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 Arguments
Applicants amended instant claim 1 to include limitations of previously rejected claims 2-6, which were met by the rejections of record. In their response applicants argued following:
Person of ordinary skill in the art would not have sufficient motivation to combine the phosphonic acid metal salt flame retardant for copolyester thermoplastic elastomer taught in Karayianni with the EPDM/acid-modified polyolefin base composition of Mouratani. This is because Karayianni is directed to polymer system that is different grom Mouratani and that the effectiveness and applicability are not obvious by directly transplanting solution of Karayianni to the system of Mouratani. The interaction between different polymer matrixes and flame retardants and their synergists are very complex. This complexity the artisan would not be motivated to seek technical solutions of Karayianni.
Response: Examiner disagrees. First, while Karayianni discloses thermoplastic elastomer, these elastomers include polyurethanes which is also elastomer listed in independent claim 1. As such the flame retardant disclosed in Karayianni is suitable for other elastomers not only those disclosed within.
Second, as it was mentioned in the interview summary, while the combination of aluminum hydroxide and phosphinic acid metal salt has a synergistic effect with polyurethane thermoplastic elastomers of Karayianni it does not mean that the same effect would not be reaches in the EPDM/Ma-PO combination. As it was discussed during the interview the synergistic effect would be afforded to the EPDM rubber due to its carbon rich nature. However, this is not the grounds of rejection utilized in the first office action on the merits. The examiner indicated on page4 of this office action that such composition would provide better mechanical properties. This ground of rejection was not argued by the applicants. While applicants argued the effectiveness of such combination in EPDM rubber, the effectiveness is not within the scope of the instant claims, because new inventions do not have to be better, but they do have to be different.
Third, in [0003] Mouratani discloses genus of phosphorus based flame retardants and hydroxides as traditional flame retardants in the industry. Mouratani, however is silent with respect to specific type of the phosphorus based flame retardant. Phosphinic acid metal salts are well known flame retardants and as shown by Kuyrianni they are also used together with metal hydroxides. Since Mouratani does not disclose specific phosphorus based flame retardant, one of ordinary skill in the art can select such flame retardants and test for optimal results. This is within the purview and knowledge of one of ordinary skill in the art.
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschelle, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
Fourth, as it was clearly depicted in the interview summary, due to carbon rich nature of EPDM, Phosphinic acid metal salts are intumescent flame retardants that work primarily in the condensed phase to promote char formation while aluminum hydroxide functions by absorbing a large amount of heat and diluting flammable gases. These are the properties of the compounds disclosed in Kuyrianni and their properties are mutually exclusive and inseparable from the compounds themselves, therefore they will function in the same manner when utilized as flame retardants and as mentioned above its effectiveness is not within the scope of instant claims. Phosphinate salts would still create char, aluminum hydroxide would still absorb heat. This is as mentioned above also a basic knowledge that one of ordinary skill in the art would possess when working on flame retardant polymers in general. This includes EPDM rubber.
Fifth, examiner’s reasons for combining the two references do not have to be the same as those of applicants. Examiner relied on better mechanical properties and this is because if ATH is utilized alone as flame retardant, it is used in high loadings which can negatively impact mechanical properties of EPDM. Adding phosphorus based flame retardants, which according to Mouratani, are conventional in his field of endeavor, would allow one of ordinary skill in the art to lower the content of ATH. Applicants have not provided any arguments with respect to this statement, which would indicate that the examiner is incorrect.
Sixth, while applicants argued that supporting reference of Zirstein utilizes different phosphorus flame retardant which is ammonium polyphosphate. It is necessary to point out that phosphinic acid metal salt, such as aluminum phosphinate is present it reacts with other components within the composition to form phosphate or polyphosphate. It should be also noted that not all the results in Zirstein are reflective of the composition the properties are a result of plasticizer effect specifically TOF acted as plasticizer which enhanced slippage of the rubber polymer chains which resulted in lower torque. In any event this reference is not utilized in the rejection, but for showing that the phosphorus compounds and metal hydroxides do have flame retardant effect on the EPDM rubber and experimentation or selection of proper pair of flame retardants is within the skill of one having ordinary skill in the art because types of flame retardants and their content is a result effective variable which as applicants pointed earlier does depend on the polymer and type of flame retardant and content of each flame retardant. Additionally there is always a need to provide composition which replace toxic halogenated flame retardants from being used.
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Even with the presence of maleic anhydride modified polyolefin in addition to EPDM rubber, ATH and aluminum phosphinate will not react under standard processing conditions, but under thermal processing phosphinate compound will still form char, ATH would still absorb heat and both will act as flame retardant. Polyolefins much like EPDM rubber are carbon-rich polymers as such the char forming ability of phosphinate metal salt will readily apparent.
Applicants argued that Mouratani and Karayianni (note Zirnstein is not utilized in any rejections of record) will not achieve efficient flame retardancy, good dispersibility and good mechanical properties and therefore one of ordinary skill in the art would not be motivated to make such specific combination.
First, efficiency is not within the scope of the instant claims. Having said that the EPDM and polyolefin of Mouratani are carbon rich polymers where presence of modified polymer introduces oxygen groups which aid in formation of char. Important to note is that in the polymers which are strictly hydrocarbon, phosphinates will release radical scavengers that also inhibit flame.
Second, the mechanical properties have been addressed by the examiner, and the examiner clearly indicated that combination of aluminum hydroxide with phosphorus based flame retardant will result is lower loadings of ATH contributing to better mechanical properties (which are also not within the scope of instant claims).
Third, one of ordinary skill in the art would be motivated to try phosphorus based flame retardance because Mouratani clearly teaches that these are conventional and well known flame retardants in the industry.
In summary, applicants arguments are not persuasive and since applicants have not provided any factual evidence which would indicate that the examiner is incorrect, all rejection of record are reinstated.
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.
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, 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mouratani (WO 2018/020926) in view of Karayianni (US 8415415) in view of evidence in JP 2005-146256.
With respect to claim 1, 7, 10-12, Mouratani discloses a composition used to make external diaphragm for railway car. The composition comprises olefin based rubber (EPDM [0020]), acid modified polyolefin, metal hydroxide and a crosslinking agent [0008, 0009].
While in [0003] Mouratani discloses use of phosphorous based flame retardants such are not explicitly listed within the disclosure. Mouratani however listed JP 2005-146256 which clearly teaches that use of magnesium hydroxide and phosphorous based flame retardant results in a composition that has excellent mechanical strength after vulcanization, excellent flame retardance and small permanent compression set and therefore small permanent set in fatigue (JP 2005-146256, problem solved section).
Karayianni teaches thermoplastic elastomer composition which utilizes compounds such as aluminum diethylphosphinate to impart flame retardant properties to the composition, which is utilized in combination with aluminum hydroxide and phenolic antioxidant. Karayianni further teaches that inorganic compounds like aluminum or magnesium hydroxide create synergistic effect with phosphinate (col. 11, l. 53-58, col. 12, starting line 28).
It would have been obvious to one having ordinary skill in the art to utilize aluminum diethylphosphinate of Karyuianni in the composition of Mouratani and thereby obtain the claimed invention. As mentioned above Mouratani acknowledges that use of phosphorous based flame retardants are well known in the art along with metal hydroxides and does not explicitly teach against using the combination. Additionally Karayuianni teaches obtaining improvements in the same mechanical properties as Mouratani since with the addition of other flame retardants the loading of aluminum hydroxide can be minimized resulting in denser component.
Karayuianni further teaches use of phenolic antioxidants utilized in amount of 0.01-6 parts by weight (col. 14, l. 10-14). As such it would have been obvious to one having ordinary skill in the art that addition of phenolic antioxidant, a well-established stabilizer, that protects polymers from damage caused by free radicals and other oxygen reactive species.
The metal hydroxide is aluminum hydroxide and/or magnesium hydroxide utilized in amount of 150-250 parts by weight based on 100 parts of EPDM rubber and modified polyolefin combined [0025]. The tradename utilized in prior art is Kizuma [0039 of Karayianni] has particle size between 0.8-0.9 microns, and tradename Heidelite [0038] has particle size of 1 micron.
Karayianni teaches that the content of aluminum diethylphosphinate is in a range of 1-30 parts by weight (col. 2, l. 62-63). Having particle size of 7.506 microns (examples), tradename Exolit OP 935, which is the same type of tradename utilized by the applicants
With respect to claim 8, the ratio of EPDM rubber to modified polyolefin is in a range of 95/5 to 80/20 meeting claimed range [0022].
With respect to claim 9, the modified polyolefin is defined as acid modified polyolefin and anhydride modified polyolefin [0021].
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
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 October 27, 2025