RESPONSE TO AMENDMENT
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 .
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-8 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Joachimi et al. (U.S. App. Pub. No. 2003/0125429) in view of Nishimagi et al. (U.S. App. Pub. No. 2019/0351622).
Regarding claims 1-3, Joachimi et al. discloses a transparent, molded laser beam weldable thermoplastic molding material which may be laser weld to a laser-absorbing molded part. (Abstract, Fig. 1 and par. [0021]). The composition is significantly transparent to NIR (par. [0022]). Joachimi et al. therefore discloses a first and second molded part as claimed, including a first part that is transparent to NIR and a second part that is absorbs NIR. Joachimi et al. further discloses that the transparent thermoplastic resin composition may be dark-colored. (par. Abstract and [0021]). The composition of the thermoplastic molding material includes:
a thermoplastic material such as a polyamide in an amount of 97.77% by weight, or more (Table 1), but may comprise as little as 50% by weight according to par. [0061] to account for the additives
inorganic pigments such as titanium dioxide (par. [0067])
polymer-soluble dyes, such as anthroquinone, azo and coumarin dyes, (par. [0078]) which would have an absorption in the NIR region, in amount of about 0.04 to 0.2% (Table 1).
further components such as fibers, lubricants and UV stabilizaers in amounts overlapping with the claimed range. (see par. [0059]-[0061], [0066], [0069] and Table 1).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Joachimi et al. does not disclose the content or size of titanium dioxide filler in the thermoplastic molding composition. However, Joachimi et al. teaches that the inorganic pigments should only be used in amounts so small as to allow at least a partial transmission of the laser light. (par. [0067]).
Nishimagi et al. teaches an additive for laser-markable and laser-weldable polymer materials including pigments of niobium-doped titanium dioxide as the laser absorbing additive. (Abstract). Nishimagi et al. teaches that the pigment diameter should fall in the range of 0.01 to 100 micrometers (i.e. 10 nm to 100 microns) (par. [0027]). Further, the content thereof in the polymer should be in the range of 0.001 to 20% by weight (par. [0035]).
It would have been obvious to one of ordinary skill in the art would have found it obvious to use titanium dioxide particles having dimensions and quantities as disclosed in Nishimagi, which overlap with the presently claimed ranges.
One of ordinary skill in the art would have found it obvious to use the titanium dioxide sizes and amounts as disclosed in Nishimagi et al. in order to have the ability to mark the transparent thermoplastic layer with a laser material to provide labelling of data related to the thermoplastic molded article (par. [0002]). The resulting laser marking would therefore allow for a light-colored laser inscription as discussed in par. [0071]-[0073] and Table 3 of Nishimag et al.
Regarding claim 4, the thermoplastic material may be a polyamide (Table 1) or a polyester (par. [0058]).
Regarding claim 5, the thermoplastic polymer may be polybutylene terephthalate. (par. [0046]).
Regarding claim 6, Nishimagi et al. teaches that the pigment diameter should fall in the range of 0.01 to 100 micrometers (i.e. 10 nm to 100 microns) (par. [0027]), which overlaps with the presently claimed range.
Regarding claim 7, Joachimi teaches including glass fibers in an amount of 30% by weight (Table 1).
Regarding claim 8, Joachimi teaches including stabilizers in quantities of up to 2% by weight. (par. [0063]-[0066).
Regarding claims 11-12, Joachimi teaches that the NIR laser radiation has a wavelength in the range of 700-1200 nm. (par. [0022]) and a transmittance of at least 20%. (par. [0022]).
Regarding claim 13, the combination of Joachimi and Nishimagi et al. would result in the bonding of a first and second molded parts by laser welding (see Joachimi, Abstract) with laser inscription (as taught in Nishimagi).
Regarding claim 14, Nishimagi et al. teaches that the laser inscription is done using laser light in the UV/VIS region. (par. [0050]-[0051]).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Joachimi et al. (U.S. App. Pub. No. 2003/0125429) in view of Nishimagi et al. (U.S. App. Pub. No. 2019/0351622), further in view of ‘648 (JP2007-505648)
Joachimi in view of Nishimagi et al. is relied upon as described in the claim rejection of claim 1, above.
Joachimi in view of Nishimagi et al. does not disclose the background luminance or contrast value as claimed in claims 9-10.
‘648 discloses a capsule for a dental restorative material and packaging wherein the container contains a laser marking thereon. (Abstract and page 3, last paragraph). ‘648 discloses that the contrast value of the marks can be quantified using a brightness scale which is proportional to both the luminance values of the mark and the background. (page 6). The background luminance, being a denominator, reduces the overall contrast value and ‘648 explicitly teaches that the contrast should be at least 150 (page 6, last 4 paragraphs) for better visualization.
One of ordinary skill in the art would have found it obvious therefore, to optimize the background luminance and contrast values in order to result in a contrast value that is over 150. This would therefore suggest to have a low background luminance (i.e. 50 cd/m2 or lower) in order to achieve desired contrast value range for obtaining the improvements taught in ‘648. Since the instant specification is silent to unexpected results, the specific amount of background luminance and contrast value are not considered to confer patentability to the claims. As the contrast value is a variable that can be modified, among others, by adjusting the amount of background luminance, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 12/31/2025 regarding the prior art rejections made of record in the previous office action have been carefully considered but are deemed unpersuasive.
Applicant argues that the claimed titanium dioxide range of 0.5 to 25 nm has unexpected results over the cited prior art references and therefore patentable over the cited prior art.
In order to traverse a rejection under 35 U.S.C. §103 based on allegations of unexpected results, the evidence provided must be of probative value, commensurate in scope with the claims and show that the results are unexpected. MPEP 716.02. The evidence must further be weighed against the evidence supporting a prima facie case obviousness. Id. When making allegations of unexpected results, the Applicant bears the burden to demonstrate whether the differences between the prior art and claimed invention differ to such an extent that the difference is unexpected. (MPEP 716.02 and 716.02(b)). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance”. (MPEP 716.02(b), citing Ex Parte Gelles, 22 USPQ2d 1318, 1318, Bd. Pat. App. & Inter. 1992). It should be noted that mere allegation of improved properties alone is no sufficient to serve as the basis of unexpected results if they do not show a significance equal to or greater than the expected properties. (see MPEP 716.02(c) I). Furthermore, the unexpected results relied upon by the Applicant for patentability must be commensurate in scope with the claims which the evidence is offered to support. MPEP 716.02(d).
The evidence provided in Tables 1-2 are not commensurate in scope with the presently claimed invention. The 4 samples comparing TiO2 particle sizes use diameters of 15 and 20 nm compared to TiO2 having sizes of 190 and 300-400 nm. (see F1-F4). Therefore, the claimed particle size range is significantly broader than presently claimed. In addition, the claimed content of TiO2 having the alleged critical sizes is significantly broader than the values shown in the Examples. The lowest content end point is 0.2% which is a whole significant figure greater than the low end of the claimed content of 0.01%. Therefore, the argument that the claimed particle size and content of TiO-2 exhibits unexpected results cannot be supported by the evidence currently of record.
Furthermore, Joachimi et al. teaches that the inorganic pigments should only be used in amounts so small as to allow at least a partial transmission of the laser light. (par. [0067]). The prior art therefore appears to recognize the result effective nature of the particle size of the inorganic pigments for improved transmission of laser light. This would suggest that the claimed size range, while resulting in improved results, does not produce results that would be considered unexpected. Where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). The improved results relied upon by the Applicant do not show that the differences between the prior art and claimed invention differ to such an extent that the difference is unexpected. (MPEP 716.02 and 716.02(b)).
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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 02/02/2026