DETAILED ACTION
Claim Status
Claim(s) 1-6, 9-17 is/are pending.
Claim(s) 1-6, 9-17 is/are rejected.
Claims 7-8 is/are cancelled by Applicants.
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 .
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 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.
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.
Claim(s) 1-6, 9-16 is/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.
Regarding claim 1, the disclosure as originally filed only provides support for “wherein the polycarbonate resin contained in the first and second skin layers may have a melt volume-flow rate 1.0 to 5 times a melt volume-flow rate of the polycarbonate resin contained in the core layer”. However, the disclosure as originally filed fails to provide support for requiring a specific volume-flow rate ratio of 1.0 to 5 times between: (i) any resin contained in the first and second skin layers; and (ii) any “resin” (which could be the same as or different from the resin of the first and second skin layers).
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.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office Action mailed 11/05/2026 have been withdrawn in view of the Claim Amendments filed 02/04/2026.
Terminal Disclaimer
The terminal disclaimer filed on 02/04/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issuing for Application No. 18/574,928 has been reviewed but is NOT accepted for the following reason(s):
The application/patent being disclaimed has been improperly identified since the listed filing date of the referenced pending application (i.e., 18/574,948) being disclaimed is incorrect. The correct filing date is December 28, 2023.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-6, 9-17 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claim(s) 1-3, 5-19 of copending Application No. 18/574,928 (allowed) (US 2025/0010589) (TANIGUCHI ET AL);
in view of GUISELIN ET AL (US 2009/0068424),
and in view of TAI ET AL (US 2023/0295420).
Copending Application No. 18/574,928 claims a co-extruded sheet with a skin / foam core / skin structure and (t1+t2)/T ratio and melt volume-flow rate ratio of resin (i.e., polycarbonate) as recited in claim 1 and further having the features as recited in present application claims 5-6, 9-13, 16-17. Features not explicitly claimed are known in and/or obvious from the prior art for the following reasons:
GUISELIN ET AL ‘424 disclose foam-core composites with skin layers, wherein the composite comprises
• a first skin layer on a first major surface of the core layer;
• a core layer comprising a foam material (e.g., polycarbonate, polysulfone, polyphenylene oxide, etc.) (corresponding to the recited “engineering plastic”);
• a second skin layer on a second major surface of the core layer;
wherein the material(s) of the composite can comprise thermoplastic resins (e.g., polycarbonate, etc.) and additives (e.g., inorganic fillers, reinforcing fibers, etc.). (entire document, e.g., Figure 1-1A, etc.; paragraph 0019-0021, 0029-0030, 0034, 0037-0046, etc.)
TAI ET AL ‘420 discloses that it is well known in the art to form foam-core composite sheets with surface layers, wherein the foam core portion has a typical expansion ratio of 2-30 (preferably 3.5-15). The reference further discloses that it is well known in the art to produce foam-core composites wherein:
• the composite sheet (502) has a typical overall thickness T2 of 0.3-5 mm;
• the foam core (505) has a typical thickness T5 of 0.3-5 mm;
• the surface layer (507) has a typical thickness T7 of 0.1-5 mm, wherein the two surface layers can have the same or different thicknesses.
(Figure 19, etc.; paragraph 0099, 0239, 0442-0449, 0453-0460, 0468-0469, 0478-0481, 0510-0514, etc.)
Regarding claims 1-2, 4-6, 9-13, 16-17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known foamable “engineering” resins (as suggested in GUISELIN ET AL ‘424) and conventional foam expansion ratios (as suggested in TAI ET AL ‘420) in the co-extruded sheet claimed in Copending Application No. 18/574,928 in order to produce composites with the optimal combination of various performance properties (e.g., strength, thermoformability, thermal and/or acoustical insulation, weight, etc.) for specific applications and end-uses.
Regarding claim 3, one of ordinary skill in the art would have utilized known and/or commercially available high performance and/or heat-resistant polycarbonate-based copolymers as the thermoplastic material in the core layer and/or skin layers in the co-extruded sheet claimed in Copending Application No. 18/574,928.
Regarding claim 14, one of ordinary skill in the art would have varied the thickness of at least one or more skin layers in the co-extruded sheet claimed in Copending Application No. 18/574,928 in order to form recesses and/or protrusions which provide attractive textural effects.
Regarding claim 15, one of ordinary skill in the art would have utilized effective amounts of known inorganic fillers; in the skin layers in the co-extruded sheet claimed in Copending Application No. 18/574,928 to: (i) improve mechanical properties and/or the heat-distortion temperature of the skin layers; and/or (ii) to provide aesthetic coloration and/or texture effects; for specific applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103 (AIA )
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.
The rejections under 35 U.S.C 103 based on GUISELIN ET AL (US 2009/0068424) and other secondary references in the previous Office Action mailed 11/05/2025 have been withdrawn in view of the Claim Amendments filed 02/04/2026.
However, the Examiner's withdrawal of these rejections does NOT constitute a concession as to the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. Upon the full resolution of outstanding new matter issues under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, the previous rejections under 35 U.S.C 103 may be reinstated or modified as necessary.
Response to Arguments
Applicant’s arguments filed 02/04/2026 regarding the provisional obviousness-type double patent rejections in the previous Office Action mailed 11/05/2025 have been considered but are moot because the Terminal Disclosure filed 02/04/2026 is improper and has NOT been accepted.
Therefore, the provisional obviousness-type double patent rejections based on copending Application No. 18/574,928 (allowed) (US 2025/0010589) (TANIGUCHI ET AL) remain outstanding.
Applicant’s arguments filed 02/04/2026 regarding the rejections under 35 U.S.C. 103 in the previous Office Action mailed 11/05/2025 have been considered but are moot because the new grounds of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding the presence of new matter) necessitated by the Claim Amendment filed 02/04/2026.
However, the Examiner makes NO concession as to the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. The Examiner reserves any discussion as the merits of the previously cited prior art references until the issues of new matter has been fully resolved.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KOBAYASHI ET AL (US 2002/0155275) disclose foam-core composites with surface layers.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
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May 18, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
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