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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/17/2026 has been entered.
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, 2, 6, 8, 9, 11, 12, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Xiancheng et al. (CN106565899A). It is noted that the disclosures of Xiancheng et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1, 2, 6, 8 and 9, Park et al. disclose a resin composition comprising about 40 to about 85 wt% of a polycarbonate resin A, about 10 to about 55 wt% of a polycarbonate-polysiloxane copolymer B and about 0.1 to about 6 wt% of a siloxane copolyester C (see Abstract and paragraphs 0045, 0061). The polycarbonate resin can comprise additive such as photo-stabilizers or stabilizers in an amount of about 40 wt% or less (see paragraphs 0092 and 0101).
According to the present claim, the amount of polycarbonate resin is about 68 to about 90 wt% (68 = 70/102.3 x 100 and 90 = 95/105 x 100), the amount of polycarbonate-polysiloxane copolymer is about 5 to about 29 wt% (5 = 5/105 x 100 and 29 = 30/102.3 x 100), the amount of polysiloxane-polyester is about 0.3 to about 0.9 wt% (0.3 = 0.3/102.3 x 100 and 0.9 = 1/105 x 100) and the amount of benzotriazole-based UV stabilizer is about 2 to about 4 wt% (2 = 2/102.3 and 4 = 4/105 x 100) (102.3 = 70 + 30 + 0.3 + 2 and 105 = 95 + 5 + 1 + 4). The amounts of polycarbonate resin, polycarbonate-polysiloxane copolymer and siloxane copolyester disclosed by Park et al. overlap with that presently claimed.
The polycarbonate resin has a weight average molecular weight of about 10,000 to about 200,000 g/mol (see paragraph 0041). The polycarbonate resin can be a mixture of copolymers (blend of polycarbonate polymers) from at least two kinds of diphenols (different repeating units) (see paragraph 0042). The polycarbonate resin can be a polyester-carbonate copolymer resin (copolymer containing two types of repeating units) (see paragraphs 0042, 0043). Further, polycarbonate resin can include combination of polycarbonate resins (see paragraph 0042).
The polycarbonate-polysiloxane copolymer has a weight average molecular weight of about 10,000 to about 30,000 g/mol (see paragraph 0059). The polycarbonate-polysiloxane copolymer comprises about 1 to about 99 wt% of polycarbonate block and about 1 to about 99 wt% of polysiloxane block (see paragraphs 0056 and 0057). While Park et al. do not disclose a molar ratio of polysiloxane repeating unit and polycarbonate repeating unit, given that Park et al. disclose broad range of amount of polycarbonate block and polysiloxane block and given that Park et al. disclose weight average molecular weight of polycarbonate-polysiloxane copolymer that overlaps with weight average molecular wright of polycarbonate-polysiloxane copolymer as presently claimed, Park et al. would necessarily meet a molar ratio of polysiloxane repeating unit and polycarbonate repeating unit as presently claimed.
The siloxane polyester is represented by Formula 1, which is identical to that presently claimed (see paragraphs 0070-0075). Specifically, when R1 and R2 are CH3, R3 is C1 to C10 alkylene group, n is 5, m is 10, ratio of m/n is 2, the structure of siloxane-polyester meets that presently claimed. Further, given that R3 is C1 to C10 alkylene group, n is 5 to 50 and m is 5 to 30, the structure of siloxane-polyester meets R1 and R2 comprising (CH2)3, R3 and R4 comprising (CH2)5 and m:n of 18:30 (see paragraphs 0073-0075). While the siloxane-polyester structure disclosed by Park et al. do not show hydroxyl groups at both ends, given that siloxane copolyester is prepared from siloxane, diol and carboxylic acid, the siloxane-polyester structure would necessarily have hydroxyl groups at both ends (see paragraph 0077).
Further, a molded article is prepared from the resin composition (see paragraph 0104). While Park et al. do not disclose the resin composition is a thermoplastic resin composition, given that Park et al. uses resins such as polycarbonate resin, polycarbonate-polysiloxane copolymer and siloxane polyester that are identical to the resins utilized for the thermoplastic resin composition of present invention, the resin composition of Park et al. is a thermoplastic resin composition. Accordingly, Park et al. disclose a molded product manufactured from a thermoplastic resin composition.
While Park et al. disclose additive such as photo-stabilizers or stabilizers in an amount of about 40 wt% or less, Park et al. do not disclose a benzotriazole-based UV stabilizer as presently claimed as additive.
Xiancheng et al. disclose a benzotriazole styrene (styrol) copolymer that provides a light stabilization that is continuous and effective for a long time (see Abstract). The benzotriazole copolymer has molecular weight of 1000 to 20000 (see paragraph 0016). The benzotriazole copolymer prevents photoaging or ultraviolet aging of polymer materials (see paragraphs 0017, 0054). Therefore, the benzotriazole styrene copolymer is a UV stabilizer.
In light of motivation for using a benzotriazole styrene copolymer disclosed by Xiancheng et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a benzotriazole styrene copolymer of Xiancheng et al. as photostabilizer (light stabilizer) additive in the resin composition of Park et al. in order to provide a light stabilization that is continuous and effective for a long time and prevent photoaging or ultraviolet aging of polymer materials, and thereby arrive at the claimed invention.
Regarding claim 11, Park et al. in view of Xiancheng et al. disclose the molded product as set forth above. Park et al. do not disclose any types of benzotriazole-based UV stabilizer. Xiancheng et al. disclose the benzotriazole styrene copolymer having molecular weight of 1000 to 20000 as UV stabilizer. Therefore, the molded product of Park et al. in view of Xiancheng et al. does not comprise a benzotriazole-based UV stabilizer having a molecular weight equal to or less than about 500.
Regarding claim 12, Park et al. disclose additives including release agents are optional in the resin composition (see paragraph 0092). Further, release agents comprising waxes are optional (see paragraph 0095). Therefore, the molded article does not comprise a wax. Accordingly, Park et al. meets present claim.
Regarding claim 14, Park et al. additives including antioxidants are optional in the resin composition (see paragraph 0092). Therefore, molded article does not comprise an antioxidant or a radical scavenger.
Regarding claim 18, Park et al. disclose the molded article includes automobile components, i.e. vehicle component (see paragraph 0104). Therefore, Park et al. meets a vehicle comprising the molded product.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Xiancheng et al. (CN106565899A) as applied to claim 1 above, further in view of van de Grampel et al. (US 2018/0265679 A1).
Regarding claim 4, Park et al. in view of Xiancheng et al. disclose the molded product as set forth above. Park et al. disclose polycarbonate with weight average molecular weight of about 10,000 to about 200,000 and disclose that combinations of polycarbonate can be used, however, there is no explicit disclosure to use two polycarbonates with different molecular weight.
Park et al. in view of Xiancheng et al.do not disclose the polycarbonate-based polymer comprises two or more types of polycarbonate-based polymers with different weight-average molecular weights.
Van de Grampel et al. disclose that polycarbonate compositions should have good flow properties and good impact properties and that stiffness (impact properties) is increased by increasing molecular weight but this reduces the flow properties (see paragraph 0005).
Therefore, it would have been obvious to one of ordinary skill in the art to use a combination of polycarbonates with different molecular weights in Park et al. in view of Xiancheng et al. in order to produce a molded article with the desired balance of flow properties and impact properties and thereby arrive at the claimed invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Xiancheng et al. (CN106565899A) as applied to claim 1 above, further in view of Kim et al. (US 2020/0377027 A1).
Regarding claim 19, Park et al. in view of Xiancheng et al. disclose the molded product as set forth above. Further, Park et al. disclose the molded article includes automobile components, i.e. vehicle component (see paragraph 0104). Therefore, Park et al. meets a vehicle comprising the molded product.
Park et al. in view of Xiancheng et al. do not disclose a vehicle roof rack comprising the molded product.
Kim et al. disclose a roof rack mounted on a roof panel of a vehicle (i.e. a vehicle roof rack) made of a resin composite comprising a thermoplastic resin such as polycarbonate resin (see page 4, claims 1, 9, 10, 11 and 12). The roof rack provides increased strength, light weight and cost savings (see paragraph 0053).
In light of motivation for using a roof rack disclosed by Kim et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to prepare a vehicle roof rack having the structure of Kim et al. that comprises the thermoplastic resin composition of Park et al. in view of Xiancheng et al. in order to produce a vehicle component of Park et al. that is a roof rack with increased strength, that is light weight and provides cost savings, and thereby arrive at the claimed invention. Accordingly, Park et al. in view of Xiancheng et al. and Kim et al. disclose a vehicle roof rack comprising the molded product as presently claimed.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Xiancheng et al. (CN106565899A) and Kim et al. (US 2020/0377027 A1) as applied to claim 19 above, further in view of Huang (US 9,604,566 B1).
Regarding claim 20, Park et al. in view of Xiancheng et al. and Kim et al. disclose the vehicle roof rack as set forth above. Park et al. in view of Xiancheng et al. and Kim et al. do not disclose a vehicle roof rack further comprising a lamp adjacent to the molded product such that light from the lamp emits through the molded product.
Huang disclose a roof rack 1 fixed on a roof of car and warning lamp 3 on the roof rack (lamp adjacent to the molded product) (see Figure 4 and col. 2, lines 54-60). The warning lamp can be used as auxiliary warning light, auxiliary brake lamp or auxiliary direction lamp (see col. 2, lines 60-62).
In light of motivation for using warning lamp on the roof rack disclosed by Huang as described above, it therefore would have been obvious to one of the ordinary skill in the art to use warning lamp on vehicle roof rack of Park et al. in view of Xiancheng et al. and Kim et al. in order to provide auxiliary warning light, auxiliary brake lamp or auxiliary direction lamp, and thereby arrive at the claimed invention. Given that the molded article (vehicle roof rack) of Park et al. in view of Xiancheng et al. and Kim et al. is identical to that presently claimed, it is inherent or obvious that the light from the warning lamp emits through the molded product.
Claims 1, 2, 6, 8, 9, 11, 12, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Haremza et al. (US 2012/0059095 A1).
Regarding claims 1, 2, 6, 8 and 9, Park et al. disclose a resin composition comprising about 40 to about 85 wt% of a polycarbonate resin A, about 10 to about 55 wt% of a polycarbonate-polysiloxane copolymer B and about 0.1 to about 6 wt% of a siloxane copolyester C (see Abstract and paragraphs 0045, 0061). The polycarbonate resin can comprise additive such as photo-stabilizers or stabilizers in an amount of about 40 wt% or less (see paragraphs 0092 and 0101).
According to the present claim, the amount of polycarbonate resin is about 68 to about 90 wt% (68 = 70/102.3 x 100 and 90 = 95/105 x 100), the amount of polycarbonate-polysiloxane copolymer is about 5 to about 29 wt% (5 = 5/105 x 100 and 29 = 30/102.3 x 100), the amount of polysiloxane-polyester is about 0.3 to about 0.9 wt% (0.3 = 0.3/102.3 x 100 and 0.9 = 1/105 x 100) and the amount of benzotriazole-based UV stabilizer is about 2 to about 4 wt% (2 = 2/102.3 and 4 = 4/105 x 100) (102.3 = 70 + 30 + 0.3 + 2 and 105 = 95 + 5 + 1 + 4). The amounts of polycarbonate resin, polycarbonate-polysiloxane copolymer and siloxane copolyester disclosed by Park et al. overlap with that presently claimed.
The polycarbonate resin has a weight average molecular weight of about 10,000 to about 200,000 g/mol (see paragraph 0041). The polycarbonate resin can be a mixture of copolymers (blend of polycarbonate polymers) from at least two kinds of diphenols (different repeating units) (see paragraph 0042). The polycarbonate resin can be a polyester-carbonate copolymer resin (copolymer containing two types of repeating units) (see paragraphs 0042, 0043). Further, polycarbonate resin can include combination of polycarbonate resins (see paragraph 0042).
The polycarbonate-polysiloxane copolymer has a weight average molecular weight of about 10,000 to about 30,000 g/mol (see paragraph 0059). The polycarbonate-polysiloxane copolymer comprises about 1 to about 99 wt% of polycarbonate block and about 1 to about 99 wt% of polysiloxane block (see paragraphs 0056 and 0057). While Park et al. do not disclose a molar ratio of polysiloxane repeating unit and polycarbonate repeating unit, given that Park et al. disclose broad range of amount of polycarbonate block and polysiloxane block and given that Park et al. disclose weight average molecular weight of polycarbonate-polysiloxane copolymer that overlaps with weight average molecular wright of polycarbonate-polysiloxane copolymer as presently claimed, Park et al. would necessarily meet a molar ratio of polysiloxane repeating unit and polycarbonate repeating unit as presently claimed.
The siloxane polyester is represented by Formula 1, which is identical to that presently claimed (see paragraphs 0070-0075). Specifically, when R1 and R2 are CH3, R3 is C1 to C10 alkylene group, n is 5, m is 10, ratio of m/n is 2, the structure of siloxane-polyester meets that presently claimed. Further, given that R3 is C1 to C10 alkylene group, n is 5 to 50 and m is 5 to 30, the structure of siloxane-polyester meets R1 and R2 comprising (CH2)3, R3 and R4 comprising (CH2)5 and m:n of 18:30 (see paragraphs 0073-0075). While the siloxane-polyester structure disclosed by Park et al. do not show hydroxyl groups at both ends, given that siloxane copolyester is prepared from siloxane, diol and carboxylic acid, the siloxane-polyester structure would necessarily have hydroxyl groups at both ends (see paragraph 0077).
Further, a molded article is prepared from the resin composition (see paragraph 0104). While Park et al. do not disclose the resin composition is a thermoplastic resin composition, given that Park et al. uses resins such as polycarbonate resin, polycarbonate-polysiloxane copolymer and siloxane polyester that are identical to the resins utilized for the thermoplastic resin composition of present invention, the resin composition of Park et al. is a thermoplastic resin composition. Accordingly, Park et al. disclose a molded product manufactured from a thermoplastic resin composition.
While Park et al. disclose additive such as photo-stabilizers or stabilizers in an amount of about 40 wt% or less, Park et al. do not disclose a benzotriazole-based UV stabilizer as presently claimed as additive.
Haremza et al. disclose benzotriazole derivatives that are used as UV absorber or stabilizer having molecular weight of 1100 to 5000 g/mol (see paragraph 0059). The benzotriazoles can used in plastics or plastic moldings comprising polycarbonate (see paragraphs 0101 and 0103). The benzotriazole derivatives suppresses migration from organic materials, stabilizes organic materials and provides good compatibility with organic materials (see paragraphs 0008, 0009, 0010, 0011).
In light of motivation for using benzotriazole derivatives disclosed by Haremza et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use benzotriazole derivatives of Haremza et al. as photostabilizer (light stabilizer) additive in the resin composition of Park et al. in order to suppress migration from organic materials, stabilize organic materials and provides good compatibility with organic materials, and thereby arrive at the claimed invention.
Regarding claim 11, Park et al. in view of Haremza et al. disclose the molded product as set forth above. Park et al. do not disclose any types of benzotriazole-based UV absorber or stabilizer. Haremza et al. disclose the benzotriazole derivatives having molecular weight of 1100 to 5000 g/mol as UV absorber or stabilizer. Therefore, the molded product of Park et al. in view of Haremza et al. does not comprise a benzotriazole-based UV stabilizer having a molecular weight equal to or less than about 500.
Regarding claim 12, Park et al. disclose additives including release agents are optional in the resin composition (see paragraph 0092). Further, release agents comprising waxes are optional (see paragraph 0095). Therefore, the molded article does not comprise a wax. Accordingly, Park et al. meets present claim.
Regarding claim 14, Park et al. additives including antioxidants are optional in the resin composition (see paragraph 0092). Therefore, molded article does not comprise an antioxidant or a radical scavenger.
Regarding claim 18, Park et al. disclose the molded article includes automobile components, i.e. vehicle component (see paragraph 0104). Therefore, Park et al. meets a vehicle comprising the molded product.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Haremza et al. (US 2012/0059095 A1) as applied to claim 1 above, further in view of van de Grampel et al. (US 2018/0265679 A1).
Regarding claim 4, Park et al. in view of Haremza et al. disclose the molded product as set forth above. Park et al. disclose polycarbonate with weight average molecular weight of about 10,000 to about 200,000 and disclose that combinations of polycarbonate can be used, however, there is no explicit disclosure to use two polycarbonates with different molecular weight.
Park et al. in view of Haremza et al. do not disclose the polycarbonate-based polymer comprises two or more types of polycarbonate-based polymers with different weight-average molecular weights.
Van de Grampel et al. disclose that polycarbonate compositions should have good flow properties and good impact properties and that stiffness (impact properties) is increased by increasing molecular weight but this reduces the flow properties (see paragraph 0005).
Therefore, it would have been obvious to one of ordinary skill in the art to use a combination of polycarbonates with different molecular weights in Park et al. in view of Haremza et al. in order to produce a molded article with the desired balance of flow properties and impact properties and thereby arrive at the claimed invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Haremza et al. (US 2012/0059095 A1) as applied to claim 1 above, further in view of Kim et al. (US 2020/0377027 A1).
Regarding claim 19, Park et al. in view of Haremza et al. disclose the molded product as set forth above. Further, Park et al. disclose the molded article includes automobile components, i.e. vehicle component (see paragraph 0104). Therefore, Park et al. meets a vehicle comprising the molded product. Park et al. in view of Haremza et al. do not disclose a vehicle roof rack comprising the molded product.
Kim et al. disclose a roof rack mounted on a roof panel of a vehicle (i.e. a vehicle roof rack) made of a resin composite comprising a thermoplastic resin such as polycarbonate resin (see page 4, claims 1, 9, 10, 11 and 12). The roof rack provides increased strength, light weight and cost savings (see paragraph 0053).
In light of motivation for using a roof rack disclosed by Kim et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to prepare a vehicle roof rack having the structure of Kim et al. that comprises the thermoplastic resin composition of Park et al. in view of Haremza et al. in order to produce a vehicle component of Park et al. that is a roof rack with increased strength, that is light weight and provides cost savings, and thereby arrive at the claimed invention. Accordingly, Park et al. in view of Haremza et al. and Kim et al. disclose a vehicle roof rack comprising the molded product as presently claimed.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1) in view of Haremza et al. (US 2012/0059095 A1) and Kim et al. (US 2020/0377027 A1) as applied to claim 19 above, further in view of Huang (US 9,604,566 B1).
Regarding claim 20, Park et al. in view of Haremza et al. and Kim et al. disclose the vehicle roof rack as set forth above. Park et al. in view of Haremza et al. and Kim et al. do not disclose a vehicle roof rack further comprising a lamp adjacent to the molded product such that light from the lamp emits through the molded product.
Huang disclose a roof rack 1 fixed on a roof of car and warning lamp 3 on the roof rack (lamp adjacent to the molded product) (see Figure 4 and col. 2, lines 54-60). The warning lamp can be used as auxiliary warning light, auxiliary brake lamp or auxiliary direction lamp (see col. 2, lines 60-62).
In light of motivation for using warning lamp on the roof rack disclosed by Huang as described above, it therefore would have been obvious to one of the ordinary skill in the art to use warning lamp on vehicle roof rack of Park et al. in view of Haremza et al. and Kim et al. in order to provide auxiliary warning light, auxiliary brake lamp or auxiliary direction lamp, and thereby arrive at the claimed invention. Given that the molded article (vehicle roof rack) of Park et al. in view of Haremza et al. and Kim et al. is identical to that presently claimed, it is inherent or obvious that the light from the warning lamp emits through the molded product.
Response to Arguments
Applicant's arguments and declaration filed 07/17/2026 have been fully considered but they are not persuasive. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that however, neither Park et al. nor Xiancheng et al. teaches or suggests the specific, narrowly defined limitations now recited in amended claim 1.
As set forth above, Park in view of Xiancheng disclose limitations recited in claim 1. Regarding broader ranges, 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 moreover, Xiancheng et al. does not disclose or suggest polycarbonate-based resin compositions comprising the specific combination of (i) a polycarbonate-based polymer, (ii) a polysiloxane-polycarbonate copolymer, and (iii) a polysiloxane-polyester copolymer as recited in claim 1. Xiancheng et al. therefore provides no teaching or suggestion regarding compatibility, processing, or property balance when such benzotriazole stabilizers are used in the particular multi- component polycarbonate/siloxane system of Park et al. and the present application.
However, Park et al. already disclose a combination of a polycarbonate-based polymer, a polysiloxane-polycarbonate copolymer, a polysiloxane-polyester copolymer and a photostabilizer or stabilizer. Xiancheng is only used to teach a specific stabilizer such as benzotriazole copolymer to prevent photoaging or ultraviolet aging of polymer materials. Given that Park et al. already disclose photo stabilizer in polycarbonate-based resin (polymer material) composition and given that Xiancheng et al. provides a proper motivation for using benzotriazole copolymer in polymer material, Xiancheng et al. is properly combined with Park et al.
Applicants argue that even if one were to assume that a benzotriazole-based UV stabilizer could be used as a light stabilizer in Park et al., neither reference provides any teaching or suggestion to select the specific, narrow compositional ranges, molecular weight ranges, or structural limitations now recited in amended claim 1. Instead, the cited references provide broad, open-ended disclosures. Selection of the claimed limitations is therefore not a matter of routine optimization, but rather reflects Applicant's discovery of a critical and non-obvious balance among multiple interacting components.
While Park et al. disclose broad amounts of polycarbonate resin, polycarbonate-polysiloxane copolymer, siloxane polyester and stabilizer, and broad molecular weight ranges, the fact remains that these amounts overlap 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 present specification, together with the Declaration, provides experimental data demonstrating that the claimed ranges are critical to achieving the desired combination of properties.
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 resin comprising a combination of two specific polycarbonate resins a1 and a2, each in specific amounts (see Table 1), while the present claims broadly recites polycarbonate resin in broad amounts, and the examples recite a specific polycarbonate resin (a1 and a2) having specific weight average molecular weight (see Table 2), while the present claims broadly recites polycarbonate resin having broad range of weight average molecular weight, (ii) the examples recite a specific polysiloxane-polycarbonate copolymer having specific weight average molecular weight in specific amounts (see Tables 1 and 2), while the present claims recite any polysiloxane-polycarbonate copolymer having broad range of weight average molecular weight in broad amounts, (iii) the examples recite a specific polysiloxane-polyester copolymer in specific amounts (see Tables 1 and 2), while the present claims has broad recitation of polysiloxane-polyester copolymer in broad amounts and (iv) the examples recite a specific benzotriazole-based UV stabilizer having specific molecular weight (see Tables 1 and 2), while the present claims have broad recitation of benzotriazole-based UV stabilizer having broad range of molecular weight. Further, there is no data at lower end and upper end for amounts of polycarbonate-based polymer and polysiloxane-polyester copolymer, and no data at lower end for amount of polysiloxane-polycarbonate copolymer.
Applicants argue that the data demonstrates a critical upper boundary for the polysiloxane-polyester copolymer content at the claimed limit of about 1 part by weight.
However, the data is not persuasive for the same reasons as set forth above. Further, there is no data at lower and upper end for amount of polysiloxane-polyester copolymer (i.e. no data at 0.3 part by weight and 1 part by weight).
Applicants argue that the data demonstrates that the claimed benzotriazole-based UV stabilizer range of 2 to 4 parts by weight is not an arbitrary selection from the prior art. Rather, it defines a critical window necessary to achieve excellent weather resistance and transparency while maintaining acceptable impact resistance-a balance of properties that is not achieved outside the claimed range.
However, the data is not persuasive for the same reasons as set forth above.
Applicants argue that the data confirms that the claimed compositional ranges produce unexpected results and represent critical boundaries for achieving the desired combination of properties.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims for the same reasons as set forth above.
Applicants argue that moreover, as discussed above with respect to the rejection over Park et al. in view of Xiancheng et al., Haremza et al. likewise does not teach or suggest the specific multi-component polycarbonate/siloxane resin system recited in amended claim 1, nor does it provide any guidance for selecting the critical and narrow compositional ranges now recited in the claims.
As set forth above, Park in view of Haremza disclose limitations recited in claim 1. Regarding broader ranges, 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 claims 1-3, 5-14, and 16-18 are not obvious over Park et al. in view of Haremza et al. The experimental evidence of criticality and unexpected results set forth above and in the accompanying Declaration further supports patentability. Therefore, Applicant respectfully requests that this rejection be withdrawn.
However, the data is not persuasive for the same reasons as set forth above.
In light of amendments, 112(b) paragraph rejection is withdrawn.
In light of amendments, 112(d) paragraph rejection is withdrawn.
In light of amendments, double patenting rejection is withdrawn.
Conclusion
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
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