DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a 371 of App. No. PCT/US2023/029839, filed on 08/18/2023, which is entitled to and claims the benefit of priority of JP App. No. 2022-150826, filed 09/22/2022. The preliminary amendment filed on 03/20/2025 is entered and acknowledged by the Examiner.
3. Claims 1-8 are pending. Claims 1-8 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statements submitted on 06/02/2025, 11/12/2025, 01/22/ 2026, and 01/27/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Priority
5. Receipt is acknowledged of papers submitted on 03/20/2025 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 2 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 applicant regards as the invention. Claim 2 recites the limitation "wherein an average value" in line 1. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination against the prior art, claim 2 is construed to recite “wherein the average value”.
Claim Rejections - 35 USC § 102/103
8. 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.
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.
9. Claims 1-8 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mochida et al. (JP 2021-188011 A, machine translation, hereinafter “’011”).
Regarding claim 1: ‘011 discloses a resin composition (Page 6/28, [0001]) comprising, per (A) 100 parts by weight of an aromatic polycarbonate resin corresponding to component A, (B) 0.15 parts by weight in total of perinone-based or anthraquinone-based dyes F1-F4 corresponding to component B, (C) 0.05 parts by weight in total of a quaterrylene-based dye B 1 and a phthalocyanine-based dye C2 corresponding to component C, (D) 0.07 parts by weight in total of phthalocyanine-based dyes D1 and E1 corresponding to component D, and (E) 0.003 to 0.03 parts by weight of a phosphorus-based thermal stabilizer G1 corresponding to component E, wherein the resin composition being configured such that an average value of through-thickness light transmittance of a 1-mm-thick molded article thereof at 400 nm to 900 nm is 1.0% or less (Page 26/28, [0101], Table 2, Examples). ‘011 is silent regarding the resin composition being configured such that an average value of through-thickness light transmittance of a 3-mm-thick molded article thereof at 400 nm to 870 nm is 1.5% or less.
However, since ‘011 discloses the identical or substantially identical resin composition comprising (A)-(E) ingredients with the same amount as the recited claimed, one of ordinary skill in the art at the time of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘011 (i.e., the resin composition being configured such that an average value of through-thickness light transmittance of a 3-mm-thick molded article thereof at 400 nm to 870 nm is 1.5% or less). If there is any difference between the product of ‘011 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
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Regarding claim 2: The disclosure of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ‘011 is silent regarding the resin composition, wherein the average value of through- thickness light transmittance of a 3-mm-thick molded article thereof at 870 nm to a wavelength at which absorption by the component D is maximum is 1.5% or less.
However, since ‘011 discloses the identical or substantially identical resin composition comprising (A)-(E) ingredients with the same amount as the recited claimed, one of ordinary skill in the art at the time of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘011 (i.e., the average value of through- thickness light transmittance of a 3-mm-thick molded article thereof at 870 nm to a wavelength at which absorption by the component D is maximum is 1.5% or less). If there is any difference between the product of ‘011 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 3: ‘011 discloses the resin composition (Page 6/28, [0001]), wherein
(C) 0.05 parts by weight in total of a quaterrylene-based dye B 1 and a phthalocyanine-based dye C2 corresponding to component C, (D) 0.07 parts by weight in total of phthalocyanine-based dyes D1 and E1 corresponding to component D (Page 26/28, [0101], Table 2, Examples).
Regarding claim 4: ‘011 discloses the resin composition (Page 6/28, [0001]), comprising (F) 0.3 parts by weight of a benzotriazole-based ultraviolet absorber I1 corresponding to component F per 100 parts by weight of the component A (Page 26/28, [0101], Table 2, Examples 12; Page 27/28, [0102], Table 3, Example 18).
Regarding claim 5: ‘011 discloses the resin composition (Page 6/28, [0001]), wherein the component A has a viscosity average molecular weight of 21,000 or less (Page 24/28, [0098], Table 1; (Page 26/28, [0101], Table 2, Examples).
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Regarding claim 6: ‘011 discloses a molded article obtainable by molding the resin composition (Page 22/28, [0094]; Page 23/28, [0095]).
Regarding claim 7: ‘011 discloses the molded article, being a covering material for covering an infrared sensor (Page 23/28, [0096]).
Regarding claim 8: ‘011 discloses the molded article, being a covering material for covering an infrared sensor used for LiDAR for detecting vehicles and buildings (Page 23/28, [0096]).
Prior-Art Cited But Not Applied
10. Any prior-art reference which is cited on FORM PTO-892 but not applied is cited of interest to show the general state of the prior-art at the time of the application’s invention. Please see Mochida et al. (JP2021188010 A, machine translation); Fukuma et al. (JP2022 087945 A, machine translation); Nagashima et al. (JP2010002704 A, machine translation);
Examiner Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/28/2026
bijan.ahvazi@uspto.gov
