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 § 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 1,2 and 4-19 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.
It is unclear how to calculate applicant’s 80-90% of the 28,000+ Mw polycarbonate. Is this an average Mw of all BPA homopolycarbonates present? In other words, do homopolycarbonates of BPA lower than 28,000 “count” towards the 80-90% total? This would appear to be the case based on applicant’s example #5. However, this interpretation renders claim 6 indefinite as this claim calls for additional low Mw PC outside of the high Mw PC.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1,2,4,5,7-16,18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hein WO2021/163188.
Hein claims (#3) a blend of 70-95% BPA homopolycarbonate, 5-30% polycarbonate-siloxane and 0.001-3% colorants. The polycarbonate-siloxane (claim #4) has a 35-65% siloxane content. The BPA homopolycarbonate (claim #11) has a molecular weight of 18,000-23,000 or 27,000-35,000 or a mixture thereof. The 27,000-35,000 version meets applicant’s claims. Given there are only three choices for the BPA homopolycarbonate’s molecular weight, all three possibilities are considered anticipated. See MPEP 2131.02; In re Schauman 197 USPQ 5.
Hein’s L* can be low (paragraph 60,61). Given the reference anticipates applicant’s materials, amounts etc., the same properties are assumed in inevitably result.
In regards to applicant’s dependent claims:
The MVR of the composition may be <10cm3/10min (see tables 2,3) – meeting applicant’s claim 2.
The polycarbonate-siloxane are based on BPA and dimethylsiloxane (table 1) – meeting applicant’s claim 8.
The polycarbonate-siloxane has a molecular weight of 30,000-50,000 (claim 5) – meeting applicant’s claim 9.
Flame retardant is optionally present (claim #1) which would provide the good UL rating of applicant’s claim 12 and 18.
Applicant’s tensile strength of claim 13 is not reported, but is presumed inherently present in the reference as the Hein anticipates applicant’s materials, amounts etc.
Hein (claim 14) extrudes the blend to form articles – meeting applicant’s claims 14 and 15.
Given the reference anticipates applicant’s materials, amounts, MVR, Mw etc., the same melt viscosity of applicant’s claim 16 is assumed to inevitably result.
Claims 1,4,5,7-12,14,15 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shan 2020/0369875.
Shan claims (#4) a blend of 70-92% BPA homopolycarbonate, 1-15% polycarbonate-siloxane having 35-65% siloxane (ie applicant’s polycarbonate-siloxane) and 1-10% impact modifier. Shan’s BPA homopolycarbonate (paragraph 11) should preferably have a Mw of 17,000-35,000g/mol.
These amounts and Mw significantly overlap applicant’s ranges – justifying an anticipatory rejection (see MPEP 2131.03 II.).
In regards to applicant’s dependent claims:
The polycarbonate-siloxane is based on BPA and PDMS (table 1) – meeting applicant’s claim 8.
Up to 5% of additives (Shan’s claim 16) is suggested – meeting applicant’s claim 11.
Flame retardants may be added (Shan’s claim 13) and produces a flammability rating of VI or better (Shan’s claim 17) such as VO (tables 3-5) – meeting applicant’s claim 12 and 18.
The blend is melt mixed in an extruder (paragraph 79) – meeting applicant’s claim 14.
The blend (Shan’s claim 18) is useful to make articles – meeting applicant’s claim 15.
KSS is used as a flame retardant @ 0.3% (see tables) – meeting applicant’s claims 8 and 17.
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 1,2 and 4-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hein WO2021/163188.
Hein claims (#3) a blend of 70-95% BPA homopolycarbonate, 5-30% polycarbonate-siloxane and 0.001-3% colorants. The polycarbonate-siloxane (claim #4) has a 35-65% siloxane content. The BPA homopolycarbonate (claim #11) has a molecular weight of 18,000-23,000 or 27,000-35,000 or a mixture thereof. The 27,000-35,000 version meets applicant’s claims. Any of the three choices for the BPA homopolycarbonate’s molecular weight are considered obvious. See MPEP 2131.02; In re Schauman 197 USPQ 5. The overlapping ranges necessarily require a finding of prima facie obviousness (MPEP 2144.05).
Hein’s L* can be low (paragraph 60,61). Given the reference suggests applicant’s materials, amounts etc., the same properties are assumed in inevitably result.
In regards to applicant’s dependent claims:
The MVR of the composition may be <10cm3/10min (see tables 2,3) – meeting applicant’s claim 2.
The combination of BPA homopolycarbonates of Hein’s claim 11 suggests applicant’s 11.
The polycarbonate-siloxane are based on BPA and dimethylsiloxane (table 1) – meeting applicant’s claim 8.
The polycarbonate-siloxane has a molecular weight of 30,000-50,000 (claim 5) – meeting applicant’s claim 9.
Flame retardant is optionally present (claim #1) which would provide the good UL rating of applicant’s claim 12 and 18. Hein (paragraph 43,51) suggest small amounts – meeting applicant’s claim 17.
Applicant’s tensile strength of claim 13 is not reported, but is presumed inherently present in the reference as the Hein anticipates applicant’s materials, amounts etc.
Hein (claim 14) extrudes the blend to form articles – meeting applicant’s claims 14 and 15.
Given the reference anticipates applicant’s materials, amounts, MVR, Mw etc., the same melt viscosity of applicant’s claim 16 is assumed to inevitably result.
Claims 1,2 and 4-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hein WO2021/163188 in view of the Engineering Plastics Handbook or the Adam article in POLYMER or Oestreich 5138683 or JP04028716.
Hein applies as explained above.
Hein suggests a high Mw range for his polycarbonate(s), that overlaps applicant’s “28,000 or more”, but does not explain the advantages of the higher end Mw polycarbonates.
Each of the secondary references provide reason(s) for selecting higher Mw polycarbonates. The Engineering Plastics Handbook (table 14.1) demonstrates that higher Mw PC have better mechanical properties. Adam (summary) teaches that lower Mw PC suffers thermal degradation. Oestreich (col 4 line 35-40) explains that high Mw polycarbonates are less susceptible to stress cracking. JP04028716 page 3 of translation teaches higher Mw PC improves solvent resistance.
For these reasons, it would have been obvious to select the higher Mw PC as Hein’s polycarbonate.
Claims 1,2 and 4-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shan 2020/0369875.
Shan claims (#4) a blend of 70-92% BPA homopolycarbonate, 1-15% polycarbonate-siloxane having 35-65% siloxane (ie applicant’s polycarbonate-siloxane) and 1-10% impact modifier. Shan’s BPA homopolycarbonate (paragraph 11) should preferably have a Mw of 17,000-35,000g/mol.
These amounts and Mw significantly overlap applicant’s ranges – justifying an obviousness rejection (see MPEP 2144.05).
In regards to applicant’s dependent claims:
Shan (paragraph 69) teaches MFR’s of greater than 5-20g/10min. Given the density of polycarbonates are typically ~1.1 or 1.2g/cm3, the MVR would be approximately 4-17cm3/10min. This overlaps applicant’s range of claim 2. Also note Shan’s examples employing 10% of the polycarbonate-siloxane (11a and 12a) have MFR’s of 8.2 and 9.6g/10min. The corresponding MVR would be expected to meet applicant’s claim 2.
Shan (paragraph 12) suggests using a blend of a polycarbonate having a Mw of 18,000-22,000 with a polycarbonate having a Mw of 26,000-40,000 in ratios of 10:1 to 1:10. This is suggestive of applicant’s claim 6.
The polycarbonate-siloxane is based on BPA and PDMS (table 1) – meeting applicant’s claim 8.
Up to 5% of additives (Shan’s claim 16) is suggested – meeting applicant’s claim 11.
Flame retardants may be added (Shan’s claim 13) and produces a flammability rating of VI or better (Shan’s claim 17) such as VO (tables 3-5) – meeting applicant’s claim 12 and 18.
Tensile strain at break with and without exposure is not reported for the cited examples. However, other examples (table 3,4) show high retention of properties. It is assumed applicant’s claim 13’s tensile strain at break retention is met.
The blend is melt mixed in an extruder (paragraph 79) – meeting applicant’s claim 14.
The blend (Shan’s claim 18) is useful to make articles – meeting applicant’s claim 15.
Given the MVR of applicant’s claim 2 is met, applicant’s melt viscosity of claim 16 would also be expected to be met.
KSS is used as a flame retardant @ 0.3% (see tables) – meeting applicant’s claim 17.
Claims 1,2 and 4-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shan 2020/0369875.
Shan exemplifies (#10a, 11a, 12a) blends of 45% polycarbonate PC2, 44% PC1, 10% polycarbonate siloxane having 40 or 60% siloxane, 0.3% potassium diphenylsulfone sulfonate flame retardant, 0.3% TSAN antidrip agent and minor amounts of other additives. PC2 (table 1) has a Mw of 29,000-31,000 which meets applicant’s BPA homopolycarbonate. The PC1has a Mw of 21,000-23,000 (table 1).
These examples employ only 45% of the required polycarbonate instead of applicant’s 80-90%. However, Shan (paragraph 11) does not require the use of both the high and the low Mw polycarbonates. Nor is ~1:1 ratio of the two required. When the two are used, Shan teaches the ratio of the two be 10:1 to 1:10 (paragraph 12). A 10:1 ratio of the high Mw polycarbonate to low Mw polycarbonate in the cited examples would have 80% of the high Mw polycarbonate and 8% of the low Mw polycarbonate – meeting applicant’s requirements of claim 1.
It would have been obvious to operate anywhere within Shan’s explicit teachings regarding amounts of the composition’s components.
In regards to applicant’s dependent claims:
Examples 11a and 12a have MFR’s of 8.2 and 9.6 (presumably g/10min – paragraph 69). Given the density of polycarbonates are typically ~1.1 or 1.2g/cm3, the MVR would be expected to meet applicant’s claims 2 and 3.
The polycarbonate-siloxanes are based on BPA and PDMS (table 1) – meeting applicant’s claim 8.
The polycarbonate-siloxanes have Mw’s of 31,000-38,000 (table 1) – meeting applicant’s claim 9.
Examples 11a and 12a have ratings of VO -meeting applicant’s claims 12 and 18.
Tensile strain at break with and without exposure is not reported for the cited examples. However, other examples (table 3,4) show high retention of properties. It is assumed applicant’s claim 13’s tensile strain at break retention is met.
The blend is melt mixed in an extruder (paragraph 79) – meeting applicant’s claim 14.
The blend (Shan’s claim 18) is useful to make articles – meeting applicant’s claim 15.
Given MVR of applicant’s claims 2 and 3 are met, applicant’s melt viscosity of claim 16 would also be expected to be met. Furthermore, Shan (paragraph 69) suggests lower MFR’s, would lessen the melt viscosity even further.
Claims 1,2 and 4-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shan 2020/0369875 in view of the Engineering Plastics Handbook or the Adam article in POLYMER or Oestreich 5138683 or JP04028716.
Shan applies as explained above.
Shan suggests a Mw range (17,000-35,000) for his polycarbonate(s), that overlaps applicant’s “28,000 or more”, but does not explain the advantages of the higher end Mw polycarbonates.
Each of the secondary references provide reason(s) for selecting higher Mw polycarbonates. The Engineering Plastics Handbook (table 14.1) demonstrates that higher Mw PC have better mechanical properties. Adam (summary) teaches that lower Mw PC suffers thermal degradation. Oestreich (col 4 line 35-40) explains that high Mw polycarbonates are less susceptible to stress cracking. JP04028716 page 3 of translation teaches higher Mw PC improves solvent resistance.
For these reasons, it would have been obvious to select the higher end Mw PC as Shan’s polycarbonate.
Claims 1,2,4-6,8,10-16,18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa 2020/0010641.
Ishikawa exemplifies (#24) a blend of 90 parts polycarbonates, 10 parts polycarbonate-siloxane, 3.1 parts CR741, 0.3 parts PTFE and 0.1 parts antioxidant. This becomes:
Parts material %
90 PC 87
10 PC-Si 9.7
3.1 CR741 3.0
0.3 PTFE 0.3
0.1 antiox 0.1
The combination of polycarbonates are said to exhibit a viscosity average molecular weight (Mv) of 20,600 (table 6). This differs from applicant’s method of determining molecular weight. Applicant’s method of determining Mw is known to result in significantly higher numerical values compared to Mv. Yoshiya 2022/0289906 (paragraph 177,186) shows a polycarbonate of Mv 19,700 provides an Mw according to applicant’s method of 30,300. For this reason, it is believed Ishikawa’s combination of polycarbonates inherently has a Mw of just above 30,300g/mol.
The polycarbonate-siloxane has a 30% siloxane content. The 9.7% polycarbonate-siloxane is just below applicant’s 10% minimum. However, the two values are so close that no meaningful difference in properties would be expected. This closeness provides a case for prima facie obviousness (MPEP2144.05; Titanium Metals v Banner 227USPQ 773). In any case, Ishikawa (claim 3) calls for a wide range of PC/PC-Si ratios – also rendering obvious the 10% limitation.
Given Ishikawa very closely matches applicant’s materials, amounts etc., the same L* is assumed to be present.
In regards to applicant’s dependent claims:
The cited example’s MFR (table 6) is said to be 9g/10min. Given polycarbonate densities are above 1g/cc, the MVR is undoubtedly below 9g/cc – meeting applicant’s claim 2.
The cited example’s mix of two polycarbonates is a mix of a high Mv with a low Mv PC – meeting applicant’s claim 6.
The polycarbonate-siloxane is based on BPA and PDMS (table 1) – meeting applicant’s claim 8.
The CR741 and PTFE qualify as applicant’s additives of claim 11.
The cited example has a VO rating – meeting applicant’s claim 12 and 18.
Applicant’s tensile strength of claim 13 is not reported, but is presumed inherently present in the reference as the reference closely matches applicant’s materials, amounts etc.
Ishikawa extrudes (paragraph 300) and injection molds (paragraph 303) the composition – meeting applicant’s claims 14 and 15.
Given the reference anticipates applicant’s materials, amounts, MVR, Mw etc., the same melt viscosity of applicant’s claim 16 is assumed to inevitably result.
Applicant's arguments filed 11/24/25 have been fully considered but they are not persuasive.
Arguments, that the claimed Mw provide unexpectedly good L* are unconvincing.
Unexpected results have no bearing on the anticipation rejection (MPEP2131.04).
Applicant’s examples have numerous extra unclaimed ingredients and therefore cannot be commensurate in scope with the claims. More importantly, data for the individual polycarbonates used are not provided. For instance, if high Mw polycarbonates have a better L* than lower Mw polycarbonates, it would not be surprising that compositions of the higher Mw polycarbonate would also have a superior L*. A weighing of the strong case of prima facie obviousness against the current evidence supporting patentability favors a finding of obviousness (MPEP 716.01(d)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 1/15/26