DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 05/08/2026.
3. Claims 1-22 are pending. Claims 1-18 are under examination on the merits. Claims 19-22 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 05/08/2026 have been fully considered but they are not persuasive, thus claims 1-18 stand rejected as set forth in Office action dated 01/14/2026 and further discussed in the Response to Arguments below.
Information Disclosure Statement
6. The information disclosure statement submitted on 02/17/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1-8, 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hidekazu Shoji (US Pub. No. 2022/0325037 A1, hereinafter “’037”) in view of Wakao et al. (US Pub. No. 2021/0395524 A1, hereinafter “’524”).
Regarding claims 1-2: ‘037 teaches a resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2) comprising, 100 parts by mass of a thermoplastic resin (Page 1, [0010]; Page 2, [0019]-[0020]), 0.1 to 5.0 parts by mass of organic dyes (Page 1, [0010]; Page 7, [0095]-[0096]; Page 7, [0100]-[0101]), 0.1 to 18 parts by mass of an aromatic ring-containing compound comprising a benzene ring and/or a benzo condensed ring (Page 1, [0010]; Page 4, [0061]-[0062]), laser light absorber (Page 7, [0095]-[0096]), mold- release agent (Page 8, [0120]-[0121]), and stabilizer (Page 7, [0104]-[0105]; Page 12, [0187], Table 2, Examples). ‘037 does not expressly teach 0.002 to 10.000, preferably 0.002 to 1.000 parts by mass of a bismuth compound per 100 parts by mass of the thermoplastic resin.
However, ‘524 teaches a resin composition suitable for laser marking (Page 1, [0001) comprising oxygen-deficient bismuth oxide (Page 7, [0099]) in the amount of 0.15 to 0.55 parts by weight based on 100 parts by weight of the resin (A). When the amount of the oxygen-deficient bismuth oxide is less than 0.15 parts by weight, the laser marking property is not effectively enhanced. When the amount of the oxygen-deficient bismuth oxide is more than 0.55 parts by weight, an amount of gas generated during molding or processing the resin composition increases and the laser marking property is not effectively enhanced. The amount of oxygen-deficient bismuth oxide is preferably 0.4 parts by weight or less based on 100 parts by weight of the resin (A) (Page 8, [0105]).
In an analogous art of the resin composition for laser marking and for laser welding, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the resin composition by ‘037, so as to include 0.002 to 10.000, preferably 0.002 to 1.000 parts by mass of a bismuth compound per 100 parts by mass of the thermoplastic resin as taught by ‘524, and would have been motivated to do so with reasonable expectation that this would result in providing bismuth compound additive to acts as an effective laser-sensitive additive for resin composition. When the amount of the oxygen-deficient bismuth oxide is less than 0.15 parts by weight, the laser marking property is not effectively enhanced. When the amount of the oxygen-deficient bismuth oxide is more than 0.55 parts by weight, an amount of gas generated during molding or processing the resin composition increases and the laser marking property is not effectively enhanced as suggested by ‘524 (Page 8, [0105]).
Regarding claims 3-4: ‘037 teaches the resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2), wherein the thermoplastic resin comprises a thermoplastic polyester resin such as polybutylene terephthalate resin (Page 1, [0010]; Page 2, [0019]-[0020]); Page 10, [0157], Table 1; Page 12, [0187], Table 2).
Regarding claim 5: ‘037 teaches the resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2), wherein the thermoplastic resin comprises a polycarbonate resin (Page 1, [0011]; Page 4. [0042]-[0043];
Page 12, [0188], Table 3; PC resin, Bisphenol A type polycarbonate resin).
Regarding claim 6: ‘037 teaches the resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2), wherein an amount of the benzene ring and/or the benzo condensed ring of the aromatic ring-containing compound is 41% by mass in terms of a molecular weight 370, ratio of the benzene ring and/or the benzo condensed ring such as epoxy compound EP17, produced by ADEKA, which Bisphenol A type epoxy resin Epoxy equivalent weight: approximately 185 g/eq and Molecular weight ratio of compound benzene ring and/or benzo condensed ring: (41%) Page 10, [0157], Table 1; Page 12, [0187], Table 2).
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Regarding claim 7: ‘037 teaches the resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2), wherein the resin composition is for a laser-transmitting resin member (Page 2, [0012], [10]-[11]; Page 15, Claims 11-12).
Regarding claim 8: ‘037 teaches the resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2), wherein the aromatic ring-containing compound comprises compounds comprising an epoxy group (Page 5, [0061]-[0062]; Page 10, [0157], Table 1; Page 12, [0187], Table 2).
Regarding claim 10: ‘037 teaches the resin composition for laser marking and for laser welding (Page 1, [0008]; Page 10, [0157], Table 1; Page 12, [0187], Table 2), further comprising glass fibers, wherein the cross sections of the glass fibers are a circle (Page 6, [0078-[0079]; Page 6, [0082]; Page 10, [0157], Table 1; Page 12, [0187], Table 2; Page 14, Claim 6).
Regarding claim 11: ‘037 teaches a molded article formed from the resin composition (Page 2, [0012], [7]; Page 9, [0148]; Page 15, Claim 10).
Regarding claim 12: ‘037 teaches a laser-transmitting resin member formed from the resin composition (Page 2, [0012], [10]-[11]; Page 15, Claims 11-12).
Regarding claim 13: ‘037 teaches the molded article, wherein the molded article is capable of being laser-marked (Page 2, [0012], [10]-[11]; Page 10, [0152]; Page 15, Claims 11-12).
Regarding claim 14: ‘037 teaches the laser-transmitting resin member, wherein the laser-transmitting resin member is capable of being laser-marked (page 2, [0012], [11]-[12]; Page 13, [0197]; Page 15, Claim 12)
9. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hidekazu Shoji (US Pub. No. 2022/0325037 A1, hereinafter “’037”) in view of Wakao et al. (US Pub. No. 2021/0 395524 A1, hereinafter “’524”) as applied to claim 1 above, and further in view of Lee et al. (US Pub. No. 2016/0351461 A1, hereinafter “’461”).
Regarding claim 9: The disclosure of ‘037 in view of ‘524 is adequately set forth in paragraph 8 above and is incorporated herein by reference. ‘037 in view of ‘524 does not expressly teach the aromatic ring-containing compound comprises novolac type epoxy compounds .
However, ‘461 teaches an epoxy resin composition for encapsulating a semiconductor device and a semiconductor device encapsulated by the epoxy resin composition, wherein the composition including a base resin, a filler, a colorant; and a thermochromic pigment, wherein a color of the thermochromic pigment is irreversibly changed when a temperature thereof exceeds a predetermined temperature (Page 1, [0008]). ‘461 teaches the epoxy resin may include, e.g., an ortho-cresol novolac type epoxy resin represented by Formula 2, wherein, R1 may each independently be, e.g., hydrogen or a C1 to C4 alkyl group, and n may be, e.g., 1 to 7 on average (Page 3, [0058]-[0059]) with benefit of providing an epoxy resin that may provide good heat resistance and reliability to the epoxy resin composition (Page 3, [0058]).
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In an analogous art of the resin composition for laser marking and for laser welding, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the aromatic ring-containing compound by ‘037, so as to include the aromatic ring-containing compound comprises novolac type epoxy compounds as taught by ‘461, and would have been motivated to do so with reasonable expectation that this would result in providing an epoxy resin that may provide good heat resistance and reliability to the epoxy resin composition as suggested by ‘461 (Page 3, [0058]).
10. Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hidekazu Shoji (US Pub. No. 2022/0325037 A1, hereinafter “’037”) in view of Wakao et al. (US Pub. No. 2021/0 395524 A1, hereinafter “’524”) as applied to claim 1 above, and further in view of Fumihito Okamoto (US Pub. No. 2021/0032468 A1, hereinafter “’468”).
Regarding claim 15: The disclosure of ‘037 in view of ‘524 is adequately set forth in paragraph 8 above and is incorporated herein by reference. ‘037 in view of ‘524 does not expressly teach a kit comprising the resin composition and a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter.
However, ‘468 teaches a resin composition having large light transmittance and capable of providing a molded article which is highly laser-weldable to an absorbing resin member, as well as a kit, a method for manufacturing the resin composition, a method for manufacturing a formed article, and a formed article (Page 1, [0001]; Page 1, [0008]; Page 2, [0018]) with benefit of providing a resin composition having large light transmittance and capable of providing a molded article which is highly laser-weldable to an absorbing resin member, as well as a kit, a method for manufacturing the resin composition, a method for manufacturing a formed article, and a formed article (Page 2, [0023]).
In an analogous art of the resin composition for laser marking and for laser welding, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the resin composition for laser marking and for laser welding by ‘037, so as to include a kit comprising the resin composition and a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter as taught by ‘468, and would have been motivated to do so with reasonable expectation that this would result in providing a resin composition having large light transmittance and capable of providing a molded article which is highly laser-weldable to an absorbing resin member, as well as a kit, a method for manufacturing the resin composition, a method for manufacturing a formed article, and a formed article as suggested by ‘468 (Page 2, [0023]).
Regarding claim 16: The disclosure of ‘037 in view of ‘524 is adequately set forth in paragraph 8 above and is incorporated herein by reference. ‘037 in view of ‘524 does not expressly teach a laser-welded article obtained by laser-welding together the laser-transmitting resin member, and a laser- absorbing resin member formed from a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter.
However, ‘468 teaches a resin composition having large light transmittance and capable of providing a molded article which is highly laser-weldable to an absorbing resin member, as well as a kit, a method for manufacturing the resin composition, a method for manufacturing a formed article, and a formed article (Page 1, [0001]; Page 1, [0008]; Page 2, [0018]) with benefit of providing a resin composition having large light transmittance and capable of providing a molded article which is highly laser-weldable to an absorbing resin member, as well as a kit, a method for manufacturing the resin composition, a method for manufacturing a formed article, and a formed article (Page 2, [0023]).
In an analogous art of the resin composition for laser marking and for laser welding, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the resin composition for laser marking and for laser welding by ‘037, so as to include a laser-welded article obtained by laser-welding together the laser-transmitting resin member, and a laser- absorbing resin member formed from a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter as taught by ‘468, and would have been motivated to do so with reasonable expectation that this would result in providing a resin composition having large light transmittance and capable of providing a molded article which is highly laser-weldable to an absorbing resin member, as well as a kit, a method for manufacturing the resin composition, a method for manufacturing a formed article, and a formed article as suggested by ‘468 (Page 2, [0023]).
Regarding claims 17-18: The disclosure of ‘037 in view of ‘524 is adequately set forth in paragraph 8 above and is incorporated herein by reference. ‘037 in view of ‘524 does not expressly teach a method for producing a laser-welded article, comprising: irradiating the laser-transmitting resin member with a laser to laser-mark the laser-transmitting resin member, and laser-welding together the laser-transmitting resin member and a laser-absorbing resin member formed from a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter, wherein the laser welding is performed by galvano- scanning laser welding.
However, ‘468 teaches a method for producing a laser-welded article, comprising: irradiating the laser-transmitting resin member with a laser to laser-mark the laser-transmitting resin member, and laser-welding together the laser-transmitting resin member and a laser-absorbing resin member formed from a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter (Page 2, [0021]-[0022]), wherein the laser welding is performed by galvano scanning laser welding (Page 9, [0134]) with benefit of providing a formed article thus formed by welding the transmitting resin member and the absorbing resin member demonstrates large bonding strength. Now, the formed article conceptually encompasses not only finished articles or components, but also components composing a part of them (Page 9, [0133]). Furthermore, the formed article obtained by laser welding, excels in mechanical strength, has large weld strength, causes less damages on resin due to laser light irradiation, and is therefore applicable to various applications (Page 9, [0135]).
In an analogous art of the method for producing a laser welding, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the method for producing a laser-welded article laser by ‘037, so as to include a method for producing a laser-welded article, comprising: irradiating the laser-transmitting resin member with a laser to laser-mark the laser-transmitting resin member, and laser-welding together the laser-transmitting resin member and a laser-absorbing resin member formed from a light-absorptive resin composition comprising a thermoplastic resin and light-absorptive coloring matter, wherein the laser welding is performed by galvano- scanning laser welding as taught by ‘468, and would have been motivated to do so with reasonable expectation that this would result in providing a formed article thus formed by welding the transmitting resin member and the absorbing resin member demonstrates large bonding strength. Now, the formed article conceptually encompasses not only finished articles or components, but also components composing a part of them (Page 9, [0133]). Furthermore, the formed article obtained by laser welding, excels in mechanical strength, has large weld strength, causes less damages on resin due to laser light irradiation, and is therefore applicable to various applications as suggested by ‘468 (Page 9, [0135]).
Response to Arguments
11. Applicant's arguments filed 05/08/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that when the transmitting resin member is colored with a pigment having high laser light absorptance, like the absorbing resin member, laser light is not transmitted, and laser welding is impossible" and therefore, "using a dye so as to impede the transmission of laser light as little as possible" is advantageous. In contrast, when bismuth oxide is not present, the resulting resin member shows very poor hydrolysis resistance and very poor laser marking characteristics
The examiner respectfully disagrees. Turning to Applicant’s argument regarding unexpected results, examiner agrees that Applicant’s proffered evidence of data of Table 3-8 of the specification when the resin composition includes bismuth oxide in an amount that adheres to the present claims, the resulting resin member shows high welding strength, high hydrolysis resistance, and excellent laser marking characteristics, is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). In order to evaluate the unexpected results, Example 1 and Comparative Example 7 as shown below, are compared since the amount of PBT, GF, EP1, and DY1+DY2+DY3 are identical. However, the amount of I-PIG1 (0.072) in Example 1 is significantly different, when is compared with I-PIG2 (0.007) in Comparative Example 7.
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Again, when Example 6 and Comparative Example 8 having the same amount of PBT, GF, EP1, and DY1+DY2+DY3 are compared, the amount of I-PIG1 (0.145) in Example 6 is significantly different by a factor of 10 when is compared with I-PIG2 (0.014) in Comparative Example 8. It is submitted that the resin composition comparison must be under the substantially the same conditions except for the novel features of the invention. It is further noted that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected or whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., the resin composition) and show the product is actually different from and unexpectedly better than the teachings of the references. The declaration should include a description of precisely what was tested. It must include both the invention as claimed, and the closest prior art. A description of all of the test conditions such as test results should be clearly indicated. The results must include both the results of the test performed on the invention as claimed, and the results of the test performed on the closest prior art, an analysis of the test results. Furthermore, the comparison must be under the substantially the same conditions except for the novel features of the invention, and precisely what was done should be recited in the declaration, e.g., the actual steps carried out, the materials employed, and the results obtained should be spelled out. Nothing concerning the work relied upon should be left to conjecture. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
12. Accordingly, 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.
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
5/06/2026
bijan.ahvazi@uspto.gov
Prosecution Insights