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 .
Oath/Declaration
The declaration under 37 CFR § 1.132 filed February 6, 2026 by Riko Muratani has been fully considered and is addressed within the response to amendments and arguments.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed March 14, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Gu et al. (CN 108659285) in view of Mizushima et al. (JP 2003147050) and Dave et al. (DE102010020486A1) have been fully considered and are persuasive. Applicant has amended claim 1 to recite a particle size for the metal hydroxide (D). As noted in the Examiner Interview Summary Record, mailed May 4, 2026, the “nanoaluminum hydroxide” taught by Gu does not meet the claimed range. However, after further consideration, Mizushima (cited in the previous Office Action) teaches a range for the particle size of a metal hydroxide that overlaps with the claimed range. Accordingly, the amendment is fully addressed in the new grounds of rejection below. It is noted that even if Gu, arguendo, was construed to explicitly require a specific particle size, the reference does not discourage or teach that other particle size would render the composition unsuitable for its intended purpose. Mizushima, however, teaches that a person having ordinary skill in the art would recognize that metal hydroxides having particle sizes that overlap with the claimed range are known within the art as suitable as an additive in flame-retardant resin compositions (see rejection below).
Applicant alleges that the Office’s finding that Dave meets the claimed (E) zinc 12-hydroxystearic acid compound is erroneous because “[t]hroughout the entire text of Dave, there is absolutely no mention of “smoke,” “smoke suppression,” or any teaching directed towards reducing smoke during combustion. While it is noted that Dave does express the desirability of smoke reduction for the composition (see, e.g., para. [0004], [0188]), the rejection is based on the finding that it would have been obvious to “alternatively use the claimed zinc 12-hydroxystearic acid instead of the stearic acid as taught by Gu because Dave teaches that 12-hydroxystearic acid and stearic acid are both known within the art as suitable additives for polymeric flame retardant compositions…such that the resultant materials exhibit both good thermal stabilization and good mechanical properties ([0013])” (emphasis added). Thus, the motivation to modify Gu with the teachings of Dave relies on the recognized suitability for the claimed component alongside the improvements to the composition for using such a species.
Applicant further argues that a person having ordinary skill in the art would expect that zinc stearate and zinc 12-hydroxystearate would exhibit similar performance in other chemical properties, but alleges that experimental results (i.e., smoke suppression index and qualitative performance) indicate a watershed difference in kind. However, the Office maintains the position within the previous Office Action:
“Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected” (see MPEP 716.02). In the instant case, while the Examiner acknowledges that the data presented provides evidence of differences in smoke generation inhibition properties between zinc 12-hydroxystearic acid (71 smoke generation inhibition (index)) and zinc stearate (101 smoke generation inhibition (index)), it is the position of the Office that the evidence does not indicate that zinc stearate is unsuitable for use as a smoke inhibitor, rather that the difference in smoke generation inhibition between the two species is a difference in degree rather than in kind. In the instant case, Dave expressly discloses zinc salts of stearic acid and 12-hydroxystearic acid for the purpose of smoke inhibition/reduction. Based on the disclosure of Dave, a person having ordinary skill in the art would have understood both species to be suitable for the common purpose of zinc stabilizer compounds within polymeric compositions intended to exhibit reduced smoking but would also recognize routine differences in the relative efficacy exist among known alternatives. Among these differences, a person having ordinary skill in the art would also consider customary design considerations and may be motivated to select a species within a known group based on cost or availability thereof. Therefore, it is the position of the Office that a difference in degree of efficacy among two species recognized within the art as suitable for the same purpose does not support a finding of nonobviousness.”
With respect to Applicant’s argument that the specific micron-scale particle size of metal oxide is combined with the claimed zinc 12-hydroxystearic acid compound results in unexpected smoke suppression properties, it is the position of the Office that even if, arguendo, the results were found to represent a difference in kind rather than degree, it is noted that “whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support” (see MPEP 716.02(d)). In this instant case, it would appear that at least the claimed species and particle size of the metal hydroxide is not commensurate in scope with the experiments within the instant specification, which only indicate that the alleged unexpected results occur using aluminum hydroxide having an average particle diameter of 1.0 µm. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)” (see MPEP 716.02(d) III).
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
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.
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.
Claims 1, 3-5, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (CN 108659285, English translation provided for citations, hereinafter referred to as “Gu”) in view of Mizushima et al. (JP 2003147050, hereinafter referred to as “Mizushima”) and further in view of Dave et al. (DE102010020486A1, English translation provided for citations, hereinafter referred to as “Dave”).
As to Claim 1: Gu teaches a rubber conveyer belt coating comprising:
styrene-butadiene rubber (i.e., a diene-based rubber),
decabromodiphenylethane (i.e., a halogen-based flame retardant),
a molybdenum salt which may comprise molybdenum trioxide ([0008]) (i.e., a metal molybdate according to the instant specification [0017]), and
a nano aluminum hydroxide (i.e., a metal hydroxide) (Abstract, [0007])).
Gu teaches that the molybdenum salt may be present in an amount of 7 parts by weight relative to 70 parts by weight of styrene-butadiene rubber (i.e., a diene-based rubber) ([0009]), which overlaps with the claimed range. However, Gu is silent towards the molybdenum salt being carried on a surface of a particle.
Mizushima teaches a related flame retardant composition comprising an epoxy resin (Abstract) and optionally comprising a rubber ([0050]). Mizushima further teaches that the composition comprises zinc molybdate (i.e., a metal molybdate) ([0011]), wherein the zinc molybdate may be coated onto inorganic fillers (i.e., particles) such as silica, calcium carbonate, clay, or zinc oxide in order to decrease the water absorption and increase moldability of the zinc molybdate ([0037]). Gu and Mizushima are considered analogous art because they are both directed towards flame-retardant polymeric compositions comprising a molybdenum additive. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a metal molybdate compound such as zinc molybdate carried on the surface of a particle (e.g., silica) as an alternative to the molybdenum salt taught within the composition of Gu because Mizushima teaches that zinc molybdate coated onto inorganic particles improves the composition by decreasing the water absorption and increasing moldability of the zinc molybdate while retaining its fire retardancy ([0037]).
Gu is silent towards the particle size of the metal hydroxide/aluminum hydroxide.
Mizushima teaches a related flame retardant composition comprising an epoxy resin (Abstract) and optionally comprising a rubber ([0050]). Mizushima further teaches that the composition comprises a metal hydroxide which may be aluminum hydroxide ([0033]) and wherein the metal hydroxide may have a particle size of 0.5 to 10 µm ([0035]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used the overlapping portion of the claimed range taught by Mizushima for the composition of Gu, and the motivation to have done so would have been, as Mizushima suggests, that the overlapping portion is a usable range for the particle size of a metal hydroxide/aluminum hydroxide additive to resin compositions for the purpose of enhancing flame retardancy, a property which is desired by Gu.
Gu further teaches that the composition comprises stearic acid ([0007]), but is silent towards the use of a zinc 12-hydroxystearic acid.
Dave teaches a flame-retardant halogen-containing polymer composition comprising at least one flame-retardant polymer ([0002]) which may be a copolymer comprising diene rubbers ([0199]) further comprising a component (C) which may be a zinc stabilizer ([0021]) which may be a zinc salt of stearic acid or 12-hydroxystearic acid ([0036]). Dave further teaches that said component (C) is present in an amount of 0.5 to 5 parts by weight of the compound based on the polymer weight ([0047]), which overlaps with the claimed range. Gu, Mizushima, and Dave are considered analogous art because they are directed towards the same field of endeavor, namely, polymeric compositions comprising flame-retardant additives. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the claimed zinc 12-hydroxystearic acid instead of the stearic acid as taught by Gu because Dave teaches that 12-hydroxystearic acid and stearic acid are both known within the art as suitable additives for polymeric flame retardant compositions. Furthermore, the range taught by Dave for a zinc 12-hydroxystearic acid overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Dave suggests, that the overlapping portion is a useable range for a stearic acid or 12-hydroxystearic acid additive/stabilizers for polymeric flame-retardant compositions such that the resultant materials exhibit both good thermal stabilization and good mechanical properties ([0013]).
Dave does not teach the mechanism of providing stabilization or which components are dispersed by the presence of a stearic acid species, however, Dave explicitly contemplates the addition of a component (C) which may be a zinc stabilizer ([0021]) which may be a zinc salt of stearic acid or 12-hydroxystearic acid ([0036]) and further contemplates the addition of stearic acids as improving dispersibility of components within the polymer matrix ([0126]). The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., para. [0022] of the instant specification suggests that 12-hydroxystearic acid may promote dispersion of a (D) metal hydroxide and a (C) metal molybdate compound and that the zinc portion of zinc 12-hydroxystearate may capture an active radical to inhibit formation of combustion gas and based merely on the presence of zinc 12-hydroxystearate). Therefore, the claimed effects and physical properties, i.e. the effect of promoting dispersion of a metal hydroxide (D) and a metal molybdate (C) and capturing of an active radical to stably inhibit generation of combustion gas, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 3: Gu, Mizushima, and Dave teach the composition of claim 1 (supra).
Gu further teaches that the composition comprises decabromodiphenylethane, which reads on the claimed halogen-based flame retardant, in an amount of 5 to 15 parts relative to the styrene-butadiene rubber, which is included in an amount of 20 to 80 parts ([0007]). Thus, the range taught by Gu for an amount of a halogen-based flame retardant is within, and therefore anticipates, the claimed range when taken with respect to 100 parts by weight of the styrene-butadiene rubber (i.e., diene-based rubber) component.
As to Claim 4: Gu, Mizushima, and Dave teach the composition of claim 1 (supra).
Gu further teaches that the composition comprises nano aluminum hydroxide, which reads on the claimed metal hydroxide, in an amount of 10 to 20 parts relative to the styrene-butadiene rubber, which is included in an amount of 20 to 80 parts ([0007]). Thus, the range taught by Gu for an amount of a metal hydroxide is within, and therefore anticipates, the claimed range when taken with respect to 100 parts by weight of the styrene-butadiene rubber (i.e., diene-based rubber) component.
As to Claim 5: Gu, Mizushima, and Dave teach the composition of claim 1 (supra).
Gu teaches that the molybdenum salt (i.e., metal molybdate) is included in an amount of 2 to 8 parts, which is smaller than the content of the nano aluminum hydroxide, which is included in an amount of 10 to 20 parts ([0007]).
As to Claim 8: Gu, Mizushima, and Dave teach the composition of claim 1 (supra).
Gu teaches a molybdenum salt which may comprise molybdenum trioxide ([0008]) (i.e., a metal molybdate according to the instant specification [0017]), which is included to impart fire retardant properties, but is silent towards wherein the metal molybdate compound is zinc molybdate.
Mizushima teaches a related flame retardant composition comprising an epoxy resin (Abstract) and optionally comprising a rubber ([0050]). Mizushima further teaches that the composition comprises zinc molybdate (i.e., a metal molybdate) ([0011]), which is included as a flame retardant. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a metal molybdate compound such as zinc molybdate carried on the surface of a particle (e.g., silica) as an alternative to the molybdenum salt taught within the composition of Gu because Mizushima teaches that zinc molybdate coated onto inorganic particles improves the composition by decreasing the water absorption and increasing moldability of the zinc molybdate while retaining its fire retardancy ([0037]).
As to Claim 11: Gu, Mizushima, and Dave teach the composition of claim 1 (supra).
Gu further teaches that the composition comprises a nano aluminum hydroxide ([0007]).
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (CN 108659285, English translation provided for citations, hereinafter referred to as “Gu”) in view of Mizushima et al. (JP 2003147050, hereinafter referred to as “Mizushima”) and further in view of Dave et al. (DE102010020486A1, English translation provided for citations, hereinafter referred to as “Dave”) and Masahito (JP 6282774, English translation provided for citations, hereinafter referred to as “Masahito”) as evidenced by Haneke (“Toxicological Summary for Tetrabromobisphenol A bis(2,3-dibromopropyl ether,” hereinafter referred to as “Haneke”).
As to Claim 12: Gu, Mizushima, and Dave teach the composition of claim 1 (see above).
Gu is silent towards a halogen-based flame retardant having a melting point less than 150 ˚C.
Masahito teaches a related flame retardant composition comprising a styrene resin (Abstract), which may further comprise a rubber-like polymer, including diene-based polymers ([0011]) and halogen-based flame retardants ([0004]-[0005]) including tetrabromobisphenol A-bis(2,3-dibromopropyl ether) ([0012]). Masahito does not teach a melting point for tetrabromobisphenol A-bis(2,3-dibromopropyl ether), however, Haneke provides evidence that the melting point of tetrabromobisphenol A-bis(2,3-dibromopropyl ether) is 90 to 100 ˚C (Table 2.2, page 2 of Haneke). Gu and Masahito are considered analogous art because they are directed towards flame retardant compositions comprising rubbers and halogenated flame retardants. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a halogenated flame retardant with a melting point below 150 ˚C within the composition taught by Gu because Gu contemplates the use of brominated flame retardant additives and Masahito teaches that tetrabromobisphenol A-bis(2,3-dibromopropyl ether) is a known brominated flame retardant used in flame-retardant compositions used as an environmentally safer alternative to other brominated compounds ([0004]-[0005]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (CN 108659285, English translation provided for citations, hereinafter referred to as “Gu”) in view of Mizushima et al. (JP 2003147050, hereinafter referred to as “Mizushima”) and further in view of Dave et al. (DE102010020486A1, English translation provided for citations, hereinafter referred to as “Dave”).
As to Claim 13: Gu teaches a rubber conveyer belt coating comprising:
styrene-butadiene rubber (i.e., a diene-based rubber),
decabromodiphenylethane (i.e., a halogen-based flame retardant),
a molybdenum salt which may comprise molybdenum trioxide ([0008]) (i.e., a metal molybdate according to the instant specification [0017]), and
a nano aluminum hydroxide (i.e., a metal hydroxide) (Abstract, [0007])).
Gu further teaches that the composition may undergo vulcanization to form a conveyor belt covering rubber ([0041]), which reads on the claimed vulcanized body.
Gu teaches that the molybdenum salt may be present in an amount of 7 parts by weight relative to 70 parts by weight of styrene-butadiene rubber (i.e., a diene-based rubber) ([0009]), which overlaps with the claimed range. However, Gu is silent towards the molybdenum salt being carried on a surface of a particle.
Mizushima teaches a related flame retardant composition comprising an epoxy resin (Abstract) and optionally comprising a rubber ([0050]). Mizushima further teaches that the composition comprises zinc molybdate (i.e., a metal molybdate) ([0011]), wherein the zinc molybdate may be coated onto inorganic fillers (i.e., particles) such as silica, calcium carbonate, clay, or zinc oxide in order to decrease the water absorption and increase moldability of the zinc molybdate ([0037]). Gu and Mizushima are considered analogous art because they are both directed towards flame-retardant polymeric compositions comprising a molybdenum additive. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a metal molybdate compound such as zinc molybdate carried on the surface of a particle (e.g., silica) as an alternative to the molybdenum salt taught within the composition of Gu because Mizushima teaches that zinc molybdate coated onto inorganic particles improves the composition by decreasing the water absorption and increasing moldability of the zinc molybdate while retaining its fire retardancy ([0037]).
Gu further teaches that the composition comprises stearic acid ([0007]), but is silent towards the use of a zinc 12-hydroxystearic acid.
Dave teaches a flame-retardant halogen-containing polymer composition comprising at least one flame-retardant polymer ([0002]) which may be a copolymer comprising diene rubbers ([0199]) further comprising a component (C) which may be a zinc stabilizer ([0021]) which may be a zinc salt of stearic acid and 12-hydroxystearic acid ([0036]). Dave further teaches that said component (C) is present in an amount of 0.5 to 5 parts by weight of the compound based on the polymer weight ([0047]), which overlaps with the claimed range. Gu, Mizushima, and Dave are considered analogous art because they are directed towards the same field of endeavor, namely, polymeric compositions comprising flame-retardant additives. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the claimed zinc 12-hydroxystearic acid instead of the stearic acid as taught by Gu because Dave teaches that 12-hydroxystearic acid and stearic acid are both known within the art as suitable additives for polymeric flame retardant compositions. Furthermore, the range taught by Dave for a zinc 12-hydroxystearic acid overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Dave suggests, that the overlapping portion is a useable range for a stearic acid or 12-hydroxystearic acid additive/stabilizers for polymeric flame-retardant compositions such that the resultant materials exhibit both good thermal stabilization and good mechanical properties ([0013]).
Conclusion
Applicant's amendment 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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