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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed 13 October 2025, with respect to rejections under 35 U.S.C. § 112(b) have been fully considered and are persuasive. Applicant has amended the claims such that the preferable language has been removed and the rejections have been overcome. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Applicant's arguments filed 13 October 2025 have been fully considered but they are not persuasive.
Applicant argues that the new limitations of greater than 0.3 to 0.8% would not be obvious to a person having ordinary skill in the art from the art of record because the art of record does not note the unexpected improvements within this range. However, this argument is not persuasive for a couple reasons. Firstly, there examples are all drawn to Rimar whereas the claim is drawn to a C1-16 alkyl sulfonate salt flame retardant. This claimed scope is significantly broader than the exemplary Rimar salt compound found in the examples and arguments.
Additionally, the applicant fails to show results above 0.8 to indicate that the unexpected results are an effect of a range and not just different properties with increased loading. Similarly, the applicant argues that 0.3% is insufficient due to the rating of V2. However, there is no indication that anything between 0.3 and 0.4 must have a V0 rating. Accordingly, the arguments drawn to unexpected results are not found persuasive since they are not commensurate in scope with the instant claims.
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 1-12 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Mee et al. (WO 2018/020425, from the IDS dated 3 June 2022, hereinafter referred to as “Van Der Mee”).
As to Claims 1-4, 9, 16-17: Van Der Mee teaches a composition comprising a high heat polycarbonate that can comprise bisphenol A units and contains 20-40 ppm of an organosulfonic stabilizer (Abstract). Van Der Mee further teaches in example 79 a composition containing 63.7 wt. % CPC-2 (i.e., a high heat copolycarbonate comprising N-phenyl phenolphthalein bishenol), two types of bisphenol A , butyl tosylate as an organosulfonic stabilizer, rimar salt (i.e., potassium perfluorbutane sulfonate as a C1-16 alykl sulfonate salt flame retardant) (Table 12, Example 79, [0131].
Van Der Mee does not explicitly teach an example wherein the rimar salt is present in an amount of greater than 0.3 to 0.8 wt. %.
However, Van Der Mee teaches that the flame-retardant salts can be present in an amount of 0.01 to 1.0 wt. % [0057]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use any amount of the flame-retardant salts from the teachings of Van Der Mee including greater than 0.3 to 0.8 wt.% because Van Der Mee teaches that these are acceptable amounts of flame-retardant salts.
Van Der Mee does not expressly teach a molded sample of the flame-retardant composition has a UL 94 rating of V0 at a thickness of 1.5 millimeter, and a transmission greater than 80% at a thickness of 1.0 millimeter, or a haze of less than 2% at a thickness of 1.0 millimeter. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Van Der Mee teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the claimed properties are a result of the composition and not from any additional unclaimed components or process steps. Therefore, the claimed effects and physical properties, i.e. a molded sample of the flame-retardant composition has a UL 94 rating of V0 at a thickness of 1.5 millimeter, and a transmission greater than 80% at a thickness of 1.0 millimeter, or a haze of less than 2% at a thickness of 1.0 millimeter, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). 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 as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 5: Van Der Mee teaches the composition of claim 1 (supra).
Van Der Mee does not teach the specifically teach the ratio of PPPBP to rimar salt is 0.005-0.017.
However, Van Der Mee teaches that the flame retardant can be added in an amount of 0.02 wt.%-1.0 wt.% [0057]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use any of the amounts taught by Van Der Mee for the amount of the flame retardant including the ratio of PPPBP to rimar salt is 0.005-0.017 because Van Der Mee teaches the amount of Rimar salt is particularly useful in this amount [0057].
As to Claim 6 and 7: Van Der Mee teaches the composition of claim 1 (supra). Van Der Mee further tyeaches the composition contains a phosphite compound AO-1 (Table 1, Table 12, Example 79
As to Claim 8: Van Der Mee teaches the composition of claim 1 (supra). Van Der Mee further teaches an example without the homopolymer and using 98.83% of the high heat copolymer with the remainder as additive (Example 84, Table 4, [0131].
As to Claim 10: Van Der Mee teaches the composition of claim 1 (supra). Van Der Mee further teaches that one of the polycarbonate homopolymer is a bisphenol A polycarbonate having a MW of about 21,800 (PC4, Table 1, Table 12, Example 79)
As to Claim 11: Van Der Mee teaches the composition of claim 1 (supra). Van Dee Mee further teaches the amount of chlorine and bromine is 2 ppm or less each (Abstract).
As to Claim 12: Van Der Mee teaches the composition of claim 1 (supra).
Van Der Mee does not expressly teach a molded sample of the flame-retardant composition has a heat deformation temperature greater than 155°C using a 5.5 joule hammer on a 4-millimeter-thick sample bar and a load of 1.8 megapascals. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Van Der Mee . However, Van Der Mee teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the claimed properties are a result of the composition and not from any additional unclaimed components or process steps. Therefore, the claimed effects and physical properties, i.e. a molded sample of the flame-retardant composition has a heat deformation temperature greater than 155°C using a 5.5 joule hammer on a 4-millimeter-thick sample bar and a load of 1.8 megapascals, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). 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 as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claims 1-8, 10-12, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2014/0295363, hereinafter referred to as “Sun”).
As to Claims 1, 2, and 16-17: Sun teaches an example composition comprising 60 parts 48% PPPBP (i.e., a high heat copolycarbonate derived from N-phenyl phenolphthalein bisphenol), 40 parts bisphenol A, and 0.08 parts rimar salt (i.e., potassium perfluorobutane sulfonate, a C1-16 alkyl sulfonate salt flame retardant) (Example 2-2, Table 2, [0137]).
Sun does not teach an example wherein the C1-16 alkyl sulfonate salt flame retardant is present in an amount of greater than 0.3 to 0.8 wt%.
However, Sun teaches that the flame retardant can be added in an amount of 0.02 wt.%-1.0 wt.% [0117]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use any of the amounts taught by Sun for the amount of the flame retardant including greater than 0.3 to 0.8 wt.% of the composition [0117].
Sun does not expressly teach a molded sample of the flame-retardant composition has a UL 94 rating of V0 at a thickness of 1.5 millimeter, and a transmission greater than 80% at a thickness of 1.0 millimeter, or a haze of less than 2% at a thickness of 1.0 millimeter. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the claimed properties are a result of the composition and not from any additional unclaimed components or process steps. Therefore, the claimed effects and physical properties, i.e. a molded sample of the flame-retardant composition has a UL 94 rating of V0 at a thickness of 1.5 millimeter, and a transmission greater than 80% at a thickness of 1.0 millimeter, or a haze of less than 2% at a thickness of 1.0 millimeter, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). 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 as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 3: Sun renders obvious the composition of claim 1 (supra). Sun further teaches the composition contains bisphenol A units (Table 2, Example 2-2, [0137]).
As to Claim 4: Sun renders obvious the composition of claim 1 (supra). Sun further teaches that the PPPBP is present in an amount of 48% of the high heat copolymer (Table 2, Example 2, [0137]).
As to Claim 5: Sun renders obvious the composition of claim 1 (supra). Sun teaches that the high heat copolymer comprises PPPBP (i.e., a high heat copolycarbonate derived from N-phenyl phenolphthalein bisphenol), rimar salt (i.e., potassium perfluorobutane sulfonate, a C1-16 alkyl sulfonate salt flame retardant) (Example 2-2, Table 2, [0137]).
Sun does not teach the specifically teach the ratio of PPPBP to rimar salt is 0.005-0.017.
However, Sun teaches that the flame retardant can be added in an amount of 0.02 wt.%-1.0 wt.% [0117]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use any of the amounts taught by Sun for the amount of the flame retardant including the ratio of PPPBP to rimar salt is 0.005-0.017 because Sun teaches the amount of Rimar salt affects the transmission and haze [0137].
As to Claims 6 and 7: Sun renders obvious the composition of claim 1 (supra). Sun further teaches that the composition can contain other additives such as organophosphite [0120].
As to Claim 8: Sun renders obvious the composition of claim 1 (supra).
Sun does not teach an example wherein the C1-16 alkyl sulfonate salt flame retardant is present in an amount of 0.1-0.8 wt% and an additive in an amount of 0.1-3 wt.%.
However, Sun teaches that the flame retardant can be added in an amount of 0.02 wt.%-1.0 wt.% [0117] and additional additives can be added in an amount of up to 1 part by weight [0120]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use any of the amounts taught by Sun for the amount of the flame retardant including 0.1-0.8 wt.% of the composition [0117].
As to Claim 10: Sun renders obvious the composition of claim 1 (supra). Sun teaches the composition contains bisphenol A with a molecular weight of 29,900 [0135].
As to Claim 11: Sun renders obvious the composition of claim 1 (supra). Sun further teaches that the composition does not contain any bromine and/or chlorine molecules [0116].
As to Claim 12: Sun renders obvious the composition of claim 1 (supra).
Sun does not expressly teach a molded sample of the flame-retardant composition has a heat deformation temperature greater than 155°C using a 5.5 joule hammer on a 4-millimeter-thick sample bar and a load of 1.8 megapascals. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the claimed properties are a result of the composition and not from any additional unclaimed components or process steps. Therefore, the claimed effects and physical properties, i.e. a molded sample of the flame-retardant composition has a heat deformation temperature greater than 155°C using a 5.5 joule hammer on a 4-millimeter-thick sample bar and a load of 1.8 megapascals, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). 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 as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2014/0295363, hereinafter referred to as “Sun”) in view of Hachiya et al. (US 2004/0225047, hereinafter referred to as “Hachiya”).
As to Claim 9: Sun renders obvious the composition of claim 1. Sun further teaches that the composition can include heat stabilizers.
Sun does not teach the presence of an organosulfonic stabilizer comprising a C1-10 alkyl ester of a C7-12 alkylarylene sulfonic acid.
However, Hachiya teaches that butyl p-toluenesulfonate is a known heat stabilizer for use in polycarbonate resins [0126]. Sun and Hachiya are analogous art in that they are from the same field of endeavor, namely polycarbonate resin compositions. At the time of filing, it would have been obvious to use the butyl p-toluenesulfonate of Hachiya as the heat stabilizer in Sun because Hachiya teaches that butyl p-toluenesulfonate is a known heat stabilizer for use in polycarbonate resins and it would be obvious to use it as a functional equivalent to the teachings of Sun [0126].
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 ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/ Primary Examiner, Art Unit 1767