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 .
Election/Restrictions
Claim 13 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/11/2025.
Applicant noted that Examiner has also required a species election, and that the species exemplified in Example 1 from Table 1 of the application was selected without traverse. However, Examiner did not require a species election in the restriction filed 07/15/2025. The restriction notes on pg. 5 that “Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined”, and “the election of an invention or species may be made…”
Claim Objections
Claim 8 is objected to because of the following informalities:
Regarding claim 8, Examiner respectfully suggests amending the limitation “is selected from the group consisting of least one representative of the group consisting of…” to “is selected from the group consisting of at least one of…” to increase clarity and brevity.
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.
Claims 3, 4, 9, and 11 are 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.
Regarding claims 3, 9, and 11, the phrase "in particular " renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the limitation "the lacquer portion" in line 4. There is insufficient antecedent basis for this limitation in the claim. Therefore, it is unclear whether “the lacquer portion” refers to the at least one polyisocyanate component, the at least one polyfunctional H-active compound, the at least one polyurethane additive and/or processing auxiliary, as recited in claim 1, or a different component of the reactive polyurethane raw material mixture.
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.
Claim(s) 1, 2, and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zollner et al. (US7790089), and further in view of Seidel et al. (WO2022128837- Machine translation provided herein) and Rizo et al. (US20180112035).
Regarding claim 1, Zollner teaches a process for producing a composite component part (Abstract: A process for in-mold coating and a mold is disclosed) comprising:
a) a carrier composed of a thermoplastic composition (col 7 line 32-35) and
b) at least one polyurethane layer in direct contact with the carrier (col 7 line 42-63), comprising the steps of:
(i) injecting a melt of a thermoplastic composition (Z) into a mold cavity followed by cooling to form the carrier (col 7 line 30-38),
(ii) introducing the carrier into a second cavity of the mold which is larger than the first cavity in terms of its hollow mold dimensions, thus producing a gap (mold wall 16; Figure 1), and the carrier is oriented such that the outer ply of the film composed of the thermoplastic composition (Z) faces the gap (col 6 line 64- col 7 line 7),
(iii) injecting a reactive polyurethane raw material mixture containing
- at least one polyisocyanate component (col 7 line 47-48),
- at least one polyfunctional H-active compound (col 7 line 44-46) and
- optionally at least one polyurethane additive and/or processing auxiliary (col 7 line 49-50),
into the gap (mold wall 16; Figure 1) between the carrier and the mold surface, wherein the polyurethane raw material mixture undergoes polymerization to afford a compact polyurethane layer or to afford a polyurethane foam layer in contact with the surface of the carrier (lacquer 22 in Figure 1 and claim 3. The process according to claim 1 wherein the molding is by injection molding, injection compression molding, compression, foaming or reaction injection molding),
(iv) demolding the composite component part from the mold cavity (col 7 line 61-64).
While Zollner teaches the thermoplastic composition (Z) contains a polycarbonate and at least one polymer additive, including blends of polycarbonate and polymethyl methacrylate (col 2 line 63- col 3 line 11), Zollner fails to teach the polycarbonate is an aromatic polycarbonate that has a phenolic OH content of 230 ppm to 1500 ppm.
In the same field of endeavor pertaining to polycarbonate blends for producing a thermoplastic molding compound, Seidel teaches the polycarbonate is an aromatic polycarbonate that has a phenolic OH content of at least 500 ppm (“Surprisingly, it has now been found that a composition for producing a thermoplastic molding composition contains A) at least one aromatic polycarbonate and/or aromatic polyester carbonate containing at least 500 ppm by weight, preferably at least 1000 ppm by weight, particularly preferably at least 1500 ppm by weight, most preferably at least 1800 ppm by weight, of phenolic OH groups”- see pg.4). The polycarbonate/ polymethyl methacrylate blends of Seidel produced translucent or transparent parts with improved mechanical properties, including scratch resistance (“and it being possible to produce from the molding compound (translucent or transparent) moldings with at least one mechanical property which is improved compared to such PC/PMMA molding compounds of the prior art. Tensile strength, flexural strength, flexural elongation at break, scratch resistance and chemical resistance should be mentioned in particular as mechanical properties which it was desirable to improve within the scope of the invention”- see pg. 4).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the polycarbonate of Zollner be an aromatic polycarbonate that has a phenolic OH content of between 500 ppm and 1500 ppm, as taught by Seidel, for the benefit of forming translucent or transparent polycarbonate/ polymethyl methacrylate blends with improved mechanical properties, including scratch resistance.
Further, Zollner teaches the thermoplastic composition can include a blend of polycarbonate and polymethyl methacrylate (col 3 line 13-20), but fails to teach the thermoplastic composition contains at least 95.0% by weight of the aromatic polycarbonate and 0 % to 5.0% by weight of the at least one polymer additive.
In the same field of endeavor pertaining to polycarbonate blends for producing a thermoplastic molding compound, Rizo teaches a thermoplastic composition containing 95.0% by weight of an aromatic polycarbonate and 5.0% by weight of polymethyl methacrylate (Abstract: The disclosure concerns a polymer derived from melt extrusion of (i) 80 to 95 wt % polycarbonate; said polycarbonate having and endcap level of 45% to 80% and a branching level of 300-5,000 m comprising the following branching structures: (ii) 4.9 to 20 wt % polymethyl methacrylate).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the thermoplastic composition of Zollner modified with Seidel contain 95.0% by weight of an aromatic polycarbonate and 5.0% by weight of polymethyl methacrylate, as taught by Rizo, to achieve the predicable result of forming translucent or transparent polycarbonate/ polymethyl methacrylate blends with improved mechanical properties (see [0047] of Rizo). There would have been a reasonable expectation of success for the thermoplastic composition of Rizo to be used in the process of Zollner modified with Seidel, since Zollner, Seidel, and Rizo are all directed to molding parts comprising polycarbonate/ polymethyl methacrylate blends. Further, Rizo teaches the polycarbonate/ polymethyl methacrylate blend of can form films, sheets, or components of laminate systems through injection molding ([0045] shaped, formed, or molded articles comprising the compositions described herein. The compositions can be molded into useful shaped articles by a variety of means such as injection molding, extrusion, rotational molding, blow molding and thermoforming to form articles) and Seidel similarly teaches its composition can be used to produce parts through injection molding (“The molding compositions according to the invention can be used to produce moldings of any type. These can be produced, for example, by injection moulding, extrusion and blow molding processes. Another form of processing is the production of shaped bodies by deep-drawing from previously produced sheets or foils. The molding compositions according to the invention are particularly suitable for processing in extrusion, blow molding and deep-drawing processes.”- see pg. 11), such that the blend of Rizo would be suitable for injection molding in the process of Zollner modified with Seidel.
Regarding claim 2, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1.
Further, Siedel teaches the characterized in that the aromatic polycarbonate of component A) has a phenolic OH content of at least 500 ppm (“Surprisingly, it has now been found that a composition for producing a thermoplastic molding composition contains A) at least one aromatic polycarbonate and/or aromatic polyester carbonate containing at least 500 ppm by weight, preferably at least 1000 ppm by weight, particularly preferably at least 1500 ppm by weight, most preferably at least 1800 ppm by weight, of phenolic OH groups”- see pg. 4).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the polycarbonate of Zollner modified with Seidel and Rizo be an aromatic polycarbonate that has a phenolic OH content of between 500 ppm and 1100 ppm, as taught by Seidel, for the benefit of forming translucent or transparent polycarbonate/ polymethyl methacrylate blends with improved mechanical properties, including scratch resistance.
Regarding claim 5, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. Further, Zollner teaches the process characterized in that at least at one point the carrier has a wall thickness of 3 mm (col 7 line 24-25).
Regarding claim 6, Zollner modified with Seidel and Rizo teaches the process as claimed in claim. Further, Zollner teaches the process characterized in that the polyurethane layer has a layer thickness of 0.01 to 3 mm (col 4 line 4-5).
Regarding claim 7, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. Further, Zollner teaches the process characterized in that the thermoplastic composition (Z) is composed of components A) and B) (col 2 line 63- col 3 line 11).
Regarding claim 8, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. While Zollner fails to explicitly teach that component B), which can include polymethyl methacrylate, is selected from the group consisting of least one representative of the group consisting of flame retardants, flame retardant synergists, smoke-inhibiting additives, anti- drip agents, internal and external lubricants and demolding agents, flowability aids, antistats, conductivity additives, nucleating agents, stabilizers, antibacterial additives, scratch resistance-improving additives, IR absorbers, optical brighteners, fluorescent additives, fillers and reinforcers, dyes and pigments and Bronsted-acidic compounds, Seidel does teach that poly methyl methacrylate is known for its scratch resistance-improving additives (“Furthermore, the data in Table 2 show that the molding compositions according to the invention compared to analogous molding compositions according to the prior art, which were produced from compositions containing non-reactive PC and PMMA, also showed a surprising improvement in tensile strength in the tensile test and both in the tensile and in the flexural test show a surprising improvement in modulus. They also show improved scratch resistance (pencil hardness) compared to polycarbonate”- se pg. 20-21).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the polymethyl methacrylate of Zollner modified with Seidel and Rizo to act as a scratch resistance-improving additive, as taught by Seidel, since scratch resistant improvement is a known benefit when using polycarbonate/ polymethyl methacrylate blends when producing a thermoplastic molding compound.
Regarding claim 9, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. Further, Zollner teaches the process characterized in that a low-solvent reactive polyurethane raw material mixture having a solvent content of at most 10% by weight, based on the lacquer proportion is used (col 5 line 30-32).
Regarding claim 10, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. Further, Zollner teaches the process characterized in that a solvent-free reactive polyurethane raw material mixture is used (col 5 line 34-37).
Regarding claim 11, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. Further, Zollner teaches the process characterized in that the reactive polyurethane raw material mixture has a pot life of at most 2 minutes (col 5 line 50-54).
Regarding claim 12, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. Further, Zollner teaches the process characterized in that the polymerization in process step (iii) is carried out under elevated pressure (Abstract: (iv) coating said substrate with lacquer, the coating being carried out under enhanced pressure).
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Zollner et al. (US7790089), Seidel et al. (WO2022128837- Machine translation provided herein) and Rizo et al. (US20180112035), and further in view of Kuhling et al. (US5340905).
Regarding claim 3, Zollner modified with Seidel and Rizo teaches the process as claimed in claim 1. However, Zollner fails to teach the process characterized in that the aromatic polycarbonate of component A) comprises one of the following structures:
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80
181
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90
320
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86
277
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in which the phenyl rings may independently be mono- or disubstituted with C1- to Cs-alkyl, halogen, preferably C1- to C4-alkyl, X represents a single bond, a linear or branched C1- to C6-alkylene group, a C2- to Cio-alkylidene group or a Cs- to Cio-cycloalkylidene group, and the "- - -" represent the bonding of the structures (4) to (7) into the aromatic polycarbonate.
In the same field of endeavor pertaining to thermoplastic polycarbonates for molding applications (col 4 line 67- col 5 line 3), Kuhling teaches the process characterized in that the aromatic polycarbonate of component A) comprises
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118
356
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(see Formula I under col 5 line 35). The aromatic polycarbonate of Kuhling is formed with a low degree of branching (Abstract: two step solvent-free process for the preparation of polycarbonates having a low degree of branching), which has superior optical and mechanical properties in comparison to aromatic polycarbonates with a higher degree of branching (col 1 line 48-53).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the aromatic polycarbonate of Zollner modified with Seidel and Rizo to be the aromatic polycarbonate of Kuhling, for the benefit of using polycarbonates with a low degree of branching, which have superior optical and mechanical properties in comparison to aromatic polycarbonates with a higher degree of branching.
Regarding claim 4, Zollner modified with Seidel, Rizo, and Kuhling teaches the process as claimed in claim 3. However, Zollner fails to teach the process is characterized in that the amount of structural units (4) to (7) sums to 50 ppm to 1000 ppm.
In the same field of endeavor pertaining to thermoplastic polycarbonates for molding applications (col 4 line 67- col 5 line 3), Kuhling teaches a proportion of branching radicals <75 ppm is considered a low degree of branching (col 2 line 37-50).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the amount of structural units in the aromatic polycarbonate of Zollner modified with Seidel, Rizo, and Kuhling to sum up to <75 ppm, for the benefit of using polycarbonates with a low degree of branching, which have superior optical and mechanical properties in comparison to aromatic polycarbonates with a higher degree of branching.
Relevant Prior Art
The following is a list of relevant prior art not relied upon:
Wehrmann et al. (EP3838979A1- Machine translation attached)
Meyer et al. (US20190232623)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIELLA MACHNESS whose telephone number is (408)918-7587. The examiner can normally be reached Monday - Friday, 6:30-2:30 PT.
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/ARIELLA MACHNESS/Examiner, Art Unit 1743