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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on June 4, 2026 has been entered.
Response to Amendment
Applicant’s amendment filed on June 4, 2026 has been entered. Claims 1 and 5-9 have been amended. Claims 2-4 and 15 have been cancelled. New Claims 24-27 have been added. As such, Claims 1, 5-10, 12-14, 18-22, and 24-27 are currently pending in the application, with Claim 22 withdrawn from consideration.
Claim Objections
Claim 25 is objected to because of the following informalities: Applicant’s listing of claims contains two different claims listed as Claim 25. For the purposes of examination, the Examiner will refer to the first one as Claim 25a and the second one as Claim 25b. Appropriate correction is required.
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.
Claims 1, 5-7, 10, 12-14, 18-21, and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Application Publication No. 2007-146357 to Matsuda et al. (cited in the Information Disclosure Statement dated August 5, 2025) (“Matsuda”) in view of Yao et al., “Synthesis of Hexa-Anilino Cyclotriphosphazene and Its Application in Flame Retardant PVA Fiber,” Polymer Materials Science and Engineering, vol. 25, no. 7 (2009) (“Yao”).
With regard to Claims 1, 5-7, 18, and 20, Matsuda discloses thermoplastic resin fibers having flame- and weather-resistance and capable of undergoing electret treatment to provide a nonwoven fabric for filtration. See, e.g., Abstract, entire document. Matsuda discloses that the electret treatment can comprise using a corona discharge, paragraph [0114], which would charge the fibers electrostatically. Matsuda discloses that the fibers comprise an additive comprising a cyclotriphosphazene core. Paragraphs [0015] and [0045]. With regard to the limitation that the cyclotriphosphazene core is substituted with at least three amino-cyclic carbon groups, Matsuda generally discloses the phosphazene compound can be substituted with assorted amino groups, including amino-cyclic carbon groups, such as diarylamino and diphenylamino. Paragraphs [0043] and [0055]. However, Matsuda does not provide specific compound examples of cyclotriphosphazene compounds substituted with at least three amino-cyclic carbon groups. Yao is also related to phosphazene compounds that can be combined with thermoplastic resins to form fibers that provide flame retardant features. See, e.g., Abstract, entire document. Yao teaches that hexa-anilino-cyclotriphosphazene (“HACTP”) provides suitable flame retardant properties to fibers comprising thermoplastic resin. Page 4, Abstract. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide at least three amino-cyclic carbon groups to the cyclotriphosphazene core material, such as by using the compound HACTP, in the thermoplastic fibers disclosed by Matsuda in order to provide a compound suitable for use in flame retardant applications, as shown to be known by Yao, since Matsuda generally suggests cyclotriphosphazene compounds can be substituted with amino-aryl groups, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to the composition having a quasi-permanent electric charge, even though the combination of Matsuda with Yao does not specifically disclose the property of exhibiting a quasi-permanent charge, it is reasonable to presume that such a feature is inherent to the combination of references. Support for the presumption is found because Matsuda teaches that thermoplastic resin fibers containing a substituted cyclotriphosphazene core and Yao teaches that such a core can be substituted with amino-cyclic carbon groups, thereby resulting in a similar structure to what is claimed. Moreover, Matsuda teaches subjecting the fibers to an electret treatment, such as corona discharge, paragraph [0114], which would result in a similarly charged product. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. M.P.E.P. 2144.09. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). With regard to Claim 10, Yao discloses that HACTP does not decompose at a temperature less than 220 degrees C. Table 2. With regard to Claim 12, Matsuda discloses that the cyclotriphosphazene compound is present in an amount of 0.25% to 5.0%, by weight. Paragraph [0018]. With regard to Claim 13, Matsuda discloses that the fibers can further include a hindered amine. Paragraph [0048]. Matsuda also discloses that the fibers can further include a pigment or a nucleating agent. Paragraph [0098]. With regard to Claim 14, Matsuda does not require the presence of a second charge-enhancing additive. Moreover, Matsuda discloses that the hindered amine can be provided in an amount close to 0%. Paragraph [0018]. With regard to Claim 19, the filtration article of Matsuda satisfies the broad structural limitations of a medical article, as the article is usable in the healthcare industry, such as in a hospital. With regard to Claim 21, Matsuda teaches that the nonwoven fabric can be pleated. Paragraph [0116]. With regard to Claims 24 and 25a, the HACTP compound disclosed by Yao contains at least three amino-aryl groups, such as six phenylamino groups. Page 2. With regard to Claims 25b and 26, Matsuda discloses that the thermoplastic resin to form the fiber can comprise polypropylene. Paragraphs [0084] and [0085]. With regard to Claim 27, even though the combination of Matsuda with Yao does not specifically disclose the property of the resin having a direct current resistivity of greater than 1014 ohm-cm at 220 degrees C., it is reasonable to presume that such a feature is inherent to the combination of references. Support for the presumption is found because Matsuda teaches that thermoplastic resin fibers containing a substituted cyclotriphosphazene core and Yao teaches that such a core can be substituted with amino-cyclic carbon groups, thereby resulting in a similar structure to what is claimed. Moreover, Matsuda teaches subjecting the fibers to an electret treatment, such as corona discharge, paragraph [0114], which would result in a product possessing similar properties, including direct current resistivity. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. M.P.E.P. 2144.09. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda in view of Yao as applied to Claim 1 above, and further in view of Japanese Patent Application Publication No. 51-36266 to Akazawa et al. (an English translation obtained from Espacenet database is referenced herein) (“Akazawa”).
With regard to Claims 8 and 9, the combination of Matsuda with Yao does not disclose a cyclotriphosphazene in accordance with formula II or the four listed compounds. Akazawa is also related to thermoplastic resins used to form fibers. See, e.g., paragraph [0002], entire document. Akazawa teaches that a cyclic phosphazene trimer can be substituted with (dimethylamino)phenoxy groups (illustrated below). Paragraph [0002].
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It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to a cyclotriphosphazene in accordance with formula II, such as 1,3,5,2,4,6-Triazatriphosphorine, 2,2,4,4,6,6-hexakis[4-(dimethylamino)phenoxy]-2,2,4,4,6,6-hexahydro- (9CI), since Akazawa teaches that such a compound is suitable for use as a flame retardant in thermoplastic fibers, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960).
Response to Arguments
Applicant’s arguments filed June 4, 2026 have been fully considered but they are not persuasive.
Applicant argues that neither Matsuda nor Yao discloses that the phosphazene compounds could function as charge-enhancing additives that improve the electrostatic charge retention properties of a fiber. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Matsuda and Yao utilize similar compounds for the purposes of provide flame retardancy to the fibers; however, Matsuda discloses that the fibers are subjected to an electret treatment, such as corona discharge. Paragraph [0114]. Such an action, taken in combination with the use of the same compound additives, would inherently result in a fibrous material possessing a quasi-permanent electric charge. The combination of Matsuda and Yao therefore renders obvious the combination of claimed limitations, and the recognition of another material advantage flowing from the combined teachings of Matsuda with Yao does not form the basis for patentability.
Applicant argues that the fact that Matsuda’s fibers may be subjected to electret treatment does not establish that the specific cyclotriphosphazene compounds disclosed therein would enhance or maintain electrostatic charge. The Examiner disagrees. The combination of Matsuda with Yao discloses the same materials utilized by Applicant in the present invention. Moreover, the corona discharge treatment, expressly taught by Matsuda, is the same process used to provide the claimed quasi-permanent electric charge. No further conjecture is needed for inherency. “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.” M.P.E.P. 2144(IV).
Applicant argues that Compound 1, which falls within Matsuda’s disclosed class of cyclotriphosphazene compounds, exhibits diminished charge performance. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection relies upon using compounds disclosed by Yao in combination with the teachings of Matsuda. “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019).
Applicant argues that 1,1,3,3,5,5-hexa(p-anisyloxy) cyclotriphosphazene, which is disclosed in Matsuda, is illustrated in the present application as Comparative Examples CE C and CE D, had lower QF values as compared to their control, whereas Table 4 shows that webs comprising a charge enhancing additive according to the present claims had higher WF compared to their control. However, it is noted that if the Applicant intends to rely on examples within their specification to show non-obviousness, then the Applicant should clearly state how the examples of the present invention are commensurate in scope with the claims and how the comparative examples are commensurate in scope with the applied prior art. Neither factor is currently satisfied. First, Applicant has not shown how Examples 1, 2, and 3 in Table 4 are commensurate in scope with the claims. Examples 1, 2, and 3, only show results across three different compounds mixed with polypropylene. However, Claim 1 is not limited to three compounds. None of the dependent claims are even limited to three compounds. How can one draw the conclusion that the results of Examples 1-3 can be inferred across the class of compounds recited in Claim 1? Furthermore, independent Claim 1 is not limited to using polypropylene. Rather, the scope of the claims encompasses all thermoplastic resins. There isn’t any data for other thermoplastic resins. Moreover, the relevant amounts of materials used in the examples is not commensurate in scope with the amounts claimed. Finally, even if future data were provided, or the claims were further limited to be commensurate in scope with the examples, such a fulfillment would still not overcome the fact that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. The reasons for combining the prior art references center upon the flame retardant properties achieved using the claimed compounds.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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