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 .
This application is a provisional application No. 63/353,445, filed on Jun. 17, 2022.
Claims 1-20 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.
Claims 5-9 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.
Claim 5 recites …contains less ATO than in a PVC composition not containing the rare earth compound to achieve the same UL94 classification. It is not clear what is intended by …achieve the same UL94 classification.
Claims 6-9 are subsumed by this rejection because of its dependence.
Appropriate correction and/or clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites a UL94 classification with a sample thickness of 0.8 mm of V-0, V-1, or V-2. However, claim 1 recites the composition has a UL94 of V-2 or better, which includes V-2, V-1, or V-0. Therefore, claim 10 does not further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction and/or clarification 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.
Claims 1-2, 4, 10-11, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 106916396 submitted in IDS filed 1/31/2024)
Regarding claim 1: Li is directed to a PVC composition comprising:
PVC resin;
An inorganic flame retardant of magnesium hydroxide (also known as magnesium dihydroxide) and
A rare earth compound of a rare earth hydroxide.
The composition comprises 100 phr PVC resin.
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). In the present case, the composition comprises PVC, a rare earth hydroxide, and an inorganic flame retardant of magnesium hydroxide, which is substantially identical to the present composition.
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 2: The composition comprises 3-8 parts of a composite inorganic flame retardant, wherein the composite inorganic flame retardant comprises 10-20 wt% of the rare earth hydroxide. Hence, the composition can comprise 1-2 phr rare earth compound.
Regarding claim 4: The inorganic flame retardant includes magnesium hydroxide.
Regarding claim 10: 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-0, V-1, or 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 11: The composition further comprises additives of fillers, lubricants, colorants (abstract Li).
Regarding claims 13-14: The composition having a CongoRed at 200 ˚C of about 90 min to about 200 min, or a limiting oxygen index of about 20 to about 35 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 the claimed properties 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.
Claims 3, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 1 above, and further in view of Xiaopeng et al (CN 111269498, submitted in IDS filed 1/31/2024).
Regarding claim 3: 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.
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).
Claims 5-9, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 1 above, and further in view of Donglin et al. (CN 1117811).
A machine translation of CN 1117811 is provided with this office action.
Regarding claim 5: Li doesn’t mention the composition comprises ATO.
Donglin is directed to a composition having a smoke suppressant of 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.
Regarding claims 6-7: The amount of rare earth hydroxide in Li is 10-20 wt% of the inorganic flame retardant, which is used in an amount of 3-8 parts per 100 parts PVC. It follows the rare earth hydroxide can be present in an amount as much as 1.6 parts per 100 parts PVC. Donglin discloses the ATO can used in an amount of 2 parts by weight per 100 parts PVC. Hence, a ratio of about 1:1 is within scope of the combination of Li and Donglin.
Regarding claim 8: The composition can comprise 2-20 phr ATO (abstract Donglin) and 1-1-3.5 phr rare earth in Li. It follows the combined amount at least overlaps the claimed 3-10 phr.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 9: The composition can comprise 2-20 phr ATO (abstract Donglin) and 1-1-3.5 phr rare earth in Li.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 12: The composition has 0 phr chlorinated paraffins.
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).
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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764