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 .
Response to Amendment
Applicant’s amendment filed on 12/18/2025 is acknowledged. The previous rejection is maintained in this office action. Claims 1-13 are examined on the merits in this office action.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20080061813A cited in IDS) in view of Kraton (Kraton G1650 polymer, 2019), Angell et al. (US 2012/0053265 A1 cited in IDS) and Takagi et al. (JP2000095934A). It is noted that the disclosures of Lee et al. are based on a machine translation of the reference (cited in IDS) and Takagi et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1-13, Lee et al. disclose a thermoplastic resin composition comprising 25 to 95 parts by mass of polycarbonate resin, 1 to 70 parts by mass of vinyl copolymer based on styrene, i.e. styrene copolymer, 0.1 to 40 parts by mass of epoxy-group containing styrenic resin and 0.1 to 20 parts by mass of a flame retardant, based on 100 parts by mass of base resins (see Abstract, page 9, col. 2, paragraph 1 of machine translation and paragraph bridging pages 11-12 of machine translation). The epoxy-group containing styrenic resin is glycidyl (meth)acrylate-modified polystyrene comprising 0.02 to 5 mol% of epoxy compound (see page 10, col. 2, paragraphs 4-9 of machine translation). While Lee et al. do not disclose amount of epoxy compound in wt%, the broad disclosure of mol% of epoxy compound will overlap with mol% of epoxy compound as presently claimed absent evidence to the contrary. A molded article can be formed from the thermoplastic resin composition (page 12, col. 2, paragraph 2 of machine translation).
The aforementioned amounts are based on 95 parts of polycarbonate resin. The amounts based on 100 parts of polycarbonate resin would be 1 to 74 parts by mass of styrene copolymer, 0.1 to 42 parts by mass of epoxy-group containing styrenic resin and 0.1 to 21 parts by mass of a flame retardant. Based on the amount of epoxy-group containing styrenic resin and amount of styrene copolymer, the ratio of styrene copolymer and epoxy-group containing styrenic resin is 1.7:1 to 10:1 (1.7 = 74/42 and 10 = 1/0.1). Therefore, the ratio of epoxy-group containing styrenic resin and styrene copolymer is 1:1.7 to 1:10. Based on the amount of epoxy-group containing styrene resin and flame retardant, the ratio of epoxy-group containing resin and flame retardant is 1:1 to 1:0.5 (1:1 = 0.1/0.1 and 1:0.5 = 42/21).
While Lee et al. disclose styrene copolymer, Lee et al. do not disclose styrene copolymer is styrene-ethylene/butylene styrene copolymer as presently claimed. While Lee et al. disclose flame retardant, Lee et al. do not disclose flame retardant is DOPO as presently claimed. Lee et al. do not disclose a polyphenylene ether resin and its amount as presently claimed. Lee et al. do not disclose glass fiber and its amount as presently claimed.
Kraton discloses Kraton G1650, a styrene-based copolymer that is styrene-ethylene-butylene-styrene copolymer that provides stability to withstand weathering and high processing temperatures (see Description). Although Kraton do not disclose melt flow index of Kraton G1560, given that Kraton G1650 is identical to that utilized in the present invention (see paragraph 0070 of the specification), it is inherent or obvious that the Kraton G1650 has melt flow index as presently claimed.
In light of motivation for using Kraton G1650 disclosed by Kraton as described above, it therefore would have been obvious to one of the ordinary skill in the art to use Kraton G1650 as the styrene copolymer in Lee et al. in order to provide stability to withstand weathering and high processing temperatures, and thereby arrive at the claimed invention.
While Lee et al. disclose flame retardant, Lee et al. in view of Kraton do not disclose flame retardant is DOPO as presently claimed. Lee et al. in view of Kraton do not disclose a polyphenylene ether resin and its amount as presently claimed. Lee et al. in view of Kraton do not disclose glass fiber and its amount as presently claimed.
Angell et al. disclose DOPO flame retardant that can be combined with a polymer such as polycarbonates and polystyrenes (see Abstract and paragraph 0010). DOPO is thermally and hydrolytically stable and is able to withstand high temperature polymer processing (see paragraph 0004). Further, DOPO being phosphorus based flame retardant is environmentally friendly (see paragraph 0002).
In light of motivation for using DOPO disclosed by Angell et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use DOPO as the flame retardant in Lee et al. in view of Kraton in order to provide thermal hydrolytically stability as well as ability to withstand high temperature polymer processing, and thereby arrive at the claimed invention.
Lee et al. in view of Kraton and Angell et al. do not disclose a polyphenylene ether resin and its amount as presently claimed. Lee et al. in view of Kraton and Angell et al. do not disclose glass fiber and its amount as presently claimed.
Takagi et al. disclose a thermoplastic resin composition comprising 5 to 95 parts by weight of polycarbonate resin and 5 to 95 parts by weight of polyphenylene ether resin (see Abstract). Accordingly, the amount of polyphenylene ether is 5 to 100 parts by weight with respect to 100 parts by weight of polycarbonate resin (5 = 100/95 x 5 and 100 = 100/95 x 95). The polyphenylene ether is identical to that presently claimed (see paragraphs 0012-0016). The polyphenylene ether improves impact strength and appearance of a molded article (see paragraphs 0012-0016). The thermoplastic resin composition comprising polycarbonate resin and polyphenylene ether resin is excellent in rigidity and impact resistance, and excellent in heat resistance and workability (see paragraph 0004). Further, the thermoplastic resin composition comprises a filler such as glass fiber in amount of 5 to 40 parts by weight with respect to 100 parts by weight of polycarbonate resin (5 to 95 parts by weight) and polyphenylene ether resin (5 to 95 parts by weight) in order to improve rigidity, heat resistance and dimensional accuracy (pages 4-5, bridging paragraph). Accordingly, the amount of glass fiber is 5 to 42 parts by weight with respect to 100 parts by weight of polycarbonate resin (5 = 100/95 x 5 and 42 = 100/95 x 40).
In light of motivation for using 5 to 100 parts by weight of polyphenylene ether resin and 5 to 42 parts by weight of glass fiber disclosed by Takagi et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 5 to 100 parts by weight of polyphenylene ether resin and 5 to 42 parts by weight of glass fiber in the thermoplastic resin composition of Lee et al. in view of Kraton and Angell et al. in order to provide rigidity, impact resistance, heat resistance, workability and dimensional accuracy, and thereby arrive at the claimed invention.
Accordingly, Lee et al. in view of Kraton, Angell et al. and Takagi et al. disclose the thermoplastic resin composition identical to that presently claimed. Therefore, it is inherent or obvious that the thermoplastic resin composition of Lee et al. in view of Kraton, Angell et al. and Takagi et al. has presently claimed properties.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Applicants argue that as an example, the Office admits that Lee does not disclose styrene-ethylene/butylene- styrene copolymer as claimed. Not only does Lee not disclose styrene-ethylene/butylene-styrene copolymer as claimed. The vinyl copolymers of Lee relied upon by the Office differ in composition (e.g., include different comonomers such as acrylonitrile) and would be expected to have different properties as compared to styrene-ethylene/butylene-styrene copolymer recited in claim 1. There is accordingly no motivation to modify the Lee composition to substitute the vinyl copolymer of Lee with a copolymer having a different compositional makeup and properties.
It is agreed that Lee does not disclose styrene-ethylene/butylene-styrene copolymer. However, Lee broadly discloses vinyl copolymer based on styrene, i.e. styrene copolymer. While Lee disclose monomer such as acrylonitrile can be used, Lee does not teach away from using other monomers (page 9, col. 2, paragraph 1 of machine translation).
Applicants argue that as another example, Lee does not teach or suggest a weight ratio of epoxy-group containing styrene and vinyl copolymer (which again as noted herein differs from Applicant's claimed styrene-ethylene/butylene-styrene copolymer). Lee also does not provide the skilled artisan any direction or motivation to select any weight ratio thereof.
As set forth above, Lee discloses the styrene copolymer and the epoxy-group containing styrenic resin including their amounts. Based on their amounts, the ratio of epoxy-group containing styrenic resin and styrene copolymer is 1:1.7 to 1:10.
Applicants argue that in addition, Applicant respectfully disagrees with the Office's calculation of hypothetical ranges of amounts and weight ratios of Lee's vinyl copolymer and epoxy-group containing styrene. Further, without any admissions regarding the propriety of the Office's approach or calculations, when the full scope of Lee is considered, any alleged hypothetical ranges of amounts and weight ratios of Lee's vinyl copolymer and epoxy-group containing styrene are so extremely broad as to encompass such a large number of possibilities that there cannot be any reasonable expectation of success, particularly in the absence of any direction or suggestion in Lee and/or without the benefit of hindsight based on Applicant's own application.
However, the fact remains that Lee discloses that the ratio of epoxy-group containing styrenic resin and styrene copolymer is 1:1.7 to 1:10, which overlaps with that presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Applicants argue that the data in Tables 1 and 2 on page 15 of the present application demonstrates that compositions as claimed including all of the recited types of components in amounts within the ranges recited in claim 1, and including a weight ratio of a weight ratio of (D1) epoxy-modified polystyrene and (E1) styrene-ethylene/butylene-styrene copolymer within the range recited in claim 1, can unexpectedly/unpredictably exhibit good impact resistance, flowability, appearance characteristics, and a low dielectric constant and dielectric loss rate, and a balance thereof. In contrast, the data of Comparative Examples 13 and 14 in Table 4 on page 16 of the present application demonstrates that compositions including the same components in amounts within the ranges recited in claim 1, but including a weight ratio of (D1) epoxy-modified polystyrene and (E1) styrene-ethylene/butylene-styrene copolymer outside of the lower or upper endpoint of the range recited in claim 1 can have poorer impact resistance, flowability, appearance characteristics, and/or dielectric loss rate, and may not exhibit a balance thereof. The data in the table above also demonstrates that the Lee compositions modified as argued in the Office Action do not necessarily (inherently) have the same properties as the claimed compositions and thus rebuts a conclusion otherwise for this reason as well.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that (i) the examples recite a specific polycarbonate, while the present claim recite any polycarbonate resin, (ii) the examples recite a specific polyphenylene ether resin in specific amounts, while the present claim recite any polyphenylene ether resin in broad amounts, (iii) the examples recite a specific glass fiber in specific amounts, while the present claim recite any glass fiber in broad amounts, (iv) the examples recite a specific epoxy-modified polystyrene in specific amounts, while the present claim recite any epoxy-modified polystyrene in broad amounts, (v) the examples recite a specific styrene-ethylene/butylene-styrene copolymer in specific amounts, while the present claim recite any styrene-ethylene/butylene-styrene copolymer in broad amounts, (vi) the examples recite a specific amount of DOPP, while the present claim has broad amounts of DOPO, and (vi) the examples recite a specific ratio of epoxy-modified polystyrene and styrene-ethylene/butylene-styrene copolymer, while the present claim has broad recitation of ratio of epoxy-modified polystyrene and styrene-ethylene/butylene-styrene copolymer.
Further, given that Lee et al. in view of Kraton, Angell et al. and Takagi et al. disclose a thermoplastic resin composition including polycarbonate resin, polyphenylene ether resin, glass fiber, epoxy-modified polystyrene and styrene-ethylene/butylene-styrene copolymer identical to that presently claimed, with their amounts overlapping with that presently claimed and with the ratio of epoxy-modified polystyrene and styrene-ethylene/butylene-styrene copolymer overlapping with that presently claimed, within the overlapping ranges, the thermoplastic resin composition necessarily inherently has the same properties as the claimed composition absent evidence to the contrary.
Applicants argue that further, the data is evidence that there is no reasonable expectation of success with respect to the ability to formulate a composition having the same properties as the claimed compositions. Reasonable expectation of success requires motivation to do more than merely vary all parameters or try each of numerous possible choices until one possibly arrives at a successful result. In re Stephan, 868 F.3d 1342 (Fed. Cir. 2017). The cited documents do not provide sufficient guidance for the skilled artisan to provide compositions including all of the claimed elements and having all of the properties thereof.
However, there is a reasonable expectation of success when combining the references. As set forth above, a proper motivation has been provided by the cited prior arts (Kraton, Angell and Takagi) when combining the references and therefore, it would be obvious to use a composition, including that presently claimed, absent evidence to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787