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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1,5,6,15-17,19 and 20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eckel 2020/0270451.
Eckel exemplifies (#6) a blend of 66.8 parts polycarbonate, 5.4 parts B-1 acrylic graft, 6.8 parts of (B-2), 6 parts Modiper, 12.7 parts oligophosphate, 1 parts PTFE, 0.4 parts PETS, 0.1 parts E-3 and 0.8 parts (E-4).
The polycarbonate (paragraph 318) is a BPA based polycarbonate – meeting applicant’s “A”. B-1 is an acrylic graft qualifying as applicant’s “B1”. B-2 (paragraph 321) is a modified ABS – meeting applicant’s “B1”. Modiper (paragraph 322) is a graft polymer qualifying as applicant’s “B1”. PTFE is a polymer qualifying as applicant’s “B”. PETS (paragraph 326) is applicant’s demolding agent “D”. E-3 (paragraph 327) is a combination of phosphite/phenol stabilizers qualifying as applicant’s stabilizer’s
“D”. (E-4) (paragraph 328) is aluminum oxide hydroxide – meeting applicant’s C).
The oligophosphate (paragraph 186) is present for its flame retarding properties. However, these phosphates are also recognized as providing a “plasticizing effect”. See paragraph 156 of Waicukauski 2020/0102453, Kawakami 4495345 col 4 line 53-64). Therefore, these phosphates can be considered applicant’s flow modifier “D”.
The residual BPA content is 10ppm (table 1).
In regards to applicant’s dependent claims:
The composition is molded into a test piece (paragraph 331) – meeting applicant’s claim 15.
Claims 1-6 and 15-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Volkers 2006/0287422.
Volkers exemplifies (tables 12,13) various blends of polycarbonate, polyethylene terephthalate, MBS, filler1 and I some cases one or more acids.
The polycarbonate(s) are BPA based polycarbonates (table 1) – meeting applicant’s “A”. The polyethylene terephthalate and MBS each qualify as applicant’s “B”. Filler1 (table 1) is talc (ie applicant’s “C”). The acids (when present) are stabilizers (paragraph 164) - corresponding to the additives of applicant’s examples.
The ratio of (PET + MBS): talc is 40:15 in these examples.
Volkers does not report the residual BPA content of the final composition.
However, applicant (V7 of table 1) shows extruded blends of PC, PET, talc and acid have a residual BPA content of less than 30ppm.
For this reason, it is believed that Volkers inherently meets this limitation.
In regards to applicant’s dependent claims:
The compositions were molded into test pieces (eg paragraph 139) – meeting applicant’s claim 15.
Claims 1-6 and 15-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Volkers 2006/0287422.
Volkers exemplifies (#14) a blend of 77.01% polycarbonates (ie applicant’s “A”), 9.5% SAN (ie applicant’s “B1”), 4.4% MBS (ie applicant’s “B1”), 8% filler1 and 0.24% phosphorous acid.
The polycarbonates are BPA based polycarbonates (table 1) – meeting applicant’s “A”. Filler1 (table 1) is talc (ie applicant’s “C”). The phosphorous acid is a stabilizer (paragraph 164) - corresponding to the D-5 additive of applicant’s examples.
The ratio of (SAN + MBS): talc is 13.9:8.
Volkers does not report the residual BPA content of the final composition.
However, Volkers (table 5) does report that there is 100% Mw retention after the compounding. This is indicative of no degradation of the polycarbonate and therefore little residual BPA in the final product explained by Eckel 2021/0047512 (paragraph 11,12).
For this reason, it is believed that Volkers inherently meets this limitation.
In regards to applicant’s dependent claims:
The compositions were molded into test pieces (eg paragraph 139) – meeting applicant’s claim 15.
Claims 1,3,5,6 and 15-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomas 4464487.
Thomas exemplifies (#3) mixing 50 parts SAN (ie applicant’s “B1”), 50 parts TiO2 (ie applicant’s “C”) and stabilizers (ie applicant’s “D”) in a Banbury mixer. This concentrate is then extruded with Novarex7025PJ. Inherently Novarex7025PJ is a BPA polycarbonate (see example 2 of Thomas 4269762) which is applicant’s “A”.
Thomas does not report the residual BPA content of the final composition. Thomas does explain the concentrate results in a coated TiO2 to prevent its attack on the polycarbonate (col 4 line 31-40).
This premixture of a polymer such as SAN with the filler prior to adding polycarbonate is the method applicant utilizes to arrive at low BPA composition.
For this reason, it is believed that Thomas inherently meets this limitation.
In regards to applicant’s dependent claims:
The composition was molded into test pieces (col 7 line 40) – meeting applicant’s claim 15.
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 18 rejected under 35 U.S.C. 103 as being unpatentable over Eckel 2020/0270451.
Eckel applies as explained above.
The cited example has a BPA content of 10ppm which is just above applicant’s “less than 10ppm”. However, these two values are so close that no meaningful difference in properties is expected. In such situations, a prima facie case of obviousness exists (MPEP2144.05 I.; Titanium Metals v Banner 227USPQ773,779).
Claims 1,5,6 and 15-20 rejected under 35 U.S.C. 103 as being unpatentable over Eckel 2020/0270451.
Eckel applies as explained above.
In the event Eckel’s oligophosphate is considered to be excluded by applicant’s use of “consisting of”, applicant’s claims are considered obvious from Eckel.
Elimination of an element and its function is obvious (MPEP2144.04 II A.). In the present case, if flame retardancy is of no concern, then removal of the oligophosphate flame retardant would have been obvious.
Claims 1-6 and 15-20 rejected under 35 U.S.C. 103 as being unpatentable over Eckel 2021/0047512 in view of Hebig 2014/0210136.
Eckel exemplifies (#24) a blend of 69.5 parts polycarbonate, 5 parts B1b, 3.2 parts B2, 6 parts Modiper, 10 parts oligophosphate, 5 parts E2, 0.8 parts PTFE, 0.4 parts PETS and 0.1 parts Irganox.
The polycarbonate (paragraph 316) is a BPA based polycarbonate – meeting applicant’s A). B1b (paragraph 320) is ABS – meeting applicant’s B1). B2 (paragraph 322) is SAN – meeting applicant’s B1). Modiper (paragraph 324) is a graft polymer qualifying as applicant’s B1). PTFE is a polymer – qualifying as applicant’s “B”. PETS is applicant’s demolding agent “D”. Irganox is applicant’s stabilizer “D”.
The oligophosphate (paragraph 153) is present for its flame retarding properties. However, these phosphates are also recognized as providing a “plasticizing effect”. See paragraph 156 of Waicukauski 2020/0102453, Kawakami 4495345 col 4 line 53-64). Therefore, these phosphates can be considered applicant’s flow modifier “D”.
E2 (paragraph 330) is talc – meeting applicant’s C).
The ratio of total B:C is (5 + 3.2 + 6 +0.8):5 or 3:1.
The residual BPA content is 35ppm (table 2) which is just above applicant’s 30ppm maximum.
Free residual BPA is well known to be an undesirable ingredient present in polycarbonate compositions. It would have been obvious to further reduce Eckel’s residual BPA content by any means known in the art.
Hebig (abstract) teaches such a technique by adding an acid that reacts with the free BPA present.
It would have been obvious to add some acid in Eckel’s melt to react with residual BPA to reduce the free BPA to lower levels.
In regards to applicant’s dependent claims:
The composition is molded into a test piece (paragraph 338) – meeting applicant’s claim 15.
Claims 1-6 and 15-20 rejected under 35 U.S.C. 103 as being unpatentable over Volkers 2006/0287422 in view of Hebig 2014/0210136.
Volkers applies as explained above.
Volkers (table 5) reports that there is 100% Mw retention after the compounding. This is indicative of no degradation of the polycarbonate and therefore little residual BPA, but Volkers does not measure the residual BPA content of the final composition.
Free residual BPA is well known to be an undesirable ingredient present in polycarbonate compositions. It would have been obvious to further reduce Volker’s residual BPA content by any means known in the art.
Hebig (abstract) teaches such a technique by adding an acid that reacts with the free BPA present.
It would have been obvious to add some acid in Eckel’s melt to react with residual BPA to reduce the free BPA to as low a level as desired.
Claims 1,3,5,6 and 15-20 rejected under 35 U.S.C. 103 as being unpatentable over Thomas 4464487 in view of Hebig 2014/0210136.
Thomas applies as explained above.
Thomas does not report the BPA content of the final composition.
Thomas explains the concentrate results in a coated TiO2 to prevent its attack on the polycarbonate (col 4 line 31-40). Such an attack would result in free BPA.
Free residual BPA is well known to be an undesirable ingredient present in polycarbonate compositions. It would have been obvious to further reduce Thomas’ residual BPA content by any means known in the art.
Hebig (abstract) teaches such a technique by adding an acid that reacts with the free BPA present.
It would have been obvious to add some acid in Thoma’s melt to react with residual BPA to reduce the free BPA to as low a level as desired.
Applicant's arguments filed 11/19/25 have been fully considered but they are not persuasive.
Applicant argues that Eckel ‘451 and Eckel 512’s phosphate flame retardant are not permitted by applicant’s “consisting of” language.
This is not convincing as such phosphates also qualify as plasticizers (eg flow promoters) for polycarbonates. Flow promoters are specifically permitted as applicant’s “D”.
Secondly, if flame retardancy was unnecessary for the filled low BPA polycarbonate composition, its removal would have been obvious. It is noted that applicant’s specification considers the presence of flame retardants acceptable.
Applicant argues that using a co-kneader for pre-blending “B” with “C” is critical for achieving a low BPA content.
However, the claims are composition claims – not process claims. Any route to achieve the low BPA content is sufficient to meet applicant’s claims. While applicant (V6) shows an extrusion step for pre-mixing “B” with “C” can result in high BPA content, this does not prove anything regarding newly cited Thomas’s use of a Banbury mixer. Newly cited Volkers ‘422 indicates no degradation of the polycarbonate (eg 100% Mw retention). This would lead to little residual free BPA. The discrepancy between applicant’s (V6) having high BPA (due to degradation) and Volkers’ apparent lack of degradation may be due to the lower processing temperature employed by Volkers.
In any case applicant has not argued that the technique of Hiebig (when performed on any the primary references) would fail to lower the BPA content within applicant’s claimed range.
Applicant's amendment limiting the composition to “consisting of” necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 12/3/25