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 01/20/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-14 and 16-20 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
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.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites the limitation "the wax" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 recites “about 70 to about 95 parts by weight of the polycarbonate-based polymer”. Given that claim 1 already recites “about 70 to about 95 parts by weight of the polycarbonate-based polymer”, claim 16 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3, 5-14 and 16-18 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 1-3, 5-10, 16 and 17, 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 claims (claim 1 and claim 17), the amount of polycarbonate resin is 68 to 90 wt% (68 = 70/102.3 x 100 and 90 = 95/105 x 100), the amount of polycarbonate-polysiloxane copolymer is 5 to 29 wt% (5 = 5/105 x 100 and 29 = 30/102.3 x 100), the amount of polysiloxane-polyester is 0.3 to 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 2 to 5 wt% (2 = 2/102.3 and 5 = 5/105 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 claims 12 and 13, Park et al. disclose additives including release agents are optional in the resin composition (see paragraph 0092). Further, release agents comprising waxes are optional where the waxes include metal salts of montanic acid or montanic acid ester waxes, i.e. montan-based wax (see paragraph 0095). Therefore, the molded article does not may or may not comprise a wax (any kind of wax). Accordingly, Park et al. meets present claims
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 1-3, 5-14 and 16-18 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 1-3, 5-10, 16 and 17, 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 claims (claim 1 and claim 17), the amount of polycarbonate resin is 68 to 90 wt% (68 = 70/102.3 x 100 and 90 = 95/105 x 100), the amount of polycarbonate-polysiloxane copolymer is 5 to 29 wt% (5 = 5/105 x 100 and 29 = 30/102.3 x 100), the amount of polysiloxane-polyester is 0.3 to 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 2 to 5 wt% (2 = 2/102.3 and 5 = 5/105 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 claims 12 and 13, Park et al. disclose additives including release agents are optional in the resin composition (see paragraph 0092). Further, release agents comprising waxes are optional where the waxes include metal salts of montanic acid or montanic acid ester waxes, i.e. montan-based wax (see paragraph 0095). Therefore, the molded article does not may or may not comprise a wax (any kind of wax). Accordingly, Park et al. meets present claims
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.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, 10-12, 14, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/849,698 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.
Copending application no. 18/849,698 disclose a molded article. The molded article does not comprise a wax and does not comprise a radical scavenger. The only differences between the present claims and the copending claims are that copending claims (i) do not disclose a specific benzotriazole-based UV stabilizer and (ii) disclose a syndiotactic polystyrene.
Regarding (i), Xiancheng et al. disclose a benzotriazole styrene 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 as photostabilizer (light stabilizer) additive in molded article of copending claim 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. Accordingly, given that the copending application in view of Xiancheng et al. disclose benzotriazole UV stabilizer having molecular weight of 1000 to 20000, the copending application in view of Xiancheng et al. disclose the molded product does not comprise benzotriazole UV stabilizer having a molecular weight equal to or less than 500.
Regarding (ii), while the copending claims disclose a syndiotactic polystyrene not recited in the present claims, in light of the open language of the present claims, i.e. comprising, it is clear that the present claims are open to the inclusion of additional components including a syndiotactic polystyrene, and thereby one of ordinary skill in the art would arrive at the present invention from the copending one.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that Park et al. discloses certain polycarbonate-based resin compositions that may optionally include a broad range of additives (including light stabilizers) in amounts of up to 40 wt% or less of the overall composition. However, Park et al. does not teach or suggest the specific, narrowly defined content ranges now recited in amended claim 1 (including the combined selection of 0.3 to 1 part by weight of a polysiloxane-polyester copolymer and 2 to 4 parts by weight of a benzotriazole-based UV stabilizer, based on 70 to 95 parts by weight of a polycarbonate-based polymer).
While Park et al. disclose broad amounts of polycarbonate resin, polycarbonate-polysiloxane copolymer, siloxane polyester and stabilizer, 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 Xiancheng et al. relates to benzotriazole copolymers as UV stabilizers but 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.
While Xiancheng et al. do not disclose benzotriazole copolymers as UV stabilizers in polycarbonate-based resin composition, Xiancheng et al. disclose benzotriazole copolymers are used 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 moreover, even if one were to assume, arguendo, that a benzotriazole-based UV stabilizer could be used as a light stabilizer in Park et al., neither Park et al. nor Xiancheng et al. provides any teaching or suggestion to select the specific, narrow stabilizer amount range now claimed (2 to 4 parts by weight), nor the specific polysiloxane-polyester copolymer amount range now claimed (0.3 to 1 part by weight). Instead, the cited references provide broad, open-ended disclosures. Selection of the claimed ranges 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, 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 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 additional examples discussed in the response are not in the form of the declaration. Even if the additional examples were in the form of the declaration, the data would not be 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, while the present claims broadly recites polycarbonate resin in broad amounts, (ii) the examples recite a specific polysiloxane-polycarbonate copolymer in specific amounts, while the present claims recite any polysiloxane-polycarbonate copolymer in broad amounts, (iii) the examples recite a specific polysiloxane-polyester copolymer in specific amounts, while the present claims recite any polysiloxane-polyester copolymer in any amounts and (iv) the examples recite a specific benzotriazole-based UV stabilizer having specific molecular weight, while the present claims have broad recitation of benzotriazole-based UV stabilizer having broad range of molecular weight.
Applicants argue that Haremza et al. generally relates to certain benzotriazole derivatives as UV absorbers/stabilizers. However, Haremza et al. does not teach or suggest the specific multi- component polycarbonate/siloxane resin system recited in claim 1, nor does it teach or suggest the critical stabilizer and polysiloxane-polyester content ranges now recited in claim 1. The disclosures in Park et al. and Haremza et al. are broad, and do not provide guidance leading a person of ordinary skill in the art to the claimed narrow ranges, nor to the unexpectedly improved balance of properties demonstrated in the present application.
However, Haremza et al. disclose benzotriazole derivatives are used as UV absorber or stabilizer in plastics or plastic moldings comprising polycarbonate. Given that Park et al. already disclose photo stabilizer in polycarbonate-based resin composition and given that Haremza et al. provides a proper motivation for using benzotriazole copolymer in polycarbonate resin, Haremza et al. is properly combined with Park et al.
Regarding broader amounts, 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).
Regarding unexpectedly improved balance of properties, the data is not persuasive for the same reasons as set forth above.
Applicants argue that these additional references do not remedy the deficiencies discussed above with respect to the base combination(s) and, at most, relate to unrelated features (e.g., blending polycarbonates of different molecular weights; or general vehicle roof rack structures). Because amended independent claim 1 is not rendered obvious by the cited base references, the dependent claims that further limit claim 1 likewise are not rendered obvious.
However, note that while Grampel et al., Kim et al. and Huang do not disclose all the features of the present claimed invention, Grampel et al., Kim et al. and Huang are each used as a teaching reference, and therefore, it is not necessary for these secondary references to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely combination of polycarbonates with different molecular weight by Grampel et al., vehicle roof rack by Kim et al. and vehicle roof rack comprising a lamp, and in combination with the primary reference, discloses the presently claimed invention.
Applicants argue that as amended, claim 1 recites specific and critical content ranges for the polysiloxane- polyester copolymer (0.3 to 1 part by weight) and the benzotriazole-based UV stabilizer (2 to 4 parts by weight), based on 70 to 95 parts by weight of the polycarbonate-based polymer. These limitations are not disclosed in the copending claims and are not suggested by Xiancheng et al. for the reasons discussed above (including lack of teaching for the claimed multi-component polycarbonate/siloxane resin system and lack of teaching for the claimed narrow ranges). Further, the present specification demonstrates that these ranges are critical to achieving the improved balance of properties. Accordingly, the amended claims are patentably distinct and the provisional double patenting rejection should be withdrawn.
However, the above limitations are recited in copending claims as noted above. Further, the data is not persuasive for the same reasons set forth above. Therefore, the double patenting rejection is maintained.
In light of amendments, previous 112(b) paragraph rejection is withdrawn. However, in light of amendment, new 112(b) rejection is set forth above.
In light of amendment, 112(d) paragraph rejection of claim 10 is withdrawn. However, in light of amendment, new 112(d) rejection is set forth above.
Conclusion
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights