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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, 13-20, drawn to fiber reinforced composition, classified in C 08 K 3/32.
II. Claim 11-12, drawn to electrical connector, classified in H 01 R 17/721
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case flame retardant thermoplastic composition comprising long fibers can be utilized making molding composition due to good mechanical properties and strength (CN 118359925) or be utilized in the electrical components that do not requires passageway defined for receiving contact pin (US 2010/0113657).
During a telephone conversation with Tim Cassidy on Feb. 17, 2026 a provisional election was made without traverse to prosecute the invention of Group 1, claims 1-20. Affirmation of this election must be made by applicant in replying to this Office action. Claim 21 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Interpretation
To meet the limitation of the test methods utilized to determine the properties of the composition (ISO) functional equivalents (ASTM, JIS, KIS) will also be considered as well as the description of the test method in the prior art.
With respect to definition of long fibers, if the prior art does not state if the fibers are long, the examiner will rely on definition in [0076] of the instant invention. Specifically, [0076] teaches that the length of the fiber has to be in a range of 1-25 mm.
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.
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)(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 1-3, 5-7 and 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Togawa (JP 2010-031257 translation provided).
With respect to claim 1, Togawa discloses polyamide composition comprising following additives (claim 1):
8-40 wt.% of (B) carbon fibers, fibers are long fibers (claim 2)
2-10 wt.% of (C) carbon black (encompassed by term “comprising”
13-30 wt.% of (D) phosphors based flame retardant system.
The flame retardant system of Togawa according to his claim 4 includes melamine phosphate compound and metallic phosphinate. Wherein melamine polyphosphate meets the definition of synergist.
While claim 1 of Togawa does not recite any range for polyamide such can be easily found in examples, where the polyamide content depicted in Table 1, which is in a range of 38-69 wt.%.
Table 1 discloses melamine polyphosphate as D1 and metal phosphates as D2a and D2b which are utilized in 1:1 ratio which meets claimed ratio range. See also rejection of claim 2 below.
With respect to claim 2, provided by the translation branch of the USPTO components of Table 1 recite following:
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624
520
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With D-1 being melamine polyphosphate, D2a and D2b being metal phosphinates the ratio of D2:D1 is 1:1 (for example 10:10).
With respect to claim 3, the limitation of claim 3 is directed to compounding metal phosphinate and synergist wherein the synergist is compounded with carrier polymer. Claim 3 is in a product by process format wherein the patentable weight is given to the product and not to the process by which it is made.
With respect to claim 5, fibers of Togawa are arranged in a parallel manner [0034].
With respect to claim 6, the phosphinate compounds include metal salts [0022] of following chemical structures:
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204
626
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And
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200
586
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Wherein M is Ca, AL, Mg, Ba and Zn
With respect to claim 7, Togawa discloses use of zinc borate [0043].
With respect to claim 10, the length of the fibers of Togawa is in a range of 3-15 mm (claim 2).
Claims 13-15 and 20. are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Togawa (JP 2010-031257 translation provided).
With respect to claim 13, Togawa discloses polyamide composition comprising following additives (claim 1):
8-40 wt.% of (B) carbon fibers, fibers are long fibers (claim 2)
2-10 wt.% of (C) carbon black (encompassed by term “comprising”
13-30 wt.% of (D) phosphors based flame retardant system.
The flame retardant system of Togawa according to his claim 4 includes melamine phosphate compound and metallic phosphinate.
While claim 1 of Togawa does not recite any range for polyamide such can be easily found in examples, where the polyamide content depicted in Table 1, which is in a range of 38-69 wt.%.
With D-1 being melamine polyphosphate which meets the definition of synergist, D2a and D2b being metal phosphinates, the metal compound is utilized in amount of 5-10 wt.% Table 1, component D2a or D2b. Synergist (melamine polyphosphate) is utilized in an amount of 5-10 % by weight, which meets claimed amount of at least 2%.
With respect to claims 14, term “about 5% by weight” encompasses 5 % by weight as well as slightly higher than 5%.
With respect to claims 15 and 20, the two compounds utilized in examples include aluminum diethylphosphinate, wherein content of phosphinate according to Table 1 can be 10 or 17.5 % by weight.
Claims 1-3, 5, 6, 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bauer (EP 3665218 submitted by the applicant. Certified English translation IN 202017002820 is used as translation).
With respect to claims 1 and 2, Bauer discloses composition comprising (p. 2-4)
Polyamide or polyamide blend 25-95 wt.%
Glass fibers 1-40 wt.% long glass fibers are depicted on p. 12, continuous on p. 13
Phosphinic metal salt 5-20 wt.%
Phosphonic acid 0.05-1.5 wt.%
Phosphonic acid salt 0.001-1 wt.%
Melamine polyphosphate 2-10 wt.%
Phenolic antioxidant 0.01-5 wt.%
Phosphinite 0.01-5 wt.%
Wherein additional phosphorous based compounds are encompassed by term “comprising”
With respect to the ratio of metal phosphinate to polyphosphate, as seen above, phosphinic acid metal salt can be utilized in amount f 5-20 wt.%, while melamine polyphosphate is utilized in amount of 2-10 wt.%. Consequently, the content of the two encompasses 1:1 ratio.
With respect to claim 3, the limitation of claim 3 is directed to compounding metal phosphinate and synergist wherein the synergist is compounded with carrier polymer. Claim 3 is in a product by process format wherein the patentable weight is given to the product and not to the process by which it is made.
With respect to claim 5, Bauer discloses continuous fiber are in form of a threads, wherein fibers within a thread are oriented in substantially the same direction.
With respect to claim 6, the metal phosphinate component C and E are salts having following formula (p. 2):
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116
422
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Or
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110
318
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Wherein starting acid is diethylphosphinic acid. Wherein M is Al, FE, TO2 or Zn. M is 2.
With respect to claim 10, the length of the fiber is in a range of 0.05-10 mm (page 13).
Claims 13-16 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bauer (EP 3665218 submitted by the applicant. Certified English translation IN 202017002820 is used as translation).
With respect to claims 13 and 14, Bauer discloses composition comprising (p. 2-4)
Polyamide or polyamide blend 25-95 wt.%
Glass fibers 1-40 wt.% long glass fibers are depicted on p. 12, continuous on p. 13
Phosphinic metal salt 5-20 wt.%
Phosphonic acid 0.05-1.5 wt.%
Phosphonic acid salt 0.001-1 wt.%
Melamine polyphosphate 2-10 wt.%
Phenolic antioxidant 0.01-5 wt.%
Phosphinite 0.01-5 wt.%
Wherein additional phosphorous based compounds are encompassed by term “comprising”. The phosphonic acid is utilized in amount of 0.05-1.5wt% and salt of phosphonic acid is in a range of 0.001-6 wt.%, wherein salt is metal salt comprising Zn, Fe or Al (page 5). Both of which meet the minimum required of 2% but less than 5% as required by claim 14.
With respect to claim 15, metal salt of phosphonic acid is that of Al, Zn or Fe (page 5).
With respect to claim 16, as shown about the metal salt of phosphonic acid (E), is utilized in amount of 0.01-1 wt. % and phosphonic acid is utilized in amount of 0.05-1.5 wt.% as depicted above.
With respect to claim 20, metal phosphinate as disclosed above include aluminum diethylphosphinate as component C because both R1 and R2 are ethyl group in formula on page 2.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Bauer (EP 3665218) in view of Padmamaban (US 2019/0256656).
Discussion of the teachings of Bauer from paragraph 3 of this office action is incorporated here by reference. In summary, Bauer discloses thermoplastic polyamide composition comprising glass fibers, flame retardant system comprising melamine polyphosphate and metal salt of phosphonic acid along with long continuous glass fibers and that include organic and inorganic stabilizers, the antioxidant is Irgafos 168.
With respect to claim 4, the comparative tracking is measured using IEC-60112 (p. 29) and it is 600V (Table 1) along with UL-94 rating of V-0, time of less than 250 seconds. UL94 rating is V-0.
Composition of Bauer meets the CTI required by instant claims as well as UL94 rating and the content of the ingredients overlaps with those of the instant invention.
Bauer does not explicitly teach the limiting oxygen index (LOI). However, this property is obvious as reflected in Langrick.
One of ordinary skill in the art would readily understand that the LOI depends on several factors which includes degree of cure, filler and fiber content, flame retardant and additives and temperature.
Padmamaban discloses flame retardant polyamide composition, wherein polyamide includes MDX, polyamide 6 and polyamide 6,6 [0059], [0088], flame retardant additives which include glass fiber in overlapping amount with Bauer [0099], wherein flame retardants include phosphates, melamine polyphosphates or salts of phosphonic acids [0104-0111]. The composition of Padmamaban also has UL-90 rating of 0 [0128] with flame time of less than 30 second (Table 1) [051], which is also encompassed by Bauer.
Padmamaban discloses that the LOI for compositions such as those enabled in both references is 25 or more [0127]. While Padmamaban does not specifically disclose the method, the result would be expected to be within the same rage, because as it was stated above LOI depends on the aspects of the composition which overlap between both Bauer and Padmanaban.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art that composition disclosing the same components (polymers, flame retardants, glass fibers and antioxidants) would have similar properties because compounds and their properties are mutually exclusive and combination of the components would have cumulative effect, rendering properties such as LOI obvious.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer (EP 3665218) in view of Bienmueller (2016/0122511).
Discussion of the teachings of Bauer from paragraph 3 of this office action is incorporated here by reference. In summary, Bauer discloses thermoplastic polyamide composition comprising glass fibers, flame retardant system comprising melamine polyphosphate and metal salt of phosphonic acid along with long continuous glass fibers and that include organic and inorganic stabilizers, the antioxidant is Irgafos 168.
On page 10 Bauer discloses that conventional processing auxiliaries and stabilizers can be utilized but does not provide any of the definition as to what these auxiliaries are.
With respect to claims 8 and 9, Bienmueller discloses another polyamide composition utilizing glass fibers and requiring flame retardancy. Just like in Bauer the polymers are polyamides, including nylon 6.
The composition of Bienmueller includes flame retardants based on melamines and phosphates as component H [0113] along with long glass fibers [0075].
Bienmueller discloses that composition comprising all the components discussed above needs use of lubricants especially those that have a good demolding agents with calcium stearate being preferred [0106].
Both Bauer and Bienmuller disclose compositions which are molded into product at high temperatures. Use of lubricants such as calcium stearate imparts demolding properties which facilitate removal of the finished product from the mold. Calcium stearate is one of preferred embodiments because it has ability to withstand high temperatures.
It would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize calcium stearate of Bienmuller as the auxiliary of Bauer and thereby obtain the claimed invention. Such modification would facilitate removal of the molded product from the mold without affecting flame retardancy and other mechanical properties that are required,
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer (EP 3665218) in view of Bienmueller (2016/0122511).
Discussion of the teachings of Bauer from paragraph 4 of this office action is incorporated here by reference. In summary, Bauer discloses thermoplastic polyamide composition comprising glass fibers, flame retardant system comprising melamine polyphosphate and metal salt of phosphonic acid along with long continuous glass fibers and that include organic and inorganic stabilizers, the antioxidant is Irgafos 168.
On page 10 Bauer discloses that conventional processing auxiliaries and stabilizers can be utilized but does not provide any of the definition as to what these auxiliaries are.
With respect to claims 17-19, Bienmueller discloses another polyamide composition utilizing glass fibers and requiring flame retardancy. Just like in Bauer the polymers are polyamides, including nylon 6.
The composition of Bienmueller includes flame retardants based on melamines and phosphates as component H [0113] along with long glass fibers [0075].
Bienmueller discloses that composition comprising all the components discussed above needs use of lubricants especially those that have a good demolding agents with calcium stearate being preferred [0106].
Both Bauer and Bienmuller disclose compositions which are molded into product at high temperatures. Use of lubricants such as calcium stearate imparts demolding properties which facilitate removal of the finished product from the mold. Calcium stearate is one of preferred embodiments because it has ability to withstand high temperatures.
It would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize calcium stearate of Bienmuller as the auxiliary of Bauer and thereby obtain the claimed invention. Such modification would facilitate removal of the molded product from the mold without affecting flame retardancy and other mechanical properties that are required,
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 1-6, 10, 13-16, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 13-19 of co-pending Application No. 18/312,134. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 10, 13 17-19 of ‘134 recited the same components which include polyamide, long reinforcing fibers and flame retardant system. While claim 1 discloses overall amount of the melamine polyphosphate and metal phosphinate, the ‘134 invention discloses the same information in form of the ratio of the two components. These ratios are met in combination with instant claim 6 of instant invention which reads on ratio 1:1 higher when the amount of phosphonic acid component is synergist is higher.
Instant claim 4 discloses subject to the same UL-94 test, the same CTI standards which are also recited in co-pending claim 2.
Instant claim 4 requires the same LOI index using the same standard as in co-pending claim 3.
Instant claim 5 disclose glass fibers that are oriented and spaces apart in a substantially similar direction. While co-pending claims 7 and 8 are open to any type of fibers, the fibers have to be arranged in the same manner.
Instant claims 6 and 20 discloses the same flame retardant chemical structure as that of co-pending claims 14 and 15 where substituents are defined the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 5, 2028