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
Applicant’s amendment filed on February 28, 2025 has been entered. Claim 1 has been amended. New Claims 27-34 have been added. As such, Claims 1, 5-21, and 23-34 are currently pending in the application, with Claims 5-20 withdrawn from consideration.
Claim Rejections - 35 USC § 112
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 1, 21, and 23-34 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.
Regarding independent Claims 1 and 28, the phrase “such as” renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See M.P.E.P. § 2173.05(d). Claim 1 and 28 both recite that the laminated adhesive composition is configured for use in a vapor retardant insulation facings “such as” FSK or ASJ products. As such, Claims 1 and 28, along with their dependent claims, are indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 34 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 34 is dependent upon Claim 1 and recites “a second flame retardant different from the non-halogenated flame retardant comprising at least one phosphate-containing compound.” However, Claim 1 already recites the presence of a second phosphate-containing compound different from the first phosphate-containing compound. As such, Claim 34 fails to further limit Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 21, and 23-34 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0156060 to Pyun et al. (“Pyun”) in view of U.S. Patent Application Publication No. 2018/0220807 to Honig et al. (“Honig”) and U.S. Patent Application Publication No. 2019/0276745 to Bergin et al. (“Bergin”), and further in view of U.S. Patent Application Publication No. 2019/0360205 to Dorsey et al. (“Dorsey”).
With regard to Claims 1, 28, 30, and 34, Pyun is related to a composite material suitable for use in thermal insulation comprising a scrim and a coating comprising a binder and a flame-retardant additive. See, e.g., Abstract, paragraph [0001], entire document. Pyun discloses that the binder is non-halogenated latex that can be acrylic-based or urethane-based. Paragraph [0092]. Pyun also teaches using non-halogenated flame-retardant additives, such as ammonium polyphosphate. Paragraph [0105]. Pyun teaches that the “components of the coating (e.g. binder, flame retardant additive, char former, other optional additives can be chosen such the coating is halogen free.” Paragraph [0120]. The coating disclosed by Pyun is suitable for use in an FSK or ASJ product, as Pyun teaches that it is used in composites comprising scrims and other layers, including barrier layers, such as foil layers. Paragraph [0043].
Pyun does not disclose the presence of a second phosphate-containing compound different from the ammonium polyphosphate. Honig is also related to layered materials that are flame retardant. See, e.g., Abstract, entire document. Honig teaches that blends of more than one phosphate are suitable for use to provide flame retardant properties, noting that a suitable blend comprises a mixture of ammonium phosphates such as mono ammonium phosphate, diammonium phosphate, and ammonium polyphosphate. Paragraph [0048]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a second phosphate-containing compound different from the ammonium polyphosphate in the binder composition disclosed by Pyun, thus satisfying the limitation of a second phosphate-containing compound, in order to provide more diverse flame retardant properties and because Honig demonstrates to the person having ordinary skill in the art that such blends are well known and suitable for use in similar applications with a predictable result of providing the flame retardancy.
Pyun does not disclose that the binder further includes both a smoke suppressant and an inert gas generator. Bergin is also related to flame-retardant adhesives. See, e.g., Abstract, entire document. Bergin teaches that the adhesive composition can be provided with useful additives, such as a smoke suppressant and an inert gas generator. Paragraph [0006]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a smoke suppressant and an inert gas generator to the adhesive composition disclosed by Pyun in order to provide additional flame retardant features of suppressing smoke and generating inert gas, as shown to be well known in the art by Bergin.
Pyun does not disclose the presence of a vapor barrier in contact with the adhesive. Dorsey is also related to thermal insulation systems that use adhesive to suitably couple the layers of material. See, e.g., Abstract, entire document. Dorsey teaches that insulation products can contain a vapor barrier to control condensation and provide a protective barrier. Paragraph [0001]. Dorsey discloses that permeance values for such layers is about 0.02 perm. Paragraph [0022]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a vapor barrier having a permeance less than 0.2 perm to be used in conjunction with the adhesive disclosed by Pyun in a thermal insulation system because Pyun discloses that the adhesive can be used with other layers of material to form a composite for such purposes, paragraph [0043], and because Dorsey teaches that vapor barrier provides improved moisture resistance and protection in insulation systems.
With regard to Claims 21, 23, and 29, Bergin discloses that the flame-retardant adhesive can also include a mold and mildew inhibitor and a dispersant. Paragraph [0006]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include a biocide ingredient in the adhesive composition disclosed by Pyun in order to inhibit mold and mildew growth, as shown to be known in the art by Bergin. It also would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include a dispersant in the adhesive composition disclosed by Pyun in order to spread the ingredients of the composition, as shown to be known in the art by Bergin. With regard to Claims 24, 25, 27, and 31 to 33, Bergin teaches that the smoke suppressant can either be a zinc phosphate/zinc oxide complex and/or aluminum trihydrate. Paragraphs [0038] to [0040]. With regard to Claims 26 and 34, Bergin also teaches including additional flame retardant ingredients. See, e.g., paragraphs [0076] to [0086]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an additional flame retardant to the composition disclosed by Pyun in order to increase flame retardant efficiency, as shown to be known in the art by Bergin.
Claims 1, 21, and 23-34 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2015/0090945 to Sperber (“Sperber”) in view of Honig and Bergin, and further in view of Dorsey.
With regard to Claims 1, 28, 30, and 34, Sperber is related to flame-retardant formulations comprising boric acid and diammonium phosphate. See, e.g., Abstract, entire document. Sperber discloses that the flame-retardant formulation can comprise a liquid latex. Paragraph [0015]. Sperber teaches that the formulation is non-halogenated. Paragraphs [0010] and [0034]. The coating disclosed by Sperber is suitable for use as an adhesive composition in an FSK or ASJ product, as Sperber teaches that the formulation comprises a binder, paragraph [0018], and is suitable for use in conjunction with textiles and insulation products. Paragraph [0003].
Sperber does not disclose the presence of a second phosphate-containing compound different from the diammonium phosphate. Honig is also related to layered materials that are flame retardant. See, e.g., Abstract, entire document. Honig teaches that blends of more than one phosphate are suitable for use to provide flame retardant properties, noting that a suitable blend comprises a mixture of ammonium phosphates such as mono ammonium phosphate, diammonium phosphate, and ammonium polyphosphate. Paragraph [0048]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a second phosphate-containing compound different from the diammonium phosphate in the binder composition disclosed by Sperber, thus satisfying the limitation of a second phosphate-containing compound, in order to provide more diverse flame retardant properties and because Honig demonstrates to the person having ordinary skill in the art that such blends are well known and suitable for use in similar applications with a predictable result of providing the flame retardancy.
Sperber does not disclose that the binder further includes both a smoke suppressant and an inert gas generator. Bergin is also related to flame-retardant adhesives. See, e.g., Abstract, entire document. Bergin teaches that the adhesive composition can be provided with useful additives, such as a smoke suppressant and an inert gas generator. Paragraph [0006]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a smoke suppressant and an inert gas generator to the adhesive composition disclosed by Sperber in order to provide additional flame retardant features of suppressing smoke and generating inert gas, as shown to be well known in the art by Bergin.
Sperber does not disclose the presence of a vapor barrier in contact with the adhesive. Dorsey is also related to thermal insulation systems that use adhesive to suitably couple the layers of material. See, e.g., Abstract, entire document. Dorsey teaches that insulation products can contain a vapor barrier to control condensation and provide a protective barrier. Paragraph [0001]. Dorsey discloses that permeance values for such layers is about 0.02 perm. Paragraph [0022]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a vapor barrier having a permeance less than 0.2 perm to be used in conjunction with the adhesive disclosed by Sperber in a thermal insulation system because Dorsey teaches that vapor barrier provides improved moisture resistance and protection in insulation systems.
With regard to Claims 21, 23, and 29, Bergin discloses that the flame-retardant adhesive can also include a mold and mildew inhibitor and a dispersant. Paragraph [0006]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include a biocide ingredient in the adhesive composition disclosed by Sperber in order to inhibit mold and mildew growth, as shown to be known in the art by Bergin. It also would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include a dispersant in the adhesive composition disclosed by Sperber in order to spread the ingredients of the composition, as shown to be known in the art by Bergin. With regard to Claims 24, 25, 27, and 31 to 33, Bergin teaches that the smoke suppressant can either be a zinc phosphate/zinc oxide complex or aluminum trihydrate. Paragraph [0039]. With regard to Claims 26 and 34, Bergin also teaches including additional flame retardant ingredients. See, e.g., paragraphs [0076] to [0086]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an additional flame retardant to the composition disclosed by Sperber in order to increase flame retardant efficiency, as shown to be known in the art by Bergin.
Response to Arguments
Applicant’s arguments with respect to the new, previously unconsidered claim limitations have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument with respect to the new limitations. To the extent that Applicant's arguments filed July 28, 2025 apply to the references in the rejections, then those arguments have been fully considered but they are not persuasive.
Applicant argues that Bergin is directed to adhesive packages that require halogenated latex adhesives. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this instance, the primary references of Pyun and Sperber are relied upon for the teaching of adhesive compositions that are halogen free.
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.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/ Primary Examiner, Art Unit 1789