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 . Per preliminary amendment dated 3/12/25, claims 1-15 are currently pending in the application.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and the use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-13, drawn to a composition;
Group II, claim 14, drawn to a method; and
Group III, claim 15, drawn to an article.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I to III above lack unity of invention because the technical feature common to the cited groups is a composition comprising (A) 20-75 wt.% a polycarbonate having a melt index of 15-25g/10min (300oC), (B) 5-25 wt.% polycarbonate-polysiloxane copolymer (C) 5-45 wt.% glass fiber, (D) 2-12 wt.% liquid phosphorus-based flame retardant and (E) 1-7 wt.% phosphazene compound, within the scope of claim 1.
Regarding this feature, the prior art to Kurachi (JP 2016003290 A, machine translation), teaches a flame retardant composition comprising 40-95 mass% of polycarbonate (A), 3-12 mass of a phosphazene derivative (C), 0.1-3 mass% of a phosphorus-containing compound e.g., bisphenol A-bis (diphenyl phosphate, a liquid (D) and a fiber (E) optionally. The composition of Example 6 comprises (A) 45.77 wt.%, (C) 2.52 wt.%, (D) 6.86 wt.% and (E) 10.53 wt.% (glass fiber) (Ab., Ex. 6.
Kurachi is silent on a composition comprising a polycarbonate having claimed melt index and polycarbonate-polysiloxane copolymer in an amount as claimed.
The secondary reference to Kim (US 20160340508 A1) teaches that a polycarbonate resin having a melt index (300° C., 1.2 kg) of 3 to 35 g/10 min, provides for superior impact strength and chemical resistance [0026], while Aoki et al. US 20170321055 A1 teaches that a polycarbonate-based resin composition (A) including: 90-10 mass % of a polycarbonate-polyorganosiloxane copolymer (A-1); and 10-90 mass % of a polycarbonate-based resin (A-2) except the (A-1) (Ab.), has an improved flame retardancy without a significant impact on impact strength, as compared to a polycarbonate (A1700) (Example 2 in Table 1-1 as compared to reference Example 4 in Table 1-2).
Therefore, it would be obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to modify Kurachi by replacing 45.77 wt% polycarbonate in the composition of example 6 of Kurachi with a 50/50 composition of polysiloxane-polycarbonate and recycled polycarbonate having M’s melt index (22.88 wt.% each) in order to provide a flame-retardant composition with improved flame retardancy (elaborated further in the rejection below). It is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists.
Given that the common technical feature of presently cited claims in Groups I to III fails to define a contribution over cited combination of references, the common technical feature does not amount to a special technical feature.
In light of above, there is lack of unity between the cited groups.
During a telephone conversation with Bumrae Cho on 8/4/26, a provisional election was made with traverse to prosecute the invention of Group I, encompassing claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14 and 15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kurachi (JP 2016003290 A, machine translation) in view of Kim et al. (US 20160340508 A1).
Regarding claims 1, 8-10, incorporating the discussion on Kurachi from paragraph 4 above, Kurachi teaches a flame-retardant resin composition comprising (A) 40-95 mass% of a polycarbonate, (C) preferably 0.1-3 mass% or less of a phosphazene derivative, (D) preferably 3-12 mass% of a phosphorus-containing compound, and optionally, (E) a fiber, based on the total 100 mass% of (A) to (E) (Overview, [0078], [0087], ref. claims).
Kurachi is open to using more than one type of polycarbonate, that polycarbonate (A) may constitute a copolymer of a polycarbonate and an oligomer/ polymer of siloxane (reads on (B)) for the purpose of further enhancing flame retardancy and impact resistance [0045].
Example 6 is drawn to a flame-retardant composition (A) 45.77 wt.% polycarbonate (PC) (TARFLON A2200), (C) 2.52 wt.% cyclic phosphazene derivative (D) 6.86 wt.% bisphenol A-bis (diphenyl phosphate), i.e., a liquid and (E) 10.53 wt.% glass fiber (CSG 3PA-83089, Ex. 6, Table 2-1) (ratio of bisphenol A-bis (diphenyl phosphate) to phosphazene derivative is 2.72 and falls with the range of claim 10).
It is further noted that the melt viscosity of TRAFLON™ #2200 PC is 12g/10 min at 300oC.
Kurachi is silent on a composition comprising (1) a polycarbonate having claimed melt index and (2) a polycarbonate-polysiloxane copolymer in claimed amount.
At the outset, it is noted that in the case where the claimed ranges "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). See MPEP § 2144.05.
Regarding (1), in a related field of endeavor, Kim teaches a polycarbonate resin composition comprising a polycarbonate resin [0011], wherein said polycarbonate resin has a melt index (300° C., 1.2 kg) of, for e.g., 3 to 35 g/10 min and provides for superior impact strength and chemical resistance [0026].
Regarding (2), Kurachi is open to including more than one type of polycarbonate and that a copolymer of polycarbonate and an oligomer/polymer of siloxane may be used for further enhancing flame retardancy and impact resistance [0045]. Thus, it is the examiner's position that the amount of polycarbonate-polysiloxane copolymer component in a polycarbonate resin blend is a result effective variable because changing it would clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Given the teaching in Kim on advantages of the prescribed melt index of a polycarbonate, and the teaching in Kurachi on suitability of more than one type of polycarbonate resin and advantages of a polycarbonate-polysiloxane copolymer, in addition to other suitable components for forming the flame-retardant polycarbonate resin composition, it would have been obvious to one of ordinary skill in the art, as of the as of the effective filing date of the claimed invention, to prepare a composition comprising (A) 40-95 mass% resin blend comprising a polycarbonate resin having a melt index as prescribed by Kim, and a polycarbonate-polysiloxane copolymer, (C) 0.1-3 mass% or less of a phosphazene derivative, (D) 3-12 mass% of a phosphorus-containing compound, an (E) a fiber, including those of the claimed invention, for further enhancing the flame retardancy/ impact resistance of the resin composition.
For instance, as skilled artisan would have found it obvious to prepare a composition as in Example 6 of Kurachi comprising: a resin component at 45.77 wt%, comprising a blend of polycarbonate (having MFR in the overlapping range of 15-25 g/10min) and an appropriately effective amount of polysiloxane-polycarbonate to provide for the desired level of disclosed advantages, (C) 2.52 wt.% cyclic phosphazene derivative, (D) 6.86 wt.% bisphenol A-bis (diphenyl phosphate, a liquid) and (E) 10.53 wt.% glass fiber (CSG 3PA-83089 from Nitto Boseki Co.), including those of the claimed invention.
Regarding claim 3, Kurachi teaches that from the viewpoint of reducing environmental burden and cost, material recovered from home appliances is preferably used as polycarbonate (A), i.e. post-consumer recycled polycarbonate [0091].
Regarding claims 11-13, for reasons presented above, the combination of the combination of Kurachi and Kim obviates the claimed resin composition. It would have been obvious to a skilled artisan to reasonably expect compositions of overlapping scope and comprising the same components of the claimed invention to provide for the claimed properties on the basis that materials and their properties are inseparable, absent evidence to the contrary.
Claims 1, 3-6, 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kurachi (JP 2016003290 A, machine translation), in view of Kim et al. (US 20160340508 A1) and Aoki et al. (US 2017/0321055 A1).
This is an alternative rejection to the one presented above. The discussion on Kurachi from paragraph 8 above is incorporated herein by reference.
Kurachi is silent on a composition comprising (1) a polycarbonate having claimed melt index and (2) a polycarbonate-polysiloxane copolymer in claimed amount.
As stated paragraph 10 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding (1), the discussion on the secondary reference to Kim from paragraph 11 above is incorporated herein by reference.
Regarding (2), in a related field of endeavor, the secondary reference to Aoki teaches a polycarbonate-based resin composition comprising (A) including 90 mass % to 10 mass % of a polycarbonate-polyorganosiloxane copolymer (A-1) and 10 mass % to 90 mass % of a polycarbonate-based resin (A-2) except the (A-1) (Ab.), said (A) is e.g., a recycled polycarbonate. Aoki teaches that when a polycarbonate-polyorganosiloxane copolymer having impact resistance substantially equal to that of the normal polycarbonate-based resin that has not deteriorated is added to the deteriorated polycarbonate-based resin, the restoration ratio of the impact resistance is high [0097].
Example 2 in Aoki teaches that in a composition comprising recycled polycarbonate and a polycarbonate-polysiloxane copolymer at 1:1 mass ratio, the flame retardance is superior without a significant drop in impact strength, when compared to the corresponding properties of a virgin polycarbonate resin PC A1700 (Example 2 vs. Ref. Example 4).
Given the teaching in Kim on advantages of a polycarbonate resin having the prescribed melt index, the teaching in Aoki on advantages of a combination of a polycarbonate-polysiloxane copolymer and recycled polycarbonate, and the teaching in Kurachi on suitable components for forming the resin composition, it would have be obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize a resin comprising recycled polycarbonate and a polycarbonate-polysiloxane copolymer in Kurachi’s compositions, wherein said recycled polycarbonate has a melt index as prescribed by Kim.
For instance, a skilled artisan would have found it obvious to prepare a composition as in Example 6 of Kurachi comprising: polysiloxane-polycarbonate (22.8 wt.%), recycled polycarbonate (22.88 wt.%, having MFR in an overlapping range of 15-25 g/10min), 2.52 wt.% cyclic phosphazene derivative, 6.86 wt.% bisphenol A-bis diphenyl phosphate liquid and 10.53 wt.% CSG 3PA-83089 glass fiber, so as to provide for a composition with improved flame retardancy (obviates claims 1, 7-10).
Regarding claims 3, 11-13, the discussions from paragraphs 14 and 15 above are incorporated herein by reference.
Regarding claims 4-6, noting that claim 4 is a product-by-process claim, Aoki teaches that the polycarbonate-polysiloxane copolymer (PC-POS) may be a copolymer produced by copolymerizing a dihydric phenol, i.e., an aromatic diol, a polyorganosiloxane, and any of phosgene, a carbonate and chloroformate [0072], wherein said dihydric phenol may be represented by the general formula (1):
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98
300
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(1),
wherein “a” and “b” may be 0 to 2, and R1 and R2 may be each independently represent a halogen atom, an alkyl group having 1 to 6 carbon atoms, or an alkoxy group having 1 to 6 carbon atoms; X may be an alkylene group having 1 to 8 carbon atoms, -S-, -SO-, -SO2- [0043]. Disclosed polyorganosiloxanes include a compound of formula (2-1) [0042]-[0085]:
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86
430
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(2-1)
wherein in R3-R6 may be each independently represent a halogen atom, an alkyl group having 1 to 6 carbon atoms, or an alkoxy group having 1 to 6 carbon atoms, n is 20-500, and c is an integer 1 to 6. Thus, copolymers formed from a dihydric phenol of formula (1), a polyorganosiloxane of formula (2-1) and phosgene would include claimed units of Chemical formulae 1 and 3 therein. Additionally, a skilled artisan would reasonably expect siloxane blocks of overlapping scope to be capable of providing for the claimed average domain size, absent evidence to the contrary.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over (1) Kurachi (JP 2016003290 A, machine translation), in view of Kim et al. (US 20160340508 A1) and Ishikawa et al. (US 2020/0010641 A1) or (2) Kurachi (JP 2016003290 A, machine translation), in view of Kim et al. (US 20160340508 A1) and Aoki et al. (US 20170321055 A1, cited in the IDS dated 2/10/25) and Ishikawa et al. (US 2020/0010641 A1).
The discussions on Kurachi-Kim and Kurachi-Kim-Aoki combinations as applied to claim 1 from preceding paragraphs are incorporated herein by reference. Kurachi teaches that two or more types of polycarbonate resins having different viscosity average molecular weights (Mv) may be mixed and used [0042], i.e., corresponding to two or more types of polycarbonate resins having different weight average molecular weights.
The Kurachi-Kim and Kurachi-Kim-Aoki combinations are silent on a composition comprising a polycarbonate(A-2) having the claimed melt viscosity.
The prior art to Ishikawa is in a related field of endeavor and is directed to flame retardant polycarbonate resin compositions, wherein Examples (Table 2) rely on a combination of two polycarbonates having different viscosity average molecular weights. Noting that in general, melt index is inversely related to the molecular weight, Ishikawa teaches that the viscosity average molecular weights may be adjusted to less than 50,000 to enable injection molding or extrusion molding at a temperature at which the heat deterioration of the polycarbonate-based resin does not occur [101]. Thus, according to Ishikawa, molecular weights of the resins are result-effective variables that may be optimized to provide for sufficient strength. The discussion on result-effective variable from paragraph 12 above is incorporated herein by reference.
Given the teaching in Ishikawa on advantage of selecting appropriate molecular weight to prevent heat deterioration of polycarbonate-based resin during molding processes, and the teaching in Kim on prescribed melt index, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to select polycarbonate resins having appropriate melt indeces, including those of the claimed invention, so as to provide for the desired end results. As stated in paragraph 10 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over (1) Kurachi (JP 2016003290 A, machine translation), in view of Kim et al. (US 20160340508 A1) and Hayashida et al. (EP 2977409 A1) or (2) Kurachi (JP 2016003290 A, machine translation), in view of Kim et al. (US 20160340508 A1) and Aoki et al. (US 20170321055 A1, cited in the IDS dated 2/10/25) and Hayashida et al. (EP 2977409 A1).
The discussions on Kurachi-Kim and Kurachi-Kim-Aoki combinations as applied to claim 1 from preceding paragraphs are incorporated herein by reference. Kurachi teaches a composition comprising CSG 3PA-83089 of Nitto Boseki Co., Ltd in Example 6.
Although the Kurachi-Kim and Kurachi-Kim-Aoki combinations are silent on glass fibers having claimed cross sectional dimensions, in a related field of endeavor, the secondary reference to Hayashida teaches glass fiber-reinforced polycarbonate resin comprising a glass fiber, such as one with product code CSG 3PA-830 of Nitto Boseki Co., Ltd. [0082] corresponds to chopped glass fiber having a flat cross section, long diameter of 28 mm, short diameter of 7 mm and a cut length of 3 mm.
Given the teaching in Hayashida on suitable glass fibers for preparing glass fiber-reinforced polycarbonate resins, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize glass fibers within the scope of Hayashida, including those of the claimed invention. As stated in paragraph 10 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Additionally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) 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 1-9, 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6, 7, 9, 11-14 of copending Application No. No.18/110.758 (amdt. dated 8/11/26), in view of Hayashida et al. (EP 2977409 A1).
Copending claim 1 is drawn to a polycarbonate resin composition comprising components (A), (B), (D), (E) of instant claim 1 and (A-2) of instant claim 2 in overlapping amounts, in addition to limitation of instant claim 3. Claim 1 additionally recites limitations drawn to domain size and Izod impact strength (RT) of overlapping scope with those of instant claims 6 and 11.
Although copending claims are silent on glass fibers as in claimed amount, the secondary reference to Hayashida teaches glass fiber-reinforced polycarbonate resin comprising 10 to 300 parts by weight of glass fibers, per 100 parts by mass of resin component comprising a polycarbonate resin and polycarbonate-polysiloxane copolymer, wherein glass fibers contribute towards providing stiffness, strength, flame retardancy and weld strength [0100].
In view of the teaching on advantages of glass fibers in Hayashida, it would have been obvious to one of ordinary skill in the art to modify the composition of copending claims to include a glass fibers in any amount within the scope of Hayashida, including in amounts within the scope of claimed invention (obviates claims 1-3, 6 and 11). As stated in paragraph 10 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claims 4, 5, 8, 9 and 13, copending claims 3, 4, 6, 7 and 12 recite the claimed limitation. Regarding claim 12, copending claim 11 recites a substantially overlapping range.
Regarding claim 7, Hayashida teaches CSG 3PA-830 of Nitto Boseki Co., Ltd. [0082] chopped glass fibers having a flat cross section, long diameter of 28 mm, short diameter of 7 mm and a cut length of 3 mm.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights