DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 18, 2026 has been entered.
Claim Objections
Claims 14, 18, and 21 – 23 are objected to because of the following informalities:
it is suggested Claims 14 and 18 be amended to recite “a siloxane compound…a bromophthalic anhydride derivative; an epoxy compound”;
Claims 21 – 23 should be amended to recite “whereincompound is”;
it is suggested the full names for TCPP, TECP, TMCP, and TDCP also be provided in conjunction with the first time their abbreviations are recited in the claims, namely in Claim 21; and
chloroisopropyl phosphate is misspelled in Claim 22.
Appropriate correction is required.
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.
Claim 18 is 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.
Independent Claim 17 requires the lignin fire retardant polyol comprise 40 to 99 weight percent of a bromine, chlorine, or phosphorus flame retardant. Claim 18 now sets forth the lignin fire retardant polyol comprises a second polyol carrier selected from the recited species. However, the original disclosure did not set forth a lignin fire retardant polyol comprising 40 to 99 weight percent of a bromine, chlorine, or phosphorus flame retardant and further comprising an additional, separate component corresponding the species recited in Claim 18. Instead, the original disclosure set forth a lignin polyol comprising 40 to 99 weight percent total of polyol carrier compounds corresponding to bromine, chlorine, or phosphorus flame retardants, as well the species recited in Claim 18 (see [0008] and [0029] of the PG-PUB of the instant application).
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.
Claims 14, 17, 22, and 23 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 because:
The scope of Claim 14 is unclear. The claim initially sets forth the lignin fire retardant thermoplastic contains 20 to 30 weight percent of a fire retardant polyol carrier compound selected from bromine, chlorine, and phosphorus based fire retardants. However, the claim subsequently sets forth a portion of this 20 to 30 weight percent is instead a second polyol carrier compound which is selected from various species which do not correspond to bromine, chlorine, and phosphorus based fire retardants. Both provisos cannot then be satisfied simultaneously. For the purposes of further examination, Claim 14 will be interpreted as setting forth the lignin fire retardant thermoplastic contains 20 to 30 weight percent of a component; the fire retardant polyol carrier compound component comprises a first fire retardant polyol carrier compound and a second polyol carrier compound; the first fire retardant polyol carrier compound is selected from bromine, chlorine, and phosphorus based fire retardants; and the second polyol carrier compound is selected from the species recited in the final three lines of Claim 14. Applicant is further advised that, should Claim 14 be amended according to this interpretation, Claim 22 should further be amended to recite the first fire retardant polyol carrier compound is a chloroisopropyl phosphate.
Upon further consideration of the claim, it is also noted the Claim 14 sets forth the fire retardant polyol carrier compound forms a miscible mixture but does not specify with what it is mixed. For the purposes of further examination, Claim 14 will be interpreted as setting forth the lignin and the fire retardant polyol carrier compound component form a miscible mixture.
As Claim 22 depends on Claim 14, it incorporates the subject matter thereof and is also therefore rejected under this statute.
Claim 17 initially sets forth a fire retardant carrier agent and then subsequently a fire retardant polyol carrier compound. It is unclear if these compounds are the same or different compounds. For the purposes of examination, the recited fire retardant carrier agent will be interpreted as corresponding to the fire retardant polyol carrier compound.
As Claim 23 depends on Claim 17, it incorporates the subject matter thereof and is also therefore rejected under this statute.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 13 and 16 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US 3,822,225 to Braddon et al. (hereinafter Braddon), as evidenced by US 2021/0095126 to Mochizuki (hereinafter Mochizuki).
Regarding Claims 13 and 16. Braddon teaches a mixture comprising 80 weight percent lignin and 20 weight percent tris(p-nonylphenyl)phosphite (Column 5, Lines 11 – 33), i.e. a phosphorus compound. Mochizuki provides evidence that trisnonylphenylphosphite corresponds to a phosphorus based fire retardant [0111]. Phosphorous based fire retardants are set forth as suitable fire retardant polyol carrier compounds in the instant claims.
Braddon does not expressly characterize the product formed from the mixture corresponds to a lignin fire retardant thermoplastic compound or teach the lignin and fire retardant polyol carrier compound form a miscible mixture when heated, e.g. to a temperature at 160 to 390°F, and a solid lignin-based fire-retardant thermoplastic when cooled. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Braddon teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. that the lignin and fire retardant polyol carrier compound form a miscible mixture when heated, e.g. to a temperature at 160 to 390°F, and a solid lignin-based fire-retardant thermoplastic when cooled - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claims 17 and 20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US 3,822,225 to Braddon et al. (hereinafter Braddon), as evidenced by US 2021/0095126 to Mochizuki (hereinafter Mochizuki).
Regarding Claims 17 and 20. Braddon teaches a mixture comprising 1 weight percent lignin and 99 weight percent tris(p-nonylphenyl)phosphite (Column 5, Lines 11 – 38), i.e. a lignin polyol and a phosphorus compound. Mochizuki provides evidence that trisnonylphenylphosphite corresponds to a phosphorus based fire retardant [0111]. Phosphorous based fire retardants are set forth as suitable fire retardant polyol carrier compounds in the instant claims.
Braddon does not expressly characterize the product formed from the mixture is fire retardant or teach the lignin and fire retardant polyol carrier compound form a miscible mixture when heated, e.g. to a temperature at 160 to 390°F, and a lignin-based fire-retardant polyol when cooled. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Braddon teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. that the lignin and fire retardant polyol carrier compound form a miscible mixture when heated, e.g. to a temperature at 160 to 390°F, and a lignin-based fire-retardant polyol when cooled - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Allowable Subject Matter
Claims 14 and 22 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to Claims 14 and 22, the prior art does not teach a lignin fire retardant thermoplastic which - when interpreted as set forth in the rejection under 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, above - comprises 70 to 80 weight percent lignin and 20 to 30 weight percent of polyol carrier compound component comprising a first retardant polyol carrier compound comprising a first fire retardant polyol carrier compound and a second polyol carrier compound selected from the instantly claimed species.
US 3,822,225 to Braddon et al. (hereinafter Braddon) corresponds to the closest prior art. Braddon teaches a composition comprising lignin and a polyol carrier compound in the instantly claimed amounts in Example 1. However, the polyol carrier compound in Braddon corresponds exclusively to a phosphite/phosphorus flame retardant. Braddon does not teach any of the second polyol carrier compound species is included in its composition. Nor does any other prior art reference provide any teaching or guidance which would lead a person of ordinary skill in the art to substitute one of the instantly claimed second polyol carrier compound species for the phosphite component required by Braddon.
With respect to Claims 21 – 23, Bradoon again corresponds to the closest prior art. As detailed in the preceding paragraph, the polyol carrier compound in Braddon corresponds exclusively to a phosphorus flame retardant which is a phosphite compound. Braddon does not teach any of the instantly claimed species, which all correspond to phosphate compounds, may be provided. Additionally, no other prior art reference provides any teaching or guidance which would lead a person of ordinary skill in the art to substitute one of the instantly claimed phosphate species for the phosphite component required by Braddon.
Response to Arguments
Applicant's arguments filed February 18, 2026 have been fully considered. The Office agrees that the amendments to the claims overcome the outstanding objections to the claims, as well as the rejections under 35 U.S.C. 112. However, in light of the amendments to the claims, new objections to the claims and rejections under 35 U.S.C. 112 and 102 are presently set forth.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764