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 .
Response to Amendment
The Amendment filed 28 January 2026 has been entered. Claims 1, 2, and 5 – 10 remain pending in the application.
Claim Interpretation
The following interpretation of claim 1 was presented in the Office Action mailed 6 November 2025 and is maintained herein:
Claim 1 is directed to a transparent fireproof plastic board comprising, in relevant part, two fireproof reinforcing layers, each of which “is formed into a carbon protective layer after being heated at a high temperature”.
The examiner understands this limitation of claim 1 as the fireproof reinforcing layers as having a property of forming into a carbon protective layer when exposed to high temperature heat rather than actually being in the form of a carbon protective layer. The examiner finds this interpretation reasonable in light of, for instance, claims 8 – 10 (all of which depend on claim 1 directly or indirectly) which recite embodiments the fireproof reinforcing layer in terms of a composition which is not carbon (amino resin or fluorine-containing polymers are mentioned).
The examiner further notes claim 1, as amended, requires the intermediate plastic substrate to be a polyethylene terephthalate substrate having “a flame resistance grade of V0 within a thickness ranging from 1.2 mm to 3.2 mm according to UL94 testing standard” (ll. 4 – 10 of the claim). The examiner does not consider this recitation a requirement of the intermediate plastic substrate to have such a thickness (in contrast to claim 5 which does specify a “first thickness”). Rather, the examiner understands claim 1 to require a particular flame resistance grade of V0 over the thickness recited, and thus the intermediate plastic substrate can have a thickness outside the recited 1.2 mm to 3.2 mm range, where the recitations for a “first thickness” in claim 5 would indicate this interpretation reasonable.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, and 5 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Maas ‘535 (US 2013/0280535 A1) in view of Campbell (US 4,824,723 A).
Regarding claim 1, Maas ‘535 discloses a transparent fireproof plastic board “multilayer sheet”, e.g. “multilayer sheet” 10: e.g. Fig. 2; ¶¶ [0006] – [0081]), the transparent fireproof plastic board comprising:
an intermediate plastic substrate being a polyester substrate that includes polyester and a phosphorous-containing flame retardant dispersed in the polyester (“core layer” comprising a “plastic material”, citing polyesters as an exemplary genus, and a “flame retardant”, citing “organic compounds” including phosphorous in various forms, e.g. “core layer” 12: e.g. Fig. 2; ¶¶ [0007] – [0009], [0012], [0015] – [0018], [0020], [0026] – [0030], [0033], [0038] – [0043], [0075] – [0080]); and
two fireproof reinforcing layers respectively formed on two opposite surfaces of the intermediate plastic substrate (“first cap layer”, “second cap layer”, e.g. “first cap layer” 14, “second cap layer” 16: Fig. 2; ¶¶ [0007] – [0009], [0012], [0015] – [0018], [0020], [0026], [0030] – [0034], [0038] – [0043]), and each of the fireproof reinforcing layers is formed into a carbon protective layer after being heated at a high temperature (“intumescent” to form a “charred protective layer”: e.g. ¶¶ [0007] – [0019], [0015] – [0018], [0020], [0030] – [0033]).
While Maas ‘535 mentions polyesters as suitable for the intermediate plastic substrate (e.g. ¶ [0027]), Maas ‘535 is not explicit as to a polyethylene terephthalate substrate that includes polyethylene terephthalate and a phosphorous-containing flame retardant dispersed in the polyethylene terephthalate, wherein the intermediate plastic substrate has a first visible light transmittance of not less than 80%, and the polyethylene terephthalate substrate has a flame resistance grade of V0 within a thickness ranging from 1.2 mm to 3.2 mm according to UL94 testing standard. Maas ‘535 is further not explicit as to each of the fireproof reinforcing layers having a second visible light transmittance of not less than 80%.
However, Campbell discloses polyester substrates, notably polyethylene terephthalate substrates, containing a phosphorus-containing flame retardant dispersed therein (“core” of a “multilayer material” comprising a “thermoplastic polyester” such as “poly(ethylene terephthalate)” having “flame retardant” added thereto, e.g. “organophosphorus compounds” or “phosphorous-containing polyols”: e.g. Col. 1, l. 43, to Col. 12, l. 30), wherein said substrates have a flame resistance grade of V0 within a thickness range of 0.127 mm to 6.35 mm (“about 5 mils to about 250 mils”: e.g. Col. 2, ll. 48 – 53).
Campbell discloses such substrates exhibit high flame resistance (e.g. Col. 1, ll. 46 – 50, 64 – 68; Col. 2, ll. 21 – 24) and thus are useful for, for instance, automotive interior fixtures and moldings (e.g. Col. 2, ll. 24 – 31). Maas ‘535 makes similar disclosures regarding flame resistance (exemplary embodiments based on an intermediate plastic substrate that, by itself, does not have a V0 rating but is rendered so by the “cap layers”: e.g. ¶¶ [0049] – [0053]) and use in automotive interior fixtures and moldings (transportation interiors, e.g. for aircraft and rail: e.g. ¶¶ [0016], [0018], [0020] – [0024], [0075], [0076]).
Considering the flame resistance grade Campbell discloses as compared to exemplary, and non-limiting, embodiments of Maas ‘535’s disclosure, one of ordinary skill in the art would have observed Campbell’s flame resistance grade would have been an improvement on the examples Maas ‘535’s disclosure, especially in the environment in which Maas ‘535’s transparent fireproof plastic board is used.
Accordingly, to provide high flame resistance, or to provide higher flame resistance, it would have been obvious to modify Maas ‘535’s intermediate plastic substrate to be a polyethylene terephthalate substrate that includes polyethylene terephthalate and a phosphorus-containing flame retardant dispersed in the polyethylene terephthalate, the polyethylene terephthalate substrate having a flame resistance grade of V0 within a thickness ranging from 0.127 mm to 6.35 mm, and thus by necessity 1.2 mm to 3.2 mm, according to UL94 testing standard as Campbell suggests.
With respect to the first and visible light transmittances, Maas ‘535 notes the visible light transmittance can be readily determined by end use specifications and is adjustable through parameters such as limiting the amount of additives which increase haze and therefore reduce visible light transmittance (e.g. ¶ [0024]). Given this aspect of Maas ‘535’ disclosure discusses the visible light transmittance of the transparent fireproof plastic board as a whole, one of ordinary skill in the art would have understood each of the intermediate plastic substrate and the fireproof reinforcing layers should be at least as transmissive as the whole transparent fireproof plastic board in order to not compromise the transparency.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious for (I) the intermediate plastic substrate to have a first visible light transmittance of not less than 80% and (II) each of the fireproof reinforcing layers to have a second visible light transmittance of not less than 80%. One of ordinary skill in the art would have been motivated to provide these properties in order to meet desired end use specifications, namely ones where high transmittance is desired.
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). MPEP § 2112.01, I.
While Maas ‘535 and Campbell are not explicit as to the transparent fireproof plastic board conforming to a second-level flame resistance grade according to CNS 14705-1 testing standard, the transparent fireproof plastic board Maas ‘535 and Campbell collectively disclose is otherwise identical to the transparent fireproof plastic board of claim 1. Accordingly, a prima facie case of obviousness exists with respect to the transparent fireproof plastic board conforming to a second-level flame resistance grade according to CNS 14705-1 testing standard.
Regarding claim 2, in addition to the limitations of claim 1, Maas ‘535 discloses the carbon protective layer has a thermal conductivity lower than that of the fireproof reinforcing layer before being heated at the high temperature, so as to delay a rate of heat transferring to the intermediate plastic substrate (“insulate”: e.g. ¶¶ [0020], [0030]).
Regarding claim 5, in addition to the limitations of claim 1, Maas ‘535 discloses the intermediate plastic substrate has a first thickness of, e.g., between 4 mm and 55 mm (e.g. ¶ [0029]), and each of the fireproof reinforcing layers has a second thickness that is, e.g., 0.0009 times to 0.375 times, the first thickness (“less than or equal to 1.5 mm”, e.g. “50 micrometers to 1.5 mm”: e.g. ¶ [0038]).
Maas ‘535’s broader range for the thickness of the intermediate plastic substrate encompasses the claimed range whereas Maas ‘535’s narrower range for the thickness of the intermediate plastic substrate overlaps the claimed range. Additionally, Maas ‘535’ range for the second thickness relative to the first thickness encompasses the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 6, in addition to the limitations of claim 5, Maas ‘535 discloses each of the fireproof reinforcing layers is a coating layer formed on the surface of the intermediate plastic substrate by coating (e.g. ¶ [0044]).
Regarding claim 7, in addition to the limitations of claim 6, Maas ‘535 discloses the carbon protective layer is formed by the coating layer (e.g. ¶¶ [0020], [0030] – [0035]), and the carbon protective layer has a foam structure (e.g. ¶¶ [0020], [0030]).
Although Maas ‘535 is not explicit as to the carbon protective layer having a third thickness that is 5 times to 30 times the second thickness, Maas ‘535 discloses the composition of the fireproof reinforcing layers, as well as the amount of heat and/or flame to which the fireproof reinforcing layers are exposed to, will dictate the third thickness (e.g. ¶¶ [0020], [0030] – [0035]). Given the intumescent nature of Maas ‘535’s reinforcing layers dictates the protection properties of the transparent fireproof plastic board (e.g. ¶ [0020]), one of ordinary skill in the art would have understood how large the third thickness is relative to the second thickness can be adjusted to provide the requisite protection properties.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious for the carbon protective layer to have a third thickness that is 5 times to 30 times the second thickness in order to meet protective property requirements.
Regarding claim 8, in addition to the limitations of claim 6, Maas ‘535 discloses the coating layer is formed by, e.g., an organic coating material, wherein the organic coating material includes an amino resin, e.g. melamine (e.g. ¶ [0032]).
Regarding claim 9, in addition to the limitations of claim 1, Maas ‘535 discloses each of the fireproof reinforcing layers is a film formed on the surface of the intermediate plastic substrate through thermal bonding (coextrusion of thermoplastics forming the “core layer” 12 and “cap layers” 14, 16: e.g. ¶¶ [0007] – [0009], [0015] – [0018], [0044]), wherein the film is a fluorine-containing polymer film that is, e.g., a polyvinyl fluoride film (“polyvinyl halides” are mentioned as a material for the “core layer” 12 also suitable for “cap layer” 14, 16: e.g. ¶¶ [0027], [0033]).
MPEP § 2131.02, III, states the following, in relevant part, regarding a generic disclosure anticipating claimed species covered by that disclosure when the species can be at once envisaged from the disclosure:
A reference disclosure can anticipate a claim when the reference describes the limitations but “‘d[oes] not expressly spell out’ the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
When a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
In In re Petering, the prior art disclosed a generic chemical formula “wherein X, Y, Z, P, and R’- represent either hydrogen or alkyl radicals, R a side chain containing an OH group.” The court held that this formula, without more, could not anticipate a claim to 7-methyl-9-[d, l’-ribityl]-isoalloxazine because the generic formula encompassed a vast number and perhaps even an infinite number of compounds. However, the reference also disclosed preferred substituents for X, Y, Z, P, R, and R’ as follows: where X, P, and R’ are hydrogen, where Y and Z may be hydrogen or methyl, and where R is one of eight specific isoalloxazines. The court determined that this more limited generic class consisted of about 20 compounds. The limited number of compounds covered by the preferred formula in combination with the fact that the number of substituents was low at each site, the ring positions were limited, and there was a large unchanging structural nucleus, resulted in a finding that the reference sufficiently described “each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name.” The claimed compound was 1 of these 20 compounds. Therefore, the reference “described” the claimed compound and the reference anticipated the claims.
While these citations are primarily directed to anticipation, a corollary can be more broadly drawn to obviousness contexts as well. Notably, Petering indicates that a genus with a sufficiently small number of species can be considered to read on said species without explicitly naming them. Maas ‘535 falls into this context, and notably describes a genus whose number of species is smaller than Petering, so the examiner considered the following assessment reasonable.
The halogens consist of six species, namely fluorine, chlorine, bromine, iodine, astatine, and tennessine. One of ordinary skill in the art would consider the first four to be the most relevant in the context of Maas ‘535 as the other two undergo radioactive decay. Therefore, while six polyvinyl halides are technically envisaged, four polyvinyl halides are what one of ordinary skill in the art would realistically envisage. Because of this small list, the species of polyvinyl fluoride would be “at once envisaged” within the guidelines of MPEP § 2131.02, III, as a polyvinyl halide.
Regarding claim 10, in addition to the limitations of claim 1, Maas ‘535 discloses each of the fireproof reinforcing layers includes a film directly bonded to the surface of the intermediate plastic substrate through thermal bonding (coextrusion of thermoplastics forming the “core layer” 12 and “cap layers” 14, 16: e.g. ¶¶ [0007] – [0009], [0015] – [0018], [0044]), wherein the film is a fluorine-containing polymer film (polytetrafluoroethylenes and “polyvinyl halides” are mentioned as a material for the “core layer” 12 also suitable for “cap layer” 14, 16: e.g. ¶¶ [0027], [0033]).
MPEP § 2131.02, III, states the following, in relevant part, regarding a generic disclosure anticipating claimed species covered by that disclosure when the species can be at once envisaged from the disclosure:
A reference disclosure can anticipate a claim when the reference describes the limitations but “‘d[oes] not expressly spell out’ the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
When a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
In In re Petering, the prior art disclosed a generic chemical formula “wherein X, Y, Z, P, and R’- represent either hydrogen or alkyl radicals, R a side chain containing an OH group.” The court held that this formula, without more, could not anticipate a claim to 7-methyl-9-[d, l’-ribityl]-isoalloxazine because the generic formula encompassed a vast number and perhaps even an infinite number of compounds. However, the reference also disclosed preferred substituents for X, Y, Z, P, R, and R’ as follows: where X, P, and R’ are hydrogen, where Y and Z may be hydrogen or methyl, and where R is one of eight specific isoalloxazines. The court determined that this more limited generic class consisted of about 20 compounds. The limited number of compounds covered by the preferred formula in combination with the fact that the number of substituents was low at each site, the ring positions were limited, and there was a large unchanging structural nucleus, resulted in a finding that the reference sufficiently described “each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name.” The claimed compound was 1 of these 20 compounds. Therefore, the reference “described” the claimed compound and the reference anticipated the claims.
While these citations are primarily directed to anticipation, a corollary can be more broadly drawn to obviousness contexts as well. Notably, Petering indicates that a genus with a sufficiently small number of species can be considered to read on said species without explicitly naming them. Maas ‘535 falls into this context, and notably describes a genus whose number of species is smaller than Petering, so the examiner considered the following assessment reasonable.
The halogens consist of six species, namely fluorine, chlorine, bromine, iodine, astatine, and tennessine. One of ordinary skill in the art would consider the first four to be the most relevant in the context of Maas ‘535 as the other two undergo radioactive decay. Therefore, while six polyvinyl halides are technically envisaged, four polyvinyl halides are what one of ordinary skill in the art would realistically envisage. Because of this small list, the species of polyvinyl fluoride would be “at once envisaged” within the guidelines of MPEP § 2131.02, III, as a polyvinyl halide.
Maas ‘535 does not explicitly state each of the fireproof reinforcing layers is a laminated structure, where the fireproof reinforcing layers further include a coating layer formed by being coated on a side surface of the film that is away from the intermediate plastic substrate, and the coating layer is formed by an organic coating or an inorganic coating, and wherein the organic coating includes an amino resin, and the inorganic coating includes silicate.
However, Maas ‘535 does disclose embodiments wherein one side of an intermediate plastic substrate has a laminated structure of “cap layers”, e.g. to improve adhesion (e.g. Fig. 3; ¶ [0036]) or to provide chemical and/or abrasion resistance (e.g. Fig. 4; ¶ [0037]). The additional “cap layer” thus provides a coating layer formed by being coated on a side surface of the film that is away from the intermediate plastic substrate. Maas ‘535 further discloses such a coating layer is formed by, e.g., an organic coating including an amino resin (e.g. ¶¶ [0030] – [0034], [0039] – [0042]).
Furthermore, Maas ‘535 allows for more than three “cap layers” in a transparent fireproof plastic board (e.g. ¶ [0043]), so considering Maas ‘535’s alternative embodiments for improving the embodiment of Fig. 2 is considered reasonable.
Therefore, it would have been obvious to configure each of Maas ‘535’ fireproof reinforcing layers as a laminated structure, e.g. as suggested in Maas ‘535 shows in Fig. 3 and 4, where the fireproof reinforcing layers further include a coating layer formed by being coated on a side surface of the film that is away from the intermediate plastic substrate, and the coating layer is formed by an organic coating including an amino resin in order to provide the fireproof reinforcing layers with improved adhesion and/or improved chemical and/or abrasion resistance.
Response to Arguments
Applicant’s arguments, see pp. 5 – 7, filed 28 January 2026, with respect to the rejections of claims 1 – 10 under 35 U.S.C. 103 in view of Maas ‘535 and Maas ‘657 (US 2022/0203657 A1) have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Campbell.
Applicant asserts patentability on the basis that Maas ‘535 and Maas ‘637 fail to teach an intermediate plastic substrate which is a polyethylene terephthalate substrate that includes polyethylene terephthalate and a phosphorus-containing flame retardant dispersed in the polyethylene terephthalate, wherein the polyethylene terephthalate substrate achieves UL94 V0 within a thickness range of 1.2 mm to 3.2 mm.
The examiner cites Campbell herein to address these features.
Maas ‘535 generally mentions polyester substrates and phosphorous-containing flame retardants dispersed therein, but does not specify polyethylene terephthalate substrates with the claimed features.
Campbell rectifies these issues. In particular, Campbell discloses polyethylene terephthalate substrates which, like Maas ‘535, include phosphorous-containing flame retardants such that a UL94 V0 rating is achieved for thicknesses ranging from 0.127 mm to 6.35 mm. Included in this thickness range is the range of 1.2 mm to 3.2 mm recited in claim 1.
Given the high flame resistance for similar applications to Maas ‘535 discloses, one of ordinary skill in the art would have been motivated to use Campbell’s polyethylene terephthalate substrates as a polyester substrate for Maas ‘535’s transparent fireproof plastic board, either to improve the flame resistance or to ensure the flame resistance needs are met.
Accordingly, the new grounds of rejection for claims 1, 2, and 5 – 10 are presented herein.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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