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 .
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5 and 7-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the inorganic filler comprises wollastonite while also reciting a DTA requirement for the inorganic filler. In ¶[0108] of the as-filed specification, wollastonite is taught as a non-endothermic inorganic filler (C2). Applicant presents no disclosure of how one of ordinary skill in the art is able to arrive at the DTA requirement using wollastonite as the inorganic filler. In fact, this Comparative Example 5 in the as-filed specification which does not meet the DTA limitation. None of the portions of the as-filed specification cited by Applicant in their response filed December 31, 2025 address this analysis and all these section have an additional component (i.e. C1 endothermic inorganic flame retardant such as AlOH3) present. Therefore, one of ordinary skill in the art is not reasonably suggested Applicant in their possession the claimed compositions which comprise wollastonite and meet the DTA limitation as recited by Claim 1 unless an endothermic inorganic filler is also present (not recited by Claim 1 but recited by Claim 2).
Claims 3-5 and 7-8 are rejected based on their dependency to Claim 1.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Imagawa (JP2006316168; reference made to included English machine translation) and Levchik (WO2013085788).
The Japanese language document for Imagawa has been annotated to include the relevant English translations of the tables used in the rejection below which are not evident from the layout of the table.
Imagawa in Example 1 and Comparative Example 2 outlines the following compositions:
Parts
Wt%
Ex 1
Comp Ex1
Ex 1
Comp Ex1
A-1
EP
100
100
A-1
EP
71.43%
71.43%
D-1
AlOH3
38.8
33.9
D-1
AlOH3
27.71%
24.21%
E-1
NOR
0.8
4.1
E-1
NOR
0.57%
2.93%
F-1
phosphate ester
0.4
2
F-1
phosphate ester
0.29%
1.43%
140
140
100.0%
100.0%
EP refers to an ethylene-propylene copolymer. Propylene homopolymers is specifically taught in ¶[0054] along with polyolefin resins being particularly preferred.
The above exemplified amounts of the above compounds in both the Inventive and Comparative Example above read over the ranges and compounds of Claim 1, Claim 3, Claim 4 and Claim 6.
Imagawa teaches the kneading process of Claim 8 in ¶[0059].
Imagawa teaches in ¶[0058] the compositions may further comprise additional particles such as calcium carbonate, kaolin, talc, glass fibers (glass particles) but does not specifically teach wollastonite as a particle filler to add.
Levchik, working in the field of polyolefin compositions with inorganic flame retardant fillers similar to Applicant and Imagawa, teaches exemplifies the use of calcium borate coated wollastonite particles in polyolefin flame retardant compositions which also comprising an inorganic flame retardant such as AlOH3 or Magnesium hydroxide (MDH) (inorganic flame retardant list on page 6). Both of the inorganic fillers are used by Imagawa. The use of calcium borate coated wollastonite is exemplified to increase limiting oxygen index (LOI) and also decrease heat release rate (See Table 3 and text below it, for instance).
Imagawa teaches higher LOI indicates higher flame retardancy in ¶[0072], therefore the flame retardancy parameters in Levchik would be relevant to one of ordinary skill in the art practicing Imagawa.
Additionally, Levchik teaches the use of phosphate ester flame retardants and other nitrogen containing as additional flame-retardant compounds in the compositions which Levchik uses. (page 9)
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Imagawa, in particular that of Example 1, by adding the calcium borate coated wollastonite for the advantage of increasing the LOI and decreasing the heat release rate of the compositions as taught by Levchik as discussed above.
This read over the wollastonite filler of Claim 1.
The ATOH3 is aluminum trihydrate (or trihydroxide or simply hydroxide) and Imagawa is silent on the DTA requirement of Claim 1, Claim 5 and Claim 6. However, review of Applicant’s specification reveals that no additional processing steps or treatment of the ATOH3, which Applicant says meets this limitation, was done to arrive at the DTA limitation. Additionally, every one of Applicant’s examples in the as filed specification which have a combination of AlOH3 and wollastonite has the recited DTA limitation. Therefore, one of ordinary skill in the art is reasonably suggested the DTA limitation must be anticipated with the ATOH3 / calcium borate coated wollastonite of Imagawa and Levchik for Claim 1, Claim 5 and Claim 6 when tested accordingly especially since the amounts used in Imagawa of this inorganic filler are in the claimed range of both Claim 1, Claim 5 and Claim 6.
With respect to the particle size limitations of Claims 1 and 6, Imagawa teaches the average particle size of the metal hydroxides like ALOH3 exemplified are 0.2 to 2 microns. Imagawa is silent on the particle size condition of the claims, however, considering the breadth required to have any particles in the range of 0.2 to 2 microns being bigger than 100 micron, a number 50 times bigger, when the average, or d50 is 0.2 to 2 microns, one of ordinary skill is reasonable suggested the number of particles having a maximum diameter of 100 microns or more (or 200 microns or more) being 1/5 or less or none at all must be satisfied when tested appropriately for the above reason. In other words, the 0.2 to 2 micron teaching of Imagawa is so far removed from the 100 micron limitation (or 200 micron for Claim 6) that one of ordinary skill in the art is reasonably suggested the limitation as recited in Claim 1 or Claim 6 must be anticipated when tested accordingly.
Alternatively, Levchik teaches on page 6 from the viewpoint of mechanical properties, ease of dispersion and flame retardancy, the inorganic flame retardant particles have an average diameter of 10 microns or less and the ratio of coarse particles with a particle diameter of 25 microns or more is 10 % or less to the total inorganic filler.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the inventio of Imagawa and Levchik, in particular that of Example 1, such that the number of particles of the 0.2 to 2 micron AlOH3 particles of Imagawa have coarse particles of 25 microns or more as 10 % or less for the advantage of improving the mechanical properties, ease of dispersion and flame retardancy of the compositions of Imagawa and Levchik. One of ordinary skill in the art would have been motivated to have 0 % of the 25 micron or more particles as discussed above at it logically follows this would maximize the above teaching of Levchik with respect to the benefits of the particles sizes taught by Levchik above.
With respect to the calcium borate coating wollastonite particle sizes, on page 8 Levchik teaches the particle size of these particles is 1 to 15 microns and d99 (i.e. 99 % of the particles) have a diameter of less than 25 microns preferably. (page 8, 1st paragraph).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to practice the invention of Imagawa and Levchik as discussed above, such that the calcium borate coated wollastonite has a particle size of 1 to 15 microns and a d99 of less than 25 microns because Levchik teaches this is preferred as discussed above.
As such, when considering the AlOH3 and calcium borate coated wollanstonite of the combination of Imagawa and Levchik, one of ordinary skill in the art is reasonably suggested, when tested appropriately, the particle diameters of the inorganic fillers discussed above must be meet particle size limitations of Claim 1 as Imagawa and Levchik are motivating having substantially no particles with a size above 25 microns in the compositions, thereby by meeting either of the limitations of Claim 1.
Imagawa teaches in ¶[0058] the compositions may further comprise additional particles such as calcium carbonate, kaolin, talc, glass fibers (glass particles) but does not specifically teach wollastonite as a particle filler to add which read over the additional fillers of Claim 2.
Levchik teaches the use of fatty acids on the calcium borate wollastonite particles on page 8 3rd paragraph and exemplifies it in Example 4. This reads over Claim 7.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Imagawa (JP2006316168; reference made to included English machine translation) and Levchik (WO2013085788) in view of Troutman (U.S. 20030191213).
Imagawa and Levchik is applied under §103 above including with respect to Claim 2.
Imagawa does teach talc may be added to the compositions as discussed above in the §103 rejection of Claim 2.
Troutman, working in the field of fame retardant polymer compositions which can include polyolefins (¶[0157] including polypropylene) using NOR hindered amines similar to Imagawa and Applicant, teaches talc in an amount of up to 3 wt% can be added to the compositions for flow properties to reduce the spread of flaming droplets. ¶[0150]
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Imagawa, in particular that of Example 1, such that up to 3 wt % of talc is added to the composition to improve the flow properties of the compositions to reduce the spread of flaming droplets as taught by Troutman. ¶[0150]. One of ordinary skill in the art would have been motivated to take the up to 3 wt% talc out of the AlOH3 portion of the compositions as both Imagawa and Troutman are teaching this talc as an inorganic filler and, therefore, it is logical to reduce the inorganic filler AlOH3 to allow for the up to 3 wt% of talc to be added so that all the proportions of the other components remain the same. This would lead on of ordinary skill in the art to up to 3 wt% talc in the overall composition and less 3 wt% less AlOH3 in the overall composition based on Example 1.
While Imagawa is silent on the DTA limitation of Claim 5, every composition in the as-filed specification which has a phosphate ester flame retardant, NOR hindered amine flame retardant, AlOH3 with DTA as claimed in claim 1 and talc in a polyolefin has the recited DTA of Claim 1 and also Claim 5. For this reason, when tested appropriately, one of ordinary skill in the art is reasonably suggested the modified composition of Imagawa, Levchik and Troutman must have the recited DTA limitation of Claim 5 and also additionally talc as recited in Claim 2’s list of compounds.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Imagawa (JP2006316168; reference made to included English machine translation) and Levchik (WO2013085788) in view of Amaiya (JP2012015402, reference made to included English machine translation).
Imagawa and Lechik are applied as above under §103. Imagawa teaches the composition of Claim 1 but fails to teach a fatty acid in the composition for the AlOH3 inorganic portion.
Amaiya, work in the field of flame retardant polyolefin compositions comprising inorganic fillers likes ALOH3, teaches metal hydroxides like ALOH3 can be surface treated with fatty acids to improve compatibility with the resin. (highlighted section of page 14)
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Imagawa, in particular that of Example 1, such that the ALOH3 was surface treated with a fatty acid for the advantage of increasing the compatibility of the AL-OH3 with the resin as taught by Amaiya using the fatty acid specifically taught by Amaiya for this purpose.
This reads over a fatty acid in the composition as recited by Claim 7.
Allowable Subject Matter
Claim 6 is allowed. The closest prior art is Imagawa (JP2006316168; reference made to included English machine translation) which teaches the composition of Claim 6 but for the 5 micron limitations of the particle size. Imagawa is silent on the 5 micron limitation and there is not enough information to necessarily conclude the exemplified AlOH3 must meet the 5 micron limitation. Additionally, relevant prior art such as Levchik (WO2013085788) address the particle size of AlOH3 filler in flame retardant polyolefin but do not lead on of ordinary skill in the art to the 5 micron limitation of the claim. To arrive at the claimed 5 micron limitation using the prior art, one must have the benefit of hindsight.
Response to Arguments
Applicant’s claim amendments and remarks filed December 31, 2025 have been fully considered but are not persuasive in moving the application to allowance. The rejections of record have been amended to include rejections based on Levchik to address the new wollastonite limitations. Additionally, the new wollastonite limitation has necessitated the §112 new matter rejection.
The rejection against Claim 6 has been withdrawn on consideration of the art of record. The claim requires either (a) 200 microns / 100 microns of 1/20 or less OR no particles above 100 microns or more AND ratio of 5 microns or less to 5 microns or more of 10 or more OR (b) no particles of 5 microns or more. Imagawa nor Levchik do not reasonably suggest any teachings that would arrive at any of the 5 micron requirements of Claim 6.
Note that Levchik has been added to the rejections of record and specifically addresses particle sizes of inorganic flame retardants. Applicant presents no results in the as-filed specification with maximum particle sizes of inorganic flame retardants of 25 microns such as those suggested by Levchik.
Applicant’s remarks filed December 31, 2025 essentially mirror those of the November 24, 2025 have been fully considered but are not persuasive. These remarks only address the inherency argument made and do not address Levchik’s teachings as an alternative to reading over the particle size teaching of the claims.
Applicant argues the definition of particle size in the as-filed specification limits how one of ordinary skill in the art interprets the Imagawa and also provides evidence the maximum particle size of Imagawa can potentially be 50 to 150 times the size of range of sizes taught by Imagawa. This argument amounts to more speculation on the part of Applicant without considering the claimed limitation nor the inherency argument of record nor the previous rebuttal to Applicant’s particle size remarks.
Applicant further argues this definition establishes that primary particles and agglomerations can lead to particle sizes over 100 microns. This argument continues to be not persuasive. Imagawa is teaching a d50 of 0.2 to 2 microns and this is independent of primary particles or agglomerations. Applicant only speculates that agglomerations somehow must be present or present as a level above 100 microns due to this definition. This definition has no bearing on the analysis of record because Imagawa does not address primary vs. agglomerated particles. All this definition does is state that with respect to Applicant’s disclosure, particle sizes disclosed can be with respect to primary particles or agglomeration of particles.
The particle size limitation is either a ratio of 300 micron to 100 micron particles is 1/5 or less OR there are no particle having a maximum diameter o 100 microns or more. Applicant argues as if the maximum particle size limitation is the only limitation that must be met. This is incorrect. The inherency argument is made over either condition must be met. Therefore, this argument is not persuasive.
Further, with respect to previous arguments made to the particle size limitation, the Examiner has already address how Applicant’s remarks to hypothetical examples put forth by Applicant are not reasonable for very specific reasons. Applicant makes no rebuttal to these further remarks and only points to their spec definition that says there can be particles and agglomerations of particles and this, somehow, suggests there are not necessarily 0 particles with maximum diameters of more than 100 microns. This argument is not persuasive as agglomerations of small particles are just small particles themselves according to Applicant. Note that the position in the rejection is taken that when tested accordingly the composition of Imagawa must have particles according to the claims. Imagawa also exemplifies a specific AlOH3 to be tested accordingly. No disclosure in Imagawa reasonably suggest particles, agglomerated or not, are outside the range recited by Claim 1. In other words, the teachings of Imagawa and the exemplified AlOH3 are reasonably suggested to must be in the recited particle size limitation range when tested accordingly for the reasons of record regardless of these particles being in the form of individual particles of agglomerations of said particles as defined in Applicant’s as-specification.
Applicant argues the lack of statistical data in Imagawa undermines the inherency position takes in the rejection of record. This argument is not persuasive. One does not necessarily need statistical data to evaluate what must be present in Imagawa but relevant statistical data may be enough to overcome the preponderance of evidence suggesting the particle sizes must be present in Imagawa. Applicant has put forth hypothetical examples as to why the particles of Imagawa are not necessarily in the range recited by the claims and the Examiner has put forth these hypothetical examples are not persuasive because they present unrealistic or unreasonable scenarios. This argument continues to be not persuasive. Applicant appears to only be speculating as to what could be possible without providing any extrinsic evidence or other persuasive arugment to support their speculation. Ultimately, the question before one of ordinary skill in the art practicing Imagawa is “If I practice this invention would I be infringing on invention as claimed in this patent application?” The evidence and analysis reasonably suggested that one of ordinary skill in the art must be infringing for the reasons outlined in the rejection of record. Burden shifts to Applicant to show that this must not be infringing. However, Applicant has failed to provide sufficient arguments (and provides no extrinsic evidence to support any of their arguments), to shift burden back to the Examiner to reassess the inherency position put for in the rejection of record.
With respect to Applicant’s reiteration of their hypothetical examples, the response from the final action of September 5, 2025 are repeated below as Applicant’s remarks essentially mirror those.
Applicant’s remarks filed August 19, 2025 have been fully considered but are not persuasive. Applicant remarks represent two hypothetical scenarios which they state demonstrate the AlOH3 exemplified by Imagawa would not necessarily meet the claimed particle size limitation of the claims when tested appropriately. This argument is not persuasive.
Applicant’s hypothetical examples of particle size distributions are not sufficient to shift the preponderance of evidence back to the particle size claimed not being inherent because there is no evidence these hypothetical distributions are ground in any realistic reality and, further, there is no evidence to suggest such extreme particle size distributions are reasonably suggested to be within the four corners of Imagawa.
With respect to the hypothetical particle size distributions being non-realistic, Applicant can make up any numbers they want to try to argue the particle size distribution claimed is not inherent, however, there must be some measure of reasonableness to the hypothetical examples. To arrive at the hypothetical examples of the arguments, taking the first counter example for instance, one must think it is reasonable, based on Imagawa’s teachings that the AlOH3 reasonably suggested and exemplified could include trimodal distribution of particle sizes in which there are minor amounts of particles 50 x (100 microns / 2 microns) to 150 x (300 / 2 microns) and only have these minor amounts of 100 and 300 microns. In other words, one of ordinary skill in the art would have to be reasonably suggested that Imagawa’s AlOH3 could include a situation where someone purposely took out all the particle sizes between 0.9 microns and 301 microns but for 99.8 % of the 0.9 microns, 0.1 wt% of the 101 microns and 0.1 wt% of the 301 micron amounts to arrive the hypothetical example and, additionally, not state anything about it. This does not appear to be a reasonable in light of the prior art Imagawa or otherwise.
Further, considering the breadth of the 50x to 150x, Applicant would need to persuasively argue why it would be reasonable to even have particles of 100/300 or more microns when the average size of the art is in range 150 times lower than that number.
Note that Applicant is creating some hypothetical example where the 99.8 % amount of 0.9 micron are all that exist. A delta function at 0.9, there are no particles at 1 or 0.98 or 0.75 or 2. Somehow the art is reasonably suggests trimodal, delta functions of particles sizes at 3, and only 3, specific points could be present. As soon as the 0.9 micron particles size has any breadth to it, which is more reasonable than not, Applicant’s hypothetical counterexamples are no longer persuasive because Applicant has concocted this example to hit each particle size limitation together when actually claim limitation is an “or” condition. How does on achieve 99.8 % of 0.9 micron particles ± 0.0 microns (or ± 0.0 wt%) in light of the teachings of Imagawa or the prior art for that matter, especially considering AlOH3 is an exemplified filler that must have a particle size distribution that is simply untested with respect to any of the 3 conditions set forth by the claimed invention. Applicant has presented no evidence this kind of distribution is even realistically possible without hindsight.
Similar arguments can be made for Applicant’s hypothetical counterexample 2 in which Applicant concocts a bimodal distribution.
With respect to Imagawa’s disclosure, Imagawa is completely silent on bimodal or trimodal or any other particle size distribution. Applicant’s extreme hypothetical counterexample appear to be fabricating numbers to move the preponderance of evidence back to the Office to establish inherency based on unreasonable conclusions on Applicant speculation; not what is reasonable suggested from the prior art.
In other words, one of ordinary skill in the art practicing Imagawa and not wanting to infringe on the claimed scope of Applicant invention must come to the conclusion the exemplified AlOH3 must infringe on the claimed particle limitations for the reasons of record when tested accordingly and, therefore, must figure out some other AlOH3 to use to not infringe. Applicant’s arguments based on hypothetical, speculative examples do not properly shift the burden of establishing inherency back to the Office as they do not appear to be reasonable distributions based on the prior art of record. Applicant, additionally, does not present any other extrinsic evidence to support their hypothetical conclusions at this time.
For the above reasons, the Examiner disagrees with Applicant and the rejections are maintained.
Conclusion
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/Christopher M Rodd/Primary Examiner, Art Unit 1766