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 .
The lined out IDS item is already of record.
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 1,5,9-12,14,16-19 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over JP2016023290.
The reference exemplifies (#4,5) blends of 100 parts polycarbonates, 16.9 parts boron nitride, 6.8 parts PX-200 or FP-110, 1.7 parts PTFE, 30.4 parts talc, 8.4 parts S2001, 0.25 AX-71 and various additives.
PX-200 is a diphosphate meeting applicant’s “B” (see page 80 of the Bergman article in Environment International). FP-110 is a phosphazene (table 1). Both qualify as applicant’s “B”.
S2001 is inherently a graft of a siloxane (see col 12 line 57 of Nodera 6150443). Although present in only 8.4 parts instead of applicant’s minimum of 9 parts, the reference (paragraph 106) teaches 7-20 parts. A minimal increase from 8.4 to 9 parts would have been obvious - meeting applicant’s “C”.
PTFE is applicant’s “E”.
The polycarbonates of these examples are presumably made from bisphenol A instead of methylated bisphenol A. However, the reference (paragraph 20) teaches 2,2-bis(3-methyl-4-hydroxyphenyl)propane may be used in lieu of bisphenol A.
It would have been obvious to use any polycarbonate within the reference’s teachings in a composition corresponding to examples 4 or 5.
In regards to applicant’s dependent claims:
AX-71 (table 1) is applicant’s preferred acid of claim 10.
Applicant’s VOF4, heat emission and Ds values of claims 11,12,14 and 30 are not reported. However, given the reference suggests all of applicant’s material and amount limitations, presumably the same properties would result.
The ratio of diphosphate + silicone graft to talc is 15.2/30.4 or 0.50. meeting applicant’s claim 17.
The amount of filler (ie talc) can vary from 15-50pph polycarbonate. An amount of 25pph or less would meet applicant’s diphosphate + silicone graft to talc ratio of claim 19.
Additionally, the polycarbonate may be branched (paragraph 15) – meeting applicant’s claim 28.
Claims 1,5,9-12,14,16-19 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over JP2016023290 in view of Uchimura 2013/0030094.
J’290 applies as explained above.
J’290 suggests the polycarbonate be made from methyl substituted BPA, but doesn’t point specific advantages of these methyl substituted bisphenols.
Uchimura (paragraph 102,103) teaches polycarbonates from these methyl substituted bisphenols improves flame retardancy.
It would have been obvious use polycarbonate made from 2,2-bis(4-hydroxy-3 methylphenyl)propane as J’290’s polycarbonate in the cited example for the expected improvement in flame retardancy.
Applicant's arguments filed 11//6/25 have been fully considered but they are not persuasive.
Applicant argues that JP2016023290 lacks any examples having 9-20 parts of the silicone graft (C).
This is not convincing. A reference is not limited to what is shown in the examples. Nonpreferred embodiments constitute prior art (MPEP 2123 II.). Furthermore, the exemplified amount (8.4 parts) is so close to applicant’s minimum (9 parts) that a prima facie case of obviousness exists even without the reference’s general teachings of higher amounts (MPEP 2144.05 I.; Titanium Metals v Banner 227USPQ773,779).
Nodera’s teachings regarding the amount of silicone graft does not cancel the explicit teachings of JP2016023290.
The fact that the cited examples use a BPA based polycarbonate instead of dimethyl BPA based polycarbonate does not preclude an obvious rejection. JP2016023290 actually names dimethyl BPA type polycarbonate as a suitable polycarbonate. Applicant bears a heavy burden to overcome this strong case of obviousness.
Superiority of dimethyl BPA polycarbonate is expected and therefore motivates its selection as the polycarbonate. The secondary reference (Uchimura paragraph 102,103) clearly teaches dimethyl BPA type polycarbonates are superior to BPA type polycarbonates in terms of flame retardancy. Simply because applicant chooses to measure (and claim) flame retardancy by alternative tests (smoke generation Ds; heat release) is no reason for patentability.
Applicant's amendment requiring a minimum of 9 parts “C” 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 DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 12/22/25