DETAILED ACTION
Response to Arguments
Applicant's arguments filed June 4, 2026 have been fully considered but they are not persuasive.
A) The previous 112(b) rejection is removed due to amendment.
B) Applicant’s argument that Shan et al. is directed to improving a certain property while the present claims are directed to improving other properties is not persuasive. The Court in KSR stated that it is an error to look only to the particular problem the patentee was trying to solve. The problem motivating the patentee may be only one of many addressed by the patent’s subject matter and a person having ordinary skill in the art would not be led only to those elements of the prior art designed to solve the same problem (MPEP 2141 II A2).
C) Applicant’s argument that the cited disclosures do not provide an articulated reason to select the particular claimed amounts is not persuasive. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Those amounts are positively disclosed in the prior art and a person having ordinary skill in the art would select those overlapping amounts since the entire range is disclosed as being acceptable to Shan et al. to achieve the disclosed invention and any quantity within the disclosed range could be selected. Applicants can rebut a prima face case of obviousness by showing the criticality of the range (MPEP 2144.05 III A).
D) Applicant’s argument that the present application shows unexpected results are not persuasive. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims (MPEP 716.02 (b)) and should be commensurate in scope with the claimed invention (MPEP 716.02(d)). In the present case, applicants do not explain what values of the impact performance, flame performance and tracking resistance of the closest prior art, which is Shan et al. in order to show unexpected results over the prior art. 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. Evidence over a limited number of species might not provide adequate basis for concluding that similar results would be obtained for the entire commensurate scope of the claims.
Claim Rejections - 35 USC § 103
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shan et al. (WO 2019/123029).
Regarding claim 1: Shan et al. teaches a thermoplastic composition (para. 69) comprising 10-99 wt% of a polycarbonate (para. 3), a flame retardant such as brominated polycarbonate (para. 53), in an amount of 0-10 wt% (para. 127), a polycarbonate-siloxane copolymer in an amount to provide 0.5-10 wt% siloxane based on the total weight of the composition (para. 3), a core-shell impact modifier containing silicone (para. 104, 106) in an amount of 1-10 wt% (para. 107), an alkyl sulfonate salt flame retardant (para. 45) in an amount of 0-10 wt% (para. 127), 0.1-15 wt% of titanium dioxide (para. 42), and 0-1.5 wt% carbon black (para. 43). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use overlapping amounts of the components and would have been motivated to do so since Shan et al. teaches these are acceptable amounts to achieve the disclosed invention.
Regarding claim 2: Shan et al. teaches a UL 94 flame test rating of V0 at a 1.5 mm thickness (para. 65).
Regarding claim 3: Shan et al. teaches the polycarbonate-siloxane copolymer has a siloxane content of 30-70 wt% based on the weight of the polycarbonate siloxane copolymer (abstract).
Regarding claim 4: Shan et al. teaches a thermoplastic composition (para. 69) comprising 10-99 wt% of a polycarbonate (para. 3), a flame retardant such as brominated polycarbonate (para. 53), in an amount of 0-10 wt% (para. 127), a polycarbonate-siloxane copolymer that has a siloxane content of 30-70 wt% based on the weight of the polycarbonate siloxane copolymer (abstract) in an amount to provide 0.5-10 wt% siloxane based on the total weight of the composition (para. 3), a core-shell impact modifier containing silicone (para. 104, 106) in an amount of 1-10 wt% (para. 107), an alkyl sulfonate salt flame retardant (para. 45) in an amount of 0-10 wt% (para. 127), 0.1-15 wt% of titanium dioxide (para. 42), and 0-1.5 wt% carbon black (para. 43). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use overlapping amounts of the components and would have been motivated to do so since Shan et al. teaches these are acceptable amounts to achieve the disclosed invention.
Regarding claim 5: Shan et al. teaches the polycarbonate is a bisphenol A homopolycarbonate (para. 11).
Regarding claims 6 and 7: Shan et al. teaches a first linear bisphenol A polycarbonate homopolymer (para. 11) having a weight average molecular weight of 26,000 to 40,000 Da (para. 12) and a second linear bisphenol A polycarbonate homopolymer (para. 11) having a weight average molecular weight of 15,000 to 25,000 Da (para. 12). Shan et al. teaches the ratio of the “first” to the “second” is 10:1 to 1:10 (para. 12), however it is noted the definition of “first” and “second” in the reference is the opposite of the definition in the claim, but in this case, it is the same ratio since the ratio range is symmetrical.
Regarding claim 8: Shan et al. teaches the brominated polycarbonate has a bromine content of 26 wt% (table 1).
Regarding claim 9: Shan et al. teaches potassium diphenylsulfone sulfonate (table 1).
Regarding claim 10: Shan et al. teaches an impact modifier comprising a silicone elastomer core and methyl methacrylate shell (para. 106).
Regarding claim 11: Shan et al. teaches 0.01-5 wt% additives such as an antioxidant (para. 39).
Regarding claim 12: Shan et al. does not teach the presence of any α,β-unsaturated glycidyl ester copolymer impact modifier.
Regarding claim 13: Shan et al. teaches a thermoplastic composition (para. 69) comprising a flame retardant such as brominated polycarbonate (para. 53), in an amount of 0-10 wt% (para. 127), a polycarbonate-siloxane copolymer that has a siloxane content of 30-70 wt% based on the weight of the polycarbonate siloxane copolymer (abstract) in an amount to provide 0.5-10 wt% siloxane based on the total weight of the composition (para. 3), 10-99 wt% of a polycarbonate (para. 3) comprising a first linear bisphenol A polycarbonate homopolymer (para. 11) having a weight average molecular weight of 26,000 to 40,000 Da (para. 12) and a second linear bisphenol A polycarbonate homopolymer (para. 11) having a weight average molecular weight of 15,000 to 25,000 Da (para. 12). Shan et al. teaches the ratio of the “first” to the “second” is 10:1 to 1:10 (para. 12), however it is noted the definition of “first” and “second” in the reference is the opposite of the definition in the claim, but in this case, it is the same ratio since the ratio range is symmetrical. Shan et al. further teaches a core-shell impact modifier (para. 104, 106) in an amount of 1-10 wt% (para. 107), an aromatic sulfone sulfonate such as potassium diphenylsulfone sulfonate (claim 14) in an amount of 0-10 wt% (para. 127). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use overlapping amounts of the components and would have been motivated to do so since Shan et al. teaches these are acceptable amounts to achieve the disclosed invention.
Regarding claim 14: Shan et al. teaches an article comprising the composition (title).
Regarding claim 15: Shan et al. teaches molding the article (para. 4).
Regarding claim 16: Shan et al. teaches an electrical component (para. 7).
Regarding claim 17: Shan et al. teaches an electrical connector (para. 8).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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