DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/14/2026 has been entered.
Claims 5 was canceled. Claims 1, 3-4, 6, 8-17 and 21-25 are now pending in the application.
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, 3-4, 6, 8-17 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Duan et al. (CN111117225A; English Machine Translation incorporated herewith).
Regarding claim 1, Duan et al. teach a flame retardant polyamide material (Abstract) and a preparation method thereof, wherein the flame retardant polyamide material comprises
50-70 parts of PA56T (thereby corresponding to the 40-65 parts by mass of a polyamide resin),
a filler that is a glass fiber [0069] in the amount of 20-30 parts by mass (Table 1, C1-C6) thereby corresponding to the 25-40 parts by mass of glass fibers, and further teaching alkali-free glass fibers [0128] thereby reading on the claimed E-glass fiber,
5-30 parts by mass of a flame retardant (corresponding to 0-20 parts by mass of a flame retardant) wherein the flame retardant comprises hypophosphite and halogen (claims 4-5), wherein the hypophosphite is selected from one or more of dimethyl phosphite, ethyl methyl phosphite, diethyl phosphites, aluminum phosphonates [0050-0051] and further teach the flame retardants are selected from one or more of decabromodiphenyl ether [0062],
an antioxidant [0083] in an amount of 0.01-0.2 parts [0084],
and 1-10 parts of an auxiliary agent (Abstract) thereby corresponding to the 0.1-2 parts by mass of other auxiliaries.
Duan et al. further teach the polyamide resin is pentanediamine and an acid, wherein the acid is selected from one or more of sebacic acid and terephthalic acid, among others (claim 2) thereby reading on the polyamide resin comprising repeat units derived from pentanediamine and a diacid comprising an aliphatic diacid (sebacic acid) and an aromatic diacid (terephthalic acid) of claim 1, wherein the ratio of the pentanediamine and the acid is from (1-1.05) : 1 [0037], and wherein the polyamide is PA56T [0118] thereby the terephthalic acid to adipic acid is in the claimed range.
Duan et al. and the claims differ in that Duan et al. do not teach the exact same amount for the antioxidant as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the amount of antioxidant taught by Duan et al. (0.01-0.2 parts; [0084]) overlap the instantly claimed range (0.2-1 part by mass antioxidant) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 3, Duan et al. teach the relative viscosity of the PA56T in 98% concentrated sulfuric acid at 25C is 2-3 (Abstract) thereby corresponding to the claimed range of 1.8-4.
Regarding claim 4, Duan et al. do not particularly teach the melting temperature of the polyamide resin.
However, Duan et al. teach the same polyamide resins (such as PA56T) formed by the same diacids and pentanediamine and in the same preparation method as required by the instant claim. Therefore, the melting temperature of the polyamide resin of Duan et al. is expected to be the same melting temperature as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (polyamide resin comprised of aliphatic and aromatic diacids with pentanediamine) within the claimed proportions (weight ratio of 1: 1:05) for the same utility (flame retardant compositions).
Regarding claim 6, Duan et al. are silent regarding the length of the glass fiber.
However, Duan et al. teach the feeding of the glass fibers from different inlets will benefit the mixing of the materials, the of mixing time, promoting the dispersion of the glass fibers and preventing the precipitation of glass fibers [0112]. The length of the glass fibers will affect the resulting dispersion of the glass fiber in the flame retardant composition. Therefore, the length of the glass fibers can be optimized to reach the desired dispersion via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the length of the glass fibers for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 8, Duan et al. teach the flame retardant comprises hypophosphite and halogen (claims 4-5) wherein the hypophosphite is selected from one or more of dimethyl phosphite, ethyl methyl phosphite, diethyl phosphites, aluminum phosphonates [0050-0051] and further teach the flame retardants are selected from one or more of decabromodiphenyl ether [0062].
Regarding claim 9, Duan et al. teach the weight ratio of the hypophosphite to the halogenated flame retardant is 1 : (0.3-0.5) [0061] thereby corresponding to the claimed ratio of 3 to 5 : 1.
Regarding claims 10-11, Duan et al. teach the antioxidant 1098 [0159] which is N,N'-bis-(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionyl)hexamethylenediamine thereby reading on the hindered phenolic antioxidant and the N,N’-hexamethylenebis(3,5-di-tert-butyl-4-hydroxyhdyrocinnamamide).
Regarding claim 12, Duan et al. teach other additives such as lubricants [0083], among others.
Regarding claims 13 and 21, Duan et al. teach lubricants including stearates and various waxes [0088] thereby reading on the internal and external lubricants as required by the instant claim.
Regarding claim 14, Duan et al. teach various mechanical properties of the flame retardant composition, in particular, a flame retardant property of UL94 of V0 (Table 2).
Regarding claim 15, Duan et al. teach the preparation method comprising mixing the polyamide resin, the glass fibers, the flame retardant, the antioxidant and other auxiliaries [0165].
Regarding claim 16, Duan et al. teach method of mixing the polyamide resin, the flame retardant, the antioxidant and the other auxiliaries at temperatures of270 C thereby reading on the claimed 15-40C higher than the melting temperature of the polyamide resin, then further teaches the main material (the polyamide resins) are fed through a main port and the auxiliary material is fed through the first side feed port [0166] thereby reading on the premix as required by the instant claim, and then adding the glass fiber to the second side feed port thereby reading on the adding the antioxidant and the other auxiliaries and adding the glass fibers to the premix, then mixing and extruding and cooling to obtain the flame retardant composition.
Regarding claims 17-20 and 22-25, Duan et al. teach the main material is fed into a twin-screw extruder through a main feed port [0166] and further teach heating zones wherein the temperature of each zone from the main feed port to the die is 120℃, 270℃, 270℃, 270℃, 270℃, 270℃, 270℃, 270℃, and the die temperature is 280℃. Duan et al. teach a mixing speed of 250 r/min for 3 min [0165] and the screw speed is 400 r/min.
Duan et al. do not teach the exact same temperatures and mixing speeds as required by the instant claims.
However, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955). Further, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters. Where the principle difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that difference (see Ex parte Khusid, 174 USPQ 59). This decision is clearly analogous to pressure differences and other process parameters such as mixing speed. Therefore it would have been obvious to one of ordinary skill in the art to adjust the mixing speeds and temperatures of Duan et al., thereby arriving at the claimed invention.
Response to Arguments
Applicant's arguments filed 8/13/2026 have been fully considered but they are not persuasive.
In regards to the 103 rejection over Duan, Applicant states “the core distinction between the cited reference and the amended claim lies in that Duan only provides broad generic ranges for each raw material, without teaching the precise matching of specific component types and narrow dosage limits recited in amended Claim 1.”
Applicant further states “As demonstrated by the specification, only the unique formulation proposed by applicant delivers a balanced combination of outstanding mechanical strength and stable UL94 V-0 flame retardant performance, a technical outcome that a person skill in the relevant art could never predict from the disclosure of Duan’s document.”
In response, attention is drawn to the rejection as set forth, wherein Duan et al. teach a flame retardant polyamide material (Examples 1-12) and a preparation method thereof, wherein the inventive compositions of Duan comprise each of the claimed ingredients as set forth in instant claim 1, including the pentadiamine-based polyamide and the claimed adipic/terephthalic acid ratio, the specific glass fibers and the specific flame retardants as claimed in the amendment.
It is acknowledged that Duan et al. teach an amount of antioxidant (0.01-0.2 parts; [0084]) which overlaps the instantly claimed range (0.2-1 part by mass antioxidant).
It is also acknowledged that the data reproduced in the Applicant’s remarks from Table 2 of Duan represents different values for tensile strength, bending strength from the inventive examples in the instant specification as mentioned by Applicant.
However, these arguments are not found to be convincing because there is no evidence that the different amount of antioxidant creates the improved tensile strength and bending strength. Duan’s examples use a lower amount of antioxidant (0.1) than the claimed range (0.2 – 1 part), however, Duan’s examples also include different flame retardants versus the instant specification’s Examples.
As such, it is unknown whether the unexpected strength results are attributed to the different antioxidant levels or the differences in these other components (such as flame retardants). The table included in Applicant’s remarks are not comparing single variable experiments. That is, the improvements to tensile strength, bending strength, etc. cannot be attributed to just the antioxidant level.
Further, the unexpected results are not commensurate in scope with the claim language. The claims are drawn to much broader components (“other auxiliaries” for example) whereas the embodiments only utilize specific types of these claimed components (the only auxiliary material in the inventive examples are wax). There is no evidence on the record to suggest that all “other auxiliaries” would have the same unexpected results. It is for these reasons that Applicant’s arguments are not found to be convincing.
In summary, Applicant's argument of unexpected results is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Duan. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic components. Therefore, Applicant should compare several compositions containing claimed components of A, B, and C in amounts at several data points over the claimed range to several compositions containing the same claimed components of A, B, and C in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
