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 .
Response to Amendment
Applicant’s amendment filed on February 9, 2026 has been entered. Claim 1 has been amended. As such, Claims 1-10, 12-15, and 18-22 are currently pending in the application, with Claims 2, 3, and 22 withdrawn from consideration.
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, 4-7, 10, 12-15, and 18-21 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, 4-7, 18, and 20, Matsuda discloses a 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. 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 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 15, 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 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].
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 five 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 February 9, 2026 have been fully considered but they are not persuasive.
Applicant argues that the Patent Office has not explained why one of ordinary skill in the art would turn away from all of the phosphazene compounds disclosed in Matsuda and use the particular phosphazene taught in Yao. The Examiner disagrees. “When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule…. In keeping with the flexible approach to obviousness under KSR, as well as the requirement for explanation, Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported.” M.P.E.P. 2144. Legal precedent has set forth that the selection of a known material based on its suitable for its intended use supports a prima facie obviousness determination. M.P.E.P. 2144.07; see also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). Matsuda discloses that the fibers comprise a flame retardant additive comprising a cyclotriphosphazene core. Matsuda generally discloses the phosphazene compound can be substituted with assorted amino groups, including amino-cyclic carbon groups, such as diarylamino and diphenylamino. Thus, Matsuda establishes that a class of phosphazene compounds substituted with amino-cyclic carbon groups, are suitable for use in their invention. Yao, which is a reference published after the filing date of Matsuda, teaches that HACTP, which falls within the general class of compounds utilized by Matsuda, is a compound that, after the filing date of Matsuda but prior to the filing date of the present invention, is recognized to provide suitable flame retardant properties to fibers comprising thermoplastic resin. The person having ordinary skill in the art would recognize that HACTP would be suitable for use in the Matsuda reference without any undue burden, given Matsuda’s disclosure of using the same class of compounds, and with a predictable result of providing flame retardant features, given Yao’s disclosure that suitable flame retardant properties are, in fact, achieved with HACTP. The person having ordinary skill in the art is not obligated to only use the flame retardant compounds disclosed by Matsuda in an obviousness analysis. Rather, the person having ordinary skill in the art is presumed to have known of all relevant art at the time of the filing of the application, and is not limited to the time when only the prior art was filed or published.
In response to Applicant's argument that it is desirable for the charge enhancing additive to provide a good quality factor (“QF”), and that a higher QF indicates better filtration performance, 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). “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 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, there is no disclosure in the Specification for the materials that make up the comparative examples, nor their amounts. The phrase “1,1,3,3,5,5-hexa(p-anisyloxy) cyclotriphosphazene” does not appear in the Specification. There isn’t any disclosure as to the make-up of the comparative examples CE A or CE B either. As such, the Specification lacks sufficient data to be able compare CE C and CE D to CE B (without knowing the make-up of these materials), while drawing a simultaneous conclusion with respect to EX 1, EX 2, and EX 3 compared to CE A. How are CE A and CE B the same or different? Why is there no direct comparison of CE C and CE D to the Examples 1-3? Second, 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, none of the claims are 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
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789