DETAILED ACTION
Response to Amendment
Applicant's amendment filed 4/3/2026 has been entered. Currently, claims 1-20 are pending.
Drawings
The drawings were received on 4/3/2026. These drawings are acceptable.
Claim Rejections - 35 USC § 112
Claims 2, 3, 11-15 and 20 are 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.
In claim 2, the limitations that the absorption of UV light “reduces photo-oxidation” is a relative term that renders the claim indefinite. It is unclear to what this reduction is photo-oxidation is measured. For purposes of examination, any method of using a synthetic polymer composition that meets the body of claim 1 will meet the relative terms of this claim.
In claim 3, the limitations that the emitted visible light produces a “brighter appearance” is a relative term that renders the claim indefinite. It is unclear to what this brighter appearance is measured. For purposes of examination, any method of using a synthetic polymer composition that meets the body of claim 1 will meet the relative terms of this claim.
In claims 11 and 20, the limitations that the polymer composition exhibits mechanical and flammability properties “comparable to” that of a composition without the inorganic phosphor dopants is a term of degree that renders the claims indefinite. It is unclear how similar the properties must be to be considered “comparable to” each other. The term is not defined by the claim, the specification does not provide a definite standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonable apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
Claims 1-4 and 6-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ebnesajjad et al. (5,888,424).
With regard to claims 1 and 6-20, Ebnesajjad et al. teaches in Example 1 mixing phosphor 48 of Table 1 with polytetrafluoroethylene (PTFE), which reads on applicants’ synthetic polymer composition having the inorganic phosphor dopant that absorbs UV and emits down-converted visible light, the synthetic polymer host material being a thermoplastic and the method for preparing a synthetic polymer composition (col. 5, lines 38-41). Phosphor 48 reads on a metal oxide being an oxide having Eu3+ doped therein as this is inherently the form of Y2O3/Eu, and PTFE reads on the synthetic polymer host material (col. 2, lines 26-30 and Table 1, col. 4, line 44). The composition is exposed to UV radiation of 254, 302 or 365 nm, which reads on the method for improving color stability and exposing step of claim 1 and the absorbed wavelength of claim 6 (col. 5, lines 43-49).
With specific regard to claims 11 and 20, given the fact that the polymer composition comprises the same preferred polymer and inorganic phosphor dopant as claimed, it will inherently exhibit mechanical and flammability properties comparable to that of a synthetic polymer composition without said inorganic phosphor dopant as claimed.
With regard to claims 2 and 3, given the fact that the polymer composition comprises the same preferred polymer and inorganic phosphor dopant as claimed, it will inherently reduce photo-oxidation and produce a brighter appearance as claimed.
With regard to claim 4, inorganic phosphor dopant 23 is a mixture of two phosphors that produces a white color (Table 1).
Claim Rejections - 35 USC § 103
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ebnesajjad et al. (5,888,424).
Ebnesajjad et al. teach all of the limitations of claim 1 above. They also teach mixing a plurality of phosphors in their claim 10; however, they do not specifically teach a mixture of three inorganic phosphor dopants as claimed.
It would have been obvious to one having ordinary skill in the art to have combined any number of phosphors, including three as claimed, into the fluoroplastics of Ebnesajjad et al. The rationale for having done so is to provide a more unique taggant that can be used to visually identify the fluoroplastic. It would also have been obvious to have combined any of the inorganic phosphors in Table 4 of Ebnesajjad et al., including combining blue, green and red phosphors. The resultant mixture would then intrinsically emit visible light that was white or off-white when exposed to UV light as claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 4/3/2026, with respect to the objection to the drawings, the objection to the specification, the objection to the claims and the some of the 112(b) rejection have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 4/3/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 10 and 11 that the terms reduced photo-oxidation” and “brighter appearance” are defined in the specification and the comparison is either a “comparison to the same polymer without the dopants” or “which would not occur in the absence of the dopants”.
The Examiner notes that the concepts applicants are arguing are not in the claim. It is noted that the features upon which applicant relies (i.e., relative to “the same synthetic polymer composition without the inorganic phosphor dopants”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argue that claims 11 and 20 are definite because the term “comparable to” would be understood by one having ordinary skill as meaning that the “properties are not significantly degraded by the addition of the phosphor dopants”.
The Examiner respectfully disagrees and notes that applicants’ arguments use the term “not significantly degraded” to explain the claim limitations. This explanation is using a term of degree to explain a term of degree, and therefore is not persuasive to overcome the indefiniteness rejection.
Applicants argue on page 13 that Ebnesajjad et al. do not teach or suggest claim 1 because the preamble limitations of a method “for improving color stability of a synthetic polymer composition” imparts life and meaning to the claim.
The Examiner respectfully disagrees and takes the position that the claim is merely reciting using an old composition and the use “is directed to a result or property of that composition”, see MPEP 2112.02(II). In this way, the preamble is also reciting a purpose or intended use and not a structural limitation. It has been held that “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” See MPEP 2111.02. Ebnesajjad et al. teach all of the limitations of the body of the claim, and therefore the Examiner maintains that this reads on the claimed method.
Applicants argue on page 13 that the Office’s inherency argument as to claims 11 and 20 is unsupported by evidence.
The Examiner respectfully disagrees and notes that he set forth a prima facie case of inherency base on the fact that since the polymer composition comprises the same preferred polymer and inorganic phosphor dopant as claimed, then it will inherently exhibit mechanical and flammability properties comparable to that of a synthetic polymer composition without said inorganic phosphor dopant as claimed.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case of inherency.
Applicants argue on page 13 that independent claim 16 is allowable for the same reasons as claims 1 and 11.
The Examiner respectfully disagrees and notes that claim 16 does not have the limitations that were argued for either of claims 1 or 11, and therefore applicants have not presented arguments or evidence to rebut the prima facie case for claim 16. As such, the Examiner maintains his prima facie case was proper and has repeated it in this Office action.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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