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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
A Declaration from one of the inventors of the present application, Koichi Akiyama, has been received on 5/15/2026. The Declaration is addressed within the “Response to Arguments” section below.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-7, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masahito (US 2015/0344658 A1).
Regarding Claims 1 and 9-11, Masahito teaches additive compositions for polystyrene foams comprising (B1) tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether), (C) zinc-modified hydrotalcite, and (E) heat stabilizers (Abstract; ¶ 24). Examples 1 and 3-8 each comprise tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether), zinc-modified hydrotalcite, and bis(2,6-di-t-butyl-4-methylphenyl)pentaerythritol diphosphite (¶ 46, 51-52, 57; Table 1). Note that although ¶ 57 of Mashito states “diphosphate”, this is believed to be a typographical error since the listed ADK STAB PEP-36 is known to be a “diphosphite” (see for instance ¶ 97 of the instant specification). bis(2,6-di-t-butyl-4-methylphenyl)pentaerythritol diphosphite is construed as an aromatic phosphite. Each of examples 1 and 3-8 have (B1) concentrations that fall within the scope of the claim and are relied upon in the alternative. For instance, Example 1 exhibits 0.6 / 0.65 = 92 wt% and Example 5 exhibits 0.15 / 0.20 = 75 wt% based on the construction of diphosphite being component (D).
The particular embodiments of Mashito differ from the subject matter claimed with respect to the particular phosphite ester used. In this regard, Mashito teaches other phosphites such as triphenylphosphite (¶ 25). In view of such, it would have been obvious to one of ordinary skill in the art to substitute bis(2,6-di-t-butyl-4-methylphenyl)pentaerythritol diphosphite with triphenylphosphite, thereby predictably affording workable flame retardant polystyrene foam compositions in accordance with the teachings of Mashito.
Alternatively with respect to claims 1 and 10, Mashito also teaches the stabilizer can be various aromatic phosphates (¶ 35). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize aromatic phosphates in lieu of bis(2,6-di-t-butyl-4-methylphenyl)pentaerythritol diphosphite, thereby predictably affording workable flame retardant polystyrene foam compositions in accordance with the teachings of Mashito. The use of phosphate meets claims 1 and 10 as the claims only serve to further limit the identity of phosphite species without explicitly requiring phosphites to be present.
Regarding Claim 3, Examples 1 and 3-8 further comprise tetrabromobisphenol A-bis(2,3-dibromopropyl ether). Example 3 further comprises tris(tribromophenoxy)triazine. Example 4 further comprises brominated epoxy oligomer. See ¶ 46-50 and Table 1.
Regarding Claim 4, Examples 1 and 3-8 contain B1/(B1+C) ratios consistent with what is claimed (95 wt%; 96 wt%; 99 wt%; 83 wt%; 95 wt%; 93 wt%; 96 wt%; 95 wt%; and 95 wt% respectively).
Regarding Claims 5 and 7, the examples of Mashito describe expandable compositions and foams thereof comprising the additive compositions and styrene-based resin (Tables 1 and 2; ¶ 63).
Regarding Claim 6, Examples 1 and 3-8 exhibit 0.05-0.1 pbw diphosphite relative to 100 pbw polystyrene resin.
Claim(s) 1, 3-7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masahito (US 2015/0344658 A1) in view of Naito (US 2006/0106122 A1).
Regarding Claims 1 and 10, Masahito teaches additive compositions for polystyrene foams comprising (B1) tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether) and (C) zinc-modified hydrotalcite (Abstract). Masahito teaches the further incorporation of aromatic phosphate flame retardants such as triphenyl phosphate (¶ 17, Example 5 of Table 1). Masahito differs from the subject matter claimed in that a preferred quantity of phosphate is not described.
Naito is also directed toward the use of brominated bisphenol A ethers for polystyrene foams (Abstract). Naito teaches it was known in the art phosphate flame retardants and brominated bisphenol ethers exhibit synergist flame retardancy characteristics (¶ 53) whereby the weight ratio of brominated bisphenol ether to phosphate is preferably 0.3-30 to provide synergism (¶ 54). It would have been obvious to one of ordinary skill in the art to utilize the quantities of Naito within the compositions of Masahito because doing so would afford flame retardancy synergism as taught by Naito. A weight ratio of brominated bisphenol ether to phosphate of 0.3-30 is equivalent to roughly 23 wt% to 97 wt% (B1) relative to (B1)+(D). The combination of Mashito and Naito meets the phosphite limitations of claims 1 and 10 as they only serve to further limit the identity of phosphite species without explicitly requiring phosphites to be present.
Regarding Claim 3, Masahito teaches embodiments that further comprise tetrabromobisphenol A-bis(2,3-dibromopropyl ether), tris(tribromophenoxy)triazine, and/or brominated epoxy oligomer (Examples).
Regarding Claim 4, Examples 1 and 3-8 contain B1/(B1+C) ratios consistent with what is claimed (95 wt%; 96 wt%; 99 wt%; 83 wt%; 95 wt%; 93 wt%; 96 wt% respectively).
Regarding Claims 5 and 7, the examples of Mashito describe expandable compositions and foams thereof comprising additive compositions and styrene-based resin (Tables 1 and 2; ¶ 63).
Regarding Claim 6, Naito teaches phosphate ester is preferably used at 0.5-4 pbw relative to 100 pbw polystyrene resin for the purpose of achieving flame retardancy while avoiding reductions in mechanical strength (¶ 52). It would have been obvious to one of ordinary skill in the art to utilize 0.5-4 pbw phosphate relative to 100 pbw polystyrene resin because doing so would provide sufficient flame retardancy while avoiding reductions in mechanical strength as taught by Naito.
Response to Arguments
Applicant's arguments filed 5/15/2026 have been fully considered but they are not persuasive.
Applicant generally argues unexpected results, namely the use of phosphite/phosphate procures excellent flame retardancy and heat resistance characteristics. This is not found persuasive.
Applicant’s observations are not seen to hold significance to the extent they can be regarded as unexpected. Masahito teaches it was already known phosphites/phosphates function as heat stabilizers (¶ 24-25, 35). The use of zinc-modified hydrotalcite to improve flame retardancy is also known (¶ 19). Naito teaches it was already known phosphate esters and brominated bisphenol ethers show synergistic flame retardancy effects in combination (Abstract; Examples). Hayashi (JPH01-247343A) teaches it was known phosphite esters such as triphenylphosphite prevents the thermal degradation of brominated flame retardants such as brominated bisphenol ethers, thereby enhancing flame retardancy (Abstract; Page 4; Table 1 of machine translation). Yoshii (JPH02-113037A) teaches triphenylphosphite is known to stabilize brominated bisphenol ether flame retardants, leading to foams with improved flame retardance and thermal isolation. Since zinc-modified hydrotalcite is known to improve flame retardancy and both phosphates and aromatic phosphites were also known to work synergistically with brominated flame retardants to improve flame retardancy, Applicant’s observations are not seen to hold significance to the extent that they can be regarded as unexpected. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The submitted Declaration has been considered, but is not found to outweigh the evidence of record in support of prima facie obviousness. MPEP 716.02(c). The declaration probes a particular diphosphite outside the scope of the claims and notes insufficient flame retardancy is observed, but as noted above, specific phosphates and phosphites consistent with those claimed were already known to stabilize brominated bisphenol ether flame retardants, leading to foams with improved flame retardance and thermal isolation.
Arguendo even if the results were unexpected, the claims at issue are not commensurate in scope with the evidence relied upon in support of the allegation of unexpected results. The claims are open to generic “aliphatic phosphate” and “aromatic phosphate”, but only 8 species are illustrated. Only a single aliphatic phosphate is probed. There in insufficient evidence the results alleged to be unexpected occurs throughout the range claimed and one of ordinary skill would be unable to ascertain a trend within the data to reasonably extend the probative value thereof to encompass the scope claimed.
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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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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