) and therefore is substantially free of isophthalic acid moieties.
Not disclosed is the Vicat softening temperature of the composition compared to the softening temperature of an otherwise identical composition wherein the polyethylene terephthalate contains isophthalic moieties. However, Mueller teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2012/0129989 A1) in view of Feldermann et al (US 2012/0053271 A1).
Kim teaches the limitations of claim 1, as set forth above. Kim further teaches that the polyethylene terephthalate homopolymer may be used in combination with a polyethylene terephthalate copolymer (para. 0047). However, Kim is silent to said copolymer being a recycled polyethylene terephthalate with isophthalic acid moieties.
Feldermann teaches a composition comprising polycarbonate (para. 0021) and a polyethylene terephthalate with isophthalic acid moieties (para. 0047) that is preferably a recycled material (para. 0054-0055), wherein the inclusion of isophthalic acid moieties imparts the composition with good low-temperature ductility (para. 0125, 0127, Table 1). Feldermann and Kim are analogous art because they are directed toward the same field of endeavor, namely impact-modified polycarbonate/polyester compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the polyethylene terephthalate in the composition taught by Kim with a recycled polyethylene terephthalate having isophthalic acid moieties because it is an environmentally friendly material and would provide an improvement in low-temperature toughness of the composition.
Response to Arguments
Applicant's arguments filed April 22, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claims 1-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Applicant’s arguments with respect to claims 14 and 15: Although Mueller does not teach the comparison made in the claims, Mueller teaches the composition itself. In re Spada is applicable to both absolute and comparative properties of a composition. Moreover, the effect of isophthalic acid on thermal properties of PET is a known effect (see Kint et al below); one of ordinary skill in the art would find the higher Vicat softening temperature of the claimed composition to be a predictable result.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kint et al (Microstructure and Crystallization of Melt-Mixed Poly(ethylene terephthalate)/Poly(ethylene isophthalate) Blends, Apr 21 2003, Journal of Applied Polymer Science, Vol. 90, p.3076-3086) teaches the effect of isophthalic acid on thermal properties of polyesters.
Onda (US 8168301 B2) teaches polyester/polycarbonate compositions for use in the automotive sector.
Onda (JP 2003/261750 A) teaches heat-resistant polyester/polycarbonate compositions.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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