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 .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1, 3, 5-20 are pending.
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 5 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 5 has been amended to recite “a PVC composition containing ATO and no rare earth compound”. However, it would not be clear if this is the same as “a PVC composition that contains less ATO than in a PVC composition not containing the rare earth compound”. In other words, it would not be clear if two compositions are the same, or different.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Li as in view of Xiaopeng et al (CN 111269498 submitted in IDS filed 1/31/2024) and Donglin et al. (CN 1117811).
Regarding claim 15: Li is directed to a composition comprising:
PVC resin; and a rare earth hydroxide, although doesn’t mention a specific rare earth hydroxide.
Xiaopeng is directed to a rare earth composite heat stabilizer for PVC products. The rare earth includes rare earth hydroxides of lanthanum, neodymium, cerium, europium, and praseodymium. One skilled in the art would have been motivated to have selected the rare earth hydroxides as the rare earth hydroxide of choice in Li since it provides a PVC composition that is free of VOC and odorless, as demonstrated in the working examples. Further, Xiaopeng teaches specific rare earth hydroxides that are used in the art. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a rare earth hydroxide of Xiaopeng as the rare earth hydroxide of choice in Li to arrive at claim 3 of the present invention.
The PVC composition comprises 100 phr PVC resin. 3-10 phr ATO is not mentioned.
Donglin is directed to a composition having a smoke suppressant of ATO. The composition can comprise 2-20 phr ATO. One skilled in the art would have been motivated to have included ATO in the composition of Li for smoke suppression and is low cost (abstract Donglin). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have include ATO smoke suppressant in the composition of Li. The combination of a rare earth compound and ATO would be expected to achieve the same UL94 classification that in a PVC not containing the rare earth compound.
The composition has good flame retardance and a FV-0 rating (Table 1), although a UL94 classification with a sample thickness of about 0.8 mm of V-2 or higher is not mentioned.
However, the PVC composition in Li is substantially identical to the composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Li suggests a composition having a UL94 classification within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 16: The composition comprises 0 phr chlorinated paraffin.
Regarding claim 17: The composition further comprises additives of fillers, lubricants, colorants (abstract Li).
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 106916396 submitted in IDS filed 1/31/2024) in view of Xiaopeng et al (CN 111269498, submitted in IDS filed 1/31/2024).
Regarding claim 18: Li is directed to a PVC composition comprising:
PVC resin;
100 phr PVC resin
3-8 phr of the composite inorganic flame retardant containing at most 40% MDH.
While an amount of 25 phr to about 50 phr is not mentioned, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. (MPEP 2144.05.A). In the present case, there is no evidence to suggest the amount of HDH is critical or surprising. Further, an arbitrary higher amount of MDH, which is a known flame retardant for PVC composition, is not inventive. Therefore, the composition of Li at least suggests the claimed amount of MDH.
3-8 phr of an inorganic flame retardant containing 10-20 wt% of a rare earth compound of a rare earth hydroxide. It follows 3-10 phr is within the scope of Li.
Li is directed to a PVC composition comprising a rare earth hydroxides, although doesn’t mention a specific rare earth hydroxide.
Xiaopeng is directed to a rare earth composite heat stabilizer for PVC products. The rare earth includes rare earth hydroxides of lanthanum, neodymium, cerium, europium, and praseodymium. One skilled in the art would have been motivated to have selected the rare earth hydroxides as the rare earth hydroxide of choice in Li since it provides a PVC composition that is free of VOC and odorless, as demonstrated in the working examples. Further, Xiaopeng teaches specific rare earth hydroxides that are used in the art. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a rare earth hydroxide of Xiaopeng as the rare earth hydroxide of choice in Li to arrive at claim 3 of the present invention.
The composition has good flame retardance and a FV-0 rating (Table 1), although a UL94 classification with a sample thickness of about 0.8 mm of V-2 or higher is not mentioned.
However, the PVC composition in Li is substantially identical to the composition produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Li suggests a composition having a UL94 classification within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). 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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 19: The composition contains 0 phr ATO.
Regarding claim 20: The composition further comprises additives of fillers, lubricants, colorants (abstract Li).
Response to Arguments
Applicant's arguments filed 7/14/2026 (herein “Remarks”) have been fully considered and are persuasive in part.
Applicant argues (p. 6-7 Remarks) the present claims containing the specific rare earth compound contain less inorganic flame retardant that in a PVC composition not containing the rare earth compound and achieving the same UL94 classification. This is surprising since the amount of inorganic flame retardants should be minimized while still achieving the desired flame retardancy and thermal stability.
Li relates to PVC power tube – rigid PVC compositions. In contrast, the present composition can be rigid or flexible. The inorganic flame retardant in Le is a composite, not individual components. The composite is 10-20% rare earth hydroxide, 30-50% aluminum hydroxide, 20-40% magnesium hydroxide, and 5-10% zinc borate, and therefore requires all components.
Calculating the phr of the rare earth hydroxide based on 10-20% of the composite provides the phr of only 0.3-1.6 which is significantly lower than 1-10 phr of the present PVC composition of 1-10 phr.
The composite of Lu contains 30-50% aluminum hydroxide and 20-40% magnesium hydroxide. The present claims require either aluminum hydroxide or magnesium hydroxide, but not both. Accordingly, Li does not disclose or suggest the present composition.
Examiner Response: This argument is found persuasive and the rejections over claims 1-4 have been withdrawn. However, claims 15-20 do not limit the composition to either aluminum hydroxide or magnesium hydroxide and therefore the rejections are maintained.
Applicant argues (p. 7-8 Remarks) with regards to claims 3, 18-20, Applicant argues claim 18 requires ATO, and a rare earth hydroxide of Y(OH)3 LA(OH)3 or mixtures thereof, so only MDH as an inorganic flame retardant.
This argument is not found persuasive since claim 18 requires ATO, not MDH. Further, claim 18 does not exclude additional flame retardants such as MDH, i.e. comprising PVC resin; AtO; and a rare earth hydroxide recited in claim 18 lines 1-2.
Applicant argues (p.8-9 Remarks) Xiaopeng relates to a composite heat stabilizer, which contains 5-10% zinc borate. In contrast, Xiaopeng expressly states its composite heat stabilizer does not contain a zinc based compound.
This argument is not found persuasive since the rejection does not require including a zinc based compound in the primary reference of Li. Rather, Li is directed to a PVC composition comprising a rare earth hydroxides, although doesn’t mention a specific rare earth hydroxide.
Xiaopeng is directed to a rare earth composite heat stabilizer for PVC products. The rare earth includes rare earth hydroxides of lanthanum, neodymium, cerium, europium, and praseodymium.
Applicant argues (p. 11-12 Remarks) with regards to claims 15-17, Donglin relates to a smoke suppressant of ATO. Donglin does not disclose a rare earth compound in PVC. The claimed combination of ATO and rare earth hydroxide provides surprising results since ATO is minimized and still archives the desired flame retardancy and thermal stability.
Li requires a composite flame retardant not individual components and there is no suggestion of substituting ALO and MGO in Li with ATO would be expected to achieve the same result.
This argument is not found persuasive since the rejection does not rely on substitution of ALO and MGO. Rather, one skilled in the art would have been motivated to have included ATO in the composition of Li for smoke suppression and is low cost (abstract Donglin).
Further the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In the present case, claims 15-17 are not commensurate in scope with the evidence of unexpected results. Specifically, no amounts are recited beyond 3-10 phr of any rare earth hydroxide. In contrast, the working examples require specific amounts and types of components.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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