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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, 15 in the reply filed on 8/10/2026 is acknowledged. Additional species election requirement is set forth below.
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species of the phosphorus containing flame retardant are as follows: i) formula (11), ii) formula (13g).
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
During a telephone conversation with Richard Bender on 8/19/2026 a provisional election was made without traverse to prosecute the species of formula (13g). Affirmation of this election must be made by applicant in replying to this Office action.
Claims 4, 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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.
Claims 1-3, 5-10, 15 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 pre-AIA the applicant regards as the invention.
Claim 1 and claim 9 recite “alkali metal, alkaline earth metal or ammonium salts of …”, it is unclear if the list includes “a) alkali metal, b) alkaline earth metal or c) ammonium salts of” or “a) alkali metal salt of, b) alkaline earth metal salt of or c) ammonium salts of”.
Claim 7 is confusing and should be rephrased. For purposes of expediting prosecution, it is interpreted as the composition further comprises a mold release agent, the anti-drip agent is PTFE.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 6-7, 9, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hao et al (CN 108102331).
In setting forth this rejection a machine translation of CN 108102331 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claims 1-3, 6, 9, 15: Hao teaches a composition comprising 80% by weight of a bisphenol A polycarbonate, 5% by weight of HDPE, 5% by weight of a phosphate flame retardant and 0.4% by weight of a fluorinated antidrip agent PTFE (example 2).
Hao does not explicitly disclose if the amount of polyethylene is more than 4wt%, at least 0.5wt% of anti-drip agent is present.
However, Hao teaches the amount of the anti-drip agent is 0.4-1wt% and the amount of PE can be 5-20wt% (examples 2-8). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claim 7: the composition is used in an injection molding process [0046]. Using a mold release agent in the injection molding of polycarbonate is a known technique. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add a mold release agent to ease the mold releasing process.
Claims 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hao et al (CN 108102331) in view of Maruyama et al (EP 0728811).
Hao teaches the limitation of claim 1, as discussed above.
Hao does not teach a phosphazene flame retardant like claimed.
However, Maruyama discloses a flame retardant polycarbonate composition and teaches phosphazene flame retardant
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performs better than phosphate ester (F) and (G). Although Hao does not use the same phosphate ester as Maruyama’s comparative phosphate, it would have been obvious to one of ordinary skill in the art at the time the invention was made to try the phosphazene flame retardant of Maruyama in the composition of Hao with a reasonable expectation of success because Maruyama teaches phosphazene performs better than two phosphate ester flame retardant.
Claims 1-3, 6-9, 15: is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakae (JP 2013163768).
In setting forth this rejection a machine translation of JP 2013163768 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Nakae teaches a composition comprising 1) 100 parts by weight of a resin component consisting of (A) 60-95wt% of an aromatic polycarbonate, 2-10wt% of (B), 2-15 wt% of polyolefin (C), and 0-20wt% of (D) [0007], 2) (E) 5-20 mass parts of phosphorus base flame retarders, and (F) 3-20 mass parts of inorganic fillers, 0.1-1 parts by mass of an anti drip agent (I), and a mold release agent [0069, 0042-0046, 0070]. Table 1 example 3 comprises 70wt% of A, 4wt% of C HDPE, 10.5wt% of E and 0.4 wt% of I PTFE. In the example E is 13 parts and the range of E is 5-20 parts. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize the content range of E would overlap the claimed range. The above statement applies to all ingredients.
Claims 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakae (JP 2013163768) in view of Maruyama et al (EP 0728811).
Nakae teaches the limitation of claim 1, as discussed above. Nakae further teaches the phosphate flame retardant can be trixylenyl phosphate [0042].
Nakae does not teach a phosphazene flame retardant like claimed.
However, Maruyama discloses a flame retardant polycarbonate composition and teaches phosphazene flame retardant
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performs better than trixylenyl phosphate. it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize the phosphazene flame retardant of Maruyama in the composition of Nakae with a reasonable expectation of success because Maruyama teaches phosphazene performs better than trixylenyl phosphate flame retardant.
Allowable Subject Matter
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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