DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. The amendment filed by Applicant on January 28, 2026 has been fully considered. The amendment to instant claim 1-3 and addition of new claims 9-18 are acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections, based on the previously applied prior art, is set forth below. Thus, the following action is properly made final.
Examiner-initiated interview
3. An Examiner-initiated interview was conducted with Derek Lightner on March 10, 2026 to discuss the current amendment and further possible amendments to instant claims to prepare the application for allowance. However, per Applicant’s request, a new Office action is set forth below.
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.
4. Claims 1-3, 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa et al (US 2004/0171708) in view of Negishi et al (US 2009/0111699) and
Lips et al (US 2015/0284535).
5. Yoshizawa et al discloses polyolefin resin expanded particles comprising:
a) a polyolefin base comprising a propylene homopolymer or polyethylene comprising not less than 60%mol of ethylene units ([0051]-[0053], as to instant claims 17), wherein said polyolefin is used singly ([0055], as to instant claim 18);
b) 0.5-8%wt of carbon black ([0031], as to instant claims 1, 14, 15, 16) and
c) 0.01 to less than 0.25%wt ([0028], as to instant claims 1, 9-10, 16) of a hindered amine flame retardant of the formula (Abstract):
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Wherein the expanded beads are having density of 20-140 g/L, including values of 25 g/L and 30 g/L ([0097], as to instant claims 1 and 3).
The expanded beads further comprise 0.01-5%wt of additives including oxidation inhibitors and UVI inhibitors ([0068]).
The expanded particles comprising said 2,2,6,6-tetramethylpiperidin-4-yl-based hindered amine demonstrate excellent flame retarding effects (Abstract).
Thus, the expanded beads of Yoshizawa et al are produced from polyolefin compositions comprising the polyolefin base resin, carbon black and hindered amine ([0116]).
6. Though Yoshizawa et al does not explicitly recite the additives including the compound of Chemical formula I of instant claim 1,
1) Negishi et al discloses the hindered amines of formula A below added to polyolefin compositions comprising carbon black ([0066], [0049]) to provide excellent long-term stabilization ([0011]), wherein said hindered amine is added in amount of as low as 0.05 pbw per 100 pbw of the polyolefin resin ([0017]):
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Formula A
Wherein R1 is
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And R is an alkyl group having 1-30 carbon atoms ([0012]).
Thus, Negishi et al explicitly teaches addition of the hindered amine of the Formula A to polyolefin/carbon black compositions.
2) Lips et al teaches the compounds of the Formula B below (NOR-HALS), used as a flame retardant in polyolefin compositions, further providing thermal stability ([0001], [0007], [0017], [0006]).
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Formula B
Wherein R1 and R2 represent C1-C30 alkyl ([0007]), or n-undecyl ([0132], as to instant claim 1).
Specifically exemplified is ADK STAB LA-81: bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate (FR-1) having molecular weight of 681 ([0148], as to instant claim 2).
It is noted that ADK STAB LA-81: bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate (FR-1) having molecular weight of 681 of Lips et al is the same bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate as claimed and disclosed in instant invention (see [0098] of instant specification).
The compounds of Formula B are added in the compositions in amount of as low as 0.1%wt ([0013]). The compounds of Formula B can be used in combination with additional flame retardants ([0068]), including tetraalkylpiperidine derivatives ([0087]).
7. Since all of Yoshizawa et al, Negishi et al and Lips et al are related to polyolefin-based compositions comprising hindered amine comprising 2,2,6,6-tetramethylpiperidin-4-yl groups, and thereby belong to the same field of endeavor, wherein the compounds of Formula A and B above (corresponding to the claimed Chemical Formula I) are used in polyolefin compositions as a flame retardant and further to provide stabilizing effect to said compositions, as shown by Negishi et al and Lips et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Yoshizawa et al, Negishi et al and Lips et al, and to include, or obvious to try to include, at least partially, such as in amount of 0.05 phr, the compound of Formula A above, or specifically ADK STAB LA-81: bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate (FR-1) having molecular weight of 681, into the composition of Yoshizawa et al, either as an additive to provide long term stabilization and/or as an additional flame retardant, as taught by Negishi et al and Lips et al, especially since Lips et al recites that the flame retardants of Formula B can be used in combination with other flame retardants including tetraalkylpiperidine derivatives, or alternatively, to use or obvious to try to use the tetralkylpiperidine-based flame retardants of formula A or B above as the substitution for the tetralkylpiperidine-based flame retardant of formula (II) of Yoshizawa et al, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
8. All ranges in the composition of Yoshizawa et al in view of Negishi et al and Lips et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
9. Since the expanded beads of Yoshizawa et al in view of Negishi et al and Lips et al are essentially or substantially the same as those claimed in instant invention, i.e. comprising polyethylene or polypropylene resins, carbon black and either the combination of the flame retardant of formula (II) and Formula B above, or the flame retardant of formula B only, all in the relative ranges that are substantially the same as those claimed in instant invention, therefore, the expanded beads of Yoshizawa et al in view of Negishi et al and Lips et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including the ratio of DCV/X and cell diameter (as to instant claims 1, 11-13, 16), as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed expanded beads, if not taught, may be very well met by the expanded beads of Yoshizawa et al in view of Negishi et al and Lips et al, since the expanded beads of Yoshizawa et al in view of Negishi et al and Lips et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. Claims 1-3, 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa et al (US 2004/0171708) in view of Lips et al (US 2015/0284535).
11. Yoshizawa et al discloses polyolefin resin expanded particles comprising:
a) a polyolefin base comprising a propylene homopolymer or polyethylene comprising not less than 60%mol of ethylene units ([0051]-[0053], as to instant claims 17), wherein said polyolefin is used singly ([0055], as to instant claim 18);
b) 0.5-8%wt of carbon black ([0031], as to instant claims 1, 14, 15, 16) and
c) 0.01 to less than 0.25%wt ([0028], as to instant claims 1, 9-10, 16) of a hindered amine flame retardant of the formula (Abstract):
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Wherein the expanded beads are having density of 20-140 g/L, including values of 25 g/L and 30 g/L ([0097], as to instant claims 1 and 3).
The expanded beads further comprise 0.01-5%wt of additives including oxidation inhibitors and UVI inhibitors ([0068]).
The expanded particles comprising said 2,2,6,6-tetramethylpiperidin-4-yl-based hindered amine demonstrate excellent flame retarding effects (Abstract).
Thus, the expanded beads of Yoshizawa et al are produced from polyolefin composition comprising the polyolefin base resin, carbon black and hindered amine ([0116]).
12. Though Yoshizawa et al does not explicitly recite the additives including the compound of Chemical formula I of instant claim 1,
Lips et al teaches the compounds of the Formula B below (NOR-HALS), used as a flame retardant in polyolefin compositions, further providing thermal stability ([0001], [0007], [0017], [0006]).
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Formula B
Wherein R1 and R2 represent C1-C30 alkyl ([0007]), or n-undecyl ([0132], as to instant claim 1).
13. Specifically exemplified is ADK STAB LA-81: bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate (FR-1) having molecular weight of 681 ([0148], as to instant claim 2).
It is noted that ADK STAB LA-81: bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate (FR-1) having molecular weight of 681 of Lips et al is the same bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate as claimed and disclosed in instant invention (see [0098] of instant specification).
14. The compounds of Formula B are added in the compositions in amount of as low as 0.1%wt ([0013]). The compounds of Formula B can be used in combination with additional flame retardants ([0068]), including tetraalkylpiperidine derivatives ([0087]).
15. Since both Yoshizawa et al and Lips et al are related to polyolefin-based compositions comprising hindered amine comprising 2,2,6,6-tetramethylpiperidin-4-yl groups, and thereby belong to the same field of endeavor, wherein the compounds of Formula B above (corresponding to the claimed Chemical Formula I) are used in polyolefin compositions as a flame retardant and further to provide stabilizing effect to said compositions, as shown by Lips et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Yoshizawa et al and Lips et al, and to include, or obvious to try to include, at least partially, such as in amount of 0.05 phr or 0.1%wt, the compound of Formula B above, or specifically ADK STAB LA-81: bis (1-undecanyloxy-2,2,6,6-tetramethylpiperidin-4-yl) carbonate (FR-1) having molecular weight of 681, into the composition of Yoshizawa et al, either as an additive to provide long term stabilization and/or as an additional flame retardant, as taught Lips et al, especially since Lips et al recites that the flame retardants of Formula B can be used in combination with other flame retardants including tetraalkylpiperidine derivatives, or alternatively to use or obvious to try to use the tetralkylpiperidine-based flame retardants of Formula B above as the substitution for the tetralkylpiperidine-based flame retardant of formula (II) of Yoshizawa et al, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. All ranges in the composition of Yoshizawa et al in view of Lips et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
17. Since the expanded beads of Yoshizawa et al in view of Lips et al are essentially or substantially the same as those claimed in instant invention, i.e. comprising polyethylene or polypropylene resins, carbon black and either the combination of the flame retardant of formula (II) and Formula B above, or the flame retardant of formula B only, all in the relative ranges that are substantially the same as those claimed in instant invention, therefore, the expanded beads of Yoshizawa et al in view of Lips et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including the ratio of DCV/X and cell diameter (as to instant claims 1, 11-13, 16), as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed expanded beads, if not taught, may be very well met by the expanded beads of Yoshizawa et al in view of Lips et al, since the expanded beads of Yoshizawa et al in view of Lips et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
18. Applicant's arguments filed on January 28, 2026 have been fully considered.
19. With respect to Applicant’s arguments regarding the rejections of claims 1-3, 9-18 under 35 U.S.C. 103 as being unpatentable over Yoshizawa et al (US 2004/0171708) in view of Negishi et al (US 2009/0111699) and Lips et al (US 2015/0284535) and of Claims 1-3, 9-18 under 35 U.S.C. 103 as being unpatentable over Yoshizawa et al (US 2004/0171708) in view of Lips et al (US 2015/0284535), it is noted that:
1) Yoshizawa et al teaches the use of tetraalkylpiperidine-based hindered amines as flame retardants in expanded polyolefin beads. The polyolefin beads are produced from a polyolefin composition. Though Yoshizawa et al does not teach said tetraalkylpiperidine-based hindered amines as having the Formula (I) of instant claim 1, the secondary references of Negishi et al and Lips et al were applied for the teachings of that.
2) Thus, both Negishi et al and Lips et al teach the use of the tetraalkyl piperidine-based flame retardants corresponding to Formula (I) of instant claims in polyolefin compositions.
3) Since said tetraalkyl piperidine-based flame retardants corresponding to Formula (I) of instant claims are used as flame retardants in polyolefin compositions, as taught by Negishi et al and Lips et al, and the expanded beads of Yoshizawa et al are produced from polyolefin compositions comprising tetralkylpiperidine-based flame retardants, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Negishi et al, Lips et al and Yoshizawa et al choose and use the tetraalkyl piperidine-based flame retardants corresponding to Formula (I) of claim 1 as additional tetraalkyl piperidine-based flame retardants in the polyolefin composition used for making expanded beads of Yoshizawa et al as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
4) Negishi et al and Lips et al are secondary references which were applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764