Notice of 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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/21/26 has been entered.
Response to Arguments
Applicants arguments and amendments, filed on 1/21/26, have been fully considered but they do not confer patentability on the instantly filed claims. No claim amendments have been made. Instead, Applicants traverse the prior art rejection to Wagner et al. (US 2018/0298189) in view of Lechner et al. (US 2006/0025508) and all previous responses to arguments made by the Office to Applicants, which are already of record.
Applicants argue that according to MPEP 2164.02, a single example suffices when the specification discloses a general quality running through the class that gives it a peculiar fitness for the intended purposes. However, the exact language in the relevant section of MPEP 2164.02 states that “A single working example in the specification for a claimed invention is enough to preclude a rejection which states that nothing is enabled since at least the embodiment would be enabled.” There are no outstanding enablement rejections in this application and this argument is not found to be persuasive.
Applicant argue that the combination of Wagner et al. and Lechner et al. “lacks a proper motivation to combine the references and fails to establish a reasonable expectation of success in achieving the claimed result-namely, improved flame retardancy in thin-walled thermoplastic molding compositions through the use of a specific polar-modified polyolefin wax as claimed.”1 Applicants argue that the Examiner’s rationale appears to assume that the wax disclosed by Lechner et al., which is taught as a processing aid, would inherently improve flame retardancy when added to Wagner’s flame-retardant compositions. No such position has been put forth by the Office. Further, the motivation to combine Wagner et al. and Lechner et al. has been provided in the rejection of record. The language of the rejection has been modified in this Office action to further make this point. Therefore, Applicants argument is not found to be persuasive.
Applicants cite MPEP 2143.41 that the Examiner has failed to show a reason to combine the prior art teachings of Wagner and Lechner. The prior art reference Lechner, in the Office’s view, provides for a compelling argument for one having ordinary skill in the art to include the superior mold release agents taught by Lechner et al. to the compositions of Wagner et al. The language of the rejection has been modified to further make this point. Therefore, Applicants argument is not found to be persuasive.
Applicants further argue that the Office has not demonstrated that the claimed “maleic anhydride metallocene polyethylene wax2--was known in the art to improve flame retardancy, nor that its use in the claimed concentration range (e.g., 0.07-0.7 wt%) was predictable of suggested by the prior art”. Applicants additionally argue that the combination of Wagner et al. and Lechner et al. do not teach or suggest to one having ordinary skill in the art that the addition of the polyolefin waxes taught by Lechner et al. would render the composition more flame retardant. The most relevant piece of case law which is supported by the MPEP which applies to the two arguments presented above is In re Lintner (458 F.2d 1013, CCPA 1972). In re Lintner is a foundational case for the principle that a chemical composition can be obvious even if the Applicant discovers a new, “surprising” property, provided that the combination of ingredients was already suggested by the prior art for other reasons. The court held that “obviousness of a nature of a composition” is not determined solely by whether the Applicant’s discovered property is found in the prior art. Instead, it is determined by whether the combination of ingredients would have been obvious to a person of ordinary skill in the art. In simpler terms, if a prior art reference A provides sufficient reason/motivation to add ingredient X to composition Y taught in the prior art by reference B, the resulting mixture is likely obvious, even if Applicants discover that that the resulting composition has properties that the prior art does not mention.
Even if it was conceded that the polyolefin waxes provides an unexpected improvement in flame retardancy, the combination of Applicants claimed polyolefin wax with the remaining ingredients in independent claim 1 was already suggested by the prior art that the inclusion of component (G) to the compositions taught by Wagner et al. displays improved mold release, color action, flow improvement, and notched impact resistance compared to the mold-release agents taught by Wagener et al. Under In re Lintner, the discovery of an additional advantageous property does not render an otherwise obvious combination patentable.
Applicants further argue that only through the use of impermissible hindsight would one skilled in the art pick and choose through the art to make all of the selections necessary to give the present invention. This argument is not found to be persuasive. First, the notion that Wagner et al. teaches many types of additives alone does not provide disincentive to one having ordinary skill in the art to explore the addition of such additives, particularly when the prior art provides motivation for doing so. Second, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Further, Applicants allegation of unexpected results must be commensurate in scope with the claimed invention. See MPEP 716.02(d). Applicants claimed invention encompass a wide variety of embodiments, but the “unexpected results” are only demonstrated for one specific example. The claims include several components which by themselves cover a vast genus with each component covering moderate to in most cases, a vast numerical range. This also applies to the key ingredient in Applicants argument of unexpected results, which is component (G). Component (G) as claimed reads on many hundreds, if not more, types of polyolefin waxes. It certainly cannot be said that all possible waxes which fall under component (G) as claimed at every value between 0.05 to 1 wt% (based on the entire composition) would display Applicants allegation of improved flame retardancy. Further, component (E), which is not present in Applicants one working example, is a nitrogen-containing flame retardant. Would it not be possible that the inclusion of component (G) to a composition comprising, say, 15% of a nitrogen-containing flame retardant would not improve flame retardancy of the composition since it already comprises a flame-retardant? This is one of many open-ended questions which could be asked which renders further experimentation before one could state with any degree of certainty that the claimed invention is commensurate in scope with the allegation of unexpected results.
Last, the double patenting rejection is wholly maintained for the same reasons described above for the rejection of Wagner et al. in view of Lechner et al. as well as those reasons already of record.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wagner et al. (US 2018/0298189) in view of Lechner et al. (US 2006/0025508).
Claims 1, 2, 18, and 19: Wagner et al. teaches and claims a thermoplastic molding composition comprising (A) from 10 to 99% by weight of a thermoplastic polyester, (B) from 0.1 to 30 wt% of a poly(e-caprolactone), (C) from 0.1 to 30 wt% of a biodegradable polyester wherein polyesters (A), (B), and (C) are all different from each other. The thermoplastic molding compositions taught by Wagner et al. further comprise (D) from 0.1 to 30 wt% of a phosphinic salt, (E) from 0 to 20 wt% of a nitrogen-containing flame retardant, (F) from 0 to 15 wt% of an aromatic phosphate ester having at least one alkyl-substituted phenyl ring, and (G) from 0 to 50 wt% of further additional substances, where the sum of percentages by weight of components (A) through (G) is 100%. Components (A) through (G) of Wagner et al. are the same as components (A) through (F) and (H), respectively of independent claim 1.
Wagner et al. additionally teaches that up to 1 wt% of lubricants and mold-release agents may be included with preference given to those waxes taught in paragraph 0186. The waxes recited in paragraph 0186 include low-molecular-weight polyethylene and low-molecular-weight polypropylene waxes, montan waxes and calcium stearate. While Wagner et al. does not explicitly teach adding a polyolefin wax which is polar modified by reacting the polyolefin wax with an a,b-unsaturated carboxylic acid (recited as component (G) of independent claim 1), one having ordinary skill in the art wound have found it obvious to have included such a polyolefin wax given the teachings of Lechner et al. Lechner et al. is directed to the use of polyolefin waxes which are employed as a processing aid or a dispersing aid to polycondensates including polyesters
Wagner et al. teaches polyester-based flame-retardant molding composition and explicitly suggests the inclusion of various lubricants to aid in processing. Lechner et al. teaches the specific use of component (G) with polyesters. It would have been obvious to a person having ordinary skill in the art at the time of the invention to utilize the lubricant taught by Lechner et al. in the compositions of Wagner et al., because Wagner et al. discloses the employment of lubricants and Lechner et al. confirms that component (G) as a lubricant is effective for the very polymers used in Wagner et al. (polybutylene terephthalate). Further, Lechner et al. has recognized that the lubricant employed in the working examples therein, have improved properties compared to the comparative lubricants employed therein. The comparative lubricants include many of the same lubricants which are disclosed by Wagner et al. This makes the teachings of Lechner et al. more compelling regarding the addition of the inventive lubricants taught therein to the compositions taught by Wagner et al. The fact that Lechner et al is silent as to the flame retardancy is not dispositive, as the motivation to include the lubricant is driven by the processing requirements taught in Wagner, leading to the predictable result of a lubricated, flame-retardant composition.
Regarding the amount of lubricant, Wagner et al. teaches that up to 1 wt% may be employed. The beneficial properties observed in the compositions disclosed by Lechner et al. comprise 0.3 wt% of lubricant (paragraph 0050), which falls within the up to 1 wt% range disclosed by Wagner et al. For this reason, it would have been obvious to one having ordinary skill in the art to employ the lubricants disclosed by Lechner et al., including TP Licocene PE MA 4221 (which is one out of two inventive lubricants disclosed therein), in an amount of 0.3 wt%, which falls within the 0.05 to 1 wt% range of component (G) of claim 1 and within the 0.07 to 0.7 wt% range of claim 18. The wax TP Licocene PE MA 4221 is a maleic anhydride-grafted metallocene polyethylene wax satisfying claim 19.
Claims 3 and 16: Wagner et al. teaches that component (A) is based on aromatic dicarboxylic acid and based on an aliphatic or aromatic dihydroxy compound (paragraph 0013) which satisfies claim 3 and the exemplified thermoplastic polyester (A) is polybutylene terephthalate which satisfies claim 16.
Claims 4 and 17: Component (C) of Wagner et al. is preferred to be those which satisfy the limitations of claim 4 (paragraph 0071). Wagner et al. further teaches that preferred polyesters as component (C) are polybutylene adipate terephthalate (PBAT) and polybutylene sebacate terephthalate (PBSeT) (paragraph 0079) which satisfies claims 4 and 17.
Claims 5 and 6: Component (D) of Wagner et al. is taught to be a phosphinic salt of formulae (I) and (II), or polymers therefrom (paragraph 0089) and that it is preferred that R1 and R2 are preferably hydrogen, methyl, and ethyl, which satisfies claims 5 and 6.
Claim 7: Wagner et al. teaches that component (E) is a reaction product of melamine and cyanuric acid or isocyanuric acid thereby satisfying claim 7 (paragraph 0100).
Claims 8-11: Wagner et al. employs the compound recited in claim 11 in the working examples, which is taught as having a melting point of 95 °C, thereby satisfying component (F) of claims 8-11 (paragraph 0210).
Claims 12 and 13: The exemplified thermoplastic compositions of Wagner et al. are used to prepare moldings which satisfies the limitations of claims 12 and 13.
Claim 14: The rejection of claim 1 above is wholly incorporated into the rejection of claim 14. The combined teachings of Wagner et al. and Lechner et al. render obvious to one having ordinary skill in the art the preparation of a composition which includes components (A) through (D) and a polyolefin wax according to claim 14 for reasons described in claim 1 above. The preparation of such a composition would require mixing said polyolefin wax with the other components of the compositions taught by Wagner et al. Such a mixing step satisfies all of the active method steps recited in claim 14. While claim preamble states “a method for improving the flame retardancy of a thermoplastic molding composition”, the teachings of Wagner et al. in view of Lechner et al. render obvious the active step of mixing the claimed polyolefin wax with components (A) through (D) of claim 14. The claim preamble does not limit the structure of the claimed invention and is recognized as a statement of intended use, and therefore does not serve to further limit the claim. See MPEP 2111.02.
Claim 15: The thermoplastic molding compositions taught by Wagner et al. include embodiments where the thickness of the molded product is 0.4 mm (paragraph 0218). Wagner et al. additionally teaches that the desired end use for the molding compositions therein is for thin-walled parts (paragraphs 0010 and 0193). As such, Wagner et al. renders obvious to one having ordinary skill in the art the preparation of a thin-walled part where the wall thickness is at more 0.4 mm as required by claim 15. Table 2 of Wagner et al. shows a flame retardancy rating of V-0 for all exemplified compositions at a thickness of 0.4 mm.
Claim 20: The preparation of a composition comprising components (A), (C), and (D) as recited in claim 20 would have been obvious given the teachings of Wagner et al. Specifically, component (A) is exemplified to be polybutylene terephthalate, component (D) is exemplified to be diethylphosphinate, and component (C) is taught to preferably include either polybutylene adipate-co-terephthalate of polybutylene sebacate-co-terephthalate (paragraph 0079). Given this teaching, the employment of either one of these specifically taught polyesters would have been prima facie obvious, thereby satisfying claim 20.
Double Patenting
Claims 1-13, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,808,120 to Wagner et al. (which is the patent issued from pre-grant publication US 2018/0298189) in view of Lechner et al. (US 2006/0025508).
Wagner et al. claims a thermoplastic molding composition which includes the same or substantially the same claimed subject matter regarding components (A) through (F) and (G) as the instantly filed claims. Wagner et al. does not claim an ingredient satisfying component (G) of claims 1 and 2. However, the inclusion of such an ingredient in an amount of 0.05 to 1 wt% would have been obvious given the teachings of Lechner et al. The reasons for this obvious inclusion can be found in the 103 rejection of Wagner et al. in view of Lechner et al. and that obviousness type rejection is wholly incorporated into this double patenting rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S LOEWE whose telephone number is (571)270-3298. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski, can be reached at telephone number 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert S Loewe/Primary Examiner, Art Unit 1766
1 This argument applies to claim 15 only.
2 This represents one out of at least many hundreds of polyolefin waxes which fall under that scope of Applicants claimed invention.