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 response dated 6/22/26, Claims 1-18 are currently pending in the application.
Applicant's election with traverse of Group III (encompassing claims 7-10, 12) in the reply filed on 6/22/26 is acknowledged. The traversal is on the ground(s) that restriction is only proper if the claims of the restricted groups are independent or patentably distinct and there would be a serious search and/or examination burden placed on the examiner if restriction is not required and the burden is on the examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction (MPEP § 803), that unity of invention does exist between Groups I to III because there is a technical relationship that involves the same special technical feature, and that a search of all the claims would not impose a serious burden on the examiner and that the International Searching Authority searched all of the claims together.
The arguments are not found persuasive. Examiner has cited Example 5 in Kurasawa as teaching a composition comprising all required elements of the common technical feature. Additionally, MPEP § 803 is pertinent to applications filed under 35 U.S.C. 121, whereas the present application is a 371 of a PCT application, and the standards and support for the finding of lack of unity in the restriction requirement dated 4/29/26 are consistent with the guidelines of International Authority under PCT rule 13.2. Furthermore, the consideration of undue search burden is one that must be made by the Examiner and to that end, independent claim 1 is drawn to a composition requiring specific features, while independent claim 7, drawn to a member, requires features that differ from those of claim 1.
In light of above, the requirement is still deemed proper and is therefore made FINAL. Claims 1-6, 11, 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 7, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tamai et al. (JP2006-241201A, machine translation).
Tamai teaches a styrene-based composition for forming molded articles in applications, such as electric and electronic components/parts, including a parabolic antenna, housings and case members [0085] (Overview, [0089]), said composition comprising 5 to 90% by mass of a rubber-reinforced styrene polymer (A) obtained by polymerizing an aromatic vinyl compound or an aromatic vinyl compound and another vinyl monomer (b1) copolymerizable with the aromatic vinyl compound under the presence of a rubbery polymer (a), and having a dissolved amount in hot cyclohexane of 1 to 99% by mass based on the rubbery polymer (a); 0-85 mass% of a styrene-based polymer (B) obtained by polymerizing an aromatic vinyl compound or an aromatic vinyl compound and another vinyl monomer (b2) copolymerizable with the aromatic vinyl compound; and 10 to 90% by mass of an aromatic polycarbonate resin (C), e.g., polycarbonate resin (Overview, [0008]).
Disclosed Example 14 in Table 2 includes 10 parts by weight of a styrenic resin ST-1-2, 40 parts by wt. and ST-2-3, and 50 parts by weight of polycarbonate (PC-1, Iupilon S3000, reads on (A)) (Table 2). The calculated amounts, in parts by weight of ST-1-2 and ST-2-3, relative to 100 parts by weight of polycarbonate, are 20 and 80, respectively. Disclosed ST-2-3 is formed from 70% of styrene and 30% of acrylonitrile (reads on (B)) [0103]. Disclosed ST-1-2 is formed from polymerizing 50 parts by wt. of 70% methyl methacrylate, 40 parts by weight of styrene and 5% of acrylonitrile in the presence of 50 parts by wt. polybutadiene, providing for a graft ratio of 45% [0097]-[0098]. Per instant disclosure [0046], core-shell graft type elastomer include 40 mass% or more of the rubber component. Thus, disclosed ST-1-2 reads on the claimed elastomer (C).
Tamai is silent on a member for an antenna comprising composition having claimed dielectric dissipation factor.
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.
Given the teaching in Tamai on suitable components and amounts thereof for forming the resin compositions, the teaching on suitability of the resin compositions for molded articles, such as electric and electronic components/parts, including a parabolic antenna, housings, case members etc., and noting that the recitation “for an antenna” (cf. independent claim 7) is an intended use limitation, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to form a member capable of utilizing electromagnetic wave from Tamai’s compositions comprising components in amounts within the scope of the claimed invention. MPEP 2111.02.
Additionally, given that the disclosed resin composition meets the claimed compositional limitations of the claimed member, a skilled artisan would reasonably a member formed from Tamai’s composition as in Example 14 to have the claimed dielectric dissipation factor, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons.
Claims 7-10, 12, are rejected under 35 U.S.C. 103 as being unpatentable over Kurasawa (US 20080299355 A1), in view of Chou et al. (WO 9105823 A) and Tamai et al. (JP2006-241201A, machine translation).
Kurasawa teaches molding compositions comprising a thermoplastic resin (A) comprising a mixture of 50 to 100% by weight of a polycarbonate resin and 0 to 50% by weight of polystyrene resin, based on 100 parts by wt. of an amorphous thermoplastic resin (A), wherein said polystyrene resin includes polymers or copolymers comprising not less than 50% by wt. styrene, such as high impact polystyrene, MBS or ABS resin (Ab, [0011]-[0012], [0036]-[0038], ref, claims).
Disclosed polycarbonate resins have a viscosity-average molecular weight not less than 14,000, preferably not less than 15,000, and usually not more than 30,000 [0019]. Disclosed weight-average molecular weight of the polystyrene resins is usually not less than 50,000 and not more than 500,000 [0036]. Both the ranges for the viscosity average molecular weight of the polycarbonate and for the weight-average molecular weight of the polystyrene resins overlap with ranges prescribed in the instant disclosure for claimed (A) and (B) (PGPUB-[0081], TABLE 1).
Additionally, disclosed composition of Example 7 comprises 85 parts by wt. of (A-1) PC ( Lupilon S-3000, viscosity-average molecular weight: 21,000) and 15 parts by wt. of AS (acrylonitrile-styrene resin, Mw=150,000), with other embodiments in Table 1 including PS Japan HF77 as the polystyrene resin (A-5). It is noted that in the instant disclosure, Iupilon S-3000 corresponds to A1 polycarbonate resin having a melt viscosity of 628, and HF77 polystyrene corresponds to B4 polystyrene resin having a melt viscosity of 69 (Tables 1 and 2).
Kurasawa is open to the reinforced thermoplastic resin composition including various known elastomers for enhancing impact strength [0075], and teaches molded products molded products having small warpage and excellent in rigidity, strength, self-tapping properties, flame retardancy, etc., for use in applications such, for example, chassis for electric and electronic apparatus, OA equipment, etc. [0082].
Kurasawa is silent on a member configured to utilize an electromagnetic wave and comprising a resin composition comprising an elastomer and having a dielectric dissipation factor as in the claimed invention.
As stated in paragraph 7 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.
In a related field of endeavor, the secondary reference to Chou teaches compositions of polycarbonate for molded and shaped articles having good impact resistance, obtained by including an elastomeric toughening agent. Disclosed genus of toughening agents include, styrene/ethylene/butylene/styrene copolymer (SEBS), methyl methacrylate /butadiene/styrene copolymer (MBS rubber) etc. (Ab., page 2-4, pages 18-26). Disclosed composition includes polycarbonate in an amount from about 40 parts to about 95 parts by weight, and a toughening agent is present in said composition in an amount from about 0.1 parts to about 20 parts by weight (ref. claim 12).
Given the teaching in Chou on elastomers as suitable toughening agents for polycarbonate compositions, and the teaching in Kurasawa on suitable polycarbonate resins and styrenic resins for preparing the molding compositions, which may further include known elastomers for enhancing the impact strength, it would have been obvious to prepare compositions from 100 parts of a polycarbonate resin having 50 to 100 parts by weight of a polycarbonate, 0 to 50% by weight of a polystyrene resin, e.g., HF77, and a toughening elastomer at 0.1-20 part/40-95 parts by wt. of polycarbonate, including those of the claimed invention. For instance, a skilled artisan would have found it obvious to prepare a toughened composition comprising (A) 75 parts by weight of polycarbonate (Iupilon S-3000, melt viscosity=628), (B) 25 parts by weight of HF77 polystyrene (melt viscosity-69), and (C) 5 parts by weight of a rubber, e.g., MBS or SEBS, providing for a melt viscosity ratio of 9.1. A skilled artisan, and reasonably expect the same to be capable of forming molded article having the claimed dissipation factor because materials and their properties are inseparable, absent evidence to the contrary. As stated in paragraph 8 above, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons.
Furthermore, noting that the recitation “for an antenna{ in claim 7 is an intended use limitation, Tamai is in a related field of endeavor and teaches a resin compositions for forming molded articles, such as electric and electronic components/parts, including a parabolic antenna [0085] (Overview, [0089]), said compositions comprising 5 to 90% by mass of a rubber-reinforced styrene polymer (A), 0-85 mass% of a styrene-based polymer (B) and 10 to 90% by mass of an aromatic polycarbonate resin (C), e.g., polycarbonate resin (Overview, [0008]).
Given the teaching in Tamai on suitability of the resin compositions for forming molding electric and electronic articles, including a parabolic antenna, and given that Kurasawa, as modified by Chou, also teaches similar resin compositions for forming moldings, such as chassis for electric and electronic apparatus, it would have been obvious to one of ordinary skill in the art to utilize Kurasawa’s compositions, as modified by Chou, of overlapping scope for forming a member capable of utilizing an electromagnetic wave e.g., a parabolic antenna. A known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2141, III-F.
Regarding claims 10 and 12, Kurasawa does not teach an acrylonitrile-butadiene-styrene as an essential component in its compositions, and the recitation “no more than 10 parts” in the claim 12 includes 0 as the lower limit.
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