DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/06/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 14 recites “the polypropylene composition”, which should be “the flame retardant polypropylene composition”. 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.
Claim 9 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.
Claim 9 recites “the propylene polymer (PP) is a copolymer of propylene and ethylene and/or a C4 to C8 a-olefin”. Given that claim 1 recites the propylene polymer (PP) is a heterophasic propylene copolymer (HECO) comprising a matrix and an elastomer, it is not clear how the propylene polymer (PP) of claim 9 can be a heterophasic propylene copolymer (HECO). It appears that the propylene polymer (PP) of claim 9 might be same as a polymer of propylene used in a matrix. For the purpose of examination, the examiner construes that the propylene polymer (PP) of claim 9 is same as the polymer of propylene used in a matrix of HECO.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 9, 11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (US 10,266,673 B2 cited in IDS) in view of Wen et al. (WO 2020/064752 A1 cited in IDS) and Qi et al. (CN 105778267 A cited in IDS). It is noted that the disclosures of Qi et al. are based on a machine translation of the reference (cited in IDS).
Regarding claims 1 and 11, Shimizu et al. disclose a flame-retardant composition comprising 40 to 90 mass% of random polypropylene copolymer and 10 to 35 wt% of flame retardant components (see col. 21, claim 1). The composition can also contain a synthetic resin other than the random propylene copolymer (see col. 4, lines 17-20). That is, the composition can contain a blend of random propylene copolymer and the synthetic resin. The flame retardant components include nitrogen-containing flame retardant comprising a mixture of melamine polyphosphate (A) (FR1) and piperazine pyrophosphate (B) in a ratio of 20/80 to 50/50 which overlaps with that presently claimed (see col. 21, claim 1).
Shimizu et al. do not disclose a blend of the random polypropylene cpolymer and a heterophasic propylene copolymer (synthetic resin). Shimizu et al. do not disclose an anti-dripping agent, wherein the anti-dripping agent is lignin (bipopolymer comprising phenolic hydroxyl groups).
Wen et al. disclose a flame retardant composition comprising a polypropylene-based polymer (A) comprising a blend of propylene homopolymer and a heterophasic propylene copolymer (HECO) in a weight ratio of 1:99 to 99:1 (see Abstract, page 3, lines 18-20 and page 9, lines 32-34). While Wen do not explicitly disclose a blend of random polypropylene copolymer and a heterophasic propylene copolymer, given the interchangeability and equivalency of propylene homopolymer with random polypropylene copolymer (see page 3, lines 22-23), it would have been obvious to one of the ordinary skill in the art to use a blend of a random polypropylene copolymer and a heterophasic propylene copolymer (HECO) in a weight ratio of 1:99 to 99:1 in the flame retardant composition. The heterophasic propylene copolymer (HECO) that provides a combination of mechanical properties, such as impact strength over a wide temperature range and their low cost (see page 4, lines 13-17). The heterophasic propylene copolymer consists of propylene–based matrix and ethylene-a-olefin copolymer such as propylene-ethylene copolymer (see col. 5, lines 9-10 and pages 5-6, lines 35-5). HECO has a fraction soluble in xylene at 25 °C (CXS) (xylene cold soluble fraction) measured according to ISO 16152 of 5 to 40 wt% (see page 8, lines 22-23).
In light of motivation for using a blend of a random polypropylene copolymer and a heterophasic propylene copolymer (HECO) disclosed by Wen et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use a blend of a random polypropylene copolymer and heterophasic propylene copolymer (HECO) of Wen et al. instead of random polypropylene copolymer alone in Shimizu et al. in order to provide a combination of mechanical properties, such as impact strength over a wide temperature range and their low cost, and thereby arrive at the claimed invention.
Accordingly, Shimizu et al. in view of Wen et al. disclose a blend of random propylene copolymer and the heterophasic propylene copolymer (HECO), wherein the amount of blend is 40 to 90 wt% in the flame retardant composition. Based on 40 to 90 wt% of the blend of random propylene copolymer and the heterophasic propylene copolymer (HECO), and a weight ratio of 1:99 to 99:1 of random propylene copolymer and the heterophasic propylene copolymer (HECO), the amount of random propylene copolymer is 0.4 to 89.1 wt% and the amount of heterophasic propylene copolymer (HECO) is 0.4 to 89.1 wt% in the flame retardant composition.
Shimizu et al. in view of Wen et al. do not disclose an anti-dripping agent, wherein the anti-dripping agent is lignin (bipopolymer comprising phenolic hydroxyl groups).
Qi et al. disclose environment-friendly anti-aging polypropylene material comprising polypropylene and 1 to 5 wt% lignin (see Abstract). Lignin provides anti-aging properties (see paragraph 0005). While Qi et al. do not explicitly disclose that lignin is an anti-dripping agent, given that lignin is identical to an ant-dripping agent utilized in the present invention, lignin is the anti-dripping agent.
In light of motivation for using 1 to 5 wt% of lignin disclosed by Qi et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use 1 to 5 wt% of lignin in the flame-retardant composition of Shimizu et al. in view of Wen et al. in order to provide anti-aging properties, and thereby arrive at the claimed invention.
Accordingly, Shimizu et al. in view of Wen et al. and Qi et al. disclose the flame retardant composition comprising 10 to 35 wt% of nitrogen-containing flame retardant and 1 to 5 wt% lignin. Accordingly, w(A)/w(FR) is 0.03 to 0.5 (0.03 = 1/35 and 0.5 = 5/10) which meets presently claimed equation (I). Based on 0.4 to 89.1 wt% of heterophasic propylene copolymer (HECO), 10 to 35 wt% of nitrogen-containing flame retardant and 1 to 5 wt% lignin, the overall amount of these components together can be at least 70.1 wt% (70.1 = 57.1 +12 +1).
Regarding claim 2, Shimizu et al. in view of Wen et al. and Qi et al. disclose the flame-retardant composition as set forth above. As noted above, the nitrogen-containing flame retardants and lignin are free of halogens. Shimizu et al. disclose using one or more halogen-free flame retardants (see col. 10, lines 54-58). Further, Shimizu et al. discloses inclusion of a fluorine-based anti-dripping agent is not preferred from the viewpoint of achieving a halogen-free environment to reduce an environmental load, and teaches the flame-retardant composition not containing a fluorine-based anti-dripping agent (see col. 16, lines 13-19 and col. 21, claim 1). Shimizu et al. disclose using one or more halogen-free flame retardants (see col. 10, lines 54-58). Shimizu et al. disclose optional halogen-containing synthetic resins (see col. 16, lines 52-26 and line 64). Accordingly, Shimizu et al. in view of Wen et al. and Qi et al. disclose the flame-retardant composition is free of halogens including fluoropolymers.
Regarding claim 9, Shimizu et al. in view of Wen et al. and Qi et al. disclose the flame-retardant composition as set forth above. Further, Wen et al. disclose the heterophasic propylene copolymer consists of a propylene-based matrix made of propylene copolymer (i.e. propylene polymer) comprising at least 70 wt% of propylene monomer units and at most 30 wt% of ethylene and/or a -olefin monomer units (see page 5, lines 20-24). The broad range of at most 30 wt% of ethylene and/or a-olefin monomer units will overlap with broad range of mol% of ethylene and/or a-olefin monomer units as presently claimed.
Regarding claim 13, Shimizu et al. in view of Wen et al. and Qi et al. disclose the flame retardant polypropylene composition including heterophasic propylene copolymer (HECO), nitrogen-containing flame retardants and anti-dripping agent identical to that presently claimed and with their amounts overlapping with that presently claimed. Therefore, within the overlapping ranges, the flame retardant polypropylene composition of Shimizu et al. in view of Wen et al. and Qi et al. necessarily inherently has a melt flow rate as presently claimed.
Regarding claim 15, Shimizu et al. in view of Wen et al. and Qi et al. disclose an article comprising the flame-retardant composition (see col. 18, lines 18-20).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (US 10,266,673 B2 cited in IDS) in view of Wen et al. (WO 2020/064752 A1 cited in IDS) and Qi et al. (CN 105778267 A cited in IDS) as applied to claim 11 above, further in view of Resconi et al. (US 2017/0247484 A1 cited in IDS).
Regarding claim 12, Shimizu et al. in view of Wen et al. and Qi et al. disclose the flame retardant composition as set forth above. While Wen et al. disclose heterophasic propylene copolymer (HECO), Shimizu et al. in view of Wen et al. and Qi et al. do not disclose xylene soluble fraction (XCS) as presently claimed.
Resconi et al. disclose a heterophasic propylene copolymer, wherein XCS (xylene soluble fraction) has intrinsic viscosity of at least 1.5 dl/g and an ethylene content of 10 to 70 wt% (which would overlap the amount in mol% as claimed) measured according to ISO 1628/1 at 135 °C in decalin (see paragraphs 0046 and 0256). The intrinsic viscosity and high ethylene content provides polymer with high impact strength at low temperatures (see paragraph 0011).
In light of motivation for using a heterophasic propylene copolymer, wherein XCS (xylene soluble fraction) has intrinsic viscosity of at least 1.5 dl/g and an ethylene content of 10 to 70 wt% disclosed by Resconi et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use XCS (xylene soluble fraction) having intrinsic viscosity of at least 1.5 dl/g and an ethylene content of 10 to 70 wt% in Shimizu et al. in view of Wen et al. and Qi et al. in order to provide polymer with high impact strength at low temperatures, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 07/06/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that Shimizu is directed to a flame-retardant polypropylene composition having excellent flame retardancy without impairing the physical properties inherent to the resin. (See, col. 1 lines 6-10 of Shimizu.) Shimizu is directed to a light flame-retardant polypropylene composition having an excellent flame retardancy, where flame retardancy refers to "a property of reducing the risk of catching fire, a property of, even if a fire is caught and combustion continues, delaying the combustion, or a property of self- extinguishing after combustion." Col. 2, lines 44-47. In contrast, Qi is directed to a completely different field of a novel environmentally resistant PP material. Qi is directed to combating the degradation of polypropylene materials caused by exposure to light, heat, and environmental conditions. Qi believed that using lignin "can partly or entirely substitute traditional interpolation auxiliary agent" and "possible to effectively drop low PP surface separates out and distributes problem." Qi fails to teach or suggest a nitrogen- containing flame retardant or any flame retardant properties. Accordingly, one of skill in the art looking to produce a flame retardant polypropylene composition would have no reason to look to Qi's anti-aging composition. The problems addressed by the two references are entirely different: Shimizu addresses flame retardancy, while Qi addresses resistance to environmental degradation. There is no teaching or suggestion that lignin's anti-aging properties would be relevant or even compatible with a flame retardant composition of Shimizu.
Given that both Shimizu and Qi are drawn to polypropylene materials and given that Qi discloses using lignin provides anti-aging properties, it would have been obvious to one of the ordinary skill in the art to use lignin in polypropylene composition of Shimizu. Given that both Shimizu and Qi are drawn to polypropylene materials, lignin’s anti-aging properties would be compatible with flame retardant composition of Shimzu, absent evidence to the contrary. Further, the polypropylene material can have both the properties of flame retardancy (Shimizu) and anti-aging (Qi).
Applicants argue that further, even if one were to accept arguendo that anti-aging properties would be desirable in a flame retardant, which they would not, there is no reasonable expectation that adding lignin to a flame retardant composition would produce a successful composition. Rather, the addition of lignin to the composition would be unpredictable and it is unknown whether the lignin would negatively affect the flame retardancy of the polypropylene composition of Shimizu. Thus, there is no motivation to make the alleged combination of Shimizu and Qi. Rather, this alleged combination is the product of hindsight reconstruction. The Action cannot "pick and choose from any one reference only so much as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to [a PHOSITA]." In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965). The prior art is good for everything it teaches. See W.L. Gore & Assoc., Inc. V. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983). "The 'as a whole' instruction prevents evaluation of the invention part by part[;] [t]his form of hindsight , using the invention as a roadmap to find its prior art components, discount[s] the value of combining features or principles in a new way to achieve a new result - the very definition of invention." Ruiz V. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004). Here, the only reason to look to Qi's anti-aging polypropylene composition and extract the concept of adding lignin to Shimizu's flame retardant composition is known from the present application's own disclosure.
Given both Shimizu and Qi are drawn to polypropylene materials and given that Qi discloses using lignin provides anti-aging properties, it would have been obvious to one of the ordinary skill in the art to use lignin in polypropylene composition of Shimizu. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding “there is no reasonable expectation that adding lignin to a flame retardant composition would produce a successful composition. Rather, the addition of lignin to the composition would be unpredictable and it is unknown whether the lignin would negatively affect the flame retardancy of the polypropylene composition of Shimizu”, applicants have provided no evidence (i.e. data) to support their position.
Applicants argue that even if one of skill in the art would have been motivated to combine the teachings of Shimizu and Qi, which they would not, the data in the present application supports the unexpected results of the claimed invention. In response to our previous positions, the Action alleged that the claims are not commensurate in scope of the data. To expedite prosecution, claim 1 is amended herein to reflect the components of the data presented in the present application. Further, as previously presented, Comparative Examples CE2 to CE4 of the present application have a comparatively higher amount of lignin of 5 wt% (CE2) or 3 wt% (CE3 and CE4) and comparatively higher ratio of w(A)/ w(FR) of 0.25 (CE1), 0.15 (CE3) or 0.17 (CE4), whereas the Inventive Example IE1 has an amount of lignin within the claimed range of 1 wt% and ratio w(A) / w(FR) of 0.05. As can be seen in the Examples of the present application, there is a fine adjustment in the amounts of anti-dripping agent and nitrogen-containing flame retardant that affect the properties of the compositions as shown in Table 2 and [0184] to [0185] of the published application, US 2024/0352242). For example, the limited oxygen index (LOI), a measure of the minimum oxygen concentration required to support combustion is maintained on a high level for IE1, but is lower for CE2 to CE4, which represent a higher amount of lignin. The present application also recognized that improvements in OIT must be balanced against other properties such as the LOI and the cone time to ignition, which can decrease significantly when the lignin/FR ratio is too high as in CE2 to CE4. This is not recognized in either Shimizu nor Qi.
However, the data is not commensurate in scope with the scope of present claims given that (i) the examples recite a specific propylene polymer in a specific amount, while the present claim recites heterophasic propylene copolymer in broad amounts (ii) the examples recite a specific amount of flame retardant (FR) and specific weight ratio of melamine polyphosphate (FR1) and piperazine pyrophosphate (FR2), while the present claims has broad range of amount of flame retardant and broad weight ratio of melamine polyphosphate and piperazine pyrophosphate (iii) the examples recite a specific lignin anti-dripping agent in specific amounts, while the present claim recite any lignin anti-dripping agent in broad amounts and (iv) the examples recite a specific ratio of w(A)/w(FR), while the present claims has broad recitation of ratio of w(A)/w(FR).
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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