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 .
Election/Restrictions
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/16/2026.
Applicant’s election without traverse of Group I (claims 1-19) in the reply filed on 6/16/2026 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 17/349,839 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a), first paragraph for one or more claims of this application. Neither Application No. 17/349,839 nor any of the priority documents teaches a nitrogenous compound comprising 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine). Therefore, the effective filing date is the actual filing date, 6/16/2023.
Specification
The disclosure is objected to because of the following informalities: in the abstract the term “a nitrogenous compounds” should have the “s” removed at the end of “compounds.” Also restricted language such as “the present disclosure” should be removed.
Appropriate correction is required.
Claim Objections
Claims 1, 2, 5, 10, 12, 17, and 18 are objected to because of the following reasons:
With respect to claim 1, 5, and 12, the nitrogenous compound that is 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine) is introduced as “at least one nitrogenous compound” but is subsequently referred to as “the nitrogenous compound” which is inconsistent with the “at least one.”
With respect to claims 2 and 10, capitalization of improper nouns such as “Amino”, “Diamino”, and/or “Triazole” should have lowercase.
With respect to claims 17 and 18, capitalization of improper nouns such as “Dihydro” and Phenylene” should have lowercase.
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With resect to claim 1, the term “at least one nitrogenous compound” is contradictory to the limitation that “the nitrogenous compound is 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine)” (“is” is closed transitional claim language). Unless “at least one” refers to more than one molecule, the suggestion of more than one nitrogenous compound is contrary to there only being one 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine).
With respect to claims 2 and 8, it is unclear how 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine) (i.e., same nitrogenous compound of claim 1) how the addition of the same nitrogenous compound in these claims distinguishes from claim 1. It appears that 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine of claims 2 and 8 can be not anchored to the first polymer.
With respect to claim 11, adipoguanamine is the same as 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine).
With respect to claim 3, it is unclear whether the claim is drawn to a composition (which has no structure) or to a fiber comprising the composition.
With respect to claims 17 and 18, these claims contain the trademark/trade name “Fyrol PMP.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe 1,3-phenylene methylphosphonate flame retardant and, accordingly, the identification/description is indefinite.
With respect to claims 4-7, 9, 10, 12-16, and 19, they are rejected for failing to cure the deficiency of the claim from which they depend.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beatty (WO 2021/067553).
With respect to claim 1 and 4, Beatty discloses compositions comprising the reaction product (i.e., anchored) of polyester polyols (first polymer that is polyester) and guanamines such as bis-guanamines (abstract) including adipoguanamine (paragraph 0040), i.e., 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine). In Table 6 on page 40, Beatty exemplifies compositions comprising benzoguanamine (Examples 36B-36E) which are added to compositions containing a polyol polymer (second polymer) and have improved smoke properties (Examples 37B-37D) over composition containing only the polyol polymer (Example 37A) (Table 7), i.e., non-flammable gases are inherently released upon being subjected to a flame. Although Beatty discloses the use of other types of guanamines, applicant’s attention is drawn to MPEP 2131.02 (A) which states that “..when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named”. Ex Parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Therefore, Beatty anticipates claimed composition comprising adipoguanamine.
With respect to claim 2, adipoguanamine reads on both the nitrogeneous compound 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine) and on the claimed additional nitrogenous compound when adipoguanamine.
With respect to claim 5, Beatty teaches that the guanamines, including adipoguanamine, are at least partially soluble in the polyester polyols (Tables 1 and 2 on pages 20-21) which inherently provides for a uniformly distributed composition like claimed.
With respect to claim 6, Beatty exemplifies compositions comprising TCPP, i.e., trischloropropyl phosphate (paragraph 0117)
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 of this title, 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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jogikalmath (US 2019/0359824) in view of Tsunoda (US 8,796,367).
With respect to claim 1, Jogikalmath discloses a composition comprising a first polymer and nitrogenous compound has a melting point in the range of −50 to 400° C anchored to the first polymer, wherein the composition releases non-flammable gases from the nitrogenous compound upon exposure of the composition to flame (page 9, claim 1).
Jogikalmath teaches that the nitrogenous compound includes diamino triazines such as acetoguanamine and benzoguanamine (page 9, claim 4) but fails to disclose adipoguanamine, i.e., 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine).
Tsunoda discloses a thermoplastic polyester compositions (abstract) and teaches that amino-group containing triazines are used as flame retardants and include acetoguanamine and benzoguanamine (same as those taught by Jogikalmath) and adipoguanamine (col. 15, lines 25-37).
In view of Tsunoda’s recognition that guanamine flame retardants such as acetoguanamine, benzoguanamine, and adipoguanamine are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute acetoguanamine or benzoguanamine taught by Jogikalmatch with acetoguanamine taught by Tsunoda. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
With respect to claim 2, Jogikalmath teaches using mixtures of nitrogenous compounds (page 9, claim 4). Therefore, it would have been obvious to one of ordinary skill in the art to utilize both adipoguanamine and another nitrogenous compound such as acetoguanamine and benzoguanamine.
With respect to claim 3, Jogikalmath discloses that the composition is in the form of a fiber (page 9, claim 2).
With respect to claim 4, Jogikalmath discloses that the first polymer is selected the group consisting of nylon 6, nylon 66, PET, polyester, polypropylene, polycarbonate, polyacetal, LLDPE, LDPE, and/or HDPE (page 9, claim 3).
With respect to claim 5, Jogikalmath discloses that the nitrogenous compound is uniformly distributed in the composition (page 9, claim 5).
With respect to claim 6, Jogikalmath discloses that the composition includes phosphorus-based flame retardants and other flame retardants like claimed (page 9, claim 6).
With respect to claim 7, Jogikalmath discloses a method of forming the composition by extrusion, fiber melt spinning, or injection molding (page 9, claim 8).
With respect to claims 8-19, Jogikalmath discloses a fabric made from the composition comprising a first polymer and the at least one nitrogenous compound (pages 9-10, claims 11-13, 15-18, 20, 25, 26, and 30).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,104,799 in view of Tsunoda (US 8,796,367). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claim 1, US ‘799 claims (in claim 1) a composition comprising a first polymer and at least one nitrogenous compound having a melting point in the range of −50 to 400° C anchored to the first polymer, wherein the composition releases non-flammable gases from the nitrogenous compound upon exposure of the composition to flame. The nitrogenous compound includes 2,4-diamino-6-methyl-1,3,5-triazine (acetoguanamine) and/or 2,4-diamino-6-phenyl-1,3,5-triazine (benzoguanamine).
US ‘799 does not claim 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine), i.e., adipoguanamine, as the nitrogenous compound.
Tsunoda discloses a thermoplastic polyester composition (abstract) and teaches that amino-group containing triazines are used as flame retardants and include acetoguanamine and benzoguanamine (same as those claimed by US ‘799) and adipoguanamine (col. 15, lines 25-37).
In view of Tsunoda’s recognition that guanamine flame retardants such as acetoguanamine, benzoguanamine, and adipoguanamine are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute acetoguanamine or benzoguanamine claimed by US ‘799 with acetoguanamine taught by Tsunoda. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
With respect to claim 2, US ‘799 claims the composition includes “at least one nitrogenous compound.” Therefore, it would have been obvious to one of ordinary skill in the art to utilize a mixture of adipoguanamine and other claimed nitrogeneous compounds.
With respect to claim 3, see claim 2 of US ‘799.
With respect to claim 4, see claim 3 of US ‘799.
With respect to claim 5, see claim 4 of US ‘799.
With respect to claim 6, see claim 5 of US ‘799.
With respect to claim 7, see claim 6 of US ‘799.
Claims 1-3, 8 and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 4 of U.S. Patent No. 11,932,765 in view of Tsunoda (US 8,796,367). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claims 1, 3, 8, and 12, US ‘765 claims (in claim 3) a fabric comprising 0.1-25 wt % of a first set of fibers which comprise a first polymer and at least one nitrogeneous compound having a melting point in the range of −50 to 400° C anchored to the first polymer, wherein the composition releases non-flammable gases from the nitrogenous compound upon exposure of the composition to flame. The nitrogenous compound includes 2,4-diamino-6-methyl-1,3,5-triazine (acetoguanamine) and/or 2,4-diamino-6-phenyl-1,3,5-triazine (benzoguanamine).
US ‘765 does not claim 6,6’-(butane-1,4-diyl)bis(1,3,5-triazine-2,4-diamine), i.e., adipoguanamine, as the nitrogenous compound.
Tsunoda discloses a thermoplastic polyester composition (abstract) and teaches that amino-group containing triazines are used as flame retardants and include acetoguanamine and benzoguanamine (same as those claimed by US ‘765) and adipoguanamine (col. 15, lines 25-37).
In view of Tsunoda’s recognition that guanamine flame retardants such as acetoguanamine, benzoguanamine, and adipoguanamine are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute acetoguanamine or benzoguanamine claimed by US ‘765 with acetoguanamine taught by Tsunoda. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
With respect to claims 2, 10, and 11, US ‘765 claims the composition includes “at least one nitrogenous compound.” Therefore, it would have been obvious to one of ordinary skill in the art to utilize a mixture of adipoguanamine and other claimed nitrogeneous compounds.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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