DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, 15, and 16 in the reply filed on 6/23/2026 is acknowledged.
Claims 13, 14, 17, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to with regards to Fig. 2, reproduced below.
PNG
media_image1.png
378
578
media_image1.png
Greyscale
Note that the arrows that are intended to mark the individual phases of the composition blend into the picture, making it unclear which structure is intended to be identified as each phase. Furthermore, there appears a numeral “4” slightly below the midpoint on the right side of Fig. 2; it is unclear whether this is intended to be labeling part of the figure.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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) 1-12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al, EP3992245, in view of Borade et al, US2007/0049690.
Choi discloses a conductive resin composition (for claim 1) which is used in the production of molded articles (for claim 15) such as electrostatically coated automotive exterior parts (for claim 16) (abstract; Choi claim 17), wherein said composition comprises 100 parts of a base resin (A), two or more polyfunctional reaction agents (B), corresponding to the claimed multifunctional reactive agents (for claim 1); carbon nanotubes (for claim 1); and carbon nanoplates (for claim 1) (abstract, ¶0015). Said base resin (A) comprises a polyester (for claim 1), a polyarylene ether (for claim 1), and an aromatic elastomer. Said aromatic elastomer may be a styrene/butadiene/styrene (SBS) block copolymer (¶0044), corresponding to the claimed block copolymerization impact modifier (for claim 1).
Regarding the amounts of components: The prior art composition comprises 100 parts of the base resin (A) which in turn comprises 30 to 80 wt% polyester (for claim 2) (¶0031), 15 to 60 wt% polyarylene ether (for claim 2) (¶0037) and 1 to 30 wt% aromatic elastomer (¶0045); 3 to 12 parts by weight of the polyfunctional reaction agents (¶0055), 0.1 to 3 parts of the carbon nanotubes (¶0067), and 0.1 to 5 parts of the carbon nanoplates (¶0077).
As noted above, the prior art base resin comprises 70 to 99 parts of the combination of polyester and polyarylene ether. It is therefore calculated that the prior art composition comprises about 1 to 42.8 parts aromatic elastomer, 3 to 17 parts of the polyfunctional reactive agents (for claim 6), 0.1 to 4.3 parts carbon nanotubes, and 0.1 to 7.1 parts (for claim 10) carbon nanoplates per 100 parts of the combination of polyester and polyarylene ether. The combination of aromatic elastomer and the polyfunctional reactive agents is therefore included in an amount in the range of 4 to 59.8 parts, overlapping the claimed range for the amount of first additives (B) (for claim 1), and the combination of carbon nanotubes and nanoplates is added in an amount of 0.2 to 11.4 parts.
Regarding claim 3: The prior art polyester may be polybutylene terephthalate (¶0026).
Regarding claims 4, 5: As noted above, the composition of Choi comprises two or more polyfunctional reaction agents. These components each comprise two or more functional groups such as maleic acid group and/or epoxy group (for claim 4) (¶0049). Preferably the reaction agents comprise a polyphenylene oxide functionalized with maleic acid (anhydride) and a bisphenol type A epoxy resin (for claim 5) (¶0056).
Regarding claim 8: As noted above, the composition of Choi comprises carbon nanotubes. Said nanotubes are characterized by a BET surface area of 180 to 600 m2/g and may be rope-type (i.e., fibers) (¶0065, 069).
Regarding claim 9: As noted above, the composition of Choi comprises carbon nanoplates. Said nanoplates are plate-shaped with a thickness of 5 to 50 nm (for claim 9) (¶0073).
Choi is silent regarding the production of a composition comprising three or more additives chosen from the group consisting of a polar polyolefin resin, a second polyester, carbon nanotubes, and carbon nanoplates.
Borade discloses the production of impact modified poly(arylene ether)/polyester blends, wherein the impact properties are improved via the inclusion of a combination of first impact modifier and second impact modified (abstract, ¶0004-0008). Said first impact modifier may be a SBS block copolymer (¶0031). Said second impact modifier may be an epoxy-functional copolymers of glycidyl methacrylate and alkene(s) such as ethylene and propylene-i.e., a polar polyolefin (0032). Borade further teaches that the second impact modifier may be a combination of such polymers, corresponding to the claimed use of first and second polar polyolefins (for claims 1, 6, 7). Borade teaches that the combination of first and second impact modifiers is added in an amount of 10 to 22 wt% (¶0034).
Choi and Borade both disclose the production of polyester/polyarylene ether blends comprising SBS block copolymer as an impact modifier. As taught by Borade, it was known in the art that the impact properties of such blends could be further improved by using one or more epoxy functional olefin polymer, corresponding to the claimed first (for claim 7) and second polar polyolefins (for claim 1), as additional impact modifier(s). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Choi by using a combination of SBS block copolymer, corresponding to the claimed block copolymerization impact modifier, and one or more epoxy-functional polyolefin, corresponding to the claimed first and second polar polyolefin with the reasonable expectation of obtaining a final composition having the combination of improved impact properties and heat resistance taught by Borade (¶0013).
Note that, as taught by Borade, said modification would result in a final composition wherein the total amount of impact modifier is 10 to 22 wt%-i.e., the amount of each of the SBS block copolymer and the epoxy functional polyolefin would be less than 22 parts. Given the amounts of each component taught by Choi as discussed in paragraphs 12 to 13 of this Action, this would result in a final composition comprising less than 22 parts of the SBS block copolymer, overlapping the claimed range (for claim 6), a total of less than 39 parts of the combination of SBS block copolymer and polyfunctional reactive agents, overlapping the claimed range for the amount of first additives (B) (for claim 1), less than 22 parts of the first polar polyolefin (for claim 6), and less than 33.4 parts of the combination of second polar polyolefin, carbon nanotubes and nanoplates , overlapping the claimed range for additives (C) (for claim 1).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare a composition comprising the required amounts of each component in view of the prior art.
Regarding the claimed sea-island structure (for claim 1), use of a masterbatch (for claim 7), moisture absorption rate (for claim 11), heat deflection temperature (for claim 12), and surface resistance (for claim 12): "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113(I)).
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art renders obvious a composition comprising the same components combined in the same amounts as the claimed composition. Further note that applicant’s specification does not point to any particular methods/conditions as being required to create this structure; rather, the specification merely states that the composition is made using an extruder/kneader (see specification ¶52). Note that the composition of Choi is made using an extruder/kneader (0097). As the composition taught by the prior art appears to be the same as the claimed invention, the burden is shifted to the applicant to provide evidence that the composition rendered obvious by the prior art would not have the claimed properties (for claims 1, 11,12); see In re Fitzgerald cited above. Similarly, the burden is shifted to applicant to provide evidence demonstrating that incorporating the additives (C) in the form of a masterbatch results in an unobvious difference between the claimed invention and the prior art (for claim 7); see In re Thorpe cited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights