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 .
Response to Arguments
In their response dated 6/11/2026 the applicants amended independent claim 1 to include glass fibers and zinc borate. Both were not required for independent claim 1 when first office action on the merits was issued.
Claim 7 was cancelled.
Claims 11 and 12 are withdrawn and the restriction is final. Applicant’s request for rejoinder is acknowledged.
Independent claim 13 was not amended.
With respect to the teachings of Togawa, applicants’ amendment to limit long fiber to glass fiber overcame the rejections over Togawa.
With respect to teachings of Bauer, inclusion of zinc borate in claim 1, does obviate anticipation rejection, however updated search did provide other references that will be applied as necessitated by amendment. The office action is final as necessitated by amendment because zinc borate was not required by instant claim 1 before.
The rejection of claim 13 over Bauer is maintained. Applicants argued that Bauer explicitly define the phosphonic salt as being present in the total composition in an amount of 0.001-1% by weight.
Response: 5 teaches:
Component C utilized in an amount of 5-20 wt.%,
Component D utilized in an amount of 0.05-1.5 wt.%,
Component E utilized in an amount of 0.01-0.6 wt.%, and
Component F utilized in amount of 2-10 wt.%.
Instant claim 13 requires synergist to comprise metal salt of phosphonic acid, phosphonic acid or mixture thereof, but in no way does it limit the synergist to only to what is claimed. The synergist, because of term “comprising” encompasses other compounds such as melamine polyphosphate or another metal phosphinate. In his examples, Bauer defines flame retardant packages which include FM1, FM2, FM3, FM4 and FM8.
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In Tables 1 and 2 discloses inventive examples, where the FM1-4 containing aluminum salt of phosphonic acid (synergist) are utilized in conjunction with FM8 a melamine polyphosphate (second synergist). Melamine polyphosphate is encompassed by claim 13 and its use of term “comprising” .
Double Patenting rejection is maintained in concurrence with applicants’ remarks.
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 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, 6, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morimoto (EP 2 110 919).
With respect to claim 1, Morimoto discloses flame retardant polyamide composition comprising polyamide resin (A) in an amount of 15/78 wt.%, a flame retardant system (B) in an amount of 2-20 wt.% and glass fibers (C) in an amount of 20-65 wt.% (Abstract), wherein glass fiber can be long fiber (Abstract and claim 1)
The flame retardant system comprises combination of flame retardants. The first flame retardant is melamine polyphosphate which meets the limitation of polyphosphate synergist. Melamine polyphosphate is utilized in amount of 8-18 wt.%, preferably 2-12 wt.%. [0024, 0026]
The second flame retardant is phosphinate salt, utilized in amount of 3-12 wt.%, [0027, 00278, 0031, 0033]. The ratio of the two compounds meets instantly claimed range, includes 1:1 ratio that also meets limitation of instant claim 2.
Last but not least the composition of Morimoto discloses use of auxiliary flame retardant which is stable under the normal processing conditions is preferably zinc borate [0075] which is utilized in amount of 1-6 wt.% [0047, 0049].
With respect to claim 3, claim 3 is directed to a composition which is further limited by the order of steps in which the flame retardants are mixed with carrier polymer. This limitation renders claim 3 a product by process claim wherein patentable weight is given to the product and not to the process by which it is made. Consequently, the components of the composition only have to have ability to be mixed in the claimed manner, which they are.
With respect to claim 5, the claim is directed to glass fibers being spaced apart and aligned in substantially similar direction. Consistent with MPEP 804, where the specification can be utilized as a dictionary, the applicant’s fibers per instant specification as originally filed [0034] and [0085], the alignment is a result of the process and does not further limit the composition itself, rendering it a product by process claim. Consequently, long fibers of Morimoto only have to be capable of being aligned, which they are since the composition of Morimoto is extruded through a shaping die.
With respect to claim 6, the preferred phosphinate compound includes aluminum diethyl phosphinate which meets formula (I) where both R groups are ethyl groups. Other compounds include methyl ethyl phosphinic acid and methyl ethyl phosphinate salt [0031] See also formulae (I) and (II) [0028-0029].
With respect to claims 8 and 9, Morimoto discloses use of release agent (also known as lubricants, which include metal salts of long fatty acids. Example includes calcium salt of stearic acid [0063] Utilized in an amount of 1.5-2 wt.%, more preferably in an amount of 0.005-0.7 wt.% [0064] wherein the fatty acid is selected from two preferred lubricants one being carboxamide wax and second calcium salt of a fatty acid [0077].
Claims 1-3, 5, 6, 8, 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mercx (US 2005/0250885) in view of evidence in Exolit OP 1312 datasheet and brochure.
With respect to claim 1, Mercx discloses flame retardant polyamide composition comprising 30-65 wt.% of polyamide, 3-40wt.% of flame retardant component comprising metal phosphinates and nitrogen compound, and a filler material in amount of 30-70 wt.% (claim 1), wherein (Table 1):
Glass fibers are long glass fibers [0038].
Phosphinate can also diophosphinate [0022] in form of a metal salt. Exolit OP 1312.
Nitrogen compound includes exemplified melamine phosphate
Auxiliary flame retardant is zinc borate also referred to as synergist.
While the specification does not provide a separate range or ratio of phosphinate to the synergist, the examples can be utilized to approximate preferred ranges.
Synergist zinc borate is utilized in amount of 2.5 wt.%, total amount of flame retardant has to be in a range of 3-40 wt.% as disclosed above, phosphonates are utilized in amount of 20-25 wt.%, phosphinate is utilized in amount of 2.5-20 wt.% (see tables). Since both of these compounds have to be utilized together, 20:20 content will meet ratio of 1:1 of the instant claim 2. The content of Exolit OP 1312 of 15/20 wt.% is further recommended by manufacturer when utilized with polyamide 6 or 6,6 (see attached brochures)
With respect to claim 3, claim 3 is directed to a composition which is further limited by the order of steps in which the flame retardants are mixed with carrier polymer. This limitation renders claim 3 a product by process claim wherein patentable weight is given to the product and not to the process by which it is made. Consequently, the components of the composition only have to have ability to be mixed in the claimed manner, which they are.
With respect to claims 5 and 10, Mercx teaches that the long glass fibers as preferred [0038] can be aligned which reads on meeting direction of alignment and spacing between the fibers [0041], wherein aligned fibers have a length of 2-100mm.
With respect to claim 6, the formulae (I) and (II) of Mercx meets the formulae of claim 6, wherein metal can be aluminum, R1 and R2 are hydrogens or alkyls having 1-6 carbon atoms. Exemplified Exolit OP 1312 has a chemical name of aluminum diethylphosphinate.
With respect to claim 8, Mercx discloses use of lubricants [0036]. Exemplified compound is aluminum stearate.
Claims 13-16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bauer (EP 3665218, IN 202017002820 is used as translation.
With respect to claims 13 and 14, Bauer discloses composition comprising (p. 2-4):
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Wherein additional phosphorus based compounds are encompassed by the term “comprising”.
With respect to the ratio of the metal phosphinate to polyphosphate, as seen above, phosphinic metal salt can be utilized in an amount of 5-20 wt%.
To clarify the rejection as presented in the arguments section, instant claim 1, states that synergist comprises metal salt of phosphonic acid and the content of synergist is not limited to the metal salt of phosphonic acid but to an overall synergist. Consequently, which content of phosphonic compound is as defined in components D and E, melamine polyphosphate is also a synergist so the total content of synergist is above 2 wt.% as required by instant claims. Additionally presented in arguments section FM1-4 are blends of more than one compound wherein phosphinic salt is the flame retardant and other phosphinic and phosphonic salts are synergist. Other combination includes phosphinic salts as flame retardant and phosphonic salt with polyphosphate as combination of two synergists. Consequently, either way, the synergist overall is utilized in an amount of at least 2wt.%.
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 Mercx (US 2005/0250885) in view of evidence in Exolit Op 1312 datasheet and brochure.
Mercx as disclosed above, polyamide composition comprising phosphate, phosphinate and zinc borate with long glass fiber as reinforcing fillers. The composition of Mercx results in V0 rating using UL 94 (claim 10) and comparative tracking index using IEC-60112 of greater than 400 volts, wherein examples 19 and 20 disclose CTI of 600.
With respect to claim 4, while Mercx discloses UL and CTI properties, he does not disclose CTI. Since claim 4 depends on claim 1, the composition that meets this limitation has to have 60-90 wt.% of polymer matrix, which under broadest reasonable interpretation includes any polymer. Long glass fibers have to be utilized in amount of 10-70 wt.%, wherein under broadest reasonable interpretation, any long fiber meets the claim including rovings. The flame retardant has to contain any metal phosphianate, zinc borate and any polyphosphate. While ratio of the phosphiate and polyphosphate is disclosed, the ratios do not limit actual amounts, consequently any amount of the flame retardant can be utilized as long as the ratio is met.
Since, Mercx discloses the same basic composition of flame ratardants, long glass fibers and polymer, and is already meeting the limitation of UL94 rating and CTI, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that the LOI would also be met.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (see example). Therefore, the claimed effects and physical properties, i.e. (LOI) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Morimoto in view of Mercx (US 2005/0250885) in view of evidence in Exolit Op 1312 datasheet and brochure.
The discussion of Morimoto from paragraph 1 of this office action is incorporated here by reference. In summary, Morimoto discloses composition comprising polyphosphate and metal phosphinate that meets claimed ratio along with long glass fibers and zinc borate. Morimoto’s flame retardants are utilized in polyamide compositions, which also require V0 rating. The polyamide of Marimoto that can be utilized in his compositions include polyamide 6, polyamide 66.
The different between the present invention and Morimoto are properties of the instant claim 4.
Mercx discloses flame retarded composition which comprises polyamide 6 and polyamide 6,6 (see Table 1) and examples of Mercx. The composition of Mercx also discloses the same phosphates and phosphinates as Morimoto. Consequently the same properties would be expected because CTI and LOI are both dependent on the composition, its ingredients and their amounts.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that as evidenced by Merxc the composition of Morimoto would meet the properties of the instant invention, when polyamide 6 and polyamide-6,6 are utilized because compositions are identical.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. Examples and claims). Therefore, the claimed effects and physical properties, i.e. (CTI and LOI) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Mercx (US 2005/0250885) in view of Morimoto (EP 2 110 919) and evidence in Exolit Op 1312 datasheet and brochure.
Discussion of Mercx from paragraph 2 of this office action is incorporated here by reference. Mercx as disclosed above teaches flame retardant composition comprising polyamide, flame retardants including phosphates, phosphinates and zinc borates, wherein lubricant or mold release agents are utilized. The mold release agent disclosed are stearates and the only example provided is aluminum stearate.
The difference between Mercx and instant invention is in use different counterion of stearates as lubricants or mold release agents.
Morimoto also discloses polyamide composition which comprises phosphates, phosphinates, zinc borate and long glass fiber. Morimoto discloses use of mold release agents (lubricants) which include calcium stearate, aluminum stearate, zinc stearate and the like. The compounds of Morimoto are all functional equivalent because the lubricating property is attributed to long hydrocarbon chain and not to the counter ion.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art, at the time instant invention was filed to use stearate with any counterion such as calcium counterion and still achieve improved mold release or reduce friction which is attributed to the long fatty chain of the compound. Consequently, aluminum stearate of Marcx is functional equivalent to calcium stearate of Morimoto.
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 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 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.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 8, 2026
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