DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/19/2026 has been entered.
Claim Objections
Claim 5 is objected to because of the following informalities: Claim 5, line 7 recites “and hydrogen atom”, which should be “and are a hydrogen atom”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Claim 5 recites “a substituted or unsubstituted C6 to C30 aryl group” in line 12 and line 13. It is suggested that one of the recitations either in line 12 or line 13 is deleted. Appropriate correction is required.
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 15 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 15 recites the limitation "the weather resistance evaluation" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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, 3-7 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2012/0165460 A1 cited in IDS) in view of Ahn et al. (US 2013/0289194 A1 cited in IDS) and Hun et al. (KR 20210051996 A cited in IDS), taken in view of evidence by SGS (Heat Stabilizers: The Coolest Polymer Additive, 2015, cited in IDS). It is noted that the disclosures of Hun et al. are based on a machine translation of the reference (cited in IDS).
Regarding claims 1, 10 and 12, 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 resin composition can comprise at least one additive such as UV absorbents, photo-stabilizers or stabilizers, flame retardant, etc. in an amount of about 40 wt% or less (see paragraphs 0092 and 0101). That is, amount of UV absorbent is about 40 wt% or less.
According to the present claims (claim 1), the amount of polycarbonate is 47 to 89 wt% (47 = 50/107 x 100 and 89 = 90/101 x 100) based on the amount of polycarbonate, polycarbonate-polysiloxane, and siloxane copolyester, the amount of polycarbonate-polysiloxane is 9.9 to 47 wt% (9.9 = 10/101 x 100 and 47 = 50/107 x 100) based on the amount of polycarbonate, polycarbonate-polysiloxane, and siloxane copolyester, the amount of siloxane-modified polyester is 1 to 6.5 wt% (1 = 1/101 x 100 and 6.5 = 7/107 x 100) based on the amount of polycarbonate, polycarbonate-polysiloxane, and siloxane copolyester, the amount of the syndiotactic styrene is 0.5 to 4.3 wt% (0.5 = 0.5/102 x 100 and 4.3 = 5/117 x 100) based on the composition and the amount of benzotriazole-based UV stabilizer is 0.5 to 4.3 wt% (0.5 = 0.5/102 x 100 and 4.3 = 5/117 x 100) based on the composition. The amounts of polycarbonate resin, polycarbonate-polysiloxane copolymer, siloxane-modified polyester and UV absorber disclosed by Park et al. fall within or overlap with that presently claimed.
Further, Park et al. disclose that the siloxane copolyester 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 to 50 and m is 5 to 30, 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 R5 and R6 comprising (CH2)3, R7 and R8 comprising (CH2)5 and m:n of 18:30 (see paragraphs 0073-0075). While the siloxane copolyester structure disclosed by Park et al. do not show hydroxyl groups (R10) at both ends, given that siloxane copolyester is prepared from siloxane, diol and carboxylic acid, the siloxane-polyester structure would necessarily have hydroxyl groups (R10) at both ends (see paragraph 0077).
Park et al. do not disclose a syndiotactic polystyrene. Park et al. do not disclose ultraviolet absorber is a benzotriazole-based ultraviolet (UV) stabilizer.
Ahn et al. disclose a polycarbonate resin composition comprising an aromatic polycarbonate resin (polycarbonate resin), a siloxane-based polycarbonate (polysiloxane-polycarbonate copolymer resin) and a syndiotactic polystyrene (see Abstract). The amount of syndiotactic styrene is 0 to about 5 wt% in the polycarbonate resin composition which does not deteriorate transparency of the polycarbonate (see paragraphs 0144, 0145). The syndiotactic polystyrene has a syndiotactic degree of about 97 to about 100% in order to provide excellent chemical resistance (see paragraph 0143 and page 14, claim 14). The polycarbonate resin composition has excellent flowability, injection moldability, impact strength, chemical resistance, and transparency (see Abstract). The amount of syndiotactic styrene disclosed by Ahn et al. overlap with that presently claimed.
In light of motivation for using 0 to about 5 wt% of syndiotactic polystyrene disclosed by Ahn et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use 0 to about 5 wt% of syndiotactic polystyrene of Ahn et al. in the resin composition of Park et al. in order to provide excellent flowability, injection moldability, impact strength, chemical resistance, and transparency, and thereby arrive at the claimed invention.
Park et al. in view of Ahn et al. do not disclose ultraviolet absorber is a benzotriazole-based ultraviolet (UV) stabilizer.
Hun et al. disclose a thermoplastic resin composition comprising polycarbonate, polysiloxane-polycarbonate copolymer, and 0.1 to 1 wt% heat stabilizer (see paragraph 0010). Although there is no explicit disclosure that the heat stabilizer is a benzotriazole UV absorber, Hun et al. disclose that the heat stabilizer includes that known under the tradename LA300K (see paragraph 0096) which is identical to that used in the present invention (see page 19, line 6 of the present specification), and therefore Hun et al. disclose benzotriazole UV absorber as presently claimed. It is well known, as evidenced by SGS, that when incorporated into a polymer, heat stabilizers protect the properties of the overall compound from heat damage, either during the manufacturing process or during normal use of the finished product and help preserve the polymer’s appearance, strength, elasticity, durability and performance characteristics (see page 1, paragraphs 3-4).
In light of motivation for using benzotriazole-based UV absorber disclosed by Hun et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use benzotriazole-based UV absorber as ultraviolet absorber or stabilizer in the resin composition of Park et al. in view of Ahn et al. in order to protect the polymers (resins) from heat damage and help preserve the polymers’ appearance, strength, elasticity, durability and performance characteristics, and thereby arrive at the claimed invention.
Accordingly, Park et al. in view of Ahn et al. and Hun et al. disclose the resin composition as set forth above. Further, Park et al. disclose 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. in view of Ahn et al. uses resins such as polycarbonate resin, polycarbonate-polysiloxane copolymer, siloxane copolyester and syndiotactic styrene that are identical to the resins utilized for the thermoplastic resin composition of present invention, the resin composition of Park et al. in view of Ahn et al. and Hun et al. is a thermoplastic resin composition. Accordingly, Park et al. in view of Ahn et al. and Hun et al. disclose a molded product manufactured from a thermoplastic resin composition.
Regarding claims 3 and 4, Park et al. disclose that 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 is a bisphenol-A based polycarbonate resin (see paragraphs 0040, 0043).
Regarding claims 5-7, Park et al. disclose that 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). The polysiloxane block includes a structural unit represented by Formula 3, which is identical to that presently claimed (see paragraphs 0050-0052).
Regarding claim 11, Park et al. disclose that the resin composition can comprise at least one additive such as UV absorbents, photo-stabilizers or stabilizers, flame retardant, etc. (see paragraphs 0092 and 0101).
Regarding claims 13-15, Park et al. in view of Ahn et al. and Hun et al. disclose the molded article manufactured from the thermoplastic composition as set forth above. The thermoplastic resin composition including polycarbonate resin, polycarbonate-polysiloxane copolymer, siloxane-modified polyester, syndiotactic styrene and benzotriazole UV stabilizer is identical to that presently claimed with molecular weights that overlap that presently claimed and each in amounts that either fall within or overlap that presently claimed. Therefore, within the overlapping ranges, it is clear that the molded article of Park et al. in view of Ahn et al. and Hun et al. would necessarily inherently have the same notched Izod impact strength, brightness change and color change as presently claimed.
Response to Arguments
Applicant's arguments filed 08/19/2026 have been fully considered but they are not persuasive because of following reasons.
Applicants argue that as an example, as noted herein, claim 1 is directed to a composition including a (C) siloxane-modified polyester having the specific structure recited in claim 1 (i.e., corresponding to the siloxane-modified polyester used in the examples of the present application) in amounts throughout the range recited in claim 1. The examples of the application also include the other recited components (A), (B), (D) and (E) in amounts throughout the ranges recited in claim 1. The application further includes comparative examples (Comparative Examples 2 and 5) in which the composition includes the same (C) siloxane-modified polyester having the specific structure recited in claim 1 but in amounts outside of the lower and upper endpoints of the claimed range.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that (i) the examples recite base resin comprising a specific type of polycarbonate resin, and a specific type of polysiloxane- polycarbonate copolymer resin while the present claims have broad recitation of any type of polycarbonate resin and polysiloxane-polycarbonate copolymer resin, (ii) the examples recite specific type and amount of siloxane-modified polyester (H-Si 6441 P of Evonik Industries), while the present claims have broad recitation of siloxane-modified polyester of Formula (3) in broad amounts, (iii) the examples recite a specific type and amount of syndiotactic polystyrene, while the present claims have broad recitation of any type syndiotactic polystyrene in broad amounts and (iv) the examples recite a specific type and amount of a benzotriazole-based UV stabilizer, while the present claims have broad recitation of any type of benzotriazole-based UV stabilizer in broad amounts. Further, there is no data at lower end and upper end for amounts of siloxane-modified polyester, syndiotactic polystyrene and benzotriazole-based UV stabilizer. Regarding Comparative Example 2, the data is not commensurate in scope with the scope of the closest prior art by Park et al. given that Park et al. already discloses using siloxane-modified polyester. Regarding Comparative Example 5, the fact remains that the data is unpersuasive for the reasons set forth above.
Given that Park et al. in view of Ahn et al. and Hun et al. disclose the thermoplastic resin composition including polycarbonate resin, polysiloxane- polycarbonate copolymer resin, siloxane-modified polyester, syndiotactic polystyrene and benzotriazole-based UV stabilizer identical to that presently claimed, with their amounts overlapping with that presently claimed, within the overlapping ranges, the thermoplastic resin composition would provide properties similar to the present invention, absent evidence to the contrary.
Applicants argue that to the extent that the Office continues to argue that the data is not commensurate in scope with the claims, the data also demonstrates a trend, e.g., based on the specific type and amounts of (C) siloxane-modified polyester recited in claim 1, that the skilled artisan can clearly and reasonably extrapolate or extend the probative value thereof to other compositions within the scope of the claims. The courts have established that nonobviousness of a broader claim can be supported by evidence based on unexpected results from testing of a single member of a claimed subgenus and/or a narrow portion of claimed range when one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987) (evidence that a compound or composition possesses superior and unexpected properties in one of a spectrum of common properties can be sufficient to rebut a prima facie case of obviousness); In re Kollman, 595 F.2d 48, 56 (CCPA 1979) (Evidence of the unobviousness of a broad range can be proven by a narrower range when one skilled in the art could ascertain a trend that would allow him to reasonably extend the probative value thereof.).
Further, while applicant states that a trend has been established, there is no explanation of what the trend is. Further, for amounts of siloxane-modified polyester, syndiotactic polystyrene and benzotriazole-based UV absorber, it is not clear how a trend can be established from only two data points (see page 18, Table 1). Further, it is not clear how a trend can be determined for the polycarbonate resin, the polysiloxane-polycarbonate copolymer resin, the siloxane-modified polyester, the syndiotactic polystyrene and the benzotriazole-based UV absorber given that the data only sets forth one type of these components while the claims encompass broader types (see pages 18-19 and Table 1).
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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