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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 7, 2026.
Applicant’s election without traverse of Group I in the reply filed on July 7, 2026 is acknowledged.
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.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Narong et al (WO 2012/065292 A).
Regarding Claims 1, 9, and 11-12: Narong teaches a composition containing 5-70wt% of a branched polycarbonate (para. 0046), up to 95wt% of a linear polycarbonate (para. 0048), 0.02-1wt% of an alkali metal or alkaline earth metal salt of a sulfonic acid (para. 0060-62), and a cyclic siloxane such as octaphenyl cyclotetrasiloxane (para. 0055), which reads on the formula (R12SiO)y of instant claim 1. Narong further teaching an embodiment having 22wt% linear PC, 78wt% branched PC, and 0.08wt% of the sulfonic acid salt/potassium perfluorobutane sulfonate (Table 3, Batch 1-11). The linear and branched polycarbonates may be end-capped with compounds other than a cyano-substituted phenol (para. 0042). Narong further teaches that the branched PC has a degree of branching from 0.05-4.2% (para. 0044). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a branched PC with an overlapping degree of branching and would have been motivated to do so since Narong teaches the branching level may be adjusted within the disclosed range to tune the amount of terminating agent and the molecular weight of branched PC (para. 0038).
Regarding Claims 2-4: Narong does not teach PTFE, halogenated FR, or polysiloxane-polycarbonate copolymers as necessary components.
Regarding Claim 5: Narong teaches 0-80 parts by weight of reinforcing fibers, based on 100 parts by weight of the polymer component (para. 0085). Based on calculations, the fibers are present at up to approximately 44wt% of the total weight of the composition. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an overlapping amount of reinforcing fibers to the composition of Narong and they would have been motivated to do so to add strength while maintaining the transparency and flame retardancy of the polycarbonate (para. 0083).
Regarding Claim 6: Narong teaches 0.1-0.8wt% of the cyclic siloxane (para. 0057). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an overlapping amount of the cyclic siloxane and would have been motivated to do so since Narong teaches that this amount achieves the desired flame retardancy of the composition, as well as increasing transparency (para. 0073).
Regarding Claim 7: Narong teaches antioxidants (para. 0086), heat stabilizers (para. 0087), UV absorbers (para. 0088), mold release agents (para. 0090), colorants (para. 0092), and impact modifiers (para. 0097).
Regarding Claim 8: Narong teaches an embodiment consisting of linear PC, branched PC, heat stabilizer, potassium perfluorobutane sulfonate, and cyclic siloxane (Table 3, Batch 1-9).
Regarding Claim 10: Narong teaches phenol and alkyl-substituted phenol end-caps (para. 0042), reading on formulae (2a) and (2b).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/561420 in view of Narong et al (WO 2012/065292 A).
Reference Claim 1 teaches a composition having 3-82wt% of a linear polycarbonate, 15-96wt% of a polycarbonate having a degree of branching of 0.8-1.5mol% and not having end groups reading on instant formula (I), 0.040-0.095wt% of an alkali metal, alkaline earth metal, or ammonium salt of an aliphatic or aromatic sulfonic acid, sulfonamide, or sulfonamide derivative, and 1-40wt% of a reinforcing fiber. Reference claim 1 does not teach the siloxane (E) of the instant application. However, Narong teaches a composition having a cyclic siloxane reading on component (E) (para. 0054) that improves flame performance and increases transparency of polycarbonate compositions when used in conjunction with the alkali metal, alkaline earth metal, or ammonium salt of an aliphatic or aromatic sulfonic acid, sulfonamide, or sulfonamide derivative. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add said cyclic siloxane in order to obtain a composition with improved flame performance and transparency.
Reference claims 2-12 further limit the invention in such a manner that they read on instant claims 2-12.
This is a provisional nonstatutory double patenting rejection.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/561339 in view of Narong et al (WO 2012/065292 A).
Reference claim 15 teaches 4-85wt% of a linear polycarbonate, 14-95wt% of a polycarbonate having a degree of branching of 0.-1.5mol%, 0.040-0.095wt% of an alkali metal, alkaline earth metal, or ammonium salt of an aliphatic or aromatic sulfonic acid, sulfonamide, or sulfonamide derivative, and 0-40wt% of a reinforcing fiber. Reference claim 15 does not teach the siloxane (E) of the instant application. However, Narong teaches a composition having a cyclic siloxane reading on component (E) (para. 0054) that improves flame performance and increases transparency of polycarbonate compositions when used in conjunction with the alkali metal, alkaline earth metal, or ammonium salt of an aliphatic or aromatic sulfonic acid, sulfonamide, or sulfonamide derivative. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add said cyclic siloxane in order to obtain a composition with improved flame performance and transparency.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights