DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on May 22, 2026 has been fully considered. The amendment to instant claims 1, 22, and addition of new claims 25-29 are acknowledged. Specifically, claim 1 has been amended to recite the limitations of: electrically non-conductive particles comprising metal oxides or metal nitrides, the intumescent particles comprising intercalated graphite, ammonium polyphosphate, clay or vermiculite; the composite having porosity of 5-20%. These limitations were not previously presented and were taken from instant specification. In light of the amendment, the previous rejections not cited below are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Parrinello et al (US 8,388,878).
4. Parrinello et al discloses a microporous material comprising:
A) a porous polymeric matrix of polyolefin,
B) 20-90%wt (col. 5, lines 30-32) of finely divided water-insoluble filler distributed throughout the matrix, and
C) a network of interconnecting pores communicating throughout the microporous material (Abstract),
wherein the polymeric matrix a) comprises ultrahigh molecular weight polyethylene (UHMWPE) (col. 3, lines 20-25; col. 4, lines 54-55);
the microporous material is having pore volume (i.e. porosity) of at least 15% or 20% (col. 7, lines 34-45) and
exemplified density of 1.35-1.41 g/cc (Table 4).
5. The finely divided filler comprises clays, vermiculite, corresponding to intumescent particles as claimed in instant invention, and further graphite, iron oxide, copper oxide, corresponding to the thermally-conductive particles as claimed in instant invention (col. 5, line 60-col. 6, line 13, as to instant claim 22).
6. Based on the teachings of Parrinello et al, it would have been obvious to a one of ordinary skill in the art to choose and use all of clays, vermiculite, and further graphite, iron oxide, copper oxide, in total amount of 20-90%wt, as the component B) in the microporous material of Parrinello et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
7. Since the microporous material of Parrinello et al is substantially the same as that claimed in instant invention, i.e. comprises the combination of porous UHMWPE matrix and 20-90%wt of the combination of the same filler particles as claimed in instant invention and having at least 15% porosity, therefore, the microporous material of Parrinello et al will intrinsically and necessarily have, or would be reasonably expected to have the properties with values in the same ranges as claimed in instant invention, or in the ranges overlapping with those as claimed in instant invention, including expanding by at least 50% over initial volume when exposed to temperature greater than 135⁰C as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. With respect to Applicant’s arguments regarding the unexpected results of instant invention, it is noted that:
1) Instant claim 22 is as follows:
A (co)polymer matrix composite comprising:
a porous structure comprising ultra-high molecular weight polyethylene; and
a plurality of thermally-conductive particles and a plurality of intumescent particles distributed within the (co)polymeric network structure,
the thermally-conductive particles having a different composition from that of the intumescent particles, wherein the thermally-conductive particles comprise at least one of electrically non- conductive particles or electrically-conductive particles, further wherein
the electrically non-conductive particles are ceramic particles selected from the group consisting of
boron nitride,
silicon carbide,
metal oxides,
metal nitrides, and combinations thereof,
the electrically-conductive particles are carbon particles selected from the group consisting of
graphite and graphene,
or
metal particles selected from the group consisting of
copper, silver, and combinations thereof,
the intumescent particles comprise at least one of
intercalated graphite,
ammonium polyphosphate,
clay, or
vermiculite,
wherein the (co)polymer matrix composite has a porosity in a range from 5 to 20 percent,
wherein the
wherein the (co)polymer matrix composite volumetrically expands by at least 50% over its initial volume when exposed to at least one temperature greater than 135°C.
Thus, instant claim 22 is significantly broad and includes enormous number of combinations of very different thermally conductive particles with various intumescent particles. Claim 22 does not cite any amounts of the enormous of the components in said combination of very different thermally conductive particles with various intumescent particles.
2) Further, no properties of the composite, except the level of expansion at temperature greater than 135⁰C, has been cited in instant claim 22.
3) On the other hand, no substantial evidence of unexpected results of instant invention has been provided by instant specification.
Thus, the specific examples 1-4 presented in instant specification are based on the very specific combinations of the specific UHMWPE as the matrix with:
1) Example 1A-1C: boron nitride, particulate carbon and calcium sulfate dihydrate (as endothermic particles claimed in instant claim 24 only); no citation of ammonium polyphosphate, clay, vermiculite or intercalated graphite as intumescent particles.
2) Examples 2A-2C: copper, expandable graphite and particulate carbon;
3) Examples 3A-3C: boron nitride, particulate carbon, expandable graphite;
4) Examples 4A-4B: boron nitride, expandable graphite,
Wherein the cited components were used in the very specific amounts.
No level of expansion has been cited for the above examples.
No comparative examples are provided.
4) Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results as presented by the above examples of instant specification.
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.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
9. Claims 22, 25 are rejected under 35 U.S.C. 103 as being unpatentable over Parrinello et al (US 8,388,878) in view of Anderson et al (US 6,387,519), Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552).
It is noted that while the rejection is made over GB 2562254 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0042301 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0042301.
10. The discussion with respect to Parrinello et al (US 8,388,878) set forth in paragraphs 3-8 above, is incorporated here by reference.
11. Though Parrinello et al does not explicitly teach the filler including boron nitride, it is noted that for the complete list of possible fillers as the component B) Parrinello et al refers to US 6,387,519, col. 9, line 4 to col. 13, line 62, incorporated by reference (see col. 5, lines 55-60 of Parrinello et al), wherein
US 6,387,519 explicitly teaches the use of metal oxides and metal nitrides including boron nitride (see col. 9, line 62-col. 10, line 10 of US 6,387,519).
12. Based on the teachings of Parrinello et al, including US 6,387,519 incorporated by reference in Parrinello et al, it would have been obvious to a one of ordinary skill in the art to choose and use, at least in a minor amount boron nitride as the component B) in the microporous material of Parrinello et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
13. Though Parrinello et al does not explicitly recite the microporous material further comprising intercalated graphite as the filler,
1) Pullinger et al discloses a porous material comprising polymeric fibers ([0025]) comprising ammonium polyphosphate and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects ([0029], [0033], [0034], [0036], [0037]).
Given the ammonium polyphosphate particles and the expandable graphite particles are providing fireproofing and flame inhibition effects, those particles will intrinsically and necessarily be flame retardants as well.
2) Further, Lenzi teaches a composite structure wherein thermally expandable particles are added as intumescent material in intermingled, randomly arranged fibers, which intumescent material expands upon exposure to high temperatures, with expansion onset temperature being 20-100⁰C ([Abstract, [0037], [0040]), and where the thermally expandable particles comprise ammonium polyphosphate and expandable intercalated graphite ([0041], [0042]).
Thus, Lenzi explicitly teaches that when ammonium polyphosphate or expandable intercalated graphite are exposed to high temperatures, they expand.
Lenzi further teaches that such expandable layer maybe used as a top layer on a composite structure ([0070], [0082], Figure 1).
14. Since Parrinello et al discloses the microporous composite comprising a variety of inorganic fillers, depending on the desired end-use of the microporous composite, Pullinger et al discloses a porous material comprising ammonium polyphosphate particles and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects, i.e. being flame retardants, and Lenzi teaches the use of thermally expandable particles comprising ammonium polyphosphate and expandable intercalated graphite as the intumescent material in the fibrous structures, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Pullinger et al, Lenzi and Parrinello et al, and to include, or obvious to try to include ammonium polyphosphate particles and expandable intercalated graphite particles as the component B) in the composite of Parrinello et al as well, so to further provide fireproofing and flame inhibition effects to the composite of Parrinello et al as well, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. Claims 1-2, 4-7, 22-23, 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Parrinello et al (US 8,388,878) in view of Hoshuyama et al (US 2006/0103055).
16. Parrinello et al discloses a microporous material comprising:
A) a porous polymeric matrix of polyolefin,
B) 20-90%wt (col. 5, lines 30-32) of finely divided water-insoluble filler distributed throughout the matrix, and
C) a network of interconnecting pores communicating throughout the microporous material (Abstract),
wherein the polymeric matrix a) comprises ultrahigh molecular weight polyethylene (UHMWPE) (col. 3, lines 20-25; col. 4, lines 54-55, as to instant claims 4, 28, 29);
the microporous material is having pore volume (i.e. porosity) of at least 15% or 20% (col. 7, lines 34-45) and
exemplified density of 1.35-1.41 g/cc (Table 4, as to instant claim 2).
17. The finely divided filler comprises clays, vermiculite, corresponding to intumescent particles as claimed in instant invention, and further graphite, iron oxide, copper oxide, corresponding to the thermally-conductive particles as claimed in instant invention (col. 5, line 60-col. 6, line 13, as to instant claims 1,22).
18. Based on the teachings of Parrinello et al, it would have been obvious to a one of ordinary skill in the art to choose and use all of clays, vermiculite, and further graphite, iron oxide, copper oxide, in total amount of 20-90%wt, as the component B) in the microporous material of Parrinello et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
19. Though Parrinello et al discloses the microporous polymer matrix comprising porous UHMWPE, Parrinello et al does not explicitly teach said matrix being thermally-induced phase separated, and comprising fibrils.
20. Hoshuyama et al discloses a polyolefin microporous membrane having a continuous structure comprising a network of micro-fibrils ([0037], [0041]), wherein the polyolefin comprises ultra-high molecular weight polyethylene (UHMWPE) having an average molecular weight of 50,000-5,000,000 ([0049], [0050], Abstract, as to instant claims 1, 4, 28-29), the microporous membrane having porosity of preferably 20% ([0047]), and produced by thermally-induced phase separation ([0052], [0054]),
wherein such produced microporous membrane has a highly uniform surface structure free from nonuniformity ([0012])
The microporous membrane further comprises various additives including flame retardants, nucleating agents incorporated therein ([0080]).
21. Since both Parrinello et al and Hoshuyama et al are related to microporous materials comprising porous UHMWPE matrix and further additives/fillers incorporated therein, and thereby belong to the same field of endeavor, wherein Hoshuyama et al explicitly teaches the microporous UHMWPE matrix being produced by thermally-induced phase separation process, wherein such process provides highly uniform surface porous structure free from nonuniformity, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Parrinello et al and Hoshuyama et al, and to modify, or obvious to try to modify the process of making the microporous material of Parrinello et al by using the thermally-induced phase separation method as taught by Hoshuyama et al to produce the UHMWPE microporous composite of Parrinello et al having fibrillated structure, so to ensure said microporous material of Parrinello et al is having highly uniform porous structure, and since such method for making microporous UHMWPE material in taught in the art and it would be obvious to apply it. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
22. Since the microporous material of Parrinello et al in view of Hoshuyama et al is substantially the same as that claimed in instant invention, i.e. comprises the combination of thermally-induced phase separated microporous UHMWPE matrix in the form of fibrils and 20-90%wt of the combination of the filler particles the same as those claimed in instant invention, and having at least 15% porosity, therefore, the microporous material of Parrinello et al in view of Hoshuyama et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties having values in the same ranges as claimed in instant invention, or in the ranges overlapping with those as claimed in instant invention, including expanding by at least 50% over initial volume when exposed to temperature greater than 135⁰C, and further having network structure comprising said filler particles, at least partially, adhered directly to the UHMWPE polymer fibrils of the matrix, as well (as to instant claims 1, 23). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
23. As to instant claims 5-7, Parrinello et al teaches the microporous sheet being used as one or more layers in a multilayer article (col. 11, lines 50-55).
Given the microporous sheet of Parrinello et al in view of Hoshuyama et al is a one-layer sheet, it would be obvious to a one of ordinary skill in the art that all of the cited fillers are present in said single layer (as to instant claim 5).
Further, given the microporous sheet of Parrinello et al in view of Hoshuyama et al is a multi-layered sheet, it would have been obvious to a one of ordinary skill in the art to prepare a composite of Parrinello et al in view of Hoshuyama et al comprising a two-layer or a three-layered laminates, wherein the graphite and iron oxide are used in one layer and vermiculite and clay are present in an adjacent layer in a two-layered laminate (as to instant claim 6) or wherein the graphite and iron oxide are used in a first layer and vermiculite and clay are present in outer layers overlaying the first layer (as to instant claim 7), which all of said structure depend on the specific desired end-use of the microporous structures, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
24. With respect to Applicant’s arguments regarding the unexpected results of instant invention, it is noted that:
1) Instant claim 1 is as follows:
A (co)polymer matrix composite comprising:
a porous phase-separated (co)polymeric network structure; and
a plurality of thermally-conductive particles and a plurality of intumescent particles distributed within the (co)polymeric network structure,
the thermally-conductive particles having a different composition from that of the intumescent particles, wherein the thermally-conductive particles comprise at least one of electrically non- conductive particles or electrically-conductive particles, further wherein
the electrically non-conductive particles are ceramic particles selected from the group consisting of
boron nitride,
silicon carbide,
metal oxides,
metal nitrides, and combinations thereof,
the electrically-conductive particles are carbon particles selected from the group consisting of
graphite and graphene,
or
metal particles selected from the group consisting of
copper, silver, and combinations thereof,
the intumescent particles comprise at least one of
intercalated graphite,
ammonium polyphosphate,
clay, or
vermiculite,
wherein the (co)polymer matrix composite has a porosity in a range from 5 to 20 percent, wherein the thermally-conductive particles and the intumescent particles are present in a range from 15 to 99 weight percent of the (co)polymer matrix composite,
wherein the (co)polymer matrix composite volumetrically expands by at least 50% over its initial volume when exposed to at least one temperature greater than 135°C, wherein the porous phase-separated (co)polymeric network structure comprises an interconnected network of (co)polymeric fibrils adhered directly to the thermally-conductive particles and the intumescent particles.
Thus, instant claim 1 is very broad and includes enormous number of combinations of very different thermally conductive particles with various intumescent particles, using any kind of polymer network.
2) Instant claim 22 is even broader than instant claim 1, since does not cite any amounts of the enormous number of combinations of very different thermally conductive particles with various intumescent particles, and does not specify the porous matrix being phase separated.
3) Further, no properties of the composite, except the level of expansion at temperature greater than 135⁰C, has been cited in instant claims 1, 22, 24.
4) On the other hand, no substantial evidence of unexpected results of instant invention has been provided by instant specification.
Thus, the specific examples 1-4 presented in instant specification are based on the very specific combinations of the specific UHMWPE as the matrix with:
1) Example 1A-1C: boron nitride, particulate carbon and calcium sulfate dihydrate (as endothermic particles claimed in instant claim 24 only); no citation of ammonium polyphosphate, clay, vermiculite or intercalated graphite as intumescent particles.
2) Examples 2A-2C: copper, expandable graphite and particulate carbon;
3) Examples 3A-3C: boron nitride, particulate carbon, expandable graphite;
4) Examples 4A-4B: boron nitride, expandable graphite,
Wherein the cited components were used in the very specific amounts.
No level of expansion has been cited for the above examples.
No comparative examples are provided.
5) Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results as presented by the above examples of instant specification.
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.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
25. With respect to two Declarations under 37 CFR 1.132 filed on May 22, 2026, it is noted that:
1) As confirmed by Applicant, thermally-induced phase separation (TIPS) method for making porous structure/membranes is well-known in the art.
2) Regarding the data for “Remade Samples”, it is noted that:
i) the Declaration by Alexander Misura states that the remade samples were the same as described in instant specification. However, the thickness, density and thermal conductivity of said examples shown in the Declaration are different from those cited in instant specification; therefore, it is not clear how those examples were “remade by following the procedures described in application” and if those are actually the same as those cited in instant specification.
Thus, for Example 1 density in instant specification is cited as 0.6868 g/cc ([0177]), whereas for the same Example 1 cited in the Declaration density is 0.6374 g/cc;
for Example 3 density in instant specification is cited as 0.5744 g/cc ([0195]), whereas for the same Example 3 cited in the Declaration density is 0.401 g/cc;
for Example 1B of instant specification thermal conductivity is cited as 0.455 W/m.K ([00180] of instant specification), whereas thermal conductivity for example 1B of the Declaration is 0.307 W/m.K.
For Example 1C of the specification thermal conductivity is cited as 0.568 W/mK ([00182] of instant specification), whereas thermal conductivity for Example 1C of the Declaration is cited as 0.478 W/m.K.
For Example 3C of the specification thermal conductivity is cited as 0.65 W/mK ([00199] of instant specification), whereas thermal conductivity for Example 3C of the Declaration is cited as 1.97 W/m.K
ii) Further, comparing the data for examples provided in the Declaration, it is noted that, for Examples 1-1C the thickness, density and thus porosity of said examples are totally different, therefore, the thermal conductivity values are different; there is no evidence of direct correlation between the porosity and thermal conductivity. Thus, Example 1 has higher porosity and lower thermal conductivity that Example 1B, however, Example 1C has higher porosity and higher thermal conductivity that Example 1B. Therefore, there is no substantial evidence that “samples having porosities within 5-20% exhibit higher measured thermal conductivity than corresponding higher-porosity unexpanded samples”, as cited in the Declaration. Further, Examples 1B and 1C have very close thickness (53.6mil and 57 mil), and thereby more comparable, whereas Example 1 has thickness two times higher: 106.5 mil.
iii) Furthermore, instant claims do not even mention thermal conductivity of the claimed matrix composite; and as cited in paragraph 24 above, Examples 1, 1B, 1C, 3, 3B, 3C, 4, 4B of instant specification and cited as “remade” in the Declarations are very specific examples, whereas the scope of instant claims is significantly broader than those specific examples.
26. Claims 1-2, 4-7, 21-23, 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Parrinello et al (US 8,388,878) in view of Hoshuyama et al (US 2006/0103055), in further view of Kaytor et al (US 6,171,689), Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552).
27. The discussion with respect Parrinello et al (US 8,388,878) in view of Hoshuyama et al (US 2006/0103055), set forth in paragraphs 15-25 above, is incorporated here by reference.
28. Though Parrinello et al in view of Hoshuyama et al disclose the microporous material comprising a variety of inorganic fillers, Parrinello et al in view of Hoshuyama et al do not explicitly teach aluminum trihydrate, intercalated graphite as further additives.
29. However,
1) Kaytor et al discloses microporous articles formed by thermally-induced phase separation from a composition comprising diluent, thermoplastic polymer and 10-60%wt of flame retardants (col. 2, lines 16-20), wherein such articles are used in printing applications (Abstract),
wherein the flame retardant comprises aluminum trihydrate (col. 7, lines 14-18, as to instant claims 21, 26),
the thermoplastic polymer comprises polyethylene (col. 8, lines 37-40);
the microporous thermally-induced phase separated article comprises fibrils that interconnect the polymer spherules and comprising minute voids, creating a network of interconnected micropores (col. 2, lines 63-67);
the composition further comprises metal particles (col. 9, lines 5-8).
The microporous article may comprise a single layer or a multilayered article having a two-layered structure AB, or a structure BAB, with the outer layer B having flame retardant additives (col. 3, lines 20-45).
Thus, Kaytor et al explicitly teaches the use of aluminum trihydrate, corresponding to the claimed endothermic particles, in thermally-induced phase separated and fibrillated microporous polyethylene-based articles.
2) Pullinger et al discloses a porous material comprising polymeric fibers ([0025]) comprising ammonium polyphosphate particles and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects ([0029], [0033], [0034], [0036], [0037]).
Given the ammonium polyphosphate particles and the expandable graphite particles are providing fireproofing and flame inhibition effects, those particles will intrinsically and necessarily be flame retardants as well.
3) Further, Lenzi teaches a composite structure wherein thermally expandable particles are added as intumescent material in intermingled, randomly arranged fibers, which intumescent material expands upon exposure to high temperatures, with expansion onset temperature being 20-100⁰C ([Abstract, [0037], [0040]), and where the thermally expandable particles comprise ammonium polyphosphate and expandable intercalated graphite ([0041], [0042]).
Thus, Lenzi explicitly teaches that when ammonium polyphosphate or expandable intercalated graphite are exposed to high temperatures, they expand.
Lenzi further teaches that such expandable layer maybe used as a top layer on a composite structure ([0070], [0082], Figure 1).
30. Since all of Kaytor et al, Pullinger et al, Lenzi and Parrinello et al in view of Hoshuyama et al are related to porous articles comprising inorganic additives/fillers, wherein Kaytor et al, Pullinger et al, Lenzi explicitly teach the use of aluminum trihydrate, expandable intercalated graphite and ammonium polyphosphate as flame retardants/flame inhibition additives, wherein as shown by Kaytor et al and Lenzi, such flame retardant additives are used in outer layers of the multi-layered microporous structures, and further Kaytor et al explicitly teaches the use of the flame retardants in thermally-induced phase separated and fibrillated microporous polyethylene-based articles, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kaytor et al, Pullinger et al, Lenzi and Parrinello et al in view of Hoshuyama et al, and to use, or obvious to try to use, all of aluminum trihydrate, expandable intercalated graphite and ammonium polyphosphate as fillers in the thermally-induced phase separated fibrillated microporous material of Parrinello et al in view of Hoshuyama et al, so to further improve flame retardant properties of the microporous article of Parrinello et al in view of Hoshuyama et al as well, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 1, 21, 22, 26). It would have been further obvious to a one of ordinary skill in the art to introduce, or obvious to try to introduce said flame retardant aluminum trihydrate, expandable intercalated graphite and ammonium polyphosphate additives in the outer layers of the multi-layered microporous structure of Parrinello et al in view of Hoshuyama et al, so to further improve flame retardant properties of the multi-layered microporous structure of Parrinello et al in view of Hoshuyama et al as well (as to instant claims 5-7). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
31. Thus, the microporous material/composite of Parrinello et al in view of Hoshuyama et al, Kaytor et al, Pullinger et al, Lenzi comprises thermally-induced phase separated UHMWPE matrix comprising the same fillers as claimed in instant invention, including clay, vermiculite, graphite, metal oxide, aluminum trihydrate, and expandable intercalated graphite particles distributed thought the matrix in the amount as claimed in instant invention, wherein the composite is in the form of fibrils, wherein Lenzi explicitly teaches that when ammonium polyphosphate or expandable intercalated graphite are exposed to high temperatures, they expand, i.e. are acting as a blowing/expanding agents, therefore, in the microporous composite of Parrinello et al in view of Hoshuyama et al, Kaytor et al, Pullinger et al, Lenzi the UHMWPE fibrils will intrinsically and necessarily, at least partially, adhere directly to said filler particles, as well, thereby corresponding to the “porous phase-separated polymeric network structure” as claimed in instant invention, and the microporous composite of Parrinello et al in view of Hoshuyama et al, Kaytor et al, Pullinger et al, Lenzi will intrinsically and necessarily expand when exposed to higher temperatures, such as by at least 50% over its initial volume when exposed to temperatures greater than 135⁰C, as claimed in instant invention as well (as to instant claims 1, 22-24). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
32. Claims 1-2, 4-7, 21-23, 25-29 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,866,565 in view of Ahn et al (WO 2018/164454, based on US equivalent US 11,502,372), Nagao (US 2018/0233726) and Kim et al (US 2018/0114967).
33. The rejection is adequately set forth on pages 25-32 of an Office action mailed on May 1, 2025 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
34. As to amended claims 1 and 22, and new claims 25-29,
US 11,866,565 claims the particles being at least one (i.e. maybe used in combination) of aluminum hydroxide (i.e. aluminum trihydrate corresponding to thermally-conductive particles) and further clay, intercalated graphite (corresponding to intumescent particles). The polymer matrix has a porosity of at least 5% (as to instant claims 1, 22); density of at least 0.3 g/cc (as to instant claim 2).
The polymer network has a phase-separated structure (as to instant claims 1, 22). The polymer matrix includes ultra-high molecular weight polyethylene with molecular weight of 5x104 to 1x107 g/mol (as to instant claims 4, 28-29).
35. Further, Ahn et al discloses a porous film comprising:
A) a polyethylene having MFR of as low as 0.001 g/10 min (col. 6, lines 20-23), i.e. a UHMWPE and
B) 5-40%vol of pore-forming particles (col. 7, lines 65-col. 8, line 2),
wherein the porous film comprises fibril structure with pores (Abstract; col. 3, lines 25-30),
wherein the pore-forming particles comprises silicon nitride, boron nitride (corresponding to thermally-conductive particles).
Response to Arguments
36. Applicant's arguments filed on May 22, 2026 have been fully considered but they are moot in light of the new grounds of rejections and the discussion set forth above.
37. With respect to Applicant’s arguments regarding the unexpected results of instant invention, it is noted that:
1) Instant claim 1 is as follows:
A (co)polymer matrix composite comprising:
a porous phase-separated (co)polymeric network structure; and
a plurality of thermally-conductive particles and a plurality of intumescent particles distributed within the (co)polymeric network structure,
the thermally-conductive particles having a different composition from that of the intumescent particles, wherein the thermally-conductive particles comprise at least one of electrically non- conductive particles or electrically-conductive particles, further wherein
the electrically non-conductive particles are ceramic particles selected from the group consisting of
boron nitride,
silicon carbide,
metal oxides,
metal nitrides, and combinations thereof,
the electrically-conductive particles are carbon particles selected from the group consisting of
graphite and graphene,
or
metal particles selected from the group consisting of
copper, silver, and combinations thereof,
the intumescent particles comprise at least one of
intercalated graphite,
ammonium polyphosphate,
clay, or
vermiculite,
wherein the (co)polymer matrix composite has a porosity in a range from 5 to 20 percent, wherein the thermally-conductive particles and the intumescent particles are present in a range from 15 to 99 weight percent of the (co)polymer matrix composite,
wherein the (co)polymer matrix composite volumetrically expands by at least 50% over its initial volume when exposed to at least one temperature greater than 135°C, wherein the porous phase-separated (co)polymeric network structure comprises an interconnected network of (co)polymeric fibrils adhered directly to the thermally-conductive particles and the intumescent particles.
Thus, instant claim 1 is very broad and includes enormous number of combinations of very different thermally conductive particles with various intumescent particles, using any kind of polymer network.
2) Instant claim 22 is even broader than instant claim 1, since does not cite any amounts of the enormous number of combinations of very different thermally conductive particles with various intumescent particles, and does not specify the porous matrix being phase separated.
3) Further, no properties of the composite, except the level of expansion at temperature greater than 135⁰C, has been cited in instant claims 1, 22, 24.
4) On the other hand, no substantial evidence of unexpected results of instant invention has been provided by instant specification.
Thus, the specific examples 1-4 presented in instant specification are based on the very specific combinations of the specific UHMWPE as the matrix with:
1) Example 1A-1C: boron nitride, particulate carbon and calcium sulfate dihydrate (as endothermic particles claimed in instant claim 24 only); no citation of ammonium polyphosphate, clay, vermiculite or intercalated graphite as intumescent particles.
2) Examples 2A-2C: copper, expandable graphite and particulate carbon;
3) Examples 3A-3C: boron nitride, particulate carbon, expandable graphite;
4) Examples 4A-4B: boron nitride, expandable graphite,
Wherein the cited components were used in the very specific amounts.
No level of expansion has been cited for the above examples.
No comparative examples are provided.
5) Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results as presented by the above examples of instant specification.
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.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
38. With respect to two Declarations under 37 CFR 1.132 filed on May 22, 2026, it is noted that:
1) As confirmed by Applicant, thermally-induced phase separation (TIPS) method for making porous structure/membranes is well-known in the art.
2) Regarding the data for “Remade Samples”, it is noted that:
i) the Declaration by Alexander Misura states that the remade samples were the same as described in instant specification. However, the thickness and thermal conductivity of said examples shown in the Declaration are different from those cited in instant specification; therefore, it is not clear how those examples were “remade by following the procedures described in application”.
Thus, for Example 1B of instant specification thermal conductivity is cited as 0.455 W/m.K ([00180] of instant specification), whereas thermal conductivity for example 1B of the Declaration is 0.307 W/m.K.
For Example 1C of the specification thermal conductivity is cited as 0.568 W/mK ([00182] of instant specification), whereas thermal conductivity for Example 1C of the Declaration is cited as 0.478 W/m.K.
ii) Further, comparing the data for examples provided in the Declaration, it is noted that, for Examples 1-1C the thickness, density and thus porosity are totally different, therefore, the thermal conductivity values are different; there is no evidence of direct correlation between the porosity and thermal conductivity. Thus, Example 1 has higher porosity and lower thermal conductivity that Example 1B, however, Example 1C has higher porosity and higher thermal conductivity that Example 1B. Therefore, there is no substantial evidence that “samples having porosities within 5-20% exhibit higher measured thermal conductivity than corresponding higher-porosity unexpanded samples”, as cited in the Declaration. Further, Examples 1B and 1C have very close thickness (53.6mil and 57 mil), and thereby more comparable, whereas Example 1 has thickness two times higher: 106.5 mil.
iii) Furthermore, instant claims do not even mention thermal conductivity of the claimed matrix composite, and as cited in paragraph 37 above, Examples 1, 1B, 1C, 3, 3B, 3C, 4, 4B of instant specification and cited as “remade” in the Declarations are very specific examples, whereas the scope of instant claims is significantly broader than those specific examples.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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