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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
Claim 1 line 6 recites “between 1.3 x 103 g/Mol and 1.8 x 103 g/Mol.” This should read “between 1.3 x 103 g/mol and 1.8 x 103 g/mol.”
Claim 8 line 3 recites “[=(1,3,5-triazine-2,4,6(1H,3H,5H)-trione].” This should read “[(1,3,5-triazine-2,4,6(1H,3H,5H)-trione].”
Appropriate correction is required.
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.
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 1-7 and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (US 2019/0085117 A1).
Regarding Claims 1-2 and 12-13: Lu teaches a composition comprising a thermoplastic polyurethane (para. 0004), a flame retardant (para. 0006), and a glass fiber (para. 0009), wherein the thermoplastic polyurethane is the reaction product of a diisocyanate (para. 0025), a chain extender (para. 0026), and a polyether polyol such as polytetrahydrofuran (para. 0023).
Lu teaches that the polyether polyol has a weight average molecular weight of 250-3000 (para. 0024) but is silent to the number-average molecular weight.
The relationship between weight-average molecular weight and number-average molecular weight is determined by the polydispersity index (Mw/Mn). If the PTHF is monodisperse (PDI=1), the Mn would be 250-3000; at PDI=1.5, Mn is 167-2000; at PDI=2, the Mn is 125-1500. In all of these cases, the Mn overlaps the claimed range.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a PTHF with an overlapping number-average molecular weight and they would have been motivated to do so since Lu teaches this molecular weight is acceptable to achieve the disclosed invention.
Not disclosed is the elastic modulus of the composition. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 3: Lu teaches that the glass fiber has a length of 3-6 mm (para. 0061). This discloses the claimed range with sufficient specificity that it is considered to be anticipated. MPEP 2131.03(II).
Regarding Claim 4: Lu teaches 10-30wt% of a flame retardant (para. 0043) and 10-50wt% of a glass fiber (para. 0061). The sum of the flame retardant and the glass fiber is 20-80wt%. This discloses the claimed range with sufficient specificity that it is considered to be anticipated. MPEP 2131.03(II).
Regarding Claims 5 and 14-15: Lu teaches 10-50wt% of the glass fiber (para. 0061). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the glass fiber and would have been motivated to do so since Lu teaches this amount is sufficient to achieve a high flexural modulus (para. 0070).
Regarding Claim 6: Lu teaches 10-30wt% of the flame retardant (para. 0043).
Regarding Claim 7: Lu teaches flame retardants comprising phosphorus and/or nitrogen (para. 0037, 0040).
Regarding Claims 9 and 18: Lu teaches phosphinates such as aluminum phosphinate (para. 0042).
Regarding Claim 10: Lu teaches resorcinol bis(diphenyl phosphate) (para. 0037).
Regarding Claim 11: Lu teaches the flame retardant is halogen-free (para. 0047).
Regarding Claims 16-17: Lu teaches 10-30wt% of the flame retardant (para. 0043). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the flame retardant, and they would have been motivated to do so in order to achieve a sufficiently high flame retardance effect.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (US 2019/0085117 A1) in view of Nissan Chemical America Corporation (Melamine Cyanurate, Archived Jun 23, 2021).
Lu teaches the limitations of claim 1, as set forth above. Lu further teaches a nitrogen-containing flame retardant (para. 0040) but is silent to it being melamine cyanurate.
Nissan Chemical America Corporation teaches that melamine is a common nitrogen-containing flame retardant used in thermoplastic polyurethanes that has excellent heat stability (Properties of Melamine Cyanurate). Nissan Chemical America Corporation are analogous art because they are drawn toward the same field of endeavor, namely flame retardants for thermoplastic polyurethanes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add melamine cyanurate to the composition of Lu as the disclosed nitrogen-containing flame retardant in order to achieve a composition with high heat stability.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamamoto (US 2021/0355265 A1) is drawn toward a flame retardant thermoplastic polyurethane composition.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
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