DETAILED ACTION
This Office Action is responsive to the amendment filed on 3/17/2026.
The objections and rejections not addressed below are deemed withdrawn.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.
Claim Rejections - 35 USC § 103
Claim(s) 1-24 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, 7, 13), wherein said composition comprises an olefinic rubber such as an EPDM (for claims 1, 7), 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, 7, 13)’ silica, corresponding to the claimed filler (for claims 4, 10, 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, corresponding to the claimed metal hydroxide (for claims 1, 7, 13) as a flame retardant (¶0070).
Wang is silent regarding the addition of a melamine poly(metal phosphate) and fire resistance rating.
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, 9, 13, 15, 16)- 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 2, 8, 14, 16) (¶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, 7, 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 fire resistance rating (for claims 12, 20): “[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 12, 20).
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 claims 1, 3) as a synergist (Page 9: line 8), and other additives such as aluminum hydroxide (for claim 2) and magnesium hydroxide (for claims 2) (Page 35: lines 14-15; Page 52: lines 12 ), corresponding to the claimed metal hydroxide(s) (for claim 1). 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 fire resistance rating (for claims 12, 20): 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 12, 20); 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 3/17/2026 have been fully considered but they are not persuasive.
Regarding the rejection over Wang: Applicant alleges that it would not have been obvious to combine the teachings of Wang and Leistner, arguing that Leistner is specifically directed to solving corrosion problems in injection molding machines. In response, it has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]).
Applicant cites paragraph 0025 of Leistner as allegedly stating that the prior art is directed towards injection molding machines. This paragraph is reproduced below.
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Leistner broadly teaches that its flame retardants reduce corrosion in commonly used processing machines. Contrary to applicant’s arguments, Leistner’s disclosure of injection molding machines as a type of processing equipment that suffers corrosion does not teach away from its broader disclosure that its flame retardant composition is useful for commonly used processing equipment. Note that Wang discloses that the composition of US2012/0045953 is prepared by combining the components in commonly used processing equipment such as mixers (¶0085).
Additionally, to the extent that applicant alleges that Leistner should be limited to the specific examples of processing machines named, the examiner notes that paragraph 0025 of Leistner cites extruders as an example of the type of common processing machine that its flame retardant composition can be used in. Note that Wang specifically discloses that its composition may be processed via extrusion (¶0090). It is therefore maintained that the composition of Leistner would be applicable to the processing methods taught by Wang.
Applicant argues that it would not have been obvious to modify the composition of Wang with the flame retardant mixture of Leistner because it would be too expensive. In response, the fact that a "combination would not be made by businessmen for economic reasons" does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility; see In re Farrenkopf, 713 F.2d 714, 718, 219 USPQ 1, 4 (Fed. Cir. 1983) (MPEP § 2145(VII)). Contrary to applicant’s arguments, the mere fact that using the flame retardant composition of Leistner in the membrane of Wang would incur additional expenses does not mean that an ordinary artisan would not make the combination in order to obtain the benefit of improving the flame retardant properties of the composition/membrane of Wang; see Sinclair & Carroll Co. v. Interchemical Corp cited earlier in this Action. It therefore is not persuasive to merely argue that the cost would be greater.
To the extent that applicant argues that the prior art must be functional to act as a roofing membrane, it has been held that when the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability; see In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980) (MPEP § 2121(I)). Wang specifically teaches that the composition of US2012/0045953 is used for roofing membranes. Furthermore, Wang specifically teaches that 1) the prior art composition can contain metal hydroxides (¶0070) and 2) that the flame retardant package can be present in an amount that overlaps the levels of flame retardant taught by Leistner (see Wang ¶0084, Leistner claim 10). The prior art therefore renders obvious the addition of a type of additive which Wang teaches may be included in an amount within the range that Wang discloses is acceptable. It is therefore reasonably expected that the prior art composition would be suitable for its disclosed use as a roofing membrane. Applicant’s argument therefore is not persuasive as applicant has not provided any evidence to substantiate the allegation that the combination of Wang and Leistner would render the composition of Wang inoperable for its intended use.
Applicant argues that the claimed invention yields unexpected results, citing the data from Table 3 of the instant specification.
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) (MPEP § 716.02(d)). The claimed invention reads on compositions wherein each one of the EPDM, metal hydroxide(s), and melamine poly(metal phosphate) may be present in any amount. In contrast, the instant specification discloses a single inventive example which comprises 100 parts ethylene/propylene/diene rubber (EPDM), 39 parts total metal hydroxides, and 7 parts melamine poly(metal phosphate) (specification: Tables 1 and 2). No evidence has been presented to demonstrate that the allegedly unexpected results may be obtained when each of the claimed components is present in any other amounts. Furthermore, note that the claim as written reads on compositions that contain a single metal hydroxide; in contrast, the sole example utilizes a combination of two metal hydroxides. It is therefore unclear whether the allegedly unexpected results can be obtained from the use of a single metal hydroxide, or if they are dependent on the use of a combination of metal hydroxides. The cited data therefore is not commensurate in scope with the claimed invention with respect to either the amounts of each component or the number of species of metal hydroxide present.
Additionally, note that the claimed invention generically recites the limitations “metal hydroxide” and “melamine poly(metal phosphate)”. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof; see In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (MPEP § 716.02(d)(I)). The instant specification discloses a single example which includes the compounds magnesium hydroxide, aluminum hydroxide, and melamine poly(zinc phosphate) (specification: Table 2). No evidence has been cited to demonstrate that the allegedly unexpected results may be obtained from compositions comprising any other metal hydroxide or melamine poly(metal phosphate). The allegedly unexpected results therefore are not commensurate in scope with the broad range of compounds that fall within the scope of the claimed composition. Applicant’s argument that the claimed invention yields unexpected results therefore is not persuasive. The rejection is therefore maintained.
Regarding the rejection of claims 1-6 over White: Applicant argues that the prior art does not teach the claimed composition because White is directed towards the microelectronics industry, whereas the claimed invention is directed towards a roofing application.
In response to applicant's argument, it is noted that the invention of claim 1 and its dependent claims is a composition, not a roofing membrane. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As discussed earlier in this Action, White renders obvious the production of a composition comprising the same components combined in the same amounts as in the claimed composition. As the composition rendered obvious by the prior art is the same as the claimed composition, it is reasonably expected that it would be capable of performing the required intended use. Applicant has not provided any evidence to demonstrate that composition of White would not be capable of performing the intended use; the rejection is therefore maintained.
The rejection of independent claims 7, 13, and their dependent claims over White has been withdrawn in view of the amendment to claims 7 and 13. Note that the claims have been amended to recite inventions which are a roofing membrane (claim 7) and a method of making a roofing membrane (claim 13). The prior art composition is laminated onto a substrate that is used in electronic components such as wiring boards (page 36 to page 37); the evidence in the record does not demonstrate that the resulting laminate structure would function as a roofing membrane.
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.
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.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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