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 .
Election/Restrictions
Groups II-III (claims 8-9 and 16-18) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/26/2026.
Response to Amendment
The amendment filed on 8/28/2026 has been entered. Claim(s) 1 and 9 is currently amended. Claim(s) 10-12 has/have been cancelled. Claims 19-21 are new. Claim(s) 1-9 and 13-21 is/are pending with claim(s) 8-9 and 16-18 withdrawn from consideration. Claim(s) 1-7, 13-15 and 19-21 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 8/28/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Miller teaches that amides which are not NN'-dialkylated (i.e. N-methyl stearamide and stearamide) provided much lower resin melt viscosity as measured by 6 and 12 min. KI and only a limited class of amides are useful additives for polycarbonate. Based on this teaching, one of skill in the art would not have had a reasonable expectation of success to substitute Miller's tertiary amide with Schulz's secondary amide.
In response, Miller only disclosed two non N,N'-dialkylated amides (N-methyl stearamide and stearamide) that provided lower resin melt viscosity as compared to N,N'-dialkylated amides [Table 1]. This would not discourage one of ordinary skill in the art at the time of filing to try other non N,N'-dialkylated amides, especially the ones taught by Shulz whose amides have long chain R1 and R2 in the formula R1-CONH-R2: instead of a methyl group in Miller’s N-methyl stearamide, Shulz’s R2 has 16 to 20 carbon atoms. Since Miller teaches that “a limited class of amides are useful additives for polycarbonate”, one of ordinary skill in the art at the time of filing might test Shulz’s amides to see if they are those limited class of amides.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-7, 13-15 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 4554302 A) in view of Schulz et al (US 20200165430 A1).
Regarding claims 1-4 and 14, Miller teaches a thermoplastic resin composition comprising 0.3 wt% of an amide as a mold release agent and 0.03 wt% of a phosphite stabilizer, both formulated into a bisphenol-A polycarbonate homopolymer LEXAN 140 [col.2 line 66 to col.3 line 20]. The composition is used for injection molding [col.1 line 6].
The bisphenol-A polycarbonate homopolymer LEXAN 140 reads on the claimed aromatic polycarbonate, as specified in claim 4.
The 0.3 wt% of the amide falls within the claimed range of (B) from 0.1 to 5.0 wt.% and from 0.2 - 3.0 wt% of aliphatic amide wax in claim 1 and claim 3. The bisphenol-A polycarbonate amount is calculated by the examiner to be 99.67 wt% (100-0.3-0.03), falling within the claimed range of (A) from 90.0 to 99.9 wt.% of aromatic polycarbonate.
Miller does not teach that the amide has a melting point in the range from 80 °C to 115 °C.
In the same field of endeavor, Schulz teaches a thermoplastic resin composition for injection molding comprising an aliphatic amide wax (B-1) as a mold release agent having a melting point in the range of 80° C to 115° C [abstract, 0082, 0112]. The aliphatic amide wax (B-1) comprises amide compounds having the formula R1-CONH-R2, wherein R1 preferably represents an aliphatic, saturated hydrocarbon group having 17 carbon atoms, R2 preferably represents an aliphatic, saturated hydrocarbon group having 16 to 20 carbon atoms [0075-0076].
It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Miller’s amide and Schulz’s amide are recognized equivalent for the same purpose as a mold release agent, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute Miller’s amide with Schulz’s amide in Miller’s composition.
Schulz’s amide meets the claimed amide wax having the claimed melting point. Schulz’s amide also meets the claimed structure of the claimed amide wax specified in claims 2 and 14, wherein the claimed R1 is an aliphatic, saturated hydrocarbon group having 17 carbon atoms; the claimed R2 is an aliphatic, saturated hydrocarbon group having 16 to 20 carbon atoms.
Regarding claim 5, the recited “the thermoplastic composition has an indenter depth of less than 0.3 pm at 48 mN profile load and > 50 % recovery of scratch, as determined by the Nano scratch Test as described in the specification” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 6, Schulz’s amide has R1 being an aliphatic, saturated hydrocarbon group having 17 carbon atoms and R2 being an aliphatic, saturated hydrocarbon group having 16 to 20 carbon atoms as stated above, which is not N-methyl stearamide or stearamide.
Regarding claim 7, the recited “the thermoplastic composition has a delta haze of < 4 and a transmittance, determined in accordance with the method set out in the description, of at least 90%, after 500 cycles of Crockmeter Mar test, determined in accordance with the method set out in the description, wherein delta haze is given by the following equation: delta haze = % haze after mar test - % haze before mar test” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 13, Miller teaches 0.03 wt% of a phosphite stabilizer as stated above, meeting the claimed additive.
Regarding claim 15, Miller teaches 0.3 wt% of the amide as stated above, which is merely close to the claimed lower limit of 0.5 wt% that one of ordinary skill in the art would prima facie expect a thermoplastic resin composition based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Regarding claim 19, Shulz’s amide compounds having the formula R1-CONH-R2, wherein R2 preferably represents an aliphatic, saturated hydrocarbon group having 16 to 20 carbon atoms does not include N-methyl stearamide and/or stearamide.
Regarding claim 20, Miller teaches 0.3 wt% of the amide as stated above, which is merely close to the claimed lower limit of 0.5 wt% that one of ordinary skill in the art would prima facie expect a thermoplastic resin composition based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Regarding claim 21, The bisphenol-A polycarbonate amount is calculated by the examiner to be 99.67 wt% (100-0.3-0.03), which is sufficiently close to the claimed upper limit of 99.4 wt.% of aromatic polycarbonate that one of ordinary skill in the art would prima facie expect a thermoplastic resin composition based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
