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 .
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.
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(s) 1, 4-7, 12, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakata (JP 2020-050822A), wherein the machine English translation is used for citation.
Regarding claims 1, 4, 5, and 12; Sakata teaches, in a preferred embodiment, a laser transmissive resin composition comprising 100 parts by weight PBT (polybutylene terephthalate resin; polyester-based resin (A)), 0.26 parts by weight of Pigment Yellow 180, and glass fiber (inorganic filler (C)) [Table1, Ex2]. Sakata teaches the CIE L* value is preferably 17 or less [032] and the transmittance of a molded product having a thickness of 1mm is preferably 25% or more (overlaps with 40% or greater) [033].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See 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), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ a resin composition having a transmittance 40% or greater, and would have been motivated to do so since Sakata teaches it suitable that the resin composition has a transmittance of 25% or more in order to achieve particulars of the present invention.
Regarding claim 6; Sakata teaches the composition may include a mixture of thermoplastic resins in addition to polybutylene terephthalate resin, such as polyetherimide (amorphous resin) [011]. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claims 7, 19, and 20; Sakata teaches a molded article formed using the laser transmissive resin [043-044].
Claim(s) 2, 3, 9-11, and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakata (JP 2020-050822A), wherein the machine English translation is used for citation, as applied to claim 1 above, and further in view of Cole et al. (US Serial No. 2008/0124498).
Sakata teaches the basic claimed composition, as set forth above, with respect to claim 1.
Regarding claims 2-3; Sakata teaches the composition may further include pigments, e.g. yellow, green, and red, to achieve a blacker appearance, however fails to explicitly require, in addition to Pigment Yellow 180 [Table1, Ex2], Pigment Blue 15:3 or 16, and Pigment Red 149. Cole et al. teaches laser markings of pigmented substrates, wherein a coating or film comprising a polymer and a colorant selected from Pigment Red 149, Pigment Yellow 180, Pigment Blue 15:3, and/or Pigment Blue 16 [0033-0036]. Sakata and Cole et al. are analogous art because they are both concerned with the same field of endeavor, namely resin composition that allows for laser marking. At the time of filing, a person of ordinary skill in the art would have found it obvious to add Pigment Red 149 and Pigment Blue 15:3 or Pigment Blue 16, as taught by Cole et al., to the composition of Sakata, and would have been motivated to do so in order to achieve a desired color of said composition. Furthermore, one of ordinary skill in the art would understand that choosing a “color” (e.g. adding a specific pigment or combination of pigments), is an aesthetic design choice, and adding a colorant in order to achieve a desired color is well within the knowledge of ordinary skill in the art. See MEPE 2144.04 (I); Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claims 8-11; Sakata teaches, in a preferred embodiment, a laser transmissive resin composition comprising PBT (polybutylene terephthalate resin; polyester-based resin (A)), and glass fiber (inorganic filler (C)) [Table1, Ex2].
Regarding claims 13-16; Sakata teaches the composition may include a mixture of thermoplastic resins in addition to polybutylene terephthalate resin, such as polyetherimide (amorphous resin) [011]. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claims 17 and 18; Sakata teaches a molded article formed using the laser transmissive resin [043-044].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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