DETAILED ACTION
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
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 11/10/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/27/2023 has been considered by the examiner.
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 11 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 11 requires “wherein the two PVC layers are similar.” However, it is unclear as to what qualifies the two PVC layers as being “similar” such that the two layers may have the same composition or may have compositions which are different from each other, but only by a slight margin (i.e. +/- 5% of a certain component). Therefore, the claim is rejected for failing to distinctly point out and distinctly claim the subject matter that is applicant’s invention. For the purposes of examination, the limitation is to be interpreted as the two PVC layers are identical (Instant Specification, PGPUB, Paragraph [0024]).
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.
Claim 2 is 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 2 requires the limitation of “wherein the polyester is polyethylene terephthalate.” However, claim 2 depends from claim 1 which already requires the polyester layer being PET. Therefore, claim 2 is rejected for failing to further limit a claim from which it depends. 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.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 111391462) in view of Beacham et al. (US 4,207,225).
Regarding claim 1, Zhang teaches a flexible transparent composite material including an inner protective layer, a barrier layer and an outer protective layer (“a substantially transparent multilayer film”) (Paragraph [0009]). The barrier layer is formed from PET and the inner and outer layers may be formed from PVC which are flame retardant (“comprising a polyester (PET) layer sandwiched between two flame-retardant polyvinyl chloride (PVC) layers”) (Paragraphs [0009]; [0031]). The protective layers may be provided with flame-retardant substances in order to improve the flame-retardance and maintain high transparency (Paragraph [0009]).
Zhang is silent with respect to the protective layers comprising 25% to 45% of a plasticizer wherein the plasticizer comprises phosphate.
Beacham teaches a composition of a mixture of a plasticizer A, present in a weight of 50 to 80 parts, and a plasticizer B, present in a weight of 20 to 50 parts by weight, and PVC wherein the mixture is present in an amount ranging from 30 to 150 parts by weight based on 100 parts by weight of PVC (Col. 3, Lines 9-21). The composition is heat stable and may be extruded without decomposition to give products characterized by excellent low temperature flexibility and flame resistance (Col. 3, Lines 9-21). The plasticizer A may be an octyl diphenyl phosphate or a triphenyl phosphate (Col. 3, Lines 22-40). The plasticizer B may be a tris(alkoxyalkyl) phosphate (Col. 3, Lines 41-50).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVC protective layers of Zhang with the compositions of Beacham which provide a composition which is heat stable and may be extruded without decomposition to give products characterized by excellent low temperature flexibility and flame resistance. The compositions include a mixture of a plasticizer A, present in a weight of 50 to 80 parts, and a plasticizer B, present in a weight of 20 to 50 parts by weight, and PVC wherein the mixture is present in an amount ranging from 30 to 150 parts by weight based on 100 parts by weight of PVC. The resulting weight of the plasticizer A, being octyl diphenyl phosphate or a triphenyl phosphate, 12% to 48% by weight which overlaps with the claimed range.
Zhang is silent with respect to the level of phosphorus being between 0.3 and 1.0% by weight with respect to the total weight of the flexible film. However, one of ordinary skill in the art would recognize that this property would be expected or, at the very least, have an overlapping range for the phosphorus level should the thicknesses of the layer and the content of a plasticizer containing the phosphate. MPEP 2112.01: 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
As discussed above, the PVC layers include an overlapping range which includes 12% to 48% by weight of either octyl diphenyl phosphate or a triphenyl phosphate. Furthermore, the preferred thicknesses of the claimed invention are 5 and 100 microns for the PET layer and 100 to 400 microns for the PVC layers (Instant Specification, PGPUB, Paragraphs [0014]-[0015]). Zhang further teaches the thicknesses of the barrier/PET layer being 10 to 1000 microns, the inner protective layer being 50 to 1500 microns, the outer protective being 80 to 2000 microns (Paragraph [0028]).
Therefore, one of ordinary skill in the art would recognize that the use of identical materials in a significantly overlapping range wherein each of the layers have significantly identical thicknesses, would also result in phosphate levels which, at the very least, overlap with the claimed range of 0.3 to 1.0 weight percent based on the total weight of the films.
Regarding claim 2, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the barrier layer is formed from PET.
Regarding claim 3, Zhang teaches the composite materials as discussed above with respect to claim 1. As illustrated in figure 1, the composite materials further include resin films between the barrier layer and the inner and outer protective layers (“functionalisation layer”) (Paragraph [0036]).
Regarding claim 4, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the plasticizer A includes a phenyl group (“at least one aromatic cycle”).
Regarding claims 5 and 6, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the thicknesses of the barrier/PET layer being 10 to 1000 microns, the inner protective layer being 50 to 1500 microns, the outer protective being 80 to 2000 microns (Paragraph [0028]).
Regarding claim 7, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the thicknesses of the barrier/PET layer being 10 to 1000 microns, the inner protective layer being 50 to 1500 microns, the outer protective being 80 to 2000 microns (Paragraph [0028]). The resulting total thickness is from 140 to 4500 microns.
Regarding claim 8, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the plasticizer A may be octyl diphenyl phosphate or a triphenyl phosphate.
Regarding claim 11, Zhang teaches the composite materials as discussed above with respect to claim 1. The inner and outer protective layers may be the same (Paragraph [0028]).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 111391462) in view of Beacham et al. (US 4,207,225) as applied to claim 1 above, and further in view of Bouchard et al. (WO 2019/233592).
Regarding claims 9 and 10, Zhang teaches the composite materials as discussed above with respect to claim 1. Beacham further teaches the plasticizer B being an aliphatic phosphate (Col. 3, Lines 41-43).
Zhang and Beacham are silent with respect to the aliphatic phosphate comprising chlorine and being one of those which are required by the claim.
Bouchard teaches a PVC-based coating which is formed using a primary and secondary plasticizer which impart flame resistance to the PVC compositions (Pg. 3, Lines 10-15). The primary plasticizer is preferably tris(2-chloro-isopropyl) phosphate in combination with a phenyl based phosphate providing flame resistance and the secondary plasticizer is preferably diisononylphthalate in a sufficient amount to control the viscosity of the composition (Pg. 2, Lines 8-12; Pg. 3, Line 28-Pg. 4, Line 11).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVC protective layers of Zhang with the plasticizers of Beacham such that the aliphatic plasticizer is preferably tris(2-chloro-isopropyl) phosphate in order to improve flame retardancy and further includes diisononylphthalate in a sufficient amount to control the viscosity of the composition as taught by Bouchard.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783