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 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.
Claim(s) 1-13 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitaura et al (JP 2016-120662).
Regarding claims 1 and 6, Kitaura discloses a stampable sheet (0001) comprising polypropylene resin, i.e. thermoplastic resin, (0001, 0008), a flame retardant (0054) or phosphorus based antioxidant, i.e. flame retardant, (0057), a copolymer of alpha olefin and maleic anhydride, i.e. dispersant (0044), and glass or carbon fiber, i.e. inorganic fiber, (0031, 0038) wherein the inorganic fiber has a content of 3 to 60% by weight (0037) or 10 to 50 % by weight (0042) and the dispersant in an amount of 0.4 to 13 % by weight to obtain impact strength and strength of the resin composition (0052).
Kitaura does not disclose the dispersant has a content of more than 0 to 25 parts by mass or less based on 100 parts by mass of flame retardant. Since the instant specification is silent to unexpected results, the specific amount of dispersant is not considered to confer patentability to the claims. As the impact strength and the strength of the resin composition is a variable that can be modified, among others, by adjusting the amount of dispersant (0052), the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of dispersant in the sheet to obtain the impact strength and the strength of the resin composition (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 4, Kitaura discloses the stampable sheet of claim 1 wherein the flame retardant is phosphorus based flame retardant, i.e. intumescent flame retardant, (0057).
Regarding claim 5, Kitaura discloses the stampable sheet of claim 1 wherein the inorganic fiber length is 0.1 to 20 mm or 5 mm or more, i.e. average length of 0.1 mm or more, (0008).
Regarding claim 7, Kitaura discloses the stampable sheet of claim 1 wherein the thermoplastic resin is polypropylene based resin and the polypropylene resin has a content of 40 to 97 % by weight (0008).
Regarding claim 8, Kitaura discloses the stampable sheet of claim 1 wherein the flame Kitaura is silent regarding flame retardant amount.
Since the instant specification is silent to unexpected results, the specific amount of the flame retardant is not considered to confer patentability to the claims. As the thermal stability and heat aging resistance is a variable that can be modified, among others, by adjusting the amount of flame retardant (0057), the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of flame retardant in the sheet to obtain the thermal stability and heat aging resistance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 9, Kitaura discloses the stampable sheet of claim 1, obtained by impregnating mat consisting of the inorganic fiber with a resin composition of the thermoplastic resin, flame retardant and the dispersant (0009, 0064).
Regarding claim 10, Kitaura discloses the stampable sheet of claim 1, wherein the mat is produced by needle punching a swirl mat of a continuous glass or inorganic fiber (0010, 0041).
Regarding claim 11, Kitaura discloses a molded article obtained by stamping the stampable sheet of claim 1 (0011).
Regarding claim 12, Kitaura discloses a battery housing made of the molded article according to claim 11 (0012).
Regarding claim 13, Kitaura discloses the stampable sheet of claim 1, wherein the thermoplastic resin is polypropylene based resin and the polypropylene resin has a content of 40 to 97 % by weight (0008), the inorganic fiber has a content of 3 to 60% by weight (0037) or 10 to 50 % by weight (0042) and the dispersant in an amount of 0.4 to 13 % by weight to obtain impact strength and strength of the resin composition (0052).
Kitaura does not disclose the dispersant has a content of 0.01 o 10 parts by mass or less based on 100 parts by mass of flame retardant. Since the instant specification is silent to unexpected results, the specific amount of dispersant is not considered to confer patentability to the claims. As the impact strength and the strength of the resin composition is a variable that can be modified, among others, by adjusting the amount of dispersant (0052), the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of dispersant in the sheet to obtain the impact strength and the strength of the resin composition (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding flame retardant content, as the thermal stability and heat aging resistance is a variable that can be modified, among others, by adjusting the amount of flame retardant (0057), the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of flame retardant in the sheet to obtain the thermal stability and heat aging resistance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 17-18, Kitaura discloses the stampable sheet of claim 1, wherein the inorganic fiber such as glass fiber has a length of 5 mm or more, i.e. average length, (0008, 0038).
Regarding claim 19, Kitaura discloses the stampable sheet of claim 1, obtain by impregnating glass mat with the resin composition (0064)
Regarding claim 20, Kitaura discloses the stampable sheet of claim 1, wherein the mate is produced by needle punching a swirl mat of continuous glass fiber (0077).
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitaura et al (JP 2016-120662) in view of Nakagawa et al. (US 2011/0265939).
Regarding claims 14-16, Kitaura discloses the stampable sheet of claim 4, wherein Kitaura discloses content of dispersion as explained above. Kiaura fails to disclose polyphosphoric acid and nitrogen containing compound based flame retardant.
Nakagawa discloses thermally expandable base comprising melamine polyphosphate based flame retardant to obtain flame retardant material (0053).
It would have been obvious to one of ordinary skill in the art to use the specific flame retardant of Nakagawa in the sheet of Kitaura to obtain flame retardant properties.
Response to Arguments
Applicant's arguments filed 09/11/2026 have been fully considered but they are not persuasive.
Applicant argues that Kitaura does not disclose the phosphorus based flame regardant as set forth in the claims. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, it is noted that independent claim only recites a phosphorus based flame retardant and Kitaura discloses phosphorus based compound as an antioxidant which would inherently have a flame retardant properties.
Applicant argues that Kitaura does not teach using the modified polyolefin as a dispersant for a phosphorus based flame retardant. Further, applicant states that a list of optional additives does not provide a reason to select a phosphorus based flame retardant with claimed dispersant. However, as noted above a chemical composition and its properties are inseparable. Further, the fact remains that Kitaura does disclose phosphorus based compound as an antioxidant and flame retardant. It is noted that the rejection is based on obviousness not an anticipation.
Applicant argues that Kitaura contains no disclosure of a relationship between the amount of its modified polyolefin relative to a flame retardant. Examiner agrees with application and which is why the examiner used optimization argument.
Applicant points to examples in the present specification for unexpected results. However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claim given that the examples disclose specific amount and types of composition while present claim recites any amount and type of polypropylene, phosphorus based flame retardant and copolymer of olefin and maleic anhydride based dispersion and any inorganic filler in an amount of 1 to 80% by mass. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
