DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/29/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a polyethylene terephthalate”. While there is support for specific polyethylene terephthalate, i.e. recycled polyethylene terephthalate (r-PET), in an amount of 86.5 wt.% in the example (see paragraph 0040 of present specification), there is no support for broad disclosure of any polyethylene terephthalate. This rejection affects all the dependent claims.
Claim 1 recites “a polycarbonate and a modified polyethylene terephthalate”. While there is support for a specific example comprising specific amounts of polycarbonate and specific amounts of modified polyethylene terephthalate (see Table 1), there is no support for broad disclosure of any amount of polycarbonate and any amount of modified polyethylene terephthalate. This rejection affects all dependent claims.
Claim 10 recites “an intrinsic viscosity of the polyethylene terephthalate is 0.6 dL/g to 0.86 dL/g”. While there is support for polyethylene terephthalate having an intrinsic viscosity of 0.8 dL/g in the example (see paragraph 0040 of present specification), there is no support for broad disclosure of an intrinsic viscosity as presently claimed.
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 1 and 10 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.
Claim 1 recites “polyethylene terephthalate modified by 20% isophthalic acid”. It is not clear if the unit of 20% isophthalic acid is wt% or mol%. Clarification is requested. This rejection affects all the dependent claims.
Claim 1 recites “mixed antioxidant”. It is not clear what is meant by “mixed antioxidant”. Is the mixed antioxidant a mixture of two antioxidants or the mixed antioxidant is one antioxidant? Clarification is requested. For the purpose of examination, the examiner construes that the mixed antioxidant is a mixture of two antioxidants. This rejection affects all the dependent claims.
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 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN 111234496 A) in view of Greener et al. (US 2011/0115109 A1), Whelan et al. (US 2019/0112472 A1) and Kawamoto et al. (JP H11302525 A). It is noted that the disclosures of Xu et al. and Kawamoto et al. are based on a machine translation of the references which are included in this action.
Regarding claim 1, Xu et al. disclose a composite material (alloy material) comprising 10-90 parts of polycarbonate resin, 10 to 90 parts of polyethylene terephthalate, 0.1 to 1 parts of an ester exchange inhibitor (transesterification inhibitor), 0 to 15 parts of a compatibilizer such as ethylene-methyl acrylate-glycidyl methacrylate terpolymer, 0 to 15 parts of flexibilizer (toughening agent), 0 to 1 part of an antioxidant such a mixture of two antioxidants (mixed antioxidant) and 0 to 1 part of processing aid such as polyethylene wax (lubricant) (see Abstract and paragraphs 0042, 0043, 0045, 0046).
Xu et al. do not disclose transesterification inhibitor as presently claimed. Xu et al. do not disclose toughening agent as presently claimed. Xu et al. do not disclose a crystallization inhibitor comprising polyethylene terephthalate modified by 20% isophthalic acid and its amount.
As indicated by Greener et al., it is well known to use tris (2,4-di-t-butylphenyl)phosphite as transesterification inhibitor in a blend comprising polyester and polycarbonate in order to substantially inhibit a transesterification reaction (see paragraph 0043).
In light of motivation for using tris (2,4-di-t-butylphenyl)phosphite disclosed by Greener et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use tris (2,4-di-t-butylphenyl)phosphite as the transesterification inhibitor in Xu et al. in order to substantially inhibit a transesterification reaction between polycarbonate and polyethylene terephthalate, and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Xu et al. in view of Greener et al. do not disclose toughening agent as presently claimed. Xu et al. in view of Greener et al. do not disclose a crystallization inhibitor comprising polyethylene terephthalate modified by 20% isophthalic acid and its amount.
Whelan et al. disclose a thermoplastic polymer blend comprising polyethylene terephthalate (PET), a polymeric toughening agent and a compatabilizer (see Abstract). The thermoplastic polymer blend is more flexible, exhibits superior impact strength over a wide range of temperatures and exhibits higher crystallization temperature than the PET alone (see paragraph 0032). The polymeric toughening agent provides superior impact performance (see paragraph 0033). The polymeric toughener is an elastomer such as propylene-based elastomer (see paragraph 0037).
In light of motivation for using polymeric toughener such as propylene-based elastomer disclosed by Whelan et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use propylene-based elastomer as the toughening agent in the composite material of Xu et al. in view of Greener et al. in order to provide flexibility, superior impact strength and higher crystallization temperature, and thereby arrive at the claimed invention.
Xu et al. in view of Greener et al. and Whelan et al. do not disclose a crystallization inhibitor comprising polyethylene terephthalate modified by 20% isophthalic acid and its amount.
Kawamoto et al. disclose a resin composition excellent in heat resistance and morphological stability, comprising a polycarbonate resin and isophthalic acid modified polyethylene terephthalate (see Abstract). The resin composition includes 100 parts by weight of polycarbonate and 0.5 to 40 parts by weight of isophthalic acid modified polyethylene terephthalate, wherein amount of isophthalic acid is 5 to 30 mol% (see Abstract). The isophthalic acid modified polyethylene terephthalate provides adhesiveness and heat resistance (see paragraph 0017). The isophthalic acid modified polyethylene terephthalate reads on a crystallization inhibitor as presently claimed.
In light of motivation for using 0.5 to 40 parts by weight of isophthalic acid modified polyethylene terephthalate disclosed by Kawamoto et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 0.5 to 40 parts by weight of isophthalic acid modified polyethylene terephthalate based on 100 parts of polycarbonate resin in Xu et al. in view of Greener et al. and Whelan et al., in order to provide excellent heat resistance, morphological stability and adhesiveness, and thereby arrive at the claimed invention.
As noted above, Xu et al. disclose a composite material (alloy material) comprising 10-90 parts of polycarbonate resin, 10 to 90 parts of polyethylene terephthalate, 0.1 to 1 parts of transesterification inhibitor, 0 to 15 parts of a compatibilizer, 0 to 15 parts of toughening agent, 0 to 1 part of mixed antioxidant and 0 to 1 part of lubricant. Xu et al. in view of Greener et al. and Whelan et al. comprises 0.5 to 40 parts by weight of isophthalic acid modified polyethylene terephthalate (crystallization inhibitor) based on 100 parts by weight of polycarbonate resin. Therefore, the amount of isophthalic acid modified polyethylene terephthalate is 0.05 to 4 parts by weight based on 10 parts of polycarbonate resin (0.05 = 10/100 x 0.5 and 4 = 10/100 x 40).
Accordingly, Xu et al. in view of Greener et al. and Whelan et al. disclose 10 parts of polycarbonate resin, 90 parts of polyethylene terephthalate, 0.1 to 1 parts of transesterification inhibitor, 0 to 15 parts of a compatibilizer, 0 to 15 parts of toughening agent, 0 to 1 part of mixed antioxidant, 0 to 1 part of lubricant and 0.05 to 4 parts by weight of crystallization inhibitor. That is, a content of polyethylene terephthalate is greater than a content of polycarbonate. The components polyethylene terephthalate, transesterification inhibitor, compatibilizer, toughening agent, mixed antioxidant, lubricant and crystallization inhibitor together read on a modified polyethylene terephthalate as presently claimed. The amounts of these components in the modified polyethylene terephthalate are 73 to 97 wt% of polyethylene terephthalate (73 = 90/124.1 x 100 and 97 = 90/93.05 x 100), 0.08 to 1.1 wt% of transesterification inhibitor (0.08 = 0.1/124.1 x 100 and 1.1 = 1/93.05 x 100), 0 to 12 wt% of compatibilizer (0 = 0/93.05 x 100 and 12 = 15/124.1 x 100), 0 to 12 wt% of toughening agent (0 = 0/93.05 x 100 and 12 = 15/124.1 x 100), 0 to 1.1 wt% of mixed antioxidant (0 = 0/124.1 x 100 and 1.1 = 1/93.05 x 100), 0 to 1.1 of lubricant (0 = 0/124.1 x 100 and 1.1 = 1/93.05 x 100) and 0.05 to 3.2 wt% of crystallization inhibitor (0.05 = 0.05/93.05 x 100 and 3.2 = 4/124.1 x 100) (93.05 = 90 + 1 + 0 + 0 + 1 + 1 + 0.05 and 124.1 = 90 + 0.1 + 15 + 15 + 0 + 0 + 4).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN 111234496 A) in view of Greener et al. (US 2011/0115109 A1), Whelan et al. (US 2019/0112472 A1) and Kawamoto et al. (JP H11302525 A) as applied to claim 1 above, further in view of Goshima et al. (US 2014/0205785 A1).
Regarding claim 10, Xu et al. in view of Greener et al., Wheelan et al. and Kawamoto et al. disclose the composite material (alloy material) as set forth above. Xu et al. in view of Greener et al., Wheelan et al. and Kawamoto et al. do not disclose an intrinsic viscosity of polyethylene terephthalate.
Goshima et al. disclose polyethylene terephthalate having an intrinsic viscosity of 0.6 to 0.9 dL/g provides flowability, prevention of cracking and toughness improvement for improving durability to heating and cooling (see paragraph 0050).
In light of motivation for using polyethylene terephthalate having an intrinsic viscosity of 0.6 to 0.9 dL/g disclosed by Goshima et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the polyethylene terephthalate having an intrinsic viscosity of 0.6 to 0.9 dL/g in the composite material of Xu et al. in view of Greener et al., Wheelan et al. and Kawamoto et al. in order to provide flowability, prevention of cracking and toughness improvement for improving durability to heating and cooling, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Huang (US 6,342,578 B1) disclose PET containing up to 20 wt% of isophthalic acid (see col. 3, lines 48-53).
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787