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 with traverse of Group I (claims 1-14) in the reply filed on 7/17/2026 is acknowledged. The traversal is on the ground(s) that the prior art does not teach less than 50 wt% of a glass fiber filler. This is not found persuasive because the prior art does teach less than 50 wt% of a glass fiber filler, as stated in the 103 rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/17/2026.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5 and 7-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (US 20180066135 A1).
Regarding claim 1, Zhang teaches a flame retardant composition comprising 20 to 80 wt % of an organic polymer including polyester; 0.1 to 30 wt % of flame retardant that comprises a phosphorus containing flame retardant and/or a nitrogen containing flame retardant, and 0-60 wt% of a filler including glass fiber [abstract, 0009, 0073, 0075].
It would have been obvious to one of ordinary skill in the art at the time of filing to select polyester as the organic polymer and glass fiber as the filler in Zhang’s composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The 0.1 to 30 wt % of flame retardant overlaps the claimed up to 15 wt% of a flame retardant component.
The 0-60 wt% of a filler including glass fiber overlaps the claimed from 10 wt% to less than 50 wt% of a glass fiber filler.
A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Since the flame retardant comprises a phosphorus containing flame retardant and/or a nitrogen containing flame retardant, It would have been obvious to one of ordinary skill in the art at the time of filing to select a phosphorus containing flame retardant and not to select a nitrogen containing flame retardant, meeting the limitation of “wherein the composition comprises less than 1 wt% of a component comprising nitrogen”.
Regarding claims 2-4, Zhang teaches that the organic polymers include polyethylene terephthalate and polybutylene terephthalate [0009].meeting the claimed polyester component recited in claims 2-3.
The recited “the polyester component comprises a monomer derived from a petrochemical source, a post-consumer recycled source, a bio-based source, or a combination thereof” in claim 4 is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through the process of “derived from a petrochemical source, a post-consumer recycled source, a bio-based source, or a combination thereof” is a polyester defined in claims 2-3, which is the same as Zhang teaches. Therefore, this limitation does not gain patentable weight.
Regarding claim 5, the recited “the glass fiber filler is virgin glass fiber or is derived from recycled sources” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through the process of “virgin glass fiber or is derived from recycled sources”” is a glass fiber defined in claims 1, which is the same as Zhang teaches. Therefore, this limitation does not gain patentable weight.
Regarding claim 7, Zhang teaches that the fillers include clay [0073]; and its amount can be 0-60 wt% [0075], overlapping the claimed amount of up to 2 wt %. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 8, Zhang teaches comprises 0-1 wt% of anti-flame dripping agents including SAN encapsulated PTFE [0072 and Table 1].
Regarding claim 9, melamine is optional in Zhang’s composition [0011]. It would have been obvious to one of ordinary skill in the art at the time of filing not to use melamine.
Regarding claim 10, the recited “the composition has a recycle content of at least 30%” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The recycled content is the components defined in claims 1, which is the same as Zhang teaches. Therefore, this limitation does not gain patentable weight.
Regarding claim 11, the recited “the composition has a UL94 rating of V-0 at a thickness of 0.8 millimeter (mm)” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “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)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Nevertheless, Zhang teaches that the product passes UL94 test for V-0 [0092, 0109].
Regarding claims 12-14, “Products of identical chemical composition cannot have mutually exclusive properties." 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. “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)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited properties are expected to be present.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (US 20180066135 A1) as applied to claim 1 above, further in view of Ding et al (US 20110071240 A1).
Regarding claim 6, Zhang teaches the composition in claim 1, and teaches that the flame retardant may comprise phosphinate salts [0066]. Zhang does not specifically teach that the phosphinate salts include aluminum diethyl phosphinate.
In the same field of endeavor, Ding teaches a polyester flame retardant composition comprising a polyester including poly(ethylene terephthalate) and poly(butylene terephthalate), glass fiber, and a phosphinate flame retardant including aluminum diethyl phosphinate [abstract, 0014, 0032, 0057]. Thus, Ding’s composition is similar to Zhang’s composition.
It would have been obvious to one of ordinary skill in the art at the time of filing to select aluminum diethyl phosphinate as the phosphinate salt in Zhang’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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