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 .
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 10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation maleic anhydride functionalized polyolefin, and the claim also recites maleic anhydride functionalized polyethylene which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 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 polyamide composition has already being used in a method in claim 1 for improving inclined plane tracking property. Two different methods cannot be claimed at the same time. Furthermore, claim 15 is a use claim without any positive method steps, which is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 already requires a “method for improving inclined plane tracking property at a voltage higher than 1 kV by using a polyamide composition”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-6, 8-15 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konig et al. (2012/0277354) in view of Guo et al. (CN 102775780A).
Regarding claims 1-6, 8, 9, 11-14, and 21: Konig et al. teach a method of improving comparative tracking index, CTI, using a polyamide composition [0007; Table 1, Comp. 1 vs 2] comprising 53 wt% polyamide 66, 10 wt% melam (flame retardant), 26 wt% glass fiber, 6 wt% impact modifier D2, 3.25 wt% red phosphorus (flame retardant), and 0 wt% other additives; with a CTI value of 600 [Example 2; Table 1].
Konig et al. fail to teach claimed component b).
However, Guo et al. teach a method of improving the CTI value comprising combining PA1010 with PA66 to improve the CTI value [0004-0008; Examples]. Guo et al. teach an example comprising 34 wt% PA66 and 30 wt% PA1010 (claimed component b).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 34 wt% PA66 and 30 wt% PA1010 as taught by Guo et al. as the polyamide component in Konig et al. to improve the CTI values.
An improvement in CTI is considered to be an improvement in inclined plane tracking property at a voltage higher than 1 kV or 1.2 kV since both tests are for testing the tracking resistance of the composition.
Regarding claim 10: Konig et al. teach maleic anhydride functionalized polyolefin and maleic anhydride functionalized polyethylene [0069].
Regarding claim 15: Konig et al. teach using the polyamide composition for producing electrically insulative plastic parts [0006, 0129].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konig et al. (2012/0277354) and Guo et al. (CN 102775780A) as applied to claims 1 and 6 above further in view of Horold et al. (WO 2019/076688).
US 2020/0277491 is being used as an English equivalent to WO 2019/076688 since it is a national stage entry of the international application.
Konig et al. fail to teach a claimed flame retardant.
However, Horold et al. that in polyamide 66 compositions [0023] for plugs [0114] that dimelamine pyrophosphate can be used in combination with melam for a flame retardant [0045]. Horold et al. teach 3 to 10 wt% of dimelamine pyrophosphate and melam [0095].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add dimelamine pyrophosphate in the amount taught by Horold et al. to the polyamide composition of Konig et al. to improve the flame retardance of the composition. It is obvious to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. In re Crockett 126 USPQ 186. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
The applicant has admitted that a polyethylene is a type of a polyolefin, but then states that polyethylene copolymer my include non-olfein monomers. This is not persuasive because a polyolefin may contain a non-olefin comonomer, and still be considered a polyolefin.
The Applicant alleges that claim 15 is not a different method from claim 1. This is not persuasive because a method of producing a nut or body is clearly a different method from a method of improving inclined plane tracking property. One is a method for improving the properties of a composition so that it passes an industry standard test for high voltage. The other is a method for producing a molded product.
The applicant has made the argument that neither Konig nor Guo discloses IPT, and alleges that improving CTI does not automatically guarantee an improvement in IPT. However, the applicant has not provided any evidence that the improvement of the underlying properties in the combination of Konig in view of Guo, would not also improve the IPT. Fukuzawa et al. (JP 7075532B) provides evidence that CTI and inclined plane tracking are both methods for measuring the tracking resistance of an insulating material, and that the standard lower limit for inclined plane tracking is 1 kV [0203]. Midgley et al. (5,298,301) also teach that comparative tracking index and inclined plane tracking are both methods for testing non-tracking (column 4, lines 7-10). Therefore if Konig in view of Guo improves the non-tracking of the composition, it will improve the IPT, as well as the CTI.
The applicant has alleged the unexpected result of an improved IPT. This is not persuasive because the claims are not commensurate in scope with the data provided. Moreover, the results are expected. Guo et al. teach a method of improving the CTI value comprising combining PA1010 with PA66 to improve the CTI value [0004-0008; Examples]. Guo et al. teach an example comprising 34 wt% PA66 and 30 wt% PA1010 (claimed component b). An improvement in the non-tracking of the composition will also improve the IPT, as well as improving the IPT.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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