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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 2: the monomers are or comprise will be interpreted as the monomers consisting of or comprise.
Claim 11: the fibrous reinforcement is or comprises will be interpreted as the fibrous reinforcement consisting of or comprises.
Claim 15: An article formed from, or comprising will be interpreted as an article consisting of, or comprising.
Claim Objections
Claim 14 is objected to because of the following informalities: the abbreviation PMC should be recited after polymer matrix composite in line 1 of claims 13 or 14. Appropriate correction is required.
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 2, 4, 11-12 and 15 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.
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 2 recites the broad recitation alkyl methacrylates, and the claim also recites methyl methacrylate which is the narrower statement of the range/limitation. In the present instance, claim 4 recites the broad recitation brominated polymeric organic flame retardant, and the claim also recites (i) tetrabromobisphenol A-tetrabromobisphenol A diglycidyl ether copolymer; (ii) 2,2'-[(1-methylethylidene)bis[2,6-dibromo-4,1- phenylene)oxymethylene]]bisoxirane polymer with 2,2',6,6'-tetrabromo-4,4'-iso- propylidenediphenol and 2,4,6-tribromophenol; and (iii) 4,4'-(1-methylethylidene)bis[2,6-dibromo-phenol] polymer with 2- (choromethyl)oxirane and 2,4,6-tribromophenol 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 2 recites are or comprise (line 2), which is interpreted as consisting of or comprises {see claim interpretation above}. Claim 11 recites is or comprise (line 1), which is interpreted as consisting of or comprises {see claim interpretation above}. Claim 15 recites formed from, or comprising (line 1), which is interpreted as consisting of, or comprising {see claim interpretation above}. The transitional term “comprising”, which is syn-onymous with “including,” “containing,” or “charac-terized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., >Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) [see MPEP 2111.03]. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”) [see MPEP 2111.03]. It is unclear if the monomers (claim 2), the fibrous reinforcement (claim 11) and the article (claim 15) are open-ended or closed to the inclusion of other materials, therefore claims 2, 11 and 15 are indefinite. For the purpose of examination, the monomers (claim 2), the fibrous reinforcement (claim 11) and the article (claim 15) will be interpreted as using the transitional term comprising.
Claim 12 recites the limitation "the method of claim 1" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 12 will be interpreted as the method of claim 9.
Claim Rejections - 35 USC § 102
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.
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) 1-2 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ueno (US 4,820,782).
Regarding claims 1-2 and 5-7: Ueno (US ‘782) discloses a resin composition [abstract], wherein Example 7 [Ex. 7; 4:10-43; Table 2, Ex. 7] contains 5 parts by weight TMPTM (trimethylolpropane trimethacrylate), 30 parts by weight DBPP (decabromodiphenyl ether [4:41-49]) and 10 parts by weight antimony trioxide {corresponding to ~21 wt% DBPP; ~7 wt% antimony trioxide} [Ex. 7; 4:10-43; Table 2, Ex. 7].
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muta et al. (US 2001/0008689).
Regarding claims 1-8: Muta et al. (US ‘689) discloses a photopolymerizable composition [abstract], wherein Example 2 [Ex. 2; 0035] (prepared as Ex. 1 [Ex. 1; 0033-0034]) prepares a syrup containing 60 parts isononyl acrylate, 28 parts n-butyl acrylate, 12 parts acrylic acid, 0.1 part 2,2-dimethoxy-2-phenylacetone. To 100 parts of the syrup was added 0.2 part trimethylolpropane triacrylate, 30 parts carbonyl-modified tetrabromobisphenol A oligomer and 10 parts antimony trioxide {corresponding to ~ 71 wt% monomers; ~ 7 wt% antimony trioxide; ~ 21 wt% carbonyl-modified tetrabromobisphenol A oligomer} [Ex. 2; 0035].
Regarding claims 9-10: Muta et al. (US ‘689) discloses applying the photopolymerizable composition to a substrate and irradiating with ultraviolet rays to afford a photopolymerized product [Ex. 2; 0035]. Muta et al. (US ‘689) discloses the substrate is impregnated with resin, and the substrate can be a non-woven fabric or polyimide film [0030-0031] [i.e. non-woven fabric exchanged for the polyimide film as the substrate in Ex. 2; see MPEP 2131.02].
Claim(s) 1-2 and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayami (JP 4-12587) [IDS 7/7/23] {English machine translation for citation}
Regarding claims 1-2 and 9-12: Hayami (JP ‘587) discloses Example 1 [Ex. 1] prepares an adhesive resin composition containing 5 parts by weight trimethylolpropane trimethacrylate, 60 parts by weight decabromodiphenyl ether, 30 parts by weight antimony dioxide, and 10 parts by weight zinc borate {corresponding to 30 wt% decabromodiphenyl ether}. The composition was applied to a glass cloth, thermocompression bonded, and the resulting laminate was cured by irradiation with an electron beam [Ex. 1].
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muta et al. (US 2001/0008689).
Regarding claims 13 and 15: Muta et al. (US ‘689) discloses a photopolymerizable composition [abstract], wherein Example 2 [Ex. 2; 0035] (prepared as Ex. 1 [Ex. 1; 0033-0034]) prepares a syrup containing 60 parts isononyl acrylate, 28 parts n-butyl acrylate, 12 parts acrylic acid, 0.1 part 2,2-dimethoxy-2-phenylacetone. To 100 parts of the syrup was added 0.2 part trimethylolpropane triacrylate, 30 parts carbonyl-modified tetrabromobisphenol A oligomer and 10 parts antimony trioxide [Ex. 2; 0035]. Muta et al. (US ‘689) discloses applying the photopolymerizable composition to a substrate and irradiating with ultraviolet rays to afford a photopolymerized product, wherein the substrate can be a non-woven fabric or polyimide film [0030-0031] [i.e. non-woven fabric exchanged for the polyimide film as the substrate in Ex. 2; see MPEP 2131.02].
Claim(s) 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rapaport et al. (US 10,533,278) [IDS 7/7/23].
Regarding claims 13-15: Rapaport et al. (US ‘278) discloses flame retardant compositions for textiles [abstract], wherein Example 2 [Ex. 2; 24:60-25:30] prepares a dispersion containing F-2100 (brominated epoxy polymer [4:35-60; 23:18-20; Table 1]), Sb2O3, and AC-170 (acrylic binder [11:22-25; 23:36-39]) [Ex. 2; 24:60-25:30]. Rapaport et al. (US ‘278) discloses Example 3A [Ex. 3A; 25:32-26:27; Table 3] applies the dispersion of Example 2 to a 50%/50% cotton polyester fabric and cures the coated fabric to afford ~33% dry add on [24:8-11] {corresponding to ~ 75 wt% fabric} [Ex. 3A; 25:32-26:27; Table 3].
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.
Claim 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/219640 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed composition, method of preparing a polymer matrix composite and polymer matrix composite substantially overlap in scope. While Application No. 18/219640 does not claim an inorganic flame retardant synergist in claims 1 and 13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included an inorganic flame retardant synergist, as Application No. 18/219640 claims an inorganic flame retardant synergist [Claim 5]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767