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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 5, 2026 has been entered.
Claims 1, 4, 5, 7-8, and 10-11 are pending as amended on March 5, 2026. Support for amended claim 1 is found claim 6, claim 9, specification [0028], and Table 1. Claims 6, 9, and 12-24 are canceled.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Response to Arguments
Applicant’s arguments filed March 5, 2026 have been fully considered.
Applicant’s arguments, see page 6, filed March 5, 2026, with respect to the rejection of claims 1, 4, 5, 8, and 11 over Oyama (WO 2021/014962 A1) have been fully considered and are persuasive. Claim 1 has been amended to require a thermoplastic resin derived from a diol of general formula (3). The closest diols taught by Oyama correspond to X is
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where R5 and R6 bind to each other to form a fluorene group (Oyama, [0100]). A fluorene group does not read on the claimed carbocyclic ring because fluorene is not a singular ring. A fluorene group is 3 fused rings. The rejection of claims 1, 4, 5, 8, and 11 over Oyama has been withdrawn.
Applicant argues (page 7) that the claimed invention is not obvious over Oyama in view of Fujimori (JP-2000169573-A) because the instant invention shows unexpected results and the claims have been amended to be commensurate in scope with the instant examples. On page 17 of the arguments filed 1/27/2026 Applicant points to Example 5 and 9 and Comparative Examples 3 and 15 (see Tables 1-2) as evidence. Example 5 comprises 90 wt% of a bisphenol A polycarbonate resin and 10 wt% of a BNE oligomer. Comparative Example 3 differs in that a BNE monomer is used instead of a BNE oligomer. Example 5 has superior fluidity, YI value, bond strength, and mold contamination than Comparative Example 3. Example 15 and Comparative Example 9 also compare compositions with a BNE oligomer or a BNE monomer, but the thermoplastic resin is a bisphenol AP type polycarbonate. In this case, the BNE oligomer leads to a better YI value, bond strength, and mold contamination than Comparative Example 9, but the fluidity is lower for Example 15 (Table 2).
MPEP 716.02(b) states that appellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). Applicant has not sufficiently explained the data provided in Tables 1 and 2 because Applicant has not described how the data demonstrate an unexpected result. It is unclear from the data what result would have been expected when using the BNE oligomer. For example, BNE and the BNE carbonate oligomer differ in both chemistry (oligomer comprises carbonate bonds) and molecular weight, so it is unclear based on the data in Table 2 how the combination of BNE and carbonate units would be expected to impact the fluidity, YI value, bond strength, and mold contamination.
In addition, evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Claim 1 is not commensurate in scope with the instant examples because it encompasses a broader range of thermoplastic resin and carbonate oligomer chemistries and contents. Claim 1 does not require that the thermoplastic resin be a polycarbonate and encompasses more diol chemistries (e.g. brominated diols) than those used in the instant examples. In addition, claim 1 does not limit the number of diols in the thermoplastic resin or the molecular weight of the thermoplastic resin. Examples 5 and 15 only utilized BNE-derived oligomers, but claim 1 also encompasses oligomers containing general formula (1). Claim 1 does not limit the oligomer molecular weight or BNE:DPC ratio. In addition, the claimed 5-20% by mass compounding agent content range is broader than the 10% content used in the example compositions comprising BNE oligomers. The examples further comprise 0.1 wt% of AS2112 as an antioxidant and 0.1 wt% S-100A as a release agent. Neither of these components are required by claim 1. If Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species and the full breath of ranges encompassed by the claims.
Claim Rejections - 35 USC § 103
Claims 1, 4-5, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Oyama (WO 2021/014962 A1, citation “h” on 1/10/2024 IDS, English translation provided with 12/12/2025 Office action) in view of Fujimori (JP-2000169573-A, English translation provided with 12/12/2025 Office action).
Regarding claims 1, 8, and 11, Oyama teaches a thermoplastic resin composition comprising a thermoplastic resin and an oligomer ([0008]). The thermoplastic resin is a polycarbonate resin (claim 8) ([0025]). Oyama further teaches a molded body comprising the resin (an optical lens is molded using such a resin, [0028]) (claim 11).
The resin comprises 30-90 mol% of a repeating unit represented by a formula (1) ([0008] and [0013]) that is derived from a diol ([0083]). Formula (1) has the structure:
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where R1 and R2 are each independently a hydrogen, halogen, or C1-C14 hydrocarbyl group which may contain an aromatic group, L1 and L2 each independently represent a divalent linking group, j and k each independently represent an integer of 0 or more, m and n each independently represent 0 or 1 and W is
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([0010-0012]). An example of a preferred diol for deriving formula (1) is “BHEB6” with the structure (a-1) shown below ([0088-0089]).
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The resin further comprises 10-70 mol% ([0060]) of a repeating unit represented by a formula (4) ([0017-0018]). Formula (4) has the structure:
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where the Z rings are identical or different, Ar1 and Ar2 are hydrogen atoms, halogen atoms, or optionally substituted aromatic groups, and R1 and R2, L1 and L2, j and k, m and n, and W are defined as in Formula (1) ([0018-0019]). A preferred example of the diol for deriving formula (4) is “BPEF” with the structure (b-1) shown below ([0100]-[0101]).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any combination of a preferred diol corresponding to formula (1) and of a preferred diol corresponding to formula (4), including a mixture of BHEB6 and BPEF. Oyama teaches 30-90 mol% of BHEB6 and 10-70 mol% BPEF. The resulting oligomer portion of the composition would contain a mixture of aromatic carbonate oligomers derived from BHEB6 and/or BPEF. An oligomer comprising at least one unit derived from BHEB6 reads on an aromatic carbonate oligomer comprising a diol-derived constituent unit represented by general formula (1) where Rc and Rd are aryl groups with 6 carbon atoms, X is a saturated carbon group containing 2 carbon atoms, and c and d are 1.
Carbonate units derived from BHEB6 have a molecular weight of about 552 g/mol and carbonate units derived from BPEF have a molecular weight of about 466 g/mol. An oligomer molecular weight of up to 1,500 therefore corresponds to up to 3 repeat units. While Oyama does not specify the number of repeat units obtained by FD-MS, one would expect measurement of an oligomer with 1-3 repeat units by FD-MS to produce a result of about 1-3 repeat units.
Oyama does not anticipate 2-6 repeating units measured by FD-MS.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any number of repeating units in the range of 1-3 because Oyama teaches this range. A range of 1-3 overlaps with the claimed ranges of 2-6. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Oyama teaches that the content of oligomers having a number-average molecular weight of less than 1,500 is 1-15 mass% ([0019] and [0028]). The amount of oligomer is adjusted by adjusting the reaction temperature, melting time, vacuum, catalyst, and molar ratio of raw materials ([0083]).
Oyama does not anticipate a compounding agent content of 5-20% by mass based on a total mass of the resin.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any oligomer content in the range of 1-15 mass% because Oyama teaches this range. It would further have been obvious to select any BH3B6 content in the range of 30-90 mol% because Oyama teaches this range. Given this range of BH3B6 in the diol component, Oyama teaches approximately 0.3-13.5 mass% of oligomers comprising a diol-derived constituent unit represented by general formula 1 (0.3*1=0.3 and 0.9*15=13.5). A range of 0.3-13.5 mass% compounding agent (oligomer) overlaps with the claimed range of 5-20% by mass. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Oyama further teaches that the diol component of the polycarbonate can include less than 30 mol% of another diol ([0121]).
Oyama but does not teach a monomer represented by general formula (3).
However, Fujimori teaches that monomers reading on formula (3) are beneficial for polycarbonate impact resistance. Fujimori teaches polycarbonate resins used in optical applications (Fujimori, [0001]). Like Oyama, Fujimori deals with alternatives to bisphenol A polycarbonates (Fujimori, [0002]; Oyama, [0003]) and aims to improve optical properties such as birefringence (Fujimori, [0003]; Oyama, [0003] and [0060-0061]). The polycarbonates of both Oyama and Fujimori comprise fluorene-based repeating units (Fujimori, [0007]; Oyama, [0060-0061]). Fujimori further teaches that including a structural unit derived from the following general formula (6) is preferable from the viewpoint of balancing physical properties (Fujimori, [0016]):
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where X is
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, or
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and R5 and R6 are each hydrogen, an alkyl group having 1-10 carbon atoms, or an aryl group having 6-10 carbon atoms, and R5 and R6 may be bonded to each other to form a ring. R3 and R4 are each independently hydrogen, halogen, an alkyl group having 1-20 carbon atoms, an alkoxyl group having 1-20 carbon atoms, a cycloalkyl group having 6-20 carbon atoms, an aryl group having 6-20 carbon atoms, a cycloalkoxy group having 6-20 carbon atoms or an aryloxy group having 6-20 carbon atoms. Further, p and q represent an integer of 0-4 (Fujimori, [0017]). Fujimori teaches that the compound represented by formula (6) is preferably bisphenol A because it is mass-produced at low cost and that when bisphenol A is used, impact resistance can be greatly enhanced without impairing heat resistance (Fujimori, [0020]). Fujimori teaches that the preferred molar ratio of this the compound represented by formula (6) to the other diols is 50/50-10/90. When the ratio is more than 50/50, the photoelastic coefficient increases and when the ratio is less than 10/90, the effect of improving the impact resistance is reduced (Fujimori, [0019]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the other diol component of Oyama (Oyama, [0121]) with the preferred bisphenol A diol of Fujimori in order to improve the impact resistance of the resin with a low-cost monomer that does not impair heat resistance. A thermoplastic resin comprising a bisphenol A residue reads on wherein the thermoplastic resin comprises a constituent derived from the monomer (B) represented by general formula (3) wherein R1 to R4 and R11 to R14 each represent hydrogen and X represents
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wherein R5 and R6 each represent an alkyl group containing 1 carbon atom.
Regarding claim 4, modified Oyama teaches the thermoplastic resin compositions of claim 1.
Oyama does not explicitly teach the set number of the aromatic carbonate oligomer.
Instant specification [0024] and [0032] define the set number as 2*a/b where “a” is the moles of diol and “b” is the moles of end terminator. Specification [0036] teaches that a monofunctional group compound such as phenol can be used to control the polymerization degree. This monofunctional group is take to be a representative “end terminator.” Consequently, a carbonate oligomer produced by the melt method with some terminal groups derived from diphenyl carbonate would be expected to have the same structure as a carbonate oligomer produced via an interfacial phosgene method using phenol to control the molecular weight.
Oyama exemplifies a diol to diphenyl carbonate ratio of 1:1.01 ([0227]), suggesting that each carbonate oligomer has 1-2 chain ends derived from diphenyl carbonate. This corresponds to b is 1-2. The variable “a” is 2-3 because each oligomer in modified Oyama comprises 2-3 repeating units, as discussed above for claim 1. Oyama therefore teaches a set number range of about 2-6 (2*2/2=2, 2*3/1=6).
Oyama does not anticipate the claimed set number of the aromatic carbonate oligomer.
However, it would have been obvious to one of ordinary skill to have selected any set number in the range of 2-6 because Oyama teaches this range. A set number of 2-6 overlaps with the claimed range of 3-10. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
It is noted that while specification [0024] states that “the set number… can only be applied to oligomers produced by an interface method,” claim 4 is not limited to oligomers produced by an interfacial method because case law holds 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Regarding claim 5, modified Oyama teaches the thermoplastic resin compositions of claim 1. The diol of modified Oyama is a combination of 30-90 mol% of BHEB6 and 10-70 mol% BPEF. As discussed above for claim 1, this mixture of diols corresponds to 1-3 repeating units per oligomer and Oyama was modified to select 2-3 repeating units. Oyama further exemplifies a diol to diphenyl carbonate ratio of 1:1.01 ([0227]), suggesting that each oligomer has 1-2 chain ends derived from diphenyl carbonate (DPC). Oligomers comprising at least one BHEB6 residue therefore have 1-3 BHEB6 residues (BHEB6 corresponds to the diol represented by general formula (1)) and 2-4 DPC residues (oligomers with 2 repeating units have 2-3 DPC residues and oligomers with 3 repeating units have 3-4 DPC residues). This corresponds to a diol represented by the general formula (1) to DPC ratio of about 1:1 to 1:4.
Oyama does not anticipate the claimed diol represented by the general formula (1) to DPC ratio.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any diol represented by the general formula (1) to DPC ratio in the range of about 1:1 to 1:4 because modified Oyama suggests this range. A range of 1:1 to 1:4 overlaps with the claimed range of 1:1.2 to 1:10.0. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Oyama (WO 2021/014962 A1, English translation provided with 12/12/2025 Office action) in view of Fujimori (JP-2000169573-A, English translation provided with 12/12/2025 Office action) as applied to claim 1 above, and further in view of Kato (US 2019/0055351 A1).
Oyama teaches the thermoplastic resin compositions of claim 1.
Oyama is silent as to the set number of the thermoplastic resin.
Instant specification [0024] and [0032] define the set number as 2*a/b where “a” is the moles of diol and “b” is the moles of end terminator. Specification [0036] teaches that a monofunctional group compound such as phenol can be used to control the polymerization degree. This monofunctional group is take to be a representative “end terminator.” Consequently, a polycarbonate produced by the melt method with some terminal groups derived from diphenyl carbonate would be expected to have the same structure as a polycarbonate produced via an interfacial phosgene method using phenol to control the molecular weight.
Oyama exemplifies a diol to diphenyl carbonate ratio of 1:1.01 ([0227]), suggesting that each polycarbonate chain has 1-2 chain ends derived from diphenyl carbonate. This corresponds to b is 1-2. The variable “a” can be determined from the molecular weight of the thermoplastic resin.
Oyama does not teach a target molecular weight.
However, Kato teaches polycarbonate resins for optical applications (Kato, [0006]). Kato teaches that a molecular weight range of 20,000-60,000 is favorable for the thermoplastic resin (Kato, [0050]). Below this range, the molded article becomes brittle while above this range, the melt viscosity is increased and thus removal of the resin from a mold becomes difficult (Kato, [0050]). Given the disclosure of Kato, it would have been obvious to one of ordinary skill to have targeted a molecular weight range of 20,000-60,000 g/mol in order to balance brittleness and mold removal.
Because carbonate units derived from BHEB6 and BPEF have molecular weights of about 552 and 466, respectively, a molecular weight range of 20,000-60,000 corresponds to about 36-129 repeat units(20000/552=36, 60000/466=129). Given that b is 1-2, this corresponds to a set number n in the range of about 36-258 (2*36/2=36, 2*129/1=258). A range of about 36-258 falls within the claimed range of wherein the set number n of the thermoplastic resin is 15 to 1000.
It is noted that while specification [0024] states that “the set number… can only be applied to oligomers produced by an interface method,” claim 7 is not limited to polymers produced by an interfacial method because case law holds 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Oyama (WO 2021/014962 A1, English translation provided with 12/12/2025 Office action) in view of Fujimori (JP-2000169573-A, English translation provided with 12/12/2025 Office action) as applied to claim 1 above, and further in view of Nomura (US 2012/0226011 A1, cited with 7/11/2025 Office action).
Oyama teaches the thermoplastic resin composition according to claim 1. Oyama further teaches that the thermoplastic resin can be blended with mold release agents ([0128]), but does not specify the amount of mold release agent.
However, prior to the effective filing date 0.01 to 0.1 % by mass was known as a suitable content for mold release agents, as evidenced by Nomura. Nomura teaches a polycarbonate used in optical lenses (Nomura, [0362]). Nomura teaches combining the polycarbonate with various additives, including release agents (Nomura, [0325-0326]). Release agents read on mold release agents. Nomura teaches that release agents are preferably added in an amount of 0.01 to 0.1 % by mass in order to achieve the desired effect and repress the decrease in heat resistance and mechanical properties (Nomura, [0332]). Given the disclosure of Nomura, one of ordinary skill in the art would have recognized that an amount of 0.01 to 0.1 % by mass is appropriate for mold release agents in polycarbonate compositions used in optical lenses. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the unspecified mold release agent content of Oyama for the amount of 0.01 to 0.1 % by mass taught by Nomura in order to achieve the desired mold release effects while repressing the decrease in heat resistance and mechanical properties.
Claims 1, 4-5, 8, and 10-11 are rejected under 35 U.S.C. 103 as being obvious over Suematsu (WO 2021261392 A1, US 20230235117 A1 (citation “A” on 9/26/2024 IDS) is used as an English translation).
Regarding claims 1, 4, 8, and 11, Suematsu teaches a thermoplastic resin composition (Abstract) and a molded body (claim 11) comprising the thermoplastic resin (molded product, [0251-0252]). The thermoplastic resin composition comprises a thermoplastic resin and a compounding agent that can be a polycarbonate oligomer having a naphthalene structure (Abstract and [0116]). A polycarbonate oligomer with a naphthalene structure reads on an aromatic carbonate oligomer.
The compounding agents taught by Suematsu include those with the structure:
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where the number of repeating units is preferably 3 ([0117]-[0118]). Rc and Rd are each independently selected from a halogen atom, an alkyl group containing 1 to 20 carbon atoms, an alkoxy group containing 1 to 20 carbon atoms, a cycloalkyl group containing 5 to 20 carbon atoms, a cycloalkoxy group containing 5 to 20 carbon atoms, an aryl group containing 6 to 20 carbon atoms, a heteroaryl group containing 6 to 20 carbon atoms or an aryloxy group containing 6 to 20 carbon atoms which contains one or more heterocyclic atoms selected from O, N and S, or an aryloxy group containing 6 to 20 carbon atoms, and -C≡C-Rh ([0023]). Rh represents an aryl group with 6-20 carbon atoms or a heteroaryl group with 6-20 carbon atoms containing one or more heteroatoms selected from O, N, and S ([0024]). X represents a saturated carbon group with 1-5 carbon atoms ([0025]) and c-d represent an integer of 0-10 ([0026]).
The oligomer shown above reads on the instant carbonate oligomer comprising a diol-derived constituent unit represented by general formula (1). While Suematsu does not measure the average number of repeating units by mass spectrometry measurement according to field desorption mass spectrometry (FD-MS), one of ordinary skill would expect measuring the number of repeat units in an oligomer with 3 repeat units by FD-MS to produce a result of 3 repeat units (claim 1 and claim 4).
Suematsu further teaches that the thermoplastic resin can be a polycarbonate resin, a polyester resin, or a polyester carbonate resin ([0036]). When the thermoplastic resin is a polyester resin, Suematsu teaches that the diol component can include 2,2-bis(4-hydroxyphenyl)propane ([0219]). A polyester resin (claim 8) comprising 2,2-bis(4-hydroxyphenyl)propane residues reads on the thermoplastic resin comprises a constituent derived from the monomer represented by general formula (3) wherein R1 to R4 and R11 to R14 are hydrogen, X is
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where R5 and R6 are an alkyl group with 1 carbon atom (methyl).
Suematsu teaches that the mass ratio of thermoplastic resin to compounding agent is 99:1 to 70:30 (Suematsu, claim 6). Given that no other components are required by Suematsu, this range corresponds to 1-30% by mass of the compounding agent based on a total mass of the thermoplastic resin composition.
Suematsu does not anticipate the claimed amount of compounding agent.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any compounding agent content in the range of 1-30% by mass because Suematsu teaches this range. A range of 1-30% by mass overlaps with the claimed content of 5-20% by mass. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 5, Suematsu teaches the thermoplastic resin composition according to claim 1. The oligomer structure shown above corresponds to wherein the aromatic carbonate oligomer (A) is a polymer having a molar ratio of the diol represented by the general formula (1): diphenyl carbonate = 1 : 1.33 (the oligomer above with 3 repeating units has 3 diol residues : 4 diphenyl carbonate residues).
Regarding claim 10, Suematsu teaches the thermoplastic resin composition according to claim 1. Suematsu teaches 0.2-0.5 parts by weight of a mold release agent per 100 parts by weight of the thermoplastic resin ([0238]), reading on about 0.2-0.5 % by mass of a mold release agent based on a total mass of the thermoplastic resin composition.
Conclusion
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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