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 .
Claim Objections
Claims 9-10 are objected to because of the following informalities: in each claim, “glass fibers have length” should be “glass fibers have a length”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 16-17 are 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 16 recites the limitation "the intumescent flame retardant composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the intumescent flame retardant composition" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-2, 4-5, 9 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,600,824. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a top cover for battery components and a method of making the same.
Regarding claims 1 and 12:
Claim 1 of US ‘824 discloses pellets of a glass fiber-reinforced thermoplastic polymer composition, wherein the composition comprises a polyolefin, glass filaments (fibers), and a flame retardant. Claim 6 further describes a process for preparing an extruded article from the pellets of claim 1. Claim 12 discloses a process of preparing a thermoformed article comprising using the process of claim 6 to form an extruded article in the form of a sheet and further thermoforming the sheet. Claim 13 further discloses the thermoformed article is a top cover for battery components in an automotive prime-mover battery pack, which is shaped to conform to the battery components. Given that the present claim does not describe exact conditions for “expos[ure] to flame” and further given that the claims of US ‘824 disclose the same materials as the present claim, the examiner submits it would inherently meet the broad criteria of “configured to form an outer char coating when exposed to flame” as presently claimed.
Regarding claim 2:
Claim 1 discloses an MFI of 1.0-20 dg/min.
Regarding claims 4-5:
Claim 1 discloses a propylene homopolymer and a heterophasic propylene copolymer having MFI values as claimed.
Regarding claim 9:
Claim 1 discloses filament lengths of 10-55 mm.
Claims 1, 9, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 18 of copending Application No. 18/268,006. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a top cover for battery components and a method of making the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1 and 12:
Copending claim 1 recites a composition comprising melt-mixed pellets and a propylene-based polymer, wherein the pellets comprise a glass fiber-reinforced thermoplastic polymer composition, wherein the composition comprises a polyolefin and glass filaments (fibers). Claim 11 further discloses a process for preparing an extruded article comprising the composition of claim 1. Claim 14 discloses a process of preparing a thermoformed article comprising using the process of claim 11 to form an extruded article in the form of a sheet and further thermoforming the sheet, wherein the thermoformed article is a top cover for battery components in an automotive prime-mover battery pack, which is shaped to conform to the battery components. Claim 18 also discloses the article. Given that the present claim does not describe exact conditions for “expos[ure] to flame” and further given that the claims of the copending application disclose the same materials as the present claim, the examiner submits it would inherently meet the broad criteria of “configured to form an outer char coating when exposed to flame” as presently claimed.
Regarding claim 9:
Claim 1 discloses filament lengths of 10-55 mm.
Claims 1, 9, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/703,594. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a top cover for battery components and a method of making the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1 and 12:
Copending claim 1 recites thermoformed article made from melt-mixed pellets and, optionally, a propylene-based polymer, wherein the pellets comprise a glass fiber-reinforced thermoplastic polymer composition, wherein the composition comprises a polyolefin and glass filaments (fibers), wherein the article is extruded to form a sheet which is thermoformed. Claim 7 further discloses the thermoformed article is a top cover for battery components in an automotive prime-mover battery pack, which is shaped to conform to the battery components. Given that the present claim does not describe exact conditions for “expos[ure] to flame” and further given that the claims of the copending application disclose the same materials as the present claim, the examiner submits it would inherently meet the broad criteria of “configured to form an outer char coating when exposed to flame” as presently claimed.
Regarding claim 9:
Claim 1 discloses filament lengths of 10-55 mm.
Claim Rejections - 35 USC § 102
Claim(s) 1-4, 6-11, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laurin et al. (WO 2018/017573).
Regarding claim 1:
Laurin discloses flame retardant glass-filled polypropylene compositions and articles made therefrom [abstract; 0001]. Suitable articles include enclosures for electronic devices and electrical components [0009]. The article can be formed by extrusion and thermoforming, and can be in the form of a sheet, panel, etc. [00106]. Such articles inherently have outer and inner surfaces.
Laurin teaches the material is flame retardant [0058]. The reference is silent with regard to the formation of char; however, given that the present claim does not describe exact conditions for “expos[ure] to flame” and further given that Laurin discloses the same materials as the present claim, the examiner submits it would inherently meet the broad criteria of “configured to form an outer char coating when exposed to flame” as presently claimed.
There is no disclosure in Laurin that the enclosure is “for covering battery components in an automotive prime-mover battery pack” as presently claimed; however, this recitation is merely an intended use. Applicant's attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
The examiner takes the position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure is capable of performing the intended use. Given that Laurin discloses an enclosure comprising the same material as presently claimed, it is clear this enclosure would be capable of performing the presently claimed intended use, i.e., “covering battery components in an automotive prime-mover battery pack” as required in the above cited portion of the MPEP.
Furthermore, the described steps of preparing the top cover by extrusion to obtain a sheet and subsequent thermoforming the sheet are product-by-process limitations. The examiner submits Laurin’s enclosure meets the implied structural features resulting from the claimed product-by-process limitations.
Regarding claim 2:
Laurin teaches blends of one or more polypropylenes can be used to provide an MFI as desired, including values below 20 g/10 min (i.e., 20 dg/min), such as 14-18 g/10 min [0016].
Regarding claim 3:
Laurin teaches the polypropylene comprises 20-70 wt% of the composition [0017]. The glass fiber comprises 0-70 wt% or 20-50 wt% [0020].
Regarding claim 4:
Laurin teaches the polypropylene comprises a homopolymer, a random copolymer, and/or a heterophasic copolymer [0049].
Regarding claims 6-8:
Laurin teaches flame retardants include melamine phosphate, melamine polyphosphate, piperazine phosphate, etc. [0051-0055]. The amount can vary as needed, but it can be 10-35 wt% of the composition [0058].
Regarding claims 9-10:
Laurin teaches the fibers have a length of 5-40 mm [0065].
Regarding claim 11:
Given that Laurin discloses the same materials as the present claims, the examiner submits it would inherently meet at least one of the presently claimed properties.
Regarding claim 17:
See the rejections under 35 USC 112(b) for why the present claim is indefinite. Further see the rejection of claim 6.
Claim Rejections - 35 USC § 103
Claim(s) 5 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurin et al. (WO 2018/017573)
Regarding claim 5:
Laurin teaches a combination of a propylene homopolymer and a heterophasic copolymer, wherein the former provides high stiffness, and the latter provides good stiffness and good impact properties [0049]. Laurin further teaches a blend of a low flow polypropylene (i.e., less than 20 dg/min) and a high flow polypropylene (i.e., greater than 20 dg/min) to provide an overall MFI as desired [0016].
Laurin does not explicitly disclose the combination of a propylene homopolymer having an MFI of 25-50 dg/min and a heterophasic propylene copolymer having an MFI of 0.1-5.0 dg/min. In view of the reference’s teachings, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a combination of high flow propylene homopolymer and a low flow heterophasic copolymer, including wherein the MFI of each falls within the presently claimed range, to provide the desired degree of stiffness and impact resistance and the desired MFI, and thereby arrive at the claimed invention.
Regarding claim 16:
See the rejections under 35 USC 112(b) for why the present claim is indefinite. Also see the rejections of claims 3 and 6 for Laurin’s disclosed amounts of polypropylene, glass fiber, and flame retardant. Such ranges result in an overlap with the range of claim 16. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative amounts of each component, including over amounts resulting in a combined sum with the claimed range, to provide the properties (e.g., mechanical, flame retardancy, etc.) desired for a given end use, and thereby arrive at the claimed invention.
Regarding claims 18-19:
See the rejections of the previous claims.
Regarding claim 20:
See the rejections of the previous claims. Regarding the weight ratio between the propylene homopolymer and the heterophasic propylene copolymer, Laurin teaches the ratio of two polymers having differing MFIs can be varied as needed to arrive at the desired overall MFI, wherein an example ratio is 30% high flow polymer and 70% low flow polymer [0016]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the weight ratio between the propylene homopolymer and the heterophasic propylene copolymer, including over values within the claimed range, to provide the desired degree of stiffness and impact resistance and the desired MFI, and thereby arrive at the claimed invention.
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurin et al. (WO 2018/017573) in view of Junghans et al. (US 2021/0036282).
Regarding claim 12:
Laurin discloses enclosures for electronic devices and electrical components as previously explained. The article is formed by extrusion and thermoforming [00106].
Laurin is silent with regard to a process of extruding the composition to form a sheet and then thermoforming the sheet to obtain a top cover.
Such processes were known in the art to have utility. For example, Junghans discloses a battery cover for a battery pack of an electric vehicle comprising a thermoplastic carrier shaped to form a covering lid [abstract; 0001; 0007-0008]. The carrier comprises polypropylene, glass fibers, and flame retardant [0010-0013]. The carrier layer is made from a thermoplastic sheet that is thermoformed into a final shape [0015].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to first extrude a sheet and subsequently thermoform the sheet to provide an enclosure having a desired shape.
Regarding claim 13:
Laurin teaches test thicknesses for flame resistance of 1.6 mm, 2.0 mm, and 3.2 mm [0080]. Furthermore, one of ordinary skill in the art would recognize the thickness would be determined by the specific requirements of a given end use. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the sheet, including over values falling within the presently claimed range, to provide the desired dimensions and physical properties for a given end use.
Regarding claim 14:
Junghans discloses vacuum forming [0015].
Regarding claim 15:
One of ordinary skill in the art would recognize the pressure used during thermoforming and/or vacuum forming depends on the ductility of the material being formed, the temperature used during forming, and the desired degree of shaping. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the pressure, including over values falling within at least one of the claimed ranges, to provide a thermoformed article made from a particular material and having a particular shape as desired for a given end use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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