DETAILED ACTION
This Office Action is responsive to the amendment filed on 8/13/2026.
The objections and rejections not addressed below are deemed withdrawn.
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 present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/13/2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 8/13/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent no. 11,993,691 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting
Claim 15, 19, 22-29, and 32-34 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 5 of U.S. Patent No. 11,440,843 in view of Kaprinidis et al, US2004/0138351.
Patented claim 4 recites a composition comprising one or more polymers (for claim 15) and a modified geopolymer composite, which in turn comprises a geopolymer and an athermanous additive, corresponding to claimed species (i)(c) (for claim 15). The composition of the patented claim is in the form of expandable granulates (for claim 19), and comprises one or more propellants (for claim 19) and a vinylaromatic polymer. Said vinylaromatic polymer contains a carbon-carbon double bond and therefore corresponds to the claimed polyolefin (for claim 22).
Regarding claims 23-25: The patented claims do not require the inclusion of a halogenated (for claim 25) and/or brominated (for claims 23, 24) flame retardant and therefore read on compositions that do not contain such compounds.
Regarding claim 26: Patented claim 5 states that the athermanous additive may be carbon-based.
Regarding claim 27: The instant claim does not require that the athermanous additive is chosen from the listed carbon-based compounds. Patented claim 5 states that the athermanous additive may be a metal sulfide. The patented invention therefore corresponds to the instant claim wherein the additive is species (4).
Regarding claims 28, 29: The instant claims do not require that the athermanous additive is chosen from the listed compounds. Patented claim 5 states that the athermanous additive may be carbon-based. The patented invention therefore corresponds to the instant claim wherein the additive is species (1).
The patented claims are silent regarding the addition of one of the recited non-brominated phosphorus/nitrogen-based flame retardants.
Kaprinidis discloses the production of a composition used as a flame retardant additive in polymers, wherein said composition may be a blend of at least one melamine-based flame retardant and at least one phosphorus containing flame retardant (abstract, 0012-0016). Said melamine-based flame retardant may be melamine pyrophosphate (for claim 33) (¶0080). Said phosphorus-based flame retardant may be ammonium polyphosphate (for claim 33)(¶0118). Note that both of these compounds correspond to the claimed non-brominated phosphorus/nitrogen-based flame retardant (for claims 14, 15) which is non-halogenated (for claim 34). Kaprinidis further teaches that prior art flame retardant composition may be used in styrenic polymers such as polystyrene (¶0039, 0052), and is added in an amount in the range of 0.5 to 45% by weight (¶0128), overlapping the claimed range (for claims 14, 15). Note that the flame retardant composition of Kaprinidis does not comprise a brominated/halogenated flame retardant (for claims 23-25).
As noted above, the patented claims teach a composition comprising a vinyl aromatic polymer. Furthermore, Kaprinidis discloses a composition comprising a melamine-based flame retardant and a phosphorous-based flame retardant that is taught to be suitable for use in polystyrene (i.e., a vinyl aromatic polymer). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of the patented claims by using the composition of Kaprinidis as a flame retardant, with the reasonable expectation of obtaining a final composition having improved flame retardant properties (for claims 14, 15).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14, 15, 20-29, and 34-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 14 and 15: Claims 14 and 15 have both been amended to state that their respective claimed invention comprises one or more non-brominated phosphorus/nitrogen-based flame retardants selected from the group consisting of phosphates, polyphosphates, and pyrophosphates. This limitation is not supported by the original disclosure.
Note that the newly added limitation reads on any nitrogen-containing phosphate, polyphosphate, and pyrophosphate compound. In contrast, applicant’s original disclosure only teaches the use of specific compounds (see specification page 20: lines 5-7 and 15-24; original claim 10). The original disclosure does not support the use of any nitrogen containing phosphate, polyphosphate, and/or pyrophosphate compound as recited in the currently pending claims.
Claims 20-29 and 34-39 depend from claim 15 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 15.
Claim Rejections - 35 USC § 103
Claim(s) 14, 15, 20-29, and 33-39 are rejected under 35 U.S.C. 103 as being unpatentable Kondratowicz et al, WO2016/113321, in view of Kaprinidis et al, US2004/0138351.
Kondratowicz discloses the production of an expandable vinyl aromatic polymer granulate composition (for claim 14) comprising a vinyl aromatic polymer, corresponding to the claimed polymer (for claim 15), 2.0 to 9.0% by weight of a propellant (for claims 14, 19), and 0.01 to 50% by weight (for claim 19) of a geopolymer, corresponding to claimed species (i)(a) (for claims 14, 15) (abstract; page 25, lines 19-30; page 31, lines 6-9; page 33, lines 14-17). Said expandable granulate is preferably prepared via extrusion (for claim 14) (page 27, lines 23-25). Said geopolymer is characterized by a mean particle size in the range of 0.01 to 200 µm (for claim 39). The prior art composition may further comprise a flame retardant (page 29, lines 13-19). The foam made from the prior art composition (for claims 20, 21) is characterized by a density in the range of 8 to 30 kg/m3 (for claim 20) and a thermal conductivity in the range of 25 to 35 (for claim 20) (page 65, lines 1-10).
Regarding claim 22: As taught by Kondratowicz, the expandable vinyl aromatic polymer used in the prior art composition may be polystyrene (page 47, lines 20-21). As discussed in the previous Office Action, incorporated herein by reference, the International Union for Pure and Applied Chemistry defines the term “olefin” as any acyclic or cyclic hydrocarbon having one or more carbon-carbon double bonds other than those in an aromatic ring. One of ordinary skill in the art will recognize that styrene has a structure containing a carbon-carbon double bond that is not part of the ring, and therefore would fall within the scope of the term “olefin”. The prior art disclosure of polystyrene therefore corresponds to the claimed polyolefin.
Regarding claims 26, 27, 29: Kondratowicz further teaches that the geopolymer may be combined with an athermanous additive such as carbon black, corresponding to claimed carbon-based additive (for claims 26, 27), or titanium oxide, corresponding to the claimed meal oxide additive (for claims 26, 29) (page 23, lines 5-17).
Regarding claim 28: Claim 28 recites limitations further describing the metal athermanous additive species. Note, however, that the claim does not contain any language requiring that the athermanous additive is a metal. The claimed invention therefore reads on compositions comprising a geopolymer alone as in species (i)(a) of independent claim 15, or with one of the other types of additive species recited in claim 26. As noted above, Kondratowicz teaches the use of a geopolymer optionally combined with carbon black; this corresponds to the claimed invention comprising a geopolymer and optionally the additive of species (1).
Regarding claims 35-38: Kondratowicz teaches that the geopolymer may be treated with phosphoric acid, corresponding to the claimed water soluble compound (for claims 35-38) in order to remove cations, corresponding to the claimed modification step (for claim 35) (page 21, lines 9-13).
Kondratowicz is silent regarding the use of one or more non-brominated phosphorus/nitrogen-based flame retardant chosen from the group consisting of phosphates, polyphosphates, and pyrophosphates.
Kaprinidis discloses the production of a composition used as a flame retardant additive in polymers, wherein said composition may be a blend of at least one melamine-based flame retardant and at least one phosphorus containing flame retardant (abstract, 0012-0016). Said melamine-based flame retardant may be melamine pyrophosphate (for claim 33) (¶0080). Said phosphorus-based flame retardant may be ammonium polyphosphate (for claim 33)(¶0118). Note that both of these compounds correspond to the claimed non-brominated phosphorus/nitrogen-based flame retardant (for claims 14, 15) which is non-halogenated (for claim 34). Kaprinidis further teaches that prior art flame retardant composition may be used in styrenic polymers such as polystyrene (¶0039, 0052), and is added in an amount in the range of 0.5 to 45% by weight (¶0128), overlapping the claimed range (for claims 14, 15). Note that the flame retardant composition of Kaprinidis does not comprise a brominated/halogenated flame retardant (for claims 23-25).
As noted above, Kondratowicz teaches that the composition of WO2016/113321 may comprise a flame retardant additive. Furthermore, Kaprinidis discloses a composition comprising a melamine-based flame retardant and a phosphorous-based flame retardant that is taught to be suitable for use in polystyrene. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Kondratowicz by using the composition of Kaprinidis as the flame retardant, with the reasonable expectation of obtaining a final composition having improved flame retardant properties (for claims 14, 15).
Response to Arguments
Applicant’s arguments, filed 8/13/2026, with respect to the obviousness-type double patenting rejection over U.S. Patent No. 11,440,843 in view of Eberstaller et al, US2012/0184635 have been fully considered and are persuasive
Applicant’s arguments with respect to the rejection(s) of claim(s) under 35 U.S.C. 103 over Kondratowicz et al, WO2016/113321, in view of Eberstaller et al, US2012/0184635 have been fully considered and are persuasive.
For both rejections, applicant persuasively argues that Eberstaller does not teach the use of a phosphorus/nitrogen-based flame retardant as required by the amended claims. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made in view of Kaprinidis as discussed earlier in this Action.
Applicant argues that the claimed invention allegedly yields unexpected results, citing the examples from the specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)). Applicant’s examples disclose compositions comprising 10, 12.2 , or 13 wt% of a geopolymer composite combined with specific amounts of ammonium polyphosphate (specification: Table 12). In contrast, the claimed invention states that the claimed invention can comprise 0.01 to 50 wt% of the geopolymer composite. The cited examples therefore are not commensurate in scope with the claimed invention with regards to the claimed amount of geopolymer additive.
Furthermore, note that the claimed invention defines the required components in generic terms-i.e., a polymer, a geopolymer, a non-brominated phosphorus/nitrogen-based flame retardant. In contrast, the cited examples were prepared using a polystyrene foam, a specific geopolymer composite, and ammonium polyphosphate.
The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof; see In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims). See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.") (MPEP § 716.02(d)).
Applicant has provided data from compositions that comprising a single example of each required component of a polymer, a geopolymer, a non-brominated phosphorus/nitrogen-based flame retardant. No evidence has been provided to demonstrate that the allegedly unexpected results may be obtained from any other compounds with the broad scope of compounds encompassed by each of these generic terms. As such, the cited evidence does not provide an adequate basis for reasonably concluding that the allegedly unexpected results would be obtained from all compositions that fall within the scope of the claimed invention. Applicant therefore has not demonstrated that the allegedly unexpected results may be obtained commensurate in scope with the invention as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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