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 .
This Office Action is in response to Applicant’s amendments and remarks filed August 21, 2025.
The Double Patenting rejection of Claim 6 is withdrawn due to Applicant’s cancellation.
Claims 6 and 8 are cancelled.
Claims 1-5, 7, and 9-10 are rejected.
This Action is FINAL.
Claim Analysis
Summary of Claim 1:
A polymeric composition comprising:
a silane functionalized polyolefin;
a brominated flame retardant having a Temperature of 5% Mass Loss from 300°C to 700°C as measured according to Thermogravimetric Analysis,
wherein the brominated flame retardant is polymeric and has a weight average molecular weight of from 1,000 g/mol to 30,000 g/mol as measured using Gel Permeation Chromatography; and
antimony trioxide,
wherein the polymeric composition has an antimony (Sb) to bromine (Br) molar ratio (Sb:Br molar ratio) of 0.35 to 0.98.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 7, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mundra et al. (WO 2019032335 as listed on IDS dated October 11, 2025).
Regarding claim 1, Mundra et al. disclose in Inventive Ex 5 a composition comprising a silane functionalized polyolefin (DFD1-5451), a brominated flame retardant (Emerald Innovation 1000), and antimony trioxide (Microfine AO9) (Table 1 and 2). Emerald Innovation 1000 has a temperature of 5% mass loss of 410°C as evidenced in the data sheet provided in this office action, thereby lying within the claimed range. The molar ratio of antimony (Sb) to bromine (Br) is calculated to be 0.937, thereby lying within the claimed range.
Mundra et al. is silent on the weight average molecular weight, temperature of 5% mass loss, of the brominated flame retardant used in Inventive Ex 5.
However, Mundra et al. broadly teach the weight average molecular weight of the brominated flame retardant is greater than 1000 g/mol (claim 1) and the temperature of 5% mass loss is at least 200°C [0052], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the ranges taught by Mundra et al.
Regarding claim 2, Mundra et al. disclose the composition of Inventive Ex 5 comprises 5% of a catalyst masterbatch (Table 2).
Mundra et al. is silent on the amount of silanol condensation catalyst in the example.
However, Mundra et al. broadly teach the amount of silanol condensation present in the composition is between 0.01 to 20 wt% (claim 1), thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the range taught by Mundra et al.
Regarding claim 3-5 and 7, Mundra et al. disclose the composition of Inventive Ex 5 comprises 45 weight% of a silane polyolefin, 10 wt% of antimony trioxide, and 0 wt% of zinc oxide and a Zn:Br molar ratio of 0, and 7.5 wt% of a brominated flame retardant, thereby lying within the clamed ranges.
Regarding claim 9 and 10, Mundra et al. disclose the composition of Inventive Ex 5 is used to coat a wire sample [00115-00117], thereby reading on the instant claim.
Regarding claim 10, Mundra et al. disclose Inventive Ex 5 passes the Horizontal Burn test (Table 3), thereby reading on the instant claim.
Response to Arguments
Applicant's arguments filed August 11, 2025 have been fully considered but they are not persuasive.
Applicant states “compositions containing brominated flame retardants within the claimed range, such as IE1-IE7 (Mw of about 4,700 g/mol), pass VW-1 and horizontal burn tests, while comparative compositions CE1-CE6 containing higher molecular weight flame retardants (e.g., 170,000 g/mol and 264,000 g/mol) fail these tests due to poor dispersion and thermal instability.”
Applicant’s argument is not persuasive because the relied-upon data do not support Applicant’s conclusions. Applicant has not provided sufficient data showing that either the upper or lower limit of the weight average molecular weight is critical. Applicant relies on a single example (BRFR 3010 having a weight average molecular weight of 4,700 g/mol) to support its assertion that the claimed ranges are critical. It is not clear from BRFR 3010 that either the upper or lower limits of the weight average molecular weight of the brominated flame retardant are indeed critical. For example, CE6 comprises BRFR 3000 which has a weight average molecular weight of 170,000 g/mol. While it appears the critical upper limit is somewhere between 4,700 g/mol and 170,000 g/mol, it is not clear what the upper limit actually is. Without more data points, the examiner is unpersuaded that the claimed upper limit of 16,000 g/mol is indeed critical. Similar points can be made for the lower limit of the weight average molecular weight. Simply put while the claimed ranges may indeed be critical, Applicant has not persuasively shown that is the case.
Furthermore, Mundra et al. do teach the general ranges as recited in the rejection for claim 1 and is therefore rendered obvious.
Applicant states “In contrast, Mundra discloses a molecular weight range that spans three orders of magnitude… The only specific molecular weight disclosed in Mundra's examples is for Emerald Innovation 3000, which has a stated molecular weight between 100,000 and 160,000 g/mol.”
While the Office generally agrees that Mundra et al. disclose a preferred substitution pattern that is different from the pattern of the present claims, the Office respectfully disagrees that such a disclosure constitutes a teaching away. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." (In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).) Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP 2123 (II) (citing In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." (In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).) Thus, although Mundra et al. may disclose a preferred embodiment of the recited compound, such a disclosure does not teach away from the broader disclosure and the teachings of the nonpreferred embodiments.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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