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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joachimi et al. (2006/0189747).
Regarding claims 1-4 and 7: Joachimi et al. teach a halogen free composition comprising 51 wt% polyamide 66, 13 wt% aluminum tris(diethylphosphinate) (flame retardant), 25 wt% glass fibers (reinforcement material), 6 wt% melamine polyphosphate (melamine derivative) and 5 wt% of component B1, which is copolymer of ethylene and 2-ethylhexyl acrylate with ethylene content of 63 wt% (claimed absorbent) [0137; Example 78; Table 8]. The composition does not comprise a halogen or red phosphorus [Example 78; Table 8]. Joachimi et al. teach that the composition comprises a flame retardant synergist that is zinc sulfide [0066]. Joachimi et al. also teach adding 0.05 to 3 parts by weight of zinc sulfide as a pigment [0092-0096], with an example comprising 5 wt% of zinc sulfide [Example 96; Table 9].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 5 wt% of zinc sulfide (flame-retardant synergist) to the composition of Example 78 to provide a flame retardant synergist and the desired color for the composition.
Joachimi et al. teach that methyl acrylate can be used interchangeably with 2-ethylhexyl acrylate [0040].
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 methyl group in place of the 2-ethylhexyl in the copolymer in the examples of Joachimi et al. It is a simple substitution of one known element for another to obtain predictable results.
Since the composition is the same as claimed it will be a low-mold deposit composition. 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 6: The weight ratio of phosphinate to melamine derivative is 13:6 or 1:0.46 [Example 78; Table 8].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joachimi et al. (2006/0189747) as applied to claims 1 and 4 above further in view of Weiss et al. (2013/0338264).
Joachimi et al. fail to specify a phosphorous content for their melamine polyphosphate.
However, Weiss et al. teach a melamine polyphosphate as a flame retardant for polyamide compositions [0001]. Weiss et al. teach examples of a melamine polyphosphate with a phosphorous content of 10.9 [0140], 12.0, 13.9 [0145], 11.2 [0148], or 14.8 [0154].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the melamine polyphosphate of Weiss et al. with a phosphorous content of 10.9, 12.0, 13.9, 11.2, or 14.8 as the melamine polyphosphate in the composition of Joachimi et al. It is a simple substitution of on known element for another to obtain predictable results.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joachimi et al. (2006/0189747) as applied to claim 1 above as evidenced by Endtner et al. (2016/0177060).
Joachimi et al. teach Lanxess CS 7928 glass fibers [0141]. Lanxess CS 7928 is E glass fiber as evidenced by Endtner et al. [0350].
Response to Arguments
Applicant's arguments filed 3/20/2026 have been fully considered but they are not persuasive.
The applicant has limited Joachimi et al. to 2-ethylhexyl acrylate. However, Joachimi et al. teach that methyl acrylate is a clear alternative to 2-ethylhexyl acrylate [0040].
The applicant has made the argument that the prior art does not teach a reduced mold deposit. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
The applicant has alleged the unexpected result that an ethylene-methyl acrylate unexpected reduces the amount of mold deposit generated during injection molding. This is not persuasive for the following reasons:
The claims are not commensurate in scope with the data provided.
The inventive examples use components B1, B2, and B3, which are a copolymer of ethylene and 2-ethylhexyl acrylate or a copolymer of ethylene and acrylic acid-n-butyl ester.
The applicant does not have data to support the assertion of improved properties of methyl acrylate over 2-ethylhexyl acrylate.
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.
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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