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 .
Response to Amendment
The Amendment filed 06/30/2026 has been entered.
Claims 1-6 and 10-13 remain pending in the application.
Claims 7-9 are canceled.
Independent Claim 1 was amended to include the limitations from dependent Claims 7-9, along with a new limitation wherein the compatibilizer (D) comprises “a polystyrene resin, 1 to 5% by weight of maleic anhydride, and an antioxidant.” Support for this amendment is found in the original Claims 7-9 and Page 9, ¶ 1-2 of the original Specification.
Claim 7 was previously rejected with Oh et al. Since the limitations of Claim 7 are now incorporated into newly amended Claim 1, Oh et al. is now included in the new 103 rejection of Claim 1 in the present action to further elaborate the limitation regarding the particular type of flame retardant (C).
Furthermore, newly amended Claim 1 now requires the reinforcing agent (E) to comprise the presence of both silane-coated glass fiber and silane-coated glass beads. Support for this amendment is found in the original Claim 9 and Page 9, ¶ 5 of the original Specification. This amendment necessitates a new rejection in view of Kikuchi et al. for the first time in prosecution.
The above amendments necessitate new ground(s) of rejections since they have been introduced for the first time in prosecution. Accordingly, the action is properly made FINAL.
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.
Claims 1-6 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Soo (KR 2017/0019719A; cited in the IDS submitted on 12/06/2023; English translation incorporated herein; hereafter as “Soo”) in view of Oh et al. (KR 2016/0077553A; English translation incorporated herein; hereafter as “Oh”), Kikuchi et al. (US 2012/129990
A1; hereafter as “Kikuchi”), and Kiyoji et al. (JP 2004352816 A; English translation incorporated herein; hereafter as “Kiyoji”).
Regarding Claims 1 and 10-11, Soo teaches high-rigidity and high-impact polyphenylene ether flame-retardant resin composition [Claim 1], corresponding to the flame-retardant modified-poly(phenylene oxide) resin composition of Claim 1, comprising:
20-50 wt. % polyphenylene ether resin [Claim 1], which overlaps with 40 to 60% by weight of a poly(phenylene oxide) resin of Claim 1;
10-40 wt. % rubber-modified polystyrene resin [Claim 1]; which is inclusive of 10 to 30% by weight of a polystyrene-based resin of Claim 1;
5 to 10 weight% of a flame retardant [Claim 11]; which is encompassed by 5 to 15% by weight of a flame retardant of Claim 1;
polyphenylene ether that is grafted with 0.3-1 wt. % maleic anhydride [Claims 1-2], wherein the maleic anhydride-grafted polyphenylene ether is manufactured by mixing polyphenylene ether resin with maleic anhydride by reaction extrusion [¶ 0028-00029], which corresponds with the compatibilizer (D) comprises modified poly(phenylene oxide) resin grafted with maleic anhydride, which is prepared by the reaction and extrusion of Claim 1, and overlaps with 1 to 5% by weight of maleic anhydride of Claim 1;
1-5 wt. % styrene-based thermoplastic elastomer, such as polystyrene-polybutadiene-polystyrene copolymer, to improve impact resistance [¶ 0003-0004, 0039; Claims 1, 6], corresponding to 1 to 5% by weight of an impact modifier of Claim 1, and thereby reading on wherein the impact modifier is styrene-butadiene-styrene (SBS) rubber of Claim 10;
0.1 to 2 wt. % of a dispersant1 [Claim 1], which overlaps with 2 to 6 wt. % of an additive of Claim 1.
However, Soo does not explicitly teach the amounts of poly(phenylene oxide) resin, maleic anhydride, polystyrene based resin, compatibilizer, reinforcing agent, and additive of Claim 1.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Soo for the poly(phenylene oxide) resin, maleic anhydride, polystyrene-based resin, compatibilizer, reinforcing agent, and dispersant (additive) (20-50 wt. %, 0.3-1 wt. %, 10-40 wt. %, 5.1-17 wt. %, 5-20 wt. %, and 0.1 to 2 wt. %, respectively) overlap the instantly claimed range (40-60 wt. %, 1-5 wt. %, 10-30 wt. %, 2-8 wt. %, 5-15 wt. %, and 2 to 6 wt. %, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP section 2144.05.
Furthermore, while Soo does not mention the addition of a flame retardant (C) comprising at least one of triphenylphosphate (TPP), bisphenol A bis(diphenylphosphate) (BDP), and aluminum diethylphosphinate (ADP) of Claim 1, nevertheless, Oh teaches the addition of a triphenylphosphate as a flame retardant [¶ 0066] to a polyphenylene oxide-based thermoplastic resin composition comprising polyphenylene oxide [¶0015]. Oh offers the motivation that phosphorus-based flame retardants have excellent flame retardant effects, and expand to block oxygen thereby providing a fire extinguishing effect [¶ 0064]. Thus, it would have been obvious to one of ordinary skill in the art to add the claimed particular flame retardant, i.e., triphenylphosphate (TPP), taught by Oh to the polyphenylene oxide-based thermoplastic resin composition discussed in Soo, with a reasonable expectation of successfully obtaining excellent flame retardant properties.
As to the newly amended claimed compatibilizer (D), Soo teaches the maleic anhydride-grafted polyphenylene ether is manufactured by mixing polyphenylene ether resin with maleic anhydride by reaction extrusion [¶ 0028-00029]. However, Soo does not mention preparing the claimed compatibilizer comprising a polystyrene resin and an antioxidant of Claim 1. Nevertheless, Kiyoji teaches a resin composition with a flame retardant and extruding a compatibilizer comprising a grafted polyphenylene ether resin [Claim 1; ¶ 0034, 0036, 0042], wherein the compatibilizer further comprises polystyrene resin [¶ 0034] and an antioxidant [¶ 0034], corresponding to the polystyrene resin and antioxidant, respectively, of Claim 1. Kiyoji offers the motivation that the polystyrene resins are preferred as compatibilizers because of the improved surface impact strength and volume resistivity [¶ 0034]. Thus, it would have been obvious to one of ordinary skill in the art to add the claimed polystyrene resin and antioxidant taught by Kiyoji to the compatibilizer discussed in Soo, with a reasonable expectation of successfully improving impact resistance and volume resistivity.
Additionally, while Soo teaches glass fiber surface-treated with epoxy silane [Claims 1, 9], which corresponds with the silane-coated glass fiber of Claim 1’s reinforcing agent (F), Soo does not mention the addition of silane-coated glass beads of Claim 1. Nevertheless, Kikuchi teaches flame resistant composition [Abstract], comprising, among other things, a styrene resin, phosphorus flame retardant, glass fibers, impact modifier [Tables 1-2; ¶ 0032, 0158-0160], and further comprising surface treatment of glass beads with silane [¶ 0078], corresponding to the silane-coated glass beads of Claim 1.
Kikuchi offers the motivation that surface treatment of the glass beads increases adhesion to the resin component and improves mechanical properties of the final product [¶0077].
Therefore, it would be obvious to one of ordinary skill in the art to use the silane-surface treated glass beads of Kikuchi in the composition of Soo, with a reasonable expectation of successfully imparting improved adhesion and mechanical properties.
Regarding Claims 2-6 and 12, Soo further teaches:
poly(2,6-dimethyl-1,4-phenylene) ether [¶ 0023], thereby reading on the poly(2,6-dimethyl-1,4-phenylene) ether of Claims 2 and 3;
intrinsic viscosity measured in a chloroform solvent at 25°C be 0.3 to 0.6 dL/g [¶ 0025], corresponding to an intrinsic viscosity of 0.3 to 0.6 dL/g when measured in a chloroform solvent at 25°C of Claim 4;
impact-resistant polystyrene resin (HIPS resin) [Claim 5], thereby reading on the impact-resistant polystyrene resin (HIPS resin) of Claims 5-6;
a molded product formed from said flame-retardant resin composition [¶ 0025], corresponding to a flame-retardant modified-poly(phenylene oxide) resin article, which is molded of Claim 12.
Regarding Claim 13, Soo further teaches automotive battery cell modules [¶ 0014]. Since Soo suggests the same resin composition as that claimed for the same purpose of preparing battery module as applicants, Soo’s composition would also be capable of being used as a battery module housing for electric vehicles as claimed.
Response to Arguments
Applicant's arguments in their Remarks filed 06/30/2026 have been fully considered but they are not persuasive for the following reasons.
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that the claimed compatibilizer (D) – differs from the MA-grafted PPE of Soo.
However, Soo teaches polyphenylene ether that is grafted with 0.3-1 wt. % maleic anhydride [Claims 1-2], wherein the maleic anhydride-grafted polyphenylene ether is manufactured by mixing polyphenylene ether resin with maleic anhydride by reaction extrusion [¶ 0028-00029], which corresponds with the compatibilizer (D) comprises modified poly(phenylene oxide) resin grafted with maleic anhydride, which is prepared by the reaction and extrusion of Claim 1, and overlaps with 1 to 5% by weight of maleic anhydride of Claim 1. While Soo does not teach the polystyrene resin and antioxidant of the compatibilizer of Claim 1, the teachings of Kiyoji would be obvious to one of ordinary skill to modify the composition of Soo. More specifically, Kiyoji teaches a resin composition with a flame retardant and extruding a compatibilizer comprising a grafted polyphenylene ether resin [Claim 1; ¶ 0034, 0036, 0042], wherein the compatibilizer further comprises polystyrene resin [¶ 0034] and an antioxidant [¶ 0034], corresponding to the polystyrene resin and antioxidant, respectively, of Claim 1. Kiyoji also teaches polystyrene resins are preferred as compatibilizers because of the improved surface impact strength and volume resistivity [¶ 0034] which would motivate one of ordinary skill in the art to add the claimed polystyrene resin and antioxidant taught by Kiyoji to the compatibilizer discussed in Soo. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that the claimed flame-retardant species (i.e., one of TPP, BDP, and ADP) differs from the aromatic polyphosphate/melamine polyphosphate system of Soo.
However, while Soo broadly teaches the use of aromatic polyphosphates as a flame retardant [Claim 12], Soo does not explicitly teach specific types of aromatic polyphosphates such as the claimed TPP and BDP. Rather, Oh is relied upon to teach the claimed TPP. Oh also offers the motivation phosphorus-based flame retardants have excellent flame retardant effects, and expand to block oxygen thereby providing a fire extinguishing effect [¶ 0064] which would motivate one of ordinary skill to modify the flame-retardant resin composition of Soo with the TPP of Oh. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that Soo requires as essential components an ethylene terpolymer and an epoxy resin, which the claimed invention does not require.
However, Soo in view of Oh and Kikuchi nevertheless would have suggested the claimed elements of the instant invention for the reasons provided above. Furthermore, adding the ethylene terpolymer and epoxy resin of Soo would not detriment or harm the flame-retardant composition taught by Soo, Oh, and Kikuchi and would still result in the claimed composition. In fact, Soo teaches the ethylene terpolymer and epoxy resin improve the material’s impact resistance, mechanical strength and interfacial bonding strength between the matrix resin and silane coated glass fiber [¶ 0091-0093]. Since Kikuchi also teaches a type of silane coated glass, the silane-coated glass beads, the ethylene terpolymer and epoxy resin of Soo would also be expected to improve the impact resistance, mechanical strength and interfacial bonding strength between the matrix resin and silane coated glass beads of Kikuchi. Therefore, not only would the ethylene terpolymer and epoxy resin of Soo not harm the ingredients of Kikuchi and Oh, but would even motivate one of ordinary skill to combine all the ingredients together with a reasonable expectation of successfully obtaining improved material properties. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that the combination of the specific compatibilizer with both an anisotropic filler (glass fiber) and an isotropic filler (glass beads) improves the balance of deformation resistance, appearance, and mechanical properties which are not apparent from the teachings of Soo.
However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Furthermore, since Soo in view of Oh and Kikuchi also teach the claimed combination of compatibilizer, glass fiber and glass beads, the flame-retardant resin composition of Soon, Oh and Kikuchi would also be expected to have same improved balance of deformation resistance, appearance, and mechanical properties as the instantly claimed invention. Kikuchi also offers the motivation that surface treatment of the glass beads increases adhesion to the resin component and improves mechanical properties of the final product [¶0077]. Therefore, it would be obvious to one of ordinary skill in the art to combined silane-surface treated glass beads of Kikuschi with silane-treated glass fiber of Soo, with a reasonable expectation of successfully improving adhesion and mechanical properties, thereby arriving at the claimed invention.
In addition, the data provided in the instant Specification has been considered but not found to be convincing. The Applicant cites Example 2 as demonstrating how use of the combination with both glass fiber and glass beads improves balance of deformation resistance, appearance, and mechanical properties. However, Comparative Example 2 of the instant Specification also has the claimed glass fiber and glass beads and in the same amounts as the instantly claimed invention [instant Specification, Pages 12-13, Table 1]. It is unclear as to how the examples provided in the instant Specification demonstrate the purported improvement in the balance of deformation resistance, appearance, and mechanical properties. Furthermore, the properties disclosed in Table 2 of the instant Specification shows that the appearance quality, specific gravity, tensile strength, elongation, flexural strength, charpy impact strength, heat deflection temperatures and molding shrinkage of the exemplary Examples 1-2 all overlap the respective properties of the Comparative Examples 1-2. It is unclear what improved properties the Applicant refers to when comparing Examples 1-2 to Comparative Examples 1-2.
Moreover, the instant Specification only provides two exemplary examples [instant Specification, Ex. 1-2]. The two limited examples are not commensurate in scope with the degree of protection sought by the very broad claims of the instant application. Both Ex. 1 and Ex. 2 use the same amounts of the claimed poly(2,6-dimethyl-1,4-phenylene)ether, polystyrene resin, flame retardant, and modified polyphenylene oxide resin grafted with maleic anhydride, impact modifier, and additives, even though Claim 1 recites much broader ranges. Thus, the data has been considered but found to not be commiserate in scope with the claims. See MPEP § 716.02
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that the teachings of Oh fail to cure the deficiencies of Soo because Oh differs from the claimed invention in that its composition base resin includes a polyolefin, the composition requires an processing oil as an essential component, the composition does not contain a reinforcing agent, and the compatibilizer differs in structure.
While Oh does not suggest all the limitations of Claim 1, it is used to teach triphenylphosphate as a flame retardant [¶ 0066] to a polyphenylene oxide-based thermoplastic resin composition comprising polyphenylene oxide [¶0015]. Oh also teaches that phosphorus-based flame retardants have excellent flame retardant effects, and expand to block oxygen thereby providing a fire extinguishing effect [¶ 0064] which would motivate one of ordinary skill to add the triphenyl phosphate of Oh to the composition of Soo. It follows that the teachings of Oh in combination with Soo and Kikuchi would have suggested the claimed composition as a whole for the reasons provided above. Thus, Applicant’s argument is not persuasive.
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that there is no motivation to combine Soo and Oh because these references address different fields and objectives.
However, Soo and Oh are both from the same field of flame-retardant resin compositions comprising polyphenylene oxide [see Oh, ¶ 0015; Soo, Claim 1], impact modifier [see Oh, ¶ 0015; Soo, Claims 1,6], flame retardant [see Oh, ¶ 0015; Soo, Claim 11], polystyrene [see Oh, ¶ 0115; Soo, Claim 1], and phosphorus-based flame retardant [see Oh, ¶ 0115; Soo, Claim 12]. Soo and Oh also both teach that their respective compositions can be used in electrical components and automobile wiring [see Oh, ¶ 0107; and Soo, ¶ 0060]. Furthermore, Oh also teaches phosphorus-based flame retardants have excellent flame retardant effects, and expand to block oxygen thereby providing a fire extinguishing effect [¶ 0064] which would motivate one of ordinary skill to modify the flame-retardant resin composition of Soo with the TPP of Oh. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 6 of 7 of the Remarks submitted on 06/30/2026 that the combined prior art fails to teach or suggest all the elements of the claim, the combination of prior art cannot render claim 1 unpatentable and therefore the remaining claims that depend on claim 1 should be in condition for allowance.
However, attention is directed to the disclosure above, wherein Soo teaches the maleic anhydride modified polyphenylene oxide resin, polystyrene resin, flame retardant, silane-treated glass fibers, impact modifier, additive, and antioxidant, Oh teaches the triphenyl phosphate, and Kikuchi teaches the silane-treated glass beads. Since the combined teachings of Soo, Oh, and Kikuchi suggest the instantly invention of Claim 1, the inventions of dependent Claims 2-6 and 10-13 are rendered obvious as well. Thus, applicant’s argument is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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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/DORIS LING/Examiner, Art Unit 1764
/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Jianyi teaches dispersants are additives [“Encyclopedia of dispersant: Understanding of dispersants”, Jianyi, 2020-10-23, ¶ 3].
Prosecution Insights