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 .
This communication is responsive to the claims filed 01/04/2024. Claims 1-15 are currently pending and under consideration.
Claims 1-15 are rejected for the reasons set forth below.
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.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in EP on 07/07/2021. It is noted, however, that applicant has not filed a certified copy of the EP21184348.7 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 12-15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Sato et al. (JP2014185262 A, Espacenet English translation is provided herein).
Regarding Claim 1, Sato teaches a composition comprising polycarbonate (PC) resin, a silicate mineral (reading on a reinforcing filler), an aromatic vinyl conjugated diene type block copolymer and an acid-modified polyolefin resin (ab.). Attention is drawn to Example 8 ([0113] of the JP document), wherein the composition consists of 100 parts PC, 43 parts talc, 3.4 parts styrene-ethylene/butylene-styrene polymer (SEBS) which is a linear polymer, 3.4 parts olefin wax, 20.6 parts component E, 0.7 parts PTFE, and 0.3 parts antioxidants.
SEBS is the preferred impact modifier of the instant application. The olefin wax is a copolymer of α-olefin and maleic anhydride, thereby reading on a hydrocarbon resin. Therefore, the Example 8 composition of Sato comprising a PC, a reinforcing filler, an impact modifier component having a linear
polymer structure and hydrocarbon additive.
Converting to wt.% based on the total weight of the composition, the composition comprising 58.5 wt.% of PC, 25.1 wt.% of talc, 1.98 wt.% of SEBS and 1.98 wt.% of olefin wax. The wt.% of each component falling within the claimed wt.% ranges, respectively. The weight ratio of SEBS to olefin wax is 1:1.
Regarding Claim 2, Sato discloses that the PC is a bisphenol A (BPA) based copolymer(lns90-99).
Regarding Claims 3-4, SEBS has a linear, non-polar polymer structure.
Regarding Claims 5-6 and 12-15, the Office realizes that all of the claimed effects or physical properties are not positively stated. However, Sato teaches the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed mount. Therefore, the claimed morphology, particle size of the impact modifier in the composition, Izod impact properties, gloss properties, dielectric properties, and hardness properties, would naturally arise or be achieved. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients
Claims 1-6 and 11-15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Van Hartingsveldt et al. (US2005/0256246 A1).
Regarding Claim 1, Hartingsveldt teaches a PC composition containing PC, glass fibres, a block copolymer and other additives. Attention is drawn to Example 1, wherein the composition contains 58 parts PC, 40 parts glass fibres, and 2 parts SEBS block copolymer and 0.4 mass% of Loxiol EP861 release agent. The SEBS block copolymer is Kraton™ G1650 which is a linear copolymer (evidence will be provided upon request). Loxiol EP861 release agent is a long-chain fatty acid ester of pentaerythritol, thereby reading on a hydrocarbon additive. Thus, Hartingsveldt teaches a PC composition comprising the species of each of the claimed components in the claimed ranges, respectively.
Regarding Claim 2, the PC of Example 1 composition is a BPA homopolymer.
Regarding Claims 3-4, SEBS block copolymer is a linear and non-polar copolymer.
Regarding Claims 5-6 and 12-15, the Office realizes that all of the claimed effects or physical properties are not positively stated. However, Hartingsveldt teaches the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed mount. Therefore, the claimed morphology, particle size of the impact modifier in the composition, Izod impact properties, gloss properties, dielectric properties, and hardness properties, would naturally arise or be achieved. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients
Regarding Claim 11, Loxiol EP861 has saturated carboxylic and acyclic structures.
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.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Van Hartingsveldt, as applied to Claim 1 above at para. 7, and in further view of Wang et al. (US2019/0177519 A1).
The disclosure of Van Hartingsveldt on Claim 1 is incorporated herein by reference.
Hartingsveldt teaches the PC composition comprising glass fibers but is silent on the glass fibers having a DK at 1 to 20 GHz.
However, Wang teaches a composition comprising 50 wt.% to 90 wt.% polymer resin, 10 wt.% to 50 wt.% glass fibers (ab.), about 0.01 wt.% to about 10 wt.% of impact modifier ([0051]) and 0.5 wt.% of mold release agent ([0108] and [0118]); Wherein the polymer resin can be a PC resin ([0027]). Therefore, Wang teaches a similar PC composition to the composition of Hartingsveldt because Hartingsveldt teaches the PC composition comprising 40 wt.% to 69.5 wt.% of PC resin, 30 to 50 wt.% of glass fibers, 0.5 to 5 wt.% of impact modifier (claim 1), and 0.4 wt.% of release agent (example 1). The compositions of Hartingsveldt and Wang comprising the same components and in overlapping or falling within amounts.
Wang further teaches the glass fibers having DK less than 5 at 1 GHz (ab.). One ordinary skilled artisan would have been motivated, before the effective filing date of the instant application, to use the glass fibers taught by wang for the PC composition of Hartingsveldt due to the similarities of the compositions and Wang teaches the PC composition better dielectric properties than an equivalent thermoplastic composition that does not include a low Dk glass fiber component ([0054]).
Claims 1-6 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Steendam et al. (US2013/0345347 A1).
Regarding Claim 1, Steendam teaches a PC composition comprising PC component, impact modifier (ab.), reinforcing filler ([0165]), and a flow promoter (claim 20); wherein the preferred flow promoter is Arkon P125 which is a hydrocarbon resin (P21, Table 1). Steendam further teaches the impact modifier can be styrene-ethylene-butadiene-styrene elastomer, for example, KRATON® G 1657M. According to the data sheet, KRATON® G 1657M is a clear, linear triblock copolymer (evidence will be provided upon request). Therefore, Steendam teaches a PC composition comprising a PC component, a reinforcing filler, an impactor modifier having a linear structure, and a hydrocarbon additive.
Steendam furthermore teaches the composition comprising about 35 wt.% to about 60 wt.% of a first PC resin and greater than 0 wt.% to about 8 wt.% of a second PC resin (claims 2 and 4). Thus, the PC resin is greater than 35 wt.% to about 68 wt.% of the composition, falling within the claimed 10 wt.% to 95 wt.%.
Steendam teaches the composition comprising about 1 wt.% to about 10 wt.% of a filler ([0165]), overlapping the claimed 0.1 wt.% to 50 wt.%.
Steendam teaches the composition comprising about 1 wt.% to about 30 wt.% of an impact modifier ([0153]), overlapping the claimed 0.1 wt.% to 10 wt.%.
Steendam teaches the composition comprising about 1 wt.% to about 6 wt.% of a flow promoter([0068]), overlapping the claimed 0.1 wt.% to 10 wt.%.
Moreover, Steendam exemplifies the flow promoter and the impact modifier being used at a weight ratio of 4: 14 (Table II), falling within the claimed lower than 1:1.
Regarding Claim 2, Steendam teaches the first PC resin is a copolymer (claim 3).
Regarding Claims 3-4, SEBS is a linear and non-polar polymer.
Regarding Claims 5-6 and 12-15, the Office realizes that all of the claimed effects or physical properties are not positively stated. However, Steendam teaches the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed mount. Therefore, the claimed morphology, particle size of the impact modifier in the composition, Izod impact properties, gloss properties, dielectric properties, and hardness properties, would naturally arise or be achieved. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients
Regarding Claim 11, the preferred hydrocarbon resin is the same hydrocarbon additive of the instant application, thereby the structure limitations being met.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Steendam, as applied to Claim 1 above at para. 9, and in further view of Wang et al. (US2019/0177519 A1).
The disclosure of Steendam on Claim 1 is incorporated herein by reference.
Steendam teaches the PC composition comprising reinforcing filler wherein the reinforcing filler can be glass fibers ([01666]), but is silent on the glass fibers having a DK at 1 to 20 GHz.
However, Wang teaches a composition comprising 50 wt.% to 90 wt.% polymer resin, 10 wt.% to 50 wt.% glass fibers (ab.), about 0.01 wt.% to about 10 wt.% of impact modifier ([0051]) and 0.5 wt.% of mold release agent ([0108] and [0118]); Wherein the polymer resin can be a PC resin ([0027]). Therefore, Wang teaches a similar PC composition to the composition of Steendam. The compositions of Steendam and Wang comprising the same components and in overlapping or falling within amounts.
Wang further teaches the glass fibers having DK less than 5 at 1 GHz (ab.). One ordinary skilled artisan would have been motivated, before the effective filing date of the instant application, to use the glass fibers taught by wang for the PC composition of Steendam due to the similarities of the compositions and Wang teaches the PC composition better dielectric properties than an equivalent thermoplastic composition that does not include a low Dk glass fiber component ([0054]).
Claims 1-9 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pan et al. (US2016/0070027 A1).
Regarding Claim 1, Pan teaches a plastic composition comprising 40 wt.% to 94.9 wt.% ([0034]) of PC resins ([0036]), 5 wt.% to 50 wt.% of glass filler ([0028]), impact modifiers including linear polymers, such as ethylene-propylene rubber, ethylene-propylene-diene monomer rubber, styrene-butadiene-styrene, styrene-ethylene-butadiene-styrene (SEBS), etc. ([0048]). The impact modifier is present in the amount of 1 to 30 wt.% based on the total amount of polymers (Id.), therefore, the impact modifier is about 1 wt.% to about 28 wt.% of the composition. Pan further teaches the composition comprising 0.27 wt.% or 0.35 wt.% of pentaerythritol tetrastearate (Tables 2-4) which is a hydrocarbon additive.
Thus, Pan teaches a PC composition comprising 40 wt.% to 94.9 wt.% of PC resins, 5 wt.% to 50 wt.% of glass fiberr, about 1 wt.% to about 28 wt.% of impact modifiers having a linear polymer structure and 0.27 wt.% of 0.35 wt.% of a hydrocarbon additive. The amount of each component overlaps or falls within the claimed counterpart. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See 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 have selected the overlapping portion of the range taught by Pan.
Further the weight percent ratio of the hydrocarbon additive to the impact modifier in the
composition is lower than 1:1.
Regarding Claims 2 and 7-9. Pan teaches the PC resin is a DMBPC-BPA copolymer which comprises 10 to 100 mol% DMPC carbonate and 90 to 0 mol% BPA carbonate ([0045]), the mol% range overlapping the claimed 45-55/55-45-40 mol% of BPA/DMBPC.
Regarding Claims 3-4, block copolymer is a linear and non-polar copolymer.
Regarding Claims 5-6 and 12-15, the Office realizes that all of the claimed effects or physical properties are not positively stated. However, Pan teaches the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed mount. Therefore, the claimed morphology, particle size of the impact modifier in the composition, Izod impact properties, gloss properties, dielectric properties, and hardness properties, would naturally arise or be achieved. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients
Regarding Claim 11, pentaerythritol tetrastearate comprises saturated carboxylic and acyclic structures.
Conclusion
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763
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