DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1 and 12-14 are objected to because of the following informalities:
In claim 1, line 10, “Free Space Method” should read “free space method.”
In claim 12, line 3, “Free Space Method” should read “free space method.”
In claim 13, line 3, “Free Space Method” should read “free space method.”
In claim 14, line 3, “Free Space Method” should read “free space method.”
In claim 14, line 4, “Coaxial Method” should read “coaxial method.”
Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 6-10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al (US 2024/0006775 A1) in view of Iseki et al (US 2023/0242747 A1).
Regarding Claims 1-3 and 6-7: Gubbels teaches a thermoplastic composition containing 30-93wt% of a polymer, 6.5-10 wt% of a first conductive material, 0.5-0.9wt% of a second conductive material, and up to 59.1wt% of further additives (para. 0019-0023), or preferably 70-91.99wt% of a polymer, 7.5-8.5wt% of a first conductive material, 0.55-0.65wt% of a second conductive material, and up to 20.85wt% of further additives (para. 0057-0061), wherein the first conductive material is a metallic material such as stainless steel, and the second conductive material is a carbon material such as carbon black (para. 0067-0070), and the stainless steel is in the form of a fiber (para. 0186). Gubbels further teaches that the polymer component is a thermoplastic, preferably polybutylene terephthalate, which is a crystalline polymer, and may be blended with another polymer such as polycarbonate, which is amorphous (para. 0038-0039). However, Gubbels is silent to the blending ratio of the PBT and PC.
Iseki teaches an EM wave absorbing material comprising a thermoplastic resin and a conductive material (para. 0010), wherein the thermoplastic resin component contains a blend of 100 parts by weight of polybutylene terephthalate and 1-75 parts by weight of polycarbonate (para. 0098), wherein the inclusion of polycarbonate makes it possible to achieve a high shielding effect with a low amount of conductive filler (para. 0092), and the disclosed amount allows for reduced warpage in the formed article, as well as good chemical resistance and hydrolysis resistance (para. 0099). Iseki and Gubbels are analogous art because they are directed toward the same field of endeavor, namely thermoplastic-based wave absorbing compositions. Based on calculations, a composition having 70-91.99wt% of a resin, as taught by Gubbels, with the blending ratios taught by Iseki would contain 0.69-39.4wt% of polycarbonate and 52.5-91wt% of polybutylene terephthalate. These amounts overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use overlapping amounts of the crystalline PBT and amorphous PC in the composition of Gubbels to achieve a high shielding with a low amount of conductive filler, reduce warpage of an article formed from the composition, and impart good chemical resistance and hydrolysis resistance.
Gubbels further teaches that the thermoplastic composition has an absorption of at least 70% and a reflection of 30% or lower (para. 0177) in a range of 60-90 GHz para. 0188). The measurement method taught in para. 0187-0192 of Gubbels is taken to read on the free space method taught in para. 0084-0086 of the instant application.
Not disclosed is the transmission at a frequency of 75-110 GHz, as measured by the free space method. However, Gubbels and Iseki teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a transmission of 1% or lower, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 8: Gubbels teaches that the further additives comprise glass fiber in an amount of 0.1-50.2wt% (para. 0076). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an overlapping amount of the glass fiber, and they would have been motivated to do so to achieve a suitable reinforcing effect.
Regarding Claims 9-10: Gubbels teaches that the further additives, present at up to 20.85wt% of the composition (para. 0061), may comprise an impact modifier (para. 0073, 0145) such as a copolymer of ethylene, methyl acrylate, and glycidyl methacrylate (para. 0153-0155). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an overlapping amount of an impact modifier and would have been motivated to do so to achieve good toughness and impact resistance in the composition.
Regarding Claim 12: Not disclosed is the absorption as tested at 77 GHz. However, Gubbels and Iseki teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. an absorption of at least 65% as tested by a free space method at 77 GHz, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 13: Not disclosed is the reflection as tested at 77 GHz. However, Gubbels and Iseki teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a reflection of at most 35% as tested by a free space method at 77 GHz, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 14: Not disclosed is the dielectric constant. However, Gubbels and Iseki teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a dielectric constant of 13 or lower, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 15: Gubbels teaches a radar absorber part or radar absorber housing comprising the composition as taught above (para. 0179).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al (US 2024/0006775 A1) in view of Iseki et al (US 2023/0242747 A1) and van der Mee et al (US 2015/0104599 A1).
Gubbels and Iseki teach the limitations of claim 1, as set forth above. However, Gubbels and Iseki are silent to the polycarbonate being a copolyestercarbonate copolymer having ITR ester units.
Van der Mee teaches a thermoplastic composition containing a copolyestercarbonate copolymer/poly(carbonate-arylate-ester) having isophthalate-terephthalate-resorcinol ester repeat units (para. 0031), wherein the molar ratio of ITR ester units to polycarbonate units is from 90:10-10:90 (para. 0034, Formula 8c). The inclusion of ITR ester units in a copolycarbonate imparts toughness, weatherability, and desirable thermal flow properties (para. 0032). Van der Mee and Gubbels are analogous art because they are directed toward the same field of endeavor, namely thermoplastic compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace at least a portion of the polycarbonate in the composition with Gubbels with a copolyestercarbonate copolymer containing ITR ester units and polycarbonate monomer units in order to impart the composition with good weatherability, toughness, and thermal flow properties.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al (US 2024/0006775 A1) in view of Iseki et al (US 2023/0242747 A1) and Hironaka et al (US 2010/0227963 A1).
Gubbels and Iseki teach all of the limitations of claim 1, as set forth above. However, Gubbels and Iseki are silent to the polymer components or conductive carbon component comprising recycled content.
Hironaka teaches a thermoplastic composition containing a polyester (polylactic acid) and a second polymer (para. 0013), wherein the second polymer is a polycarbonate that comprises recycled polycarbonate, thereby reducing the environmental burden of the material, in such an amount that the general properties of the composition are not affected (para. 0087-0092). Hironaka and Gubbels are analogous art because they are directed toward the same field of endeavor, namely polyester/polycarbonate compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace a portion of the polycarbonate taught by Gubbels with a recycled polycarbonate in order to reduce the environmental impact of the material.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gubbels (US 2022/0225551 A1) teaches an EM wave absorbing material.
Kostelnik (US 4559164 A) teaches an electrically conductive polymer material.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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