RESPONSE TO AMENDMENT
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 .
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-2, 4, 7-8, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kurasawa et al. (JP 2011-063812) in view of Okaya et al. (JP 2020-041253) (cited in the IDS filed on 08/21/2024)
Regarding claims 1 and 10, Kurasawa et al. discloses a polycarbonate resin blend including: 100 parts polycarbonate, 7 parts polycarbonate oligomer, 10 parts glass fiber and 20 parts carbon fiber. (Example #3, Table 2. [0096]). Kurasawa et al. discloses that the polycarbonate resin has a terminal OH group of 500 ppm. (See production Examples 1-2). Kurasawa et al. further teaches forming pellets with the resin blend. (page 6, 2nd full paragraph). Kurasawa et al. teaches the inclusion of a flame retardant in the polycarbonate material. (page 11, 2nd full paragraph).
Kurasawa et al. does not teach that the flame retardant is a nonmetal salt flame retardant in an amount of 0.05 to 25 parts by mass. Kurasawa et al. further does not explicitly teach that the carbon fibers are recycled carbon fibers.
Okaya et al. teaches a polycarbonate resin composition (par. [0071]) including 23.5-80 parts by mass recycled carbon fibers and 5-30 parts by mass of a phosphate ester flame retardant (i.e. a non-metal salt flame retardant), overlapping with the presently claimed ranges (par. [0016]-[0019] [0054], [0057] and [0062]). 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).
It would have been obvious to one of ordinary skill in the art to use phosphate ester flame retardants and recycled carbon fibers in the composition of Kurasawa et al. in view of the teachings of Okaya et al.
One of ordinary skill in the art would have found it obvious to use phosphate ester flame retardants and recycled carbon fibers in the composition of Kurasawa et al. in view of the known use of these materials for providing improved properties to polycarbonate resin materials. he selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07. One of ordinary skill in the art would have a reasonable expectation of success in using phosphate ester flame retardants and recycled carbon fibers in the composition of Kurasawa et al. to yield a resin composition having improved flame retardancy and suitable improved mechanical properties.
Regarding claim 2, given that the composition of the polycarbonate resin in Kurasawa in view of Okaya et al. is substantially identical as that presently claimed, it would be expected to have substantially the same properties. In particular, the present specification indicates that a terminal hydroxyl values of 150-800 ppm results in improved flexural strength (par. [0014]). Furthermore, the specification indicates that non-metal flame retardants also contribute to the improved flexural strength of the composition. (par. [0034]).
Regarding claim 4, Kurasawa et al. teaches the inclusion of 3-200 parts by mass of a fluidity modifier into the polycarbonate resin in the form of an inorganic filler. (page 9, 4th paragraph).
Regarding claims 7-8, Kurasawa et al. discloses that the polycarbonate resin has a terminal OH group of 500 ppm. (See production Examples 1-2) and Okaya et al. teaches 5-30 parts by mass of a phosphate ester flame retardant (i.e. a non-metal salt flame retardant), overlapping with the presently claimed ranges (par. [0016]-[0019]).
Regarding claim 13, Kurasawa et al. does not disclose a fiber treatment and therefore the content on the surface of the carbon fibers would be 0% wt, overlapping with the presently claimed range.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kurasawa et al. (JP 2011-063812) in view of Okaya et al. (JP 2020-041253) (cited in the IDS filed on 08/21/2024), further in view of Takagi (U.S. App. Pub. No. 2003/0065092).
Kurasawa in view of Okaya et al. is relied upon as described in the rejection of claim 1, above.
Kurasawa in view of Okaya et al. does not disclose the use of recycled polycarbonate resin.
Takagi teaches a regenerated resin composition for making molded articles including recycled polycarbonate materials. (Abstract and par. [0004]-[0005]).
It would have been obvious to one of ordinary skill in the art to use a recycled polycarbonate resin as the polycarbonate resin material in Kurasawa in view of Okaya et al.
One of ordinary skill in the art would have found it obvious to use recycled polycarbonate for reducing the environmental impact of the molded resin material.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kurasawa et al. (JP 2011-063812) in view of Okaya et al. (JP 2020-041253) (cited in the IDS filed on 08/21/2024), further in view of Hirono et al. (JP 2010-229305).
Kurasawa in view of Okaya et al. is relied upon as described in the rejection of claim 1, above.
Kurasawa in view of Okaya et al. does not disclose a mold release agent or carbon black in an amount of 0.1-10 parts by weight.
Hirono et al. teaches inclusion of a coloring agent such as carbon black into a polycarbonate resin composition in amounts of 5 parts by mass or less with respect to 100 parts by mass of the resin composition to impart color without compromising impact resistance. (page 13, last paragraph – page 14, first 2 paragraph).
It would have been obvious to one of ordinary skill in the art to include 5 parts by weight or less of carbon black into the polycarbonate resin composition disclosed in Kurasawa in view of Okaya et al.
One of ordinary skill in the art would have found it obvious to include 5 parts by weight or less carbon black in order to impart sufficient coloring to the resin while not compromising the impact resistance thereof.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kurasawa et al. (JP 2011-063812) in view of Okaya et al. (JP 2020-041253) (cited in the IDS filed on 08/21/2024), further in view of Takagi (U.S. App. Pub. No. 2003/0065092) and Hirono et al. (JP 2010-229305).
Kurasawa in view of Okaya et al. is relied upon as described in the rejection of claim 1, above.
Kurasawa et al. teaches the inclusion of 3-200 parts by mass of a fluidity modifier into the polycarbonate resin in the form of an inorganic filler. (page 9, 4th paragraph). Furthermore, given that the composition of the polycarbonate resin in Kurasawa in view of Okaya et al. is substantially identical as that presently claimed, it would be expected to have substantially the same properties. In particular, the present specification indicates that a terminal hydroxyl values of 150-800 ppm results in improved flexural strength (par. [0014]). Furthermore, the specification indicates that non-metal flame retardants also contribute to the improved flexural strength of the composition. (par. [0034]).
Kurasawa in view of Okaya et al. does not disclose the use of a recycled polycarbonate resin material.
Takagi teaches a regenerated resin composition for making molded articles including recycled polycarbonate materials. (Abstract and par. [0004]-[0005]).
It would have been obvious to one of ordinary skill in the art to use a recycled polycarbonate resin as the polycarbonate resin material in Kurasawa in view of Okaya et al.
One of ordinary skill in the art would have found it obvious to use recycled polycarbonate for reducing the environmental impact of the molded resin material.
Kurasawa in view of Okaya et al. does not disclose a mold release agent or carbon black in an amount of 0.1-10 parts by weight.
Hirono et al. teaches inclusion of a coloring agent such as carbon black into a polycarbonate resin composition in amounts of 5 parts by mass or less with respect to 100 parts by mass of the resin composition to impart color without compromising impact resistance. (page 13, last paragraph – page 14, first 2 paragraph).
It would have been obvious to one of ordinary skill in the art to include 5 parts by weight or less of carbon black into the polycarbonate resin composition disclosed in Kurasawa in view of Okaya et al.
One of ordinary skill in the art would have found it obvious to include 5 parts by weight or less carbon black in order to impart sufficient coloring to the resin while not compromising the impact resistance thereof.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kurasawa et al. (JP 2011-063812) in view of Okaya et al. (JP 2020041253) (cited in the IDS filed on 08/21/2024), further in view of Wada et al. (JP2017-002125).
Kurasawa and Okaya et al. are relied upon as described in the rejection of claim 1, above.
Kurasawa in view of Okaya et al. does not disclose a resin residue content of the recycled carbon fibers in the range of 5-20 mass% as claimed.
Wada et al. teaches a recycled carbon fiber bundled for use as a reinforcing material in a matrix resin. (Abstract). Wada et al. further teaches that the carbon fiber is obtained by subjecting a matrix resin to thermal decomposition such that the resin residue of the carbon fiber is in the range of 0.1 to 6% (Abstract and page 2, last paragraph). Wada et al. teaches that the resin residue on the recycled carbon fiber should lie in the range of 0.1 to 6% for optimal control of dispersibility of the carbon fiber to provide sufficient reinforcing effect. (page 2, last paragraph).
It would have been obvious to one of ordinary skill in the art to adjust the residue content of the recycled carbon fiber reinforcing material disclosed in the combination of Kurasawa in view of Okaya et al. to lie in the range of 0.1 to 6% as taught by Wada et al.
One of ordinary skill in the art would have found it obvious to have the resin residue content of the recycled carbon fiber to be in the range of 0.1 to 6% in order to improve the dispersibility of the carbon fiber to provide sufficient reinforcement effect, as taught by Wada et al.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 06/09/2026 regarding the 35 U.S.C. §103 rejections made of record in the office action mailed on 03/11/2026 have been carefully considered but are deemed unpersuasive.
Applicant argues that the present inventions address a unique problem associated with polycarbonate resin compositions including recycled carbon fibers. (Applicant’s arguments filed 06/09/2026, page 9). Applicant argues that in contrast, Kurasawa et al. merely is concerned with flexural strength, fluidity and appearance of molded products but does not concern itself with other mechanical properties and flame retardancy, as in the present application.
These arguments are not persuasive because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The fact that Kurasawa et al. is not concerned with solving the same problems as the applicant does not negate the teachings of the present limitations as they are being claimed. The applicant has further not explicitly claimed any of the argued properties and therefore these arguments are not commensurate in scope with the claims.
Applicant’s arguments relating to Okaya and Takagi et al. are similarly directed to advantages that may not be recognized explicitly in the prior art but are also not presently claimed. Therefore, these arguments are unpersuasive for substantially the same reasons as set for above.
Applicant does further argue that Kurasawa and Okaya et al. would have no motivation to combine due to differences in categories of invention and effect. (Applicant’s arguments, page 10, first paragraph). The Examiner disagrees. Okaya et al. replates to a polycarbonate composition which includes polycarbonate melted fibers as a matrix resin and recycled carbon fibers. (par. [0070] and [0090]). Therefore, the compositions of Kurasawa and Okaya et al. are analogous art and any improvement found in Okaya et al. would be relevant to the polycarbonate composition as disclosed in the primary reference.
Finally, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s arguments to the teachings of the individual references fails to demonstrate why the combined teachings as set forth in the claim rejections above renders the claimed invention prima facie obvious. As such, the claimed invention remains unpatentable over the cited prior art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 06/26/2026
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