DETAILED ACTION
This Office Action is responsive to the amendment filed on 8/24/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/24/2026 has been entered.
Claim Rejections - 35 USC § 112
Claims 22-24 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 22 recites the limitation "the one or more metal hydroxides" in line 2. There is insufficient antecedent basis for this limitation in the claim. Note that the parent claim does not recite the phrase “one or more metal hydroxides”; rather, it specifically recites the inclusion of both aluminum hydroxide and magnesium hydroxide. As written, it is unclear whether claim 22 is intended to require that each of these compounds is individually present in an amount of 10 to 20 phr, of if it is intended to require that the combination of aluminum hydroxide and magnesium hydroxide is present in an amount of 10 to 20 phr.
Claim 23 recites the limitation "the melamine poly(metal phosphate)" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested that applicant amend the claim to recite the “melamine poly(zinc phosphate)” to be consistent with the terminology used in independent claim 13.
Claim 24 recites the limitation "the one or more metal hydroxides" in line 2. There is insufficient antecedent basis for this limitation in the claim. Note that the parent claim does not recite the phrase “one or more metal hydroxides”; rather, it specifically recites the inclusion of both aluminum hydroxide and magnesium hydroxide. As written, it is unclear whether claim 22 is intended to require that each of these compounds is individually present in an amount of 10 to 20 phr, of if it is intended to require that the combination of aluminum hydroxide and magnesium hydroxide is present in an amount of 10 to 20 phr.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4-6, 11, 13, 17-19, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al, US2012/0045953, in view of Leistner et al, US2015/0376375.
Wang discloses a composition for the production of roofing membranes (for claims 1, 13), wherein said composition comprises an olefinic rubber such as an EPDM (for claim 1), a reinforcing filler, and curative (¶0016-0018). Wang teaches that the prior art composition may further comprise flame retardants (¶0058) in an amount in the range of 10 to 65 phr, overlapping the claimed range (for claims 21-24) (¶0084).
Example 1 of Wang (¶0101-0102; Table I) discloses the production of a composition by combining (for claim 13) an EPDM (for claims 1, 13), silica, corresponding to the claimed filler (for claims 4, 11, 17, 18); and a curative comprising sulfur (for claim 19) and stearic acid, corresponding to the claimed accelerator (for claims 5, 6). The composition was formed into a sheet (i.e., a membrane) (for claim 13) and cured (for claim 13) (¶0102, 0104). Wang teaches that the prior art composition may further comprise magnesium hydroxide (for claims 1, 13) as a flame retardant (¶0070).
Wang is silent regarding the addition of a melamine poly(zinc phosphate), aluminum hydroxide, and char formation.
Leistner discloses a flame retardant composition for use in polymers such as EPDM (¶0055), wherein said flame retardant composition a blend of two phosphorus-containing compounds (¶0008); polymers of melamine (zinc phosphate)-i.e., melamine poly (zinc phosphate) (for claims 1, 3, 7, 13)- are disclosed as suitable for use as the first of these two phosphorus-containing compounds (¶0039). The prior art flame retardant composition may further comprise inorganic flame retardants such as aluminum hydroxide and magnesium hydroxide (for claims 1, 13) (¶0045-0046).
The selection of a known material based on its suitability for its intended use supported has been held to be prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). As noted above, Wang teaches that the EPDM-based composition of US2012/0045953 may comprise flame retardants as additives. Furthermore, Leistner teaches that it was known in the art that a composition comprising a melamine poly (zinc phosphate) and inorganic hydroxides such as aluminum hydroxide and magnesium hydroxide was suitable for use as a flame retardant additives in EPDM. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Wang by adding the flame retardant composition of Leistner, with the reasonable expectation of obtaining a final composition having improved flame retardant properties (for claims 1, 13). Given that Wang teaches that the maximum amount of flame retardant is 65 phr (¶0084), this would result in each of the melamine poly(zinc phosphate) (for claims 21, 23) and metal hydroxide(s) (for claims 22, 24) being present in an amount less than 65 phr, overlapping the claimed range.
Regarding the claimed char formation (for claims 1, 13): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art renders obvious the production of a composition that appears to be identical to the claimed invention; it is therefore reasonably expected that its properties would not be materially different from those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the composition rendered obvious by the prior art (for claims 1, 13).
Claims 1, 4, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over White et al, WO2015/103006.
White discloses a thermoset composition (abstract) comprising a polymer such as an EPDM (for claim 1) (Page 5: line 16), a filler such as mica (for claim 4) (Page 8: line 3), and at least one phosphorus flame retardant (Page 2: lines 19-22), melamine poly(zinc phosphate) (for claim 1) as a synergist (Page 9: line 8), and other additives such as aluminum hydroxide (for claim 1) and magnesium hydroxide (for claim 1) (Page 35: lines 14-15; Page 52: lines 12 ). Note that 1) the prior art composition is only required to contain one polymer and 2) EPDM is known in the art as a thermoset rubber. The prior art EPDM-based composition therefore corresponds to the claimed rubber composition (for claim 1).
Regarding claim 21: The prior art composition may comprise about 1 to 20 wt% melamine poly(zinc phosphate) (page 27: lines 13-15) and 30 to 95wt% polymer (page 27 lines 9-10). Based on the maximum amount of melamine poly(zinc phosphate) (20wt%) and minimum amount of polymer( 30 wt%), it is estimated that the amount of melamine poly(zinc phosphate) in the prior art composition may be ≤ about 66 phr, overlapping the claimed range.
Regarding claim 22: The prior art composition may comprise about 10 to 300 phr metal hydroxide (page 35: lines 22-24), overlapping the claimed range.
White does not specifically disclose a composition comprising the claimed combination of components.
White discloses the use of each of the recited components in the composition of WO2015/103006. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare a composition comprising the claimed combination of compounds, with the reasonable expectation of obtaining a final composition having the improved thermal, mechanical, and physical properties taught by White (Page 2: lines 15-18).
The selection of a known material based on its suitability for its intended use supported has been held to be prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07).
Regarding the claimed char formation (for claims 1, 13): As discussed above, the prior art renders obvious the production of a composition that appears to be identical to the claimed invention; it is therefore reasonably expected that its properties would not be materially different from those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the composition rendered obvious by the prior art (for claims 1, 13); see In re Fitzgerald cited earlier in this Action.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over White et al, WO2015/103006, as applied to claims 1, 4, 21, and 22 above, and further in view of Allen, Journal of Elastomers and Plastics vol. 17.
As discussed above, White discloses a thermoset composition comprising an EPDM, a filler such as mica, and at least one phosphorus flame retardant, melamine poly(zinc phosphate), and other additives such as aluminum hydroxide and magnesium hydroxide. The prior art EPDM-based composition is used in the production of laminates, corresponding to the claimed membrane, via a process comprising the step of combining the components to form the composition, applying them to a base material, forming the laminate, and curing.
White is silent regarding the inclusion of an accelerator and sulfur.
As taught by Allen, it was known in the art that curing EPDM with a combination of sulfur (for claim 19) and zinc oxide (for claims 5, 6) results in a final composition having improved heat resistance (pages 150-151, 155).
As discussed earlier in this Action, White discloses that the prior art composition is applied to a base material, then formed into a laminate via a process that comprises a curing step. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to modify the process of White by adding a combination of sulfur and zinc oxide to the EPDM-based composition, in order to obtain a final product having improved heat resistance as taught by Allen.
Response to Arguments
Applicant's arguments filed 8/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed invention yields unexpected results, citing the examples provided in the specification and the declaration of Majid Karimi Nejad submitted 8/24/2026.
Applicant argues that the prior art does not specifically disclose the claimed combination of magnesium hydroxide, aluminum hydroxide, and melamine poly(zinc phosphate) and therefore does not render the claimed invention obvious.
As noted earlier in this Action, the selection of a known material based on its suitability for its intended use supported has been held to be prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…. [T]he idea of combining them flows logically from their having been individually taught in the prior art;” see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP § 2144.06(I)).
As discussed earlier in this Action, Leistner discloses that magnesium hydroxide, aluminum hydroxide, and melamine poly(zinc phosphate) are all known flame retardants which could be used in the prior art flame retardant composition. Contrary to applicant’s argument, the fact that Leistner does not specifically teach an example of a composition comprising all of the recited compound does not teach away from the fact that the prior art teaches that they are all flame retardants that can be used in the composition of US2015/0376375. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition comprising a combination of magnesium hydroxide, aluminum hydroxide, and melamine poly(zinc phosphate) in view of the teachings of Leistner; see Sinclair & Carroll Co. v. Interchemical Corp and In re Kerkhoven cited above.
Similarly, White discloses that the required compounds are all suitable for use as either the nitrogen-containing synergist or as inorganic fillers. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to choose each of magnesium hydroxide, aluminum hydroxide, and melamine poly(zinc phosphate) for the purpose taught by White; see Sinclair & Carroll Co. v. Interchemical Corp cited earlier in this Action.
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (MPEP § 716.02(e)).
As disclosed in the specification (see Table 2), the comparative samples disclose compositions using either a combination of a brominated flame retardant and magnesium hydroxide (Control 1) or a combination of magnesium hydroxide and aluminum hydroxide (Control 2). Neither comparative example discloses a composition which comprises melamine poly(zinc phosphate).
In contrast, Leistner discloses a flame retardant composition which is required to comprise a phosphoric triazine compound such as (abstract, ¶0075, 0039). Similarly, White specifically requires the inclusion of a nitrogen-containing synergist such as melamine poly(zinc phosphate) (abstract; page 2: lines 20-22; page 9: lines 6-8). As neither of the Control Samples comprises this component, applicant has not compared the claimed invention to the closest prior art as required.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.") (MPEP § 716.02(d)).
Furthermore, note that applicant cites a single inventive example which is reported to comprise 25 phr magnesium hydroxide, 14 phr aluminum hydroxide, and 7 phr melamine poly(zinc phosphate) (specification: Table 2). In contrast, the independent claims do not recite any limitations regarding the amounts of these components. The claimed invention therefore reads on compositions wherein each of the magnesium hydroxide, aluminum hydroxide, and melamine poly(zinc phosphate) may be present in any amount. As such, the single example disclosed in the specification does not demonstrate that the allegedly unexpected result may be obtained commensurate in scope with the invention as defined in the currently pending claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights