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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/16/2025 has been entered.
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding rejections from the Office action mailed on 7/2/2025 are withdrawn in light of applicant’s amendment filed on 9/16/2025.
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 1-12, 15, 19 and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16, 19, 22, 23, 29, and 36 of U.S. Patent No. 11,993,622 in view of Shtekler (US 9,475,933).
With respect to claims 1, 7-12, and 15-18, US ‘622 claims in claim 16 a flame retardant polymer composition comprising a polymer and a flame retardant of formula
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158
320
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, which is identical to claimed formula (I) where a and c are not 0.
US ‘622 fails to claim the addition of a brominated flame retardant.
Shtekler discloses a flame retardant thermoplastic composition comprising polyester or polyamide, at least one brominated flame retardant, and a metal phosphonate similar to the one claimed in US ‘622(abstract), wherein the brominated flame retardant includes decabromodiphenyl oxide, tetrabromobisphenol A, inter alia (col. 3, line 25 to col. 7, line 36). Shtekler teaches that a combination of brominated flame retardant and a high phosphorus-content flame retardant provides a flame retardant for thermoplastic polymers having flame retardant efficiency without the use of antimony trioxide (col. 1, lines 45-54), a disadvantageous flame retardant that has a high smoke yield (col. 1, lines 20-30).
Given that both the claims of US ‘622 and the disclosure of Shtekler are drawn to flame retardant thermoplastic compositions comprising phosphonate flame retardants and further given that Shtekler teaches that brominated flame retardants are effective when used in combination with high-phosphorus containing flame retardants, it would have been obvious to one of ordinary skill in the art to utilize the brominated flame retardants disclosed by Shtekler with the high-phosphorus containing flame retardants claimed by US ‘622.
With respect to claims 2, 3, and 19, 3 US ‘622 claims in claim 20 and that the polymer includes glass-filed polyalkylene terephthalate or glass-filled polyamide. Glass reads on inorganic filler.
With respect to claim 4, US ‘622 claims in claim 19 that the polymer is polyalkylene terephthalate, wherein “alkylene” is a small enough genus to make obvious the selection of polyethylene terephthalate, polytrimethylene terephthalate, and polybutylene terephthalate (2, 3, and 4 carbon atoms in the alkylene group).
With respect to claims 5 and 6, US ‘622 claims in claims 22 and 23 that the polymer is selected from polyamide 66, polyamide 4T, polyamide 10,T, and polyamide MXD inter alia.
With respect to claims 21 and 23, US ‘622 does not claim a molded article from the flame retardant polymer composition.
Shtekler discloses that its composition comprising polyester and/or polyamide comprising flame retardant is extruded and pelletized and molded to obtain best results (col. 9, lines 40-47) to form molded components (col. 10, lines 16-19).
Given that both the claims of US ‘622 and Shtekler are drawn to a flame retardant polymer composition comprising phosphonate flame retardants and further given that such compositions find use in molded articles as taught by Shtekler, it would have been obvious to one of ordinary skill in the art to utilize the composition from the combination of US ‘622 and Shtekler in a molded article or in a process to make a molded article.
With respect to claim 22, US ‘622 claims in claim 36 a process that includes incorporating flame retardant material of claimed formula (I) into a polymer.
Claims 1-12, 15, 19 and 21-23 are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 11,993,622 in view of Shtekler (US 9,475,933).
The rejection is adequately set forth in paragraph 5 above.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Response to Arguments
Applicant's arguments filed 9/16/2025 have been fully considered and are found persuasive, however, new grounds of rejection are set forth above.
Conclusion
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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