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 with traverse of Group I, claims 15-25 in the reply filed on 10/29/2025 is acknowledged. The traversal is on the ground(s) that the inventions are distinct and there is no burden. This is not found persuasive because the standard for 371 applications is that there is a lack of unity, not that the groups are independent and distinct. There is a lack of unity among the claims since the special technical feature (original claim 1) is taught by Siddhamalli et al. Furthermore, there is a serious burden since the different groups require separate searches.
The requirement is still deemed proper and is therefore made FINAL.
Claim 26 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/29/2025.
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 15-25 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 claimed “average molecular weight” in claim 15 is indefinite. The claim does not specify if it is a weight average, viscosity average, number average, or Z-average molecular weight. The metes and bounds of the limitation are unclear.
Claim 17 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 claimed solubility is indefinite. The claim does not specify the type of solubility, such as solubility in water or a particular organic solvent. The metes and bounds of the limitation are unclear.
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) 15-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siddhamalli et al. (2008/0167408) in view of Yagi et al. (JP 05-009376A) as evidenced by Clariant (Exolit AP 62 Data Sheet).
Regarding claim 15-23 and 25: Siddhamalli et al. teach a composition comprising 65 wt% thermoplastic polyurethane, 2.5 wt% of an inorganic flame retardant (Talc), 20 wt% phosphinate and 7.5 wt% phosphate [Example 1; Table 1]. Siddhamalli et al. teach using ammonium polyphosphate as the inorganic flame retardant component [Claim 19]. It would have been obvious to use ammonium polyphosphate in place of talc in Example 1, thereby the amount of ammonium polyphosphate is 2.5 wt%.
Siddhamalli et al. fail to specify a particular ammonium polyphosphate.
However, Yagi et al. teach that Exolit AP 462 is a commercially available ammonium polyphosphate for use in thermoplastic polyurethane composition [0010; 0030] that is microencapsulated (coated as claimed) so that the physical properties of the thermoplastic polyurethane, such as tensile strength, are not adversely affected [0014-0015].
Since Siddhamalli et al. is silent on a specific ammonium polyphosphate, 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 commercially available Exolit AP 462 as taught by Yagi et al. as the ammonium polyphosphate in Siddhamalli et al. so that the physical properties of the thermoplastic polyurethane composition, such as tensile strength, are not adversely affected.
Exolit AP 462 has an average particle size (D50) of 20 microns, the claimed solubility, and a weight average molecular weight that overlaps the claimed range, as evidenced by Clariant (page 1).
With regard to the molecular weight, the subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05. Furthermore, the claimed range is not critical. It is noted that the Applicant does not specify the molecular weights for the ammonium polyphosphates used in the instant examples.
Regarding claim 24: Siddhamalli et al. teach that the weight average molecular weight of the thermoplastic polyurethane is 90,000 to 450,000 Da [0049; Examples].
Relevant Prior Art
Zhang et al. (Ind. Eng. Chem. Res. 2017, 56, 7468-7477) teach that encapsulated ammonium polyphosphate blended into thermoplastic polyurethane provides a huge increase in tensile strength and elongation at break, and improved flame retardance by effectively restraining melt-dripping (Abstract).
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