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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/13/2026 has been entered.
Claims 16-25, 28-30 are pending.
Claim Rejections - 35 USC § 103
Claims 16-20, 24, 26, 28, 30 are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal et al. (US 2007/0244242).
Regarding claim 16: Agarwal is directed to a thermoplastic composition consisting of:
5-99 wt% of a of a chemically recycled polyester component of a modified PBT copolymer. Specifically, the PET component of the PBT polyester can be derived from recycled PET, wherein the PET component by any method that involves depolymerization of the PET component including chemically recycling by depolymerization of the PET with a mixture of PET and 1,4-butanediol to produce PET derived PBT ([0066] Agarwal).
5-70 wt% of a reinforcing filler ([0109]); and
10-30 wt% of a polycarbonate ([0028] Agarwal) and
0-10 wt% of an impact modifier ([0029] Agarwal) including epoxy based materials including LOTADER AX8900 ([0185] Agarwal) (equivalent to an epoxy based impact modifier).
Additives of a stabilizer, anti-drip agent, antioxidant, UV stabilizer, or combination thereof are disclosed.
The combined weight percent value of all components does not exceed 100 wt% and all weight percent values are based on the total weight of the composition.
Agarwal doesn't specifically recite improved metal bonding strength as compared to comparative composition that includes a virgin polyester component instead of the chemically recycled polyester component wherein metal bonding strength is evaluated according to a TRI-treatment metal surface, wherein the comparative composition (1) has the same amount of the polyester component and (2) the same amounts of the same reinforcing filler, polycarbonate component, epoxy based impact modifier, and at one additional additive as the thermoplastic composition that includes the chemically recycled polyester component.
However, the thermoplastic composition produced in Agarwal is substantially identical to the composition produced in the instant invention. Specifically, the polyester utilized in the present invention is a depolymerized PET with 1,4-butanedol to provide PET derived PBT. This is substantially similar to the PBT of the Agarwal. Further, the same impact modifier of Lotader AX900 is utilized in both the present invention as well as Agarwal.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Agarwal suggests a thermoplastic composition having improved metal bonding strength within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 17: The chemically recycled polyester component is PBT.
Regarding claim 18: Terephthalic acid groups are present in an amount of 90-99.9 mol% of the acid/ester. The butanediol is present in an amount of 95 mol% based on the diol. ([0059]. It follows the composition can comprise about 48-59.4 wt% TPA, 12-40.6 wt% BDO, and 1-20 wt% additional monomers, e.g. 59 wt% TPA, 35 wt% BDO, and 6 wt% other monomers. Given that these amounts are squarely within the claimed amounts, it is clear the amounts at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 19: The polycarbonate comprises a homopolymer, polycarbonate or combination thereof ([0135]-[0136]).
Regarding claim 20: The polycarbonate includes polycarbonate copolymers
Regarding claim 24: Fillers of glass fibers and carbon fibers are disclosed ([0101]).
Regarding claim 26: An additional additive comprising an impact modifier ([0031]) organic filler ([0108]), stabilizer ([0061]) anti-drip agent ([0127]) release agent ([0161]) flame retardant and UV reflecting agent, reinforcing agent ([0161]).
Regarding claim 28: Agarwal doesn't specifically recite improved metal bonding strength as compared to comparative composition that includes a virgin polyester component instead of the chemically recycled polyester component wherein metal bonding strength is evaluated according to a TRI-treatment metal surface.
However, the thermoplastic composition produced in Agarwal is substantially identical to the composition produced in the instant invention. Specifically, the polyester utilized in the present invention is a depolymerized PET with 1,4-butanedil to provide PET derived PBT. This is substantially similar to the PBT of the Agarwal.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Agarwal suggests a thermoplastic composition having improved metal bonding strength within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 30: Agarwal is directed to a method for forming a thermoplastic composition comprising:
5-99 wt% of a of a chemically recycled polyester component of a modified PBT copolymer. Specifically, the PET component of the PBT polyester can be derived from recycled PET, wherein the PET component by any method that involves depolymerization of the PET component including chemically recycling by depolymerization of the PET with a mixture of PET and 1,4-butanediol to produce PET derived PBT ([0066] Agarwal).
5-70 wt% of a reinforcing filler ([0109]); and
10-30 wt% of a polycarbonate ([0028] Agarwal).
0-10 wt% of an impact modifier ([0029] Agarwal) including epoxy based materials including LOTADER AX8900 ([0185] Agarwal) (equivalent to an epoxy based impact modifier).
Additives of a stabilizer, anti-drip agent, antioxidant, UV stabilizer, or combination thereof are disclosed.
Forming the thermoplastic composition by injection molded compression molded, and thermoforming ([0103])
The combined weight percent value of all components does not exceed 100 wt% and all weight percent values are based on the total weight of the composition.
Agarwal doesn't specifically recite improved metal bonding strength as compared to comparative composition that includes a virgin polyester component instead of the chemically recycled polyester component wherein metal bonding strength is evaluated according to a TRI-treatment metal surface, wherein the comparative composition (1) has the same amount of the polyester component and (2) the same amounts of the same reinforcing filler, polycarbonate component, epoxy based impact modifier, and at one additional additive as the thermoplastic composition that includes the chemically recycled polyester component.
However, the thermoplastic composition produced in Agarwal is substantially identical to the composition produced in the instant invention. Specifically, the polyester utilized in the present invention is a depolymerized PET with 1,4-butanedil to provide PET derived PBT. This is substantially similar to the PBT of the Agarwal. Further, the same impact modifier of Lotader AX900 is utilized in both the present invention as well as Agarwal.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Agarwal suggests a thermoplastic composition having improved metal bonding strength within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal as applied to claim 20 above, and further in view of Chakravarti et al. (US 2010/0168314).
Regarding claim 21: The polycarbonate includes polycarbonate copolymers including isophthalate-terephthalate and resorcinol ([0140] Agarwal), although a block copolymer comprising ITR block and polycarbonate blocks is not specifically mentioned.
Chakravarti is directed to a polycarbonate comprising isophthalate-terephthalate-resorcinol blocks and polycarbonate blocks. One skilled in the art would have been motivated to have selected the polyester-polycarbonate copolymer of Chakravarti as the polycarbonate of choice in Agarwal for their ability to prevent ultraviolet degradation as well as provide increased impact modified properties at low temperature ([0014] Chakravarti). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the isophthalate-terephthalate-resorcinol blocks and polycarbonate blocks of Chakravarti as the polycarbonate of choice in Agarwal to arrive at claim 21 of the present invention.
Regarding claim 22: The ratio of ITR to carbonate units is 20:80.
Regarding claim 23: A specific polycarbonate copolymer used in the working examples comprises 90 mol% ITR blocks to polycarbonate blocks (Table 1 SLX 9010).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Agarwal as applied to claim 24 above, and further in view of Ding et al. (US 2010/0168290).
Regarding claim 25: Agarwal doesn’t mention flat glass fibers.
Ding is directed to a reinforced polyester composition comprising a modified poly(butylene terephthalate copolymer derived from poly(ethylene terephthalate) and also comprises flat glass fibers. One skilled in the art would have been motivated to have selected the flat glass fibers of Ding as the glass fibers of choice in Agarwal for improved mechanical properties flow dimensional stability compared to compositions comprising regular glass fibers ([0100] Ding). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the flat glass fibers of Ding as the glass fibers of choice in Agarwal to arrive at claim 25 of the present invention.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Agarwal as applied to claim 16 above, and further in view of Van Der Burgt et al. (US 2021/0138704).
Regarding claim 29: Agarwal doesn’t mention a nano-molding technology component.
Van Der Burgt is directed to a process for manufacturing a plastic metal hybrid part by plastic overmolding on a metal surface by nan-molding technology. The composition comprises a thermoplastic polyester and glass fibers. One skilled in the art would have been motivated to have selected an article that is a nano-molding technology component since nano-molding technology is a technology wherein a plastic material is bonded to a metal part to form a so-called plastic-metal hybrid part, wherein the bonding strength at the metal-plastic interface results from or is enhanced by a pretreatment of the metal resulting in a surface area with surface irregularities of nano-size dimensions ([0002] Van Der Burgt). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have an article that is a nano-molding technology component to arrive at claim 29 of the present invention.
Response to Arguments
Applicant's arguments filed 2/13/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 6-7 Remarks) the brominated epoxy ether copolymer in the working examples is outside the scope of the present claims. Further, the examples comprise a total of 19 wt% of an epoxy component, almost 5x higher than the upper limit of claims 16 and 30.
This argument is not found persuasive since case law states "[I]n a section 103 inquiry, 'the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.'" Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)). While a flame retardant may be disclosed in some of the working examples, a brominated flame retardant is not required or essential in Agarwal.
Applicant argues (p. 7-8 Remarks) Applicant requests clarification of the record, since Chakravarti et al. (US 2010/0168314) appears to be intended and not Siclovan. With regards to the claimed property, the Examiner argues the compositions of Agarwal would be expected to have the claimed property, and the claimed property does not require identical components, noting composition E1 has a lower bonding strength than C2. The present claims have been amended to specify the comparative composition has the same amounts of components. Therefore, the Examiners comparison of E1 and C2 is inappropriate. Proper comparisons include E1 vs C1, E3 vs C2, E4 vs C3.
The Examiner confirms Applicant is correct, Chakravarti et al. (US 2010/0168314) was intended. With regards to the claimed property, the thermoplastic composition produced in Agarwal is substantially identical to the composition produced in the instant invention. Specifically, the polyester utilized in the present invention is a depolymerized PET with 1,4-butanedol to provide PET derived PBT. This is substantially similar to the PBT of the Agarwal. Further, the same impact modifier of Lotader AX900 is utilized in both the present invention as well as Agarwal. While the working examples of Agarwal include components outside the scope of claims 16 and 30, these are not required components, e.g. optional flame retardant of a brominated epoxy.
Applicant argues (p. 9-11 Remarks) unexpected results. Further, there is no basis whatsoever in Agarwal or elsewhere the claimed improved metal bonding would be expected.
The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In the present case,
Specific types of components are utilized in the working examples, while claim 1 encompasses a large number of components. Further, the compositions comprise additional components, i.e. Polyester ether elastomer, 45% PTHF, Ethylene-ethyl acrylate copolymer, Mono Zinc Phosphate (MZP), and additives, which are not presently claimed. Therefore, the present claims are not considered commensurate in scope with the showing of unexpected results.
With regards to the claimed metal bonding, the same composition comprising the same components are reasonably disclosed by Agarwal, and therefore meet the claimed metal bonding.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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