DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a 371 of App. No. PCT/RS2021/000005, filed on 05/20/2021, which is entitled to and claims the benefit of priority of RS Patent App. No.P-2020/0594, filed 05/20/2020. The preliminary amendment filed on 11/18/2022 is entered and acknowledged by the Examiner.
3. Claims 1-10 are pending. Claims 1-10 are under examination on the merits
Information Disclosure Statement
4. The information disclosure statement submitted on 11/18/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 11/18/2022. These drawings are acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 11/18/2022 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
7. Claim 1 is objected to because of the following informalities: It is suggested that “A new two-stage process" be deleted and "A two-stage process" be inserted in its stead so as to engender claim language clarity. It is unclear what “new” was intended to convey. Appropriate correction is required.
Furthermore, it is suggested that “bioreneable" be deleted and "biorenewable" be inserted in its stead so as to engender claim language clarity. It is unclear what “new” was intended to convey. Appropriate correction is required.
8. Claims 2-9 are objected to because of the following informalities: It is suggested that “according to Claim 1, where" be deleted and "according to claim 1, wherein" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
9. Claim 10 is objected to because of the following informalities: It is suggested that “according to Claim 1" be deleted and "according to claim 1" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
10. Claim 7 is objected to because of the following informalities: It is suggested that “time of t= 0.1 - 10 hours, temperature T = 20 – 200 °C" be deleted and "time (t) of 0.1-10 hours, temperature (T) of 20-200 °C" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
11. Claim 9 is objected to because of the following informalities: It is suggested that “A method according to Claim 1, where" be deleted and "The process according to claim 1, wherein" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
12. The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
13. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. In the instant claim 1, it is not clear which components must mandatorily be mixed in Phase (1 ) (i.e., the omitted steps). It appears that the components are sometimes indicated by their function (plasticizers/modifiers, stabilizers) or as particular compound. Due to the enumeration of the different compounds in a row, it is not clear if at least one of each of these categories (plasticizers/modifiers, stabilizers) and all the other compounds mentioned by their name must be used or not. It is also not clear what falls under plasticizers and what falls under modifiers or if these two terms cover only one type of products. The instant claim 1 should recite the steps omitted from the claims. The omitted steps are: providing copolymer, mixing the copolymer with plasticizers, adding modifiers, mixing expandable graphite. Claims 2-10 being depended on claim 1 are rejected as well.
14. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “flexible expandable fire resistant materials (FEM)”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “flexible” requisite to identifying materials that combine flexibility with the ability to resist ignition and fire spread or matter claimed, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure. Claims 2-10 being depended on claim 1 are rejected as well.
15. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites the term “or modified poly(vinyl chloride-co-vinyl acetate) copolymer (m-VC-co-VAc: VC-co-VAc-co-VOMFK, VC-co-VAc-co-VOLK, VC-co-VAc-co-VOAc (EtA)n)”, and “(Ecrylic, Flexryl or DHSO etc.)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. Furthermore, the modified copolymer of poly(vinyl chloride-co-vinyl acetate): m-VC-co-VAc: VC-co-VAc-co-VOMFK, VC-co-VAc-co-VOLK, VC-co-VAc-co-VOAc (EtA)n)” are considered as simply illustrative. Should the applicant wish to limit the modified copolymer to these copolymers, then "selected from the group consisting of ... " should be used instead of the brackets. It is submitted that VOMFK, VOLK, and(EtA) have no well-known signification in the recited copolymers. The use of these terms renders the scope of the claim unclear. Claims 2-10 being depended on claim 1 are rejected as well.
16. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Regarding claim 1, the phrase "such as" (all occurrences) or “as well as“ (all occurrences) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 2-10 being depended on claim 1 are rejected as well.
17. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “until homogeneity and plasticity are achieved”, and “where the mixture was homogenized according to defined technology”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate
“homogeneity and plasticity” or matter claimed, since claim attempts to partly define the
subject-matter in terms of the result to be achieved ("until homogeneity and plasticity
are achieved"), without providing the technical features necessary for achieving this
result. Thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure. Claims 2-10 being depended on claim 1 are rejected as well.
18. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “at the laboratory and industrial level”, and “in a hot mixer until homogeneity and plasticity are achieved”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “a hot mixure” (i.e., temperature ranges), thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure. Further, the recited component cannot be mixed at the laboratory and industrial level. Claims 2-10 being depended on claim 1 are rejected as well.
19. Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 2 recites the limitation "polyvinyl chloride (PVC K70), a modified copolymer of poly(vinyl chloride-co-vinyl acetate)" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
20. Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 2 recites the term “or modified poly(vinyl chloride-co-vinyl acetate) copolymer (m-VC-co-VAc: VC-co-VAc-co-VOMFK, VC-co-VAc-co-VOLK, VC-co-VAc-co-VOAc (EtA)n)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. Claims 2-10 being depended on claim 1 are rejected as well.
21. Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 2 recites “using 10-50% by weight of polyvinyl chloride (PVC K70), a modified copolymer of poly(vinyl chloride-co-vinyl acetate)”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited amount is based on the total amount of the expandable fire-resistant material (FEM) or not, thus claim 2 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
22. Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 2 recites the limitation "copolymer of poly(vinyl chloride-co-vinyl acetate) (VC-co-VAc) in two-component mixtures with modified copolymers of poly(vinyl chloride-co-vinyl acetate)" in lines 2-4. There is insufficient antecedent basis for this limitation in the claim.
23. Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 3 recites “using 10-50% by weight of a poly(vinyl chloride-co-vinyl acetate) copolymer (VC-co-VAc)”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited amount is based on the total amount of the expandable fire-resistant material (FEM) or not, thus claim 3 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
24. Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 3 recites the limitation " a poly(vinyl chloride-co-vinyl acetate) (VC-co-VAc) copolymer" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
25. Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 4 recites the term “modified poly(vinyl chloride-co-vinyl acetate) copolymer (m-VC-co-VAc: VC-co-VAc-co-VOMFK, VC-co-VAc-co-VOLK, VC-co-VAc-co-VOAc (EtA)n)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention.
26. Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 4 recites “using 10-50% by weight of copolymers of poly(vinyl chloride-co-vinyl acetate)”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited amount is based on the total amount of the expandable fire-resistant material (FEM) or not, thus claim 4 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
27. Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 4 recites the limitation " poly(vinyl chloride-co-vinyl acetate) with modified modified poly(vinyl chloride-co-vinyl acetate) copolymer" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
28. Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 5 recites “in a hot mixer”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “a hot mixer” (i.e., temperature ranges), thus claim 5 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
29. Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 5 recites the limitation "a hot mixer" in line 2, “binders” in line 2, and “plasticizers/modifiers” in line 3. There is insufficient antecedent basis for this limitation in the claim.
30. Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Regarding claim 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
31. Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 5 recites “using 5-40% by weight of plasticizers/modifiers”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited amount is based on the total amount of the expandable fire-resistant material (FEM) or not, thus claim 5 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
32. Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 5, recites “phthalate plasticizers diisononyl phthalate - DINP, diisononyl terephthalate - DINTP, 0-20 wt% dioctyl adipate - DOA, 0-20 wt. % tri-p-cresyl phosphate (TpKP), tri-m-cresyl phosphate (TmKP), tri- o-cresyl phosphate (ToKP), 0-10 wt. % epoxidized soybean oil (ESO) or mixtures thereof”, wherein the improper phrasing of the Markush group renders the claim indefinite because it is unclear which members of the group are part of the claimed invention. Markush groups must be stated in the alternative, of which one acceptable form is “…selected from the group consisting of A, B and C.” See MPEP § 2173.05(h).
33. Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 5 recites “mass ratios of components in a mixture of 0.1: 1-1: 0.1”, wherein applicant fails to articulate by sufficiently distinct functional language, if the mass ratio based on mixing the binder with plasticizers/modifiers or mixing the binder with the species of Markush moiety, thus claim 5 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
34. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 6 recites the limitation "the production of FEM" in line 2, and “a binder” in line 2. There is insufficient antecedent basis for this limitation in the claim.
35. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 6 recites “in a warm mixer”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “a warm mixer” (i.e., temperature ranges), thus claim 6 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
36. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Regarding claim 6, the phrase “as well as" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
37. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 6 recites “mixing a binder with 5-40% by weight of bioplasticizers synthesized on the basis of biorenewable sources”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited amount is based on the total amount of the expandable fire-resistant material (FEM) or not, thus claim 6 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
38. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 6, recites “bis(S-methylfuran-2-yl)methyl) furan-2,5-dicarboxylate (b-MFFDK) or furan-2,5- diyl bis(methylene)bis(furan-2-carboxylate) (FDA-b-FDK) or furan-2,5-diyl bis(methylene)bis(4- oxopentanoate) (FDA-b-LK), as well as their mixtures”, wherein the improper phrasing of the Markush group renders the claim indefinite because it is unclear which members of the group are part of the claimed invention. Markush groups must be stated in the alternative, of which one acceptable form is “…selected from the group consisting of A, B and C.” See MPEP § 2173.05(h).
39. Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 6 recites “mass ratios of components in a mixture of 0.1: 1-1: 0.1”, wherein applicant fails to articulate by sufficiently distinct functional language, if the mass ratio based on mixing the binder with bioplasticizers synthesized on the basis of biorenewable sources or mixing the binder with the species of Markush moiety, thus claim 6 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
40. Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 5 recites the limitation "production of FEM" in line 2. There is insufficient antecedent basis for this limitation in the claim.
41. Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 8 recites the limitation "production of FEM" in line 1, and ‘homogenous mixture” in line 2, and “first phase” in line 3. There is insufficient antecedent basis for this limitation in the claim.
42. Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 8 recites the production of the FEM in Phase (I)) performed in an extruder, however since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
43. Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 6 recites “according to the following technology”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “the following technology” (i.e., retention time and temperature), thus claim 8 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
44. Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 9 recites “the obtained FEM materials have expansion coefficient 3-8 100-5/K, and unit elongation (ε) 5.1-11.8%”, wherein applicant fails to articulate by sufficiently distinct functional language, what characterization method is used to calculate the above mechanical properties as set forth, thus claim 9 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure.
45. Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 10 provides for the use method as a passive fire-resistant material used to prevent the spread of flame and air flow in openings and ducts by creating expandable barriers which serve to insulate the flame source but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Interpretation
46. Claim 1, in its entirety, constitutes indefinite subject matter in that the claim appears to house superfluous, overlapping and ambiguous subject matter including “new”, “flexible”, “such as”, “as well as”, “are achieved”, “according to defined technology”, and “was profiled”. It is suggested that applicant revamp the claim in a manner that would permit the examiner to conduct a more efficient diagnosis and subsequent search of the claim to be examined.
While it is understood that applicant is entitled to be his/her own lexicographer, it is incumbent upon applicant to clearly and distinctly set forth, in a concise manner, that which is regarded as the invention. It is applicant’ and not the PTO’s burden to precisely, in a concise manner, define the invention (In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997). Even if a claim 1 term's definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope. Notwithstanding these permissible instances, the use of functional language in a claim may "fail to provide a clear-cut indication of the scope of subject matter embraced by the claims and thus can be indefinite." Thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claims are such that a person of ordinary skill in the art could not interpret the metes and bounds of the claims from the application disclosure. However, based on what can be understood from the instant specification and the example for novelty and inventive step, it has been considered that claim 1 covers a process of obtaining FEM which is performed as a two-stage process.
Phase (I) refers to the mixing, at the laboratory or industrial level of the following ingredients:
a) polyvinyl chloride (PVC), a copolymer of poly(vinyl chloride-co-vinyl
acetate) (VC-co-VAc) or a modified copolymer of poly (vinyl chloride-co-vinyl acetate)
(m-VC-co-VAc) or their two-component mixtures.
b) plasticizers/modifiers selected from the group consisting of
b1) diisononyl phthalate (DINP) or diisononyl terephthalate(DINTP)
plasticizer with dioctyl adipate (DOA), tri-p-cresyl phosphate (TpKP), tri-m-cresyl
phosphate (TmKP), tri-o-cresyl phosphate (ToKP), epoxidized soybean oil
(ESO) or
b2) bioplasticizers synthesized on the basis of biorenewable sources and
selected from bis((5-methylfuran-2-yl)methyl) furan-2,5-dicarboxylate (b-MFFDK),
furan-2,5-diylbis(methylene)bis(furan-2-carboxylate) (FDA-b-FDK), furan-2,5-
diylbis(methylene)bis(4-oxopentanoate) (FDA-b-LK), as well as mixtures thereof with
phthalate plasticizer,
c) stabilizers,
d) 1-hexadecene or MES, MELO, MESuO or MEGO, Azodicarbonamide (ADC), melamine and acrylate emulsion (DH50, Ecrylic, Flexryl, etc.)
e) expandable agents: expandable graphite (EG) which is added either to the
warm mixer or during transport of the viscous mass to the extruder
Phase (II) refers to the mixing of the whole composition in an extruder.
Claim Rejections - 35 USC § 103
47. 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.
48. Claims 1-5, 7-10 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Torii et al. (JP 2018-109091 A, machine translation, hereinafter “’091”).
Regarding claim 1: ’091 teaches a two stage process for the production of expandable fire-resistant materials (FEM) (Page 25/40, [0060]) comprising a step of mixing a) a polyvinyl chloride (PVC K70) binder or poly(vinyl chloride- co-vinyl acetate) copolymers (Page 21/40, [0043]-[0044]), b) plasticizers/modifiers such as diisononyl phthalate, epoxidized soybean oil and (Page 22/45, [0046]), c) stabilizers (Page 19/40, [0036]; Page 21/40, [0042]; Page 24/40, [0054]) , d) melamine (Page20/40, [0040], and thermally expandable graphite (Page 22/45, [0046]) in mixer or a kneader mixer (i.e., Phase (I); Page 25/40, [0060]). The mixture is homogenized and the material is profiled using tools at the outlet of the extruder (i.e., Phase (II);Page 25/40, [0061]) in order to obtain a sheet of 0.5-2.0 mm thick (Page 25/40, [0061]). ’091 does not expressly teach obtaining strips of 20-400 mm wide.
Thus the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since producing a specific strips dimension of a known material based on its suitability for its intended use is within the level ordinary skill in the art.
Regarding claims 2-4: ’091 teaches the two stage process for the production of expandable fire-resistant materials (FEM) (Page 25/40, [0060]) in carried out using 52 parts by mass of a vinyl chloride-based resin having an average degree of polymerization of 400 to 3000 (Page 5/40, Claim 11).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Regarding claim 5: ’091 teaches the two stage process for the production of expandable fire-resistant materials (FEM) (Page 25/40, [0060]) is carried out in a hot mixer by mixing binders with 5-40% by weight of plasticizers/modifiers (Page 22/45, [0046]).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 7: ’091 teaches the two stage process for the production of expandable fire-resistant materials (FEM) (Page 25/40, [0060]) is performed in a warm mixer at temperature 20-50°C (Page 25/40, [0060]), and time (Page 34/40, [0085]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges of time, temperature and speed by routine experimentation.
Regarding claim 8: The disclosure of ‘091 is adequately set forth in paragraph 47 above and is incorporated herein by reference. ‘091 teaches the process for the production of expandable fire-resistant materials (FEM) is performed in a warm mixer at temperature 20-50°C (Page 25/40, [0060]), and time (Page 34/40, [0085]). ’091 does not expressly teach the process of production of FEM in Phase II is performed in an extruder in first zone retention time 30 s -15 min, temperature 90-140 °C, second zone 10 s - 10 min, temperature 100 - 150 °C and the third zone retention time 1 s - 60 s, temperature 110 - 220 °C.
However, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges of time, temperature and speed by routine experimentation.
Regarding claim 9: The disclosure of ‘091 is adequately set forth in paragraph 47 above and is incorporated herein by reference. : ’091 teaches a two stage process for the production of expandable fire-resistant materials (FEM) (Page 25/40, [0060]) comprising a step of mixing a) a polyvinyl chloride (PVC K70) binder or poly(vinyl chloride- co-vinyl acetate) copolymers (Page 21/40, [0043]-[0044]), b) plasticizers/modifiers such as diisononyl phthalate, epoxidized soybean oil and (Page 22/45, [0046]), c) stabilizers (Page 19/40, [0036]; Page 21/40, [0042]; Page 24/40, [0054]) , d) melamine (Page20/40, [0040], and thermally expandable graphite (Page 22/45, [0046]) in mixer or a kneader mixer (i.e., Phase (I); Page 25/40, [0060]). The mixture is homogenized and the material is profiled using tools at the outlet of the extruder (i.e., Phase (II);Page 25/40, [0061]) in order to obtain a sheet of 0.5-2.0 mm thick (Page 25/40, [0061]). ’91 does not expressly teach the mechanical properties as set forth.
However, since ‘091 teaches substantially identical process for the production of expandable fire-resistant materials (FEM) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. mechanical properties, would be expected to be the same as claimed (i.e., Shore hardness values 30-48, specific gravity 0.889-1.102 g/cm3, expansion coefficient 3-8 10-5/K, tensile strength (σ) 23-43 MPa, unit elongation (ε) 5.1-11.8%, Charpy toughness (W) 70-158 kJ/m2 and fire-resistance for more than 3 hours as defined by AS/NZS 1530.3: 1999 and AS 1530.4-2005). If there is any difference between the product of ‘091 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 10: ’091 teaches the two stage process for the production of expandable fire-resistant materials (FEM) (Page 25/40, [0060]) obtained as a passive fire-resistant material used to prevent the spread of flame and air flow in openings and ducts by creating expandable barriers which serve to insulate the flame source (Page 7/40, [0001]).
49. Claim 6 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Torii et al. (JP 2018-109091 A, machine translation, hereinafter “’091”) as applied to claim 1 above, and further in view of Shinagawa et al.(US Pub. No. 2011/0130498 A1, hereinafter “’498”).
Regarding claim 6: The disclosure of ‘091 is adequately set forth in paragraph 47 above and is incorporated herein by reference. ‘091 does not expressly teach bioplasticizers synthesized on the basis of biorenewable sources.
However, ‘498 teaches a flame retardant resin composition (Page 1, [0010]) containing a polyalkylene furan dicarboxylate represented by the formula (1) (Page 1, [0011]) with benefit of providing a flame retardant resin composition excellent in both impact resistance and flame retardancy and a molded article thereof (Page 1, [0001]; Page 1, [0010]).
In an analogous art of thermal expansion vinyl chloride resin material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the plasticizers/modifiers by ‘091, so as to include bioplasticizers synthesized on the basis of biorenewable sources as taught by ‘498, and would have been motivated to do so with reasonable expectation that this would result in providing a flame retardant resin composition excellent in both impact resistance and flame retardancy and a molded article thereof as suggested by ‘498 (Page 1, [0001]; Page 1, [0010]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
plasticizers) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Examiner Information
50. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
07/07/2025
bijan.ahvazi@uspto.gov