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
Applicant’s election without traverse of Group I, Claims 1-17 and 23 in the reply filed on 1/26/2026 is acknowledged.
Claims 18-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/26/2026.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because it does not disclose the general nature of the monomers utilized to produce the polymers. Only physical properties are recited. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. A definition is not provided for variables R1, R2 and X2. It is not clear that they would be included in the R0 to Rn or X1 to Xn range. It is also indefinite how n can be 2 when Rn or Xn are a hydrogen atom. It is also unclear if n is referring to an identification of the variable, or a repetition of the variable.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-12 and 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sasaki et al. (2014/0031494).
Regarding claims 1-3 and 5-9: Sasaki et al. teach a resin composition comprising a polycarbonate resin composition that is a reaction product of Isosorbide, CHDM and DPC [0029; Examples], and a polymer Metablen W-450A that is a graft copolymer of an alkyl acrylate polymer and a methyl methacrylate [0210; Table 1].
Since the polymers are the same as claimed, and as disclosed in the instant specification, they will possess the claimed refractive index difference and glass transition temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 10: Sasaki et al. teach a molding material for melt molding [0024, 0201-0202; Examples].
Regarding claims 11-12: Since the composition is the same as claimed, it will possess the claimed melt viscosity. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 17: Sasaki et al. teach a molded article [0024, 0201-0202; Examples].
Claim(s) 1-12 and 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fujikawa et al. (2016/0053040).
Regarding claims 1 and 3-9: Fujikawa et al. teach a resin composition comprising a polycarbonate resin composition that is a reaction product of Isosorbide, CHDM and DPC [Examples; Tables], and a graft copolymer comprising a polymer chain produced from methyl methacrylate and butyl acrylate, and a second polymer chain produced from methyl methacrylate and styrene (radically polymerizable monomer unit containing an aromatic ring) [Examples; Table 9].
Since the polymers are the same as claimed, and as disclosed in the instant specification, they will possess the claimed refractive index difference and glass transition temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Fujikawa et al. teach that the difference between the refractive index of the rubber-like graft polymer and the polycarbonate resin is 0.005 or less [0058; Examples; Tables].
Regarding claim 2: Given the polymerization process of the examples, and the very broad range in claim 2, the polymer of Fujikawa et al. possesses the claimed Mw.
Regarding claim 10: Fujikawa et al. teach a molding material for melt molding [0181, 0353; Examples].
Regarding claims 11-12: Since the composition is the same as claimed, it will possess the claimed melt viscosity. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Fujikawa et al. teach a melt viscosity of the composition of 200 Ps•s [0350; Examples].
Regarding claim 17: Fujikawa et al. teach a molded article [0001; Examples].
Claim(s) 13-16 and 23 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fujikawa et al. (2016/0053040)
Regarding claims 13 and 15-16: Fujikawa et al. teach a resin composition comprising a polycarbonate resin composition that is a reaction product of Isosorbide (a compound of claimed formula (1)), CHDM and DPC [Examples; Tables], and a graft copolymer comprising a polymer chain produced from methyl methacrylate and butyl acrylate, and a second polymer chain produced from methyl methacrylate and styrene (radically polymerizable monomer unit containing an aromatic ring) [Examples; Table 9].
Since the polymers are the same as claimed, and as disclosed in the instant specification, they will possess the claimed glass transition temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 14: Given the polymerization process of the examples, and the very broad range in claim 14, the polymer of Fujikawa et al. possesses the claimed Mw.
Regarding claim 23: Fujikawa et al. teach a molded article [0001; Examples].
Claim(s) 1-3, 5-12 and 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Okamoto et al. (2015/0218369).
Regarding claims 1, 3 and 5-9: Okamoto et al. teach a resin composition comprising a polycarbonate resin composition that is a reaction product of isosorbide, 1,6-hexanediol and DPC or a reaction product of isosorbide, CHDM and DPC [0153, 0155; Examples; Tables], and a graft copolymer comprising a polymer chain produced from butadiene and butyl acrylate, and a second polymer chain produced from methyl methacrylate [ 0160; Examples; Table 2].
Since the polymers are the same as claimed, and as disclosed in the instant specification, they will possess the claimed refractive index difference and glass transition temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Okamoto et al. teach that the difference between the refractive index of the impact resistance modifier and the polycarbonate resin is 0.010 or less [0012, 0110; Examples; Tables; claim 3]. Okamoto et al. teach that the core of the impact resistance modifier has a Tg of 0°C or lower [0012, 0160].
Regarding claim 2: Given the polymerization process of the examples, and the very broad range in claim 2, the polymer of Okamoto et al. possesses the claimed Mw.
Regarding claim 10: Okamoto et al. teach a molding material for melt molding [0086; Examples].
Regarding claims 11-12: Since the composition is the same as claimed, it will possess the claimed melt viscosity. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 17: Okamoto et al. teach a molded article [0001; Examples].
Claim(s) 1-12 and 17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hong et al. (2010/0010172).
Regarding claims 1-9: Hong et al. teach a composition comprising a polycarbonate and a block copolymer impact resistance modifier that when blending with a polycarbonate, provides a toughened strength polycarbonate while maintaining excellent optical properties [0001]. Hong et al. teach that the block copolymer contains a random copolymer having a methyl methacrylate chain and a phenyl methacrylate chain [0025; Table 1; Examples], corresponding to the two claimed polymer chains. Hong et al. teach a Mw of 50,000 to 2,000,000 g/mol [0029; Examples].
Since the composition and the polymer chains are the same as claimed, and as disclosed in the instant specification, they will possess the claimed difference in refractive index and glass transition temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 10: Hong et al. teach a molding material for melt molding [0088; Examples].
Regarding claims 11-12: Since the composition is the same as claimed, it will possess the claimed melt viscosity. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 17: Hong et al. teach a molded article [0089; Examples].
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 13-16 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (2015/0218369) in view of Hong et al. (2010/0010172).
Regarding claims 13-16 and 23: Okamoto et al. teach a resin composition comprising a polycarbonate resin composition that is a reaction product of isosorbide, 1,6-hexanediol and DPC or a reaction product of isosorbide, CHDM and DPC [0153, 0155; Examples; Tables], and an impact resistance modifier [0101; Examples; Table 2].
Okamoto et al. fail to teach the claimed impact resistance modifier.
However, Hong et al. provides a block copolymer impact resistance modifier that when blending with a polycarbonate, provides a toughened strength polycarbonate while maintaining excellent optical properties [0001]. Hong et al. teach that the block copolymer contains a random copolymer having a methyl methacrylate chain and a phenyl methacrylate chain [0025; Table 1; Examples], corresponding to the two claimed polymer chains. Hong et al. teach a Mw of 50,000 to 2,000,000 g/mol [0029; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the block copolymer of Hong et al. as the impact resistance modifier in Okamoto et al. to produce a toughened strength polycarbonate composition while maintaining excellent optical properties.
Since the polymer chains are the same as claimed, and as disclosed in the instant specification, they will possess the claimed glass transition temperature. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Okamoto et al. teach that the difference between the refractive index of the impact resistance modifier and the polycarbonate resin is 0.010 or less [0012, 0110; Examples; Tables; claim 3]. Okamoto et al. teach that the core of the impact resistance modifier has a Tg of 0°C or lower [0012, 0160].
Regarding claim 32: Okamoto et al. teach a molded article [0001; Examples].
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 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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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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