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 1-24 in the reply filed on 10/9/2025 is acknowledged.
Claims 25-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.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 10/9/2025.
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 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 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.
Claims 3, 11, 14, 20, 23, and 24 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 “about” is indefinite. The instant specification does not provide any indication as to the metes and bounds of the term “about”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662).
Regarding claims 1-3, 14-16, and 18: Naik et al. teach a flame retardant polymer composition comprising 56 wt% polyamide 66, 24 wt% glass fibers, 13 wt% AlPi (diethyl aluminum phosphate, Exolit OP 1230), and 7 wt% Safire 200 (melamine poly(aluminum phosphate), Safire 400 (melamine poly(zinc phosphate), or Safire 600 (melamine poly(magnesium phosphate) (2.1 materials; Table 1). The total amount of the flame retardant system is 20 wt% (Table 1).
Since the composition is the same as claimed it will possess the claimed V0 rating and comparative tracking index. 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 17: The composition is free of zinc borate (Table 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.
Claim(s) 4-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) as applied to claim 1 above further in view of Hermann et al. (3,519,595) and Topoulos (WO 2004/092274).
Regarding claims 4-10: Naik et al. fail to teach a stabilizer.
However, Hermann et al. teach that adding Cu(I)I-2-triphenylphosphine (iodobis(triphenylphosphino) copper) to a polyamide improves the stability of the polyamide (Column 1; Example 3; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iodobis(triphenylphosphino) copper as taught by Hermann et al. to the composition of Naik et al. to improve the stability of the polyamide.
Topoulos teaches adding Irgafos P-EPQ (antioxidant of claim 8) to a polyamide composition provides stability during processing (page 13, lines 20-21; Examples; Tables 1-2). Irgafos P-EPQ has the following structure:
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It would have been obvious to one of ordinary skill in the art before the ffective filing date of the claimed invention to add Irgafos P-EPQ as taught by Topoulos to the composition of Naik et al. to improve stability during processing of the composition.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) as applied to claim 1 above further in view of Endtner et al. (2016/0177060).
Naik et al. fail to teach silicon dioxide.
However, Endtner et al. teach adding 0.01 to 5 wt% [0074] of silicon dioxide as a nucleating agent [0198-0199; 0204] to a polyamide composition.
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to add 0.01 to 5 wt% of silicon dioxide as taught by Endtner et al. to the polyamide composition of Naik et al. to speed up crystallization of the polyamide.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) as applied to claim 1 above further in view of Watanabe et al. (JP 2004-211083).
Naik et al. fail to teach a lubricant.
However, Watanabe et al. teach adding a partially saponified ester wax of montanic acid (Licowax E or Licowax OP) to reduce mold contamination of a polyamide composition [0025; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Licowax E or Licowax OP as taught by Watanabe et al. to the polyamide composition of Naik et al. to reduce mold contamination.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) as applied to claim 1 above further in view of Immel et al. (2015/0148468).
Naik et al. fail to teach a semi-aromatic or aromatic polyamide.
However, Immel et al. teach adding a semi-aromatic polyamide [0031] to a polyamide 66 composition to improve resistance to heat distortion [0152].
It would have ben obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a semi-aromatic polyamide as taught by Immel et al. to the composition of Naik et al. to improve the resistance to heat distortion.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) as applied to claim 1 above further in view of Uchida et al. (2009/0098325).
Naik et al. teach 24 wt% glass fibers (2.1 materials; Table 1), which is “about 25 wt%”.
Naik et al. is silent on the fiber length.
However, Uchida et al. teach glass fibers for a polyamide resin composition with a fiber length of 0.05 to 5 mm [0115].
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 glass fiber length of 0.05 to 5 mm as taught by Uchida et al. as the glass fiber length of the fibers of Naik et al. to use an art tested glass fiber. It is a simple substitution of one known element for another to obtain predictable results.
Claim(s) 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) in view of Hermann et al. (3,519,595) and Topoulos (WO 2004/092274).
Naik et al. teach a flame retardant polymer composition comprising 56 wt% polyamide 66, 24 wt% glass fibers, 13 wt% AlPi (diethyl aluminum phosphate, Exolit OP 1230), and 7 wt% Safire 200 (melamine poly(aluminum phosphate), Safire 400 (melamine poly(zinc phosphate), or Safire 600 (melamine poly(magnesium phosphate) (2.1 materials; Table 1). The total amount of the flame retardant system is 20 wt% (Table 1).
Naik et al. fail to teach a stabilizer.
However, Hermann et al. teach that adding Cu(I)I-2-triphenylphosphine (iodobis(triphenylphosphino) copper) to a polyamide improves the stability of the polyamide (Column 1; Example 3; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iodobis(triphenylphosphino) copper as taught by Hermann et al. to the composition of Naik et al. to improve the stability of the polyamide.
Topoulos teaches adding Irgafos P-EPQ (antioxidant of claim 8) to a polyamide composition provides stability during processing (page 13, lines 20-21; Examples; Tables 1-2).
It would have been obvious to one of ordinary skill in the art before the ffective filing date of the claimed invention to add Irgafos P-EPQ as taught by Topoulos to the composition of Naik et al. to improve stability during processing of the composition.
Since the composition is the same as claimed it will possess the claimed comparative tracking index. 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.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (Polymer Degradation and Stability 98 (2013) 2653-2662) in view of Hermann et al. (3,519,595) and Topoulos (WO 2004/092274).
Naik et al. teach a flame retardant polymer composition comprising 56 wt% polyamide 66, 24 wt% glass fibers, 13 wt% AlPi (diethyl aluminum phosphate, Exolit OP 1230), and 7 wt% Safire 200 (melamine poly(aluminum phosphate), Safire 400 (melamine poly(zinc phosphate), or Safire 600 (melamine poly(magnesium phosphate) (2.1 materials; Table 1). The total amount of the flame retardant system is 20 wt% (Table 1).
Naik et al. fail to teach a stabilizer.
However, Hermann et al. teach that adding Cu(I)I-2-triphenylphosphine (iodobis(triphenylphosphino) copper) to a polyamide improves the stability of the polyamide (Column 1; Example 3; Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add iodobis(triphenylphosphino) copper as taught by Hermann et al. to the composition of Naik et al. to improve the stability of the polyamide.
Topoulos teaches adding Irgafos P-EPQ (antioxidant of claim 8) to a polyamide composition provides stability during processing (page 13, lines 20-21; Examples; Tables 1-2).
It would have been obvious to one of ordinary skill in the art before the ffective filing date of the claimed invention to add Irgafos P-EPQ as taught by Topoulos to the composition of Naik et al. to improve stability during processing of the composition.
Since the composition is the same as claimed it will possess the claimed notched Charpy impact strength and tensile strength. 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.
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 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18/312134. 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.
Claims 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of copending Application No. 18/079030. 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