DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 45-62 in the reply filed on 10/14/2025 is acknowledged.
Claims 63-64 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/14/2025.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because it does not disclose the general nature of the compounds of the claimed composition. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 50 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 51 is objected to because of the following informalities: [15099-32-8] is repeated twice in the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 54 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The limitation “is used” is indefinite since it is a method step language in a composition claim. It is unclear whether the claimed components are present in the composition or are used to produce the claimed composition.
Claims 58 and 60 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. The limitation “is used” is indefinite since it is a method step language in a composition claim. It is unclear whether the claimed components are present in the composition or are used to produce the claimed composition. Claims 58 and 60 recite the limitation "the aluminum diethylphosphinate and metal phosphite(s)" in claim 45. There is insufficient antecedent basis for this limitation in the claim. Particularly there is no antecedent bases for the metal phosphite(s).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 45-49 and 51-62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoerold et al. (2010/0025643) in view of Bauer et al. (2006/0020064).
Regarding claims 45, 49, 52, 53: Hoerold et al. teach a flame-retardant polymer composition comprising a polyamide, 5 to 95 wt% of zinc salt of diethylphosphinic acid (herein after DEPZn) and 5 to 95 wt% aluminum salt of diethylphosphinic acid (hereinafter DEPAI) [0019; Examples; Table 1]. Hoerold et al. teach polyamide elastomers and thermoplastic polyolefinic elastomers [0046].
Hoerold et al. fail to teach a zinc salt of phosphorous acid.
However, Bauer et al. teach adding 10% of zinc phosphite to DEPZn as an ancillary constituent in an analogous polyamide composition to supplement and enhance the flame retardance [0021, 0090, 0123].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 10% of zinc phosphite as taught by Bauer et al. to the composition of Hoerold et al. as an ancillary constituent to supplement and enhance the flame retardance of the composition.
The ranges taught provide an overlapping range to the formula of claims 45 and 53.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 46: Bauer et al. teach using a copolyetherester can be used interchangeably with a polyamide [0123-125].
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to use a copolyetherester as taught by Bauer et al. in place of the polyamide of Hoerold et al. It is a simple substitution of one known element for another to obtain predictable results.
Regarding claim 47: The polyamide was selected from the options of claim 45.
Regarding claim 48: Hoerold et al. fail to teach a claimed compound.
However, Bauer et al. teach adding 0.01 to 10% of aluminum ethylbutylphosphinate as an ancillary constituent in an analogous polyamide composition to supplement and enhance the flame retardance [0021, 0088, 0123].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 10% of aluminum ethylbutylphosphinate as taught by Bauer et al. to the composition of Hoerold et al. as an ancillary constituent to supplement and enhance the flame retardance of the composition.
Regarding claims 51 and 54: Hoerold et al. fail to teach a claimed compound.
However, Bauer et al. teach adding 0.01 to 10% of aluminum phosphate as an ancillary constituent in an analogous polyamide composition to supplement and enhance the flame retardance [0021, 0088, 0123].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01 to 10% of aluminum phosphite as taught by Bauer et al. to the composition of Hoerold et al. as an ancillary constituent to supplement and enhance the flame retardance of the composition.
Regarding claims 55-56: Hoerold et al. teach 0 wt% [Examples; Table 1].
Regarding claims 57-61: Since the composition is the same as claimed, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 62: Hoerold et al. fail to teach a particle size.
However, Bauer et al. teach in an analogous composition that the flame retardant system should have a particle size of particularly preferably from 5 to 500 nm [0014].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a particle size of from 5 to 500 nm as taught by Bauer et al. for the flame retardant system in Hoerold et al. to have an appropriately sized flame retardant for incorporation in to films.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 45-49 and 51-62 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 42-59 of copending Application No. 17/996547. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763