DETAILED ACTION
Response to Amendment
This office action is in response to the Amendment filed on 07/27/2026. Claims 1, 3-4, 6-9, 11 and 13-15 are currently pending. Claims 16-21 were previously withdrawn from consideration.
The objections and the previous 35 USC 112 rejections of the claims are withdrawn due to Applicant’s responsive amendment.
The rejections of the claims set forth in the Office Action dated are MAINTAINED for the reasons set forth below. To ensure Applicant’s amendments are fully addressed, the rejections are set forth in full.
The obviousness-type double patenting rejections of claims 1, 4, 6-7, 9, 11 and 13-15 in view of copending Application No. 18/725,314 are MAINTAINED.
This action is final.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7, line 13 recites “X is an aromatic group”, “ X ” should be replaced by “ X’ ”.
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.
Claims 1, 3-4 , 6-9, 11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shan et al. (WO 2019/12029 A1 or US PG Pub 2020/0369875 A1), wherein US PG Pub 2020/0369875 is relied upon in the rejection; in view of Grcev (US 2020/0207954 A1 as listed on the IDS dated 09/11/2023), as evidenced by Van der Mee for instant claim 11 (US Patent 9,365,720 B2 as listed on the IDS dated 09/11/2023).
Regarding claim 1, Shan et al. teach a polycarbonate composition comprising:
-10 to 99 wt. % of one or more bisphenol A polycarbonate homopolymers based on the total weight of the polycarbonate composition (abstract, claims, examples), thereby reading on the homopolycarbonate;
-a poly ( carbonate - siloxane ) having a siloxane content of 30 to 70 wt. % present in an amount effective to provide a total siloxane content of 0.5 to 10 wt. % based on the total weight of the polycarbonate composition ([0027]-[0032], abstract, claims, examples), thereby reading on the polycarbonate-siloxane component, siloxane content thereof and total compositional siloxane content;
- optionally additives including any fillers [0071], reinforcing agents, flame retardants, among others, wherein the filler is present in an amount of 0.5 to 20 wt. %, wherein the flame retardant is an organophosphorus compound ([0039], [0045]-[0052], claims, examples), thereby reading on the reinforcing composition, organophosphorus flame retardants and additives. It is noted that the flame retardant and additives are optional components.
Shan et al. are silent on the glass fibers and the mineral filler as recited in the instant claim.
In the same field of endeavor, Grcev teaches a polycarbonate composition comprising a flame retardant, from about 0.01 wt.% to about 20 wt.% of a glass fiber; from about 0.01 wt. % to about 10 wt. % of a surface modified talc (title and claim 1). Grcev offers the motivation of using the glass fiber and the talc in the specific amounts to improve mechanical properties such as modulus and impact strength ([0002], [0006]).In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the glass fibers and the talc on the composition of Shan et al., thereby arriving at the claimed invention. As to the siloxane, glass fiber and talc amounts, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges taught by Shan et al. in view of Grcev.
Regarding claim 3, Shan et al. are silent on the ratio of glass fiber to mineral filler.
However, Grcev teaches a ratio of glass fibers to mineral filler of about 1:1 (claim 7), as required by the instant claim. Grcev offers the motivation of using the glass fiber and the talc in the specific ratio to improve mechanical properties such as modulus and impact strength ([0002], [0006]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the glass fibers and the talc on the composition of Shan et al., thereby arriving at the claimed invention.
Regarding claim 4, Shan et al. in view of Grcev are silent on the properties of smoke density and heat release as recited by the instant claim.
However, in view of the substantially identical polycarbonate composition of Shan et al. in view of Grcev, the polycarbonate composition of Shan et al. in view of Grcev will possess the claimed properties because the obvious composition would be the same as is claimed. Reviewing the specification reveals that reproducing the claimed composition will result in the claimed properties. (MPEP 2112).
Regarding claim 6, Shan et al. teach the organophosphorus flame retardant comprises at least one organic aromatic group and at least one phosphorus-containing group, as well as organic compounds having at least one phosphorus-nitrogen bond, wherein the phosphorus-containing group is a (P(═O)(OR)3), phosphite (P(OR)3), phosphonate (RP(═O)(OR)2), phosphinate (R2P(═O)(OR)), phosphine oxide (R3P(═O)), or phosphine (R3P), wherein each R in the foregoing phosphorus-containing groups can be the same or different, provided that at least one R is an aromatic group ([0046],[0048), claim 13); a monomeric phosphate compound [0049], as required by the instant claim.
Regarding claim 7, Shan et al. teach the organophosphorus flame retardant comprises di or polyfunctional aromatic organophosphorus compounds of the formulas below ([0050]-[0051]), as required by the instant claim.
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Regarding claim 8, Shan et al. teach the organophosphorus flame retardant comprises phosphazene, phosphonitrilic chloride, phosphorus ester amide, phosphoric acid amide, phosphonic acid amide, phosphinic acid amide, or tris(aziridinyl) phosphine oxide, or a phosphazene or cyclic phosphazene according to the formulas below, wherein w1 is 3 to 10,000; w2 is 3 to 25, or 3 to 7; and each R is independently a C1-12 alkyl, alkenyl, alkoxy, aryl, aryloxy, or polyoxyalkylene group. In the foregoing groups at least one hydrogen atom of these groups can be substituted with a group having an N, S, O, or F atom, or an amino group [0052].
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Regarding claim 9, Shan et al. are silent on the specific mineral fillers as recited in the instant claim.
Grcev teaches the mineral filler further comprises clay, titanium oxide, silicate, silica powders, boron powders, calcium carbonates, kaolin, wollastonite [0051]. Grcev offers the motivation of using the mineral fillers to impart additional impact strength [0051]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use further mineral fillers on the composition of Shan et al., thereby arriving at the claimed invention.
Regarding claim 11, the disclosure of Shan et al. in view of Grcev apply as explained in the above rejections.
Shan et al. in view of Grcev are silent on the content of phosphorous of the flame retardant. However, Shan et al. teach the polycarbonate composition comprises up to 10 wt.% of a flame retardant ([0128], claim 7) and provide as example of the flame retardant bisphenol A bis(diphenyl phosphate, BPADP) (claim 14). It is noted that BPADP present in an amount of 2 to 20% is effective to provide up to 2.0 wt.% of phosphorus, as evidenced by Van der Mee et al. ( col.23:45-55), thereby Shan et al. is considered to read on the claimed content of phosphorous of up to 1.5 wt.%.
Regarding claim 13, Shan et al. teach an article comprising the polycarbonate composition [0004], as required by the instant claim.
Regarding claim 14, Shan et al. teach the polycarbonate composition is used in consumer electronic applications [0007] such as a mobile phone adapter housing and USB connector applications, [0008], electronic device [0074], electronic housing [0075], window frame [0076], as required by the instant claim.
Regarding claim 15, Shan et al. teach a method of manufacture of an article comprises molding, extruding, casting, or shaping the polycarbonate composition into an article [0005], as required by the instant claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 6-7, 9, 11 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-4, 7-10, 13-15 and 17-18 of copending Application No. 18/725,314.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach compositions comprising a homopolycarbonate, a polycarbonate-siloxane having a siloxane content of 30 to 70 wt.% (per claim 4) to provide 1-10 wt.% total siloxane, a glass-containing reinforcing agent, a mineral filler comprising talc, kaolin, calcium carbonate, wollastonite or a combination thereof, both in amounts that overlap with the amounts as presently claimed, optionally an organophosphorus flame retardant in an amount effective to provide up to 1.5 wt.% of phosphorus. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 7/27/2026 have been fully considered but they are not persuasive.
Applicant states that Grcev includes no teaching suggesting the inclusion of glass fiber and talc in composition including a poly (carbonate -siloxane). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both references are related to polycarbonate compositions and disclose the use of additives to improve properties. Shan teaches polycarbonate compositions comprising BPA polycarbonate homopolymer, poly (carbonate-siloxane ) and additives including fillers, reinforcing agents, flame retardants [0039] with improved chemical and impact resistance and flame retardant properties ([0002] and abstract); while Grcev teaches glass and talc filled polycarbonate compositions with improved impact strength, mechanical properties, and flame retardance (title, abstract, [0002]). Grcev specifically teaches the combination of mineral filler such as talc and glass fibers into polymer systems to improve mechanical strength and other properties [0006] and discloses a synergy between glass fiber filler and surface-modified mineral fillers such as talc and its effect on polycarbonate compositions [0052]. Then, a person of ordinary skill in the art would have recognized Gcrev’s talc and glass fibers as known reinforcing components for polycarbonates compositions and it would have been obvious to incorporate the talc and the glass fibers into Shan’s polycarbonate composition with the predictable result of improving mechanical properties.
Applicant further states that Grcev teaches away from use of unmodified talc by teaching the superiority of surface modified talc. In response, attention is drawn to the language of claim 1, wherein claim 1 is drawn to a mineral filler comprising talc, which encompasses modified and unmodified talc. Furthermore, it is noted that Grcev teaches the surface modification of talc improve the impact strength properties of the composition, however Grcev does not teach or suggest that unmodified talc is not capable of providing an appropriated impact strength of the composition (Table 5 and [0006]).
Applicant states the data presented in Table 6 of the present application demonstrates an unexpected synergistic effect of the combination of the combination of glass fiber and talc. Applicants’ argument is not persuasive because relied-upon data is not commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic structures. Therefore, Applicant should compare several compositions containing claimed components in amounts at several data points over the claimed range to several compositions containing the same claimed components in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range.
As initial observation, Applicant has not provided sufficient data showing either the upper or lower limit of 30-70 wt.% of siloxane content in the poly(carbonate-siloxane), (hereinafter PC-Si) is critical. Table 6 uses a PC-Si that comprises 40 wt.% of siloxane content in all the examples and comparatives examples. As to the lower and upper limit of the total siloxane based on the total weight of the composition; the % of siloxane in the total composition used in the example and comparative example of table 6 is 5.5%. Then the applicant has not provided data that demonstrates the criticality of the claimed range of 1-10 wt.%.
In addition, Applicant has not provided sufficient data supporting that the claimed range of the reinforcing composition is critical. As to the lower limit of 11 wt.%, the lowest ratio is 12.5 wt.% and applicant has provided no examples below the lower limit of 11 wt.% and above the upper limit of 25 wt.%. Similarly, there Is not data demonstrating the upper limit of the claimed range of the glass fibers (24 wt.%) and the upper and lower limit of the talc (1-10 wt.%) are critical.
The examples and comparative examples provided one particular type of homopolycarbonate and Claim 1 does not specify any type of homopolycarbonate. Therefore, the unexpected results presented are not commensurate in scope with the claimed invention. It is for these reasons that Applicant's arguments are not found to be persuasive.
In response to the Applicant requests that the rejections be held in abeyance until there is an indication of allowable subject matter in this application but for the double-patenting rejections.
The Examiner respectfully disagrees. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI., for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995. (Emphasis added.)
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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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