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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 19-26 and 35-39, in the reply filed on 12 December 2025 is acknowledged. The traversal is on the ground(s) that inventions of Group I and Group III are linked by the novel and inventive method of manufacturing the oxaphosphaphenantrene oxide acrylate monomer. This is not found persuasive because a method of manufacturing flame retardant, thermoplastic (meth)acrylate polymer, as required by claim 29, contains product-by-process limitations directed to the phosphorus-containing acrylate monomer. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113. Thus, the limitations of claim 27 merely require a phosphorus-containing acrylate having the same structure as that which would be produced by the method of claim 19, not just those produced by the method according to claim 19.
Furthermore, for arguments sake, Groups I-IV also lack unity of invention because even though the inventions of these groups require the technical feature of a method of manufacturing oxaphosphaphenantrene oxide acrylate monomers, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Suda et al. (JP 2016-060865) and Mu et al. (CN 105440080), wherein the machine English translations are used for citation. Specifically, Suda et al. teaches a Michael adduct (A) of multi-functional (meth)acrylate (a1), e.g. alkyl diol diacrylates [019], and 9,10-dihydro-9-oxa-10-phosphaphenanthrene-10-oxide (HCA); and a polymerization initiator (B) [010]. Suda et al. teaches the method further teaches a 0.5-1:1 molar ratio of HCA to acrylate (a1) (e.g. 1:2 molar ratio) [028], amine compounds (i.e. base) [030], a reaction temperature of 20 to 100°C [031], and is used after purification by extraction (i.e. removing unreacted components) [031]. Suda et al. does not explicitly disclose adding a polymerization initiator in the method of manufacturing oxaphosphaphenantrene oxide acrylate monomers, however one of ordinary skill in the art would have found it obvious to add an inhibitor to the method of Suda et al., in view of Mu et al., as Mu et al. teaches the use of a polymerization inhibitor in the method of preparing a phosphorus-containing acrylate [025]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add a polymerization inhibitor, as taught by Mu et al., to the method of Suda et al., and would have been motivated to do so in order to inhibit unwanted and/or premature polymerization of the reactants.
The requirement is still deemed proper and is therefore made FINAL.
Claims 27-34 and 40-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12 December 2025.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 19-26 and 35-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suda et al. (JP 2016-060865), wherein the machine English translation is used for citation, in view of Mu et al. (CN 105440080), wherein the machine English translation is used for citation.
Regarding claims 19-20 and 26; Suda et al. teaches a Michael adduct (A) of multi-functional (meth)acrylate (a1), e.g. 1,3-butylene glycol diacrylate [019], and 9,10-dihydro-9-oxa-10-phosphaphenanthrene-10-oxide (HCA); and a polymerization initiator (B) [010]. Suda et al. teaches the method further teaches a 0.5-1:1 molar ratio of HCA to diacrylate (a1) (e.g. when 0.5 moles of HCA is employed, the molar ratio of HCA to diacrylate (a1) is 1:2, as calculated by Examiner) [028], amine compounds (i.e. base) [030], a reaction temperature of 20 to 100°C [031], and is used after purification by extraction (i.e. removing unreacted components) [031]. Suda et al. makes no mention of adding water, thus it is the Examiner’s position that the reaction takes place in the absence of water.
Suda et al. fails to teach the method further comprising a polymerization inhibitor. Mu et al. teaches a method for preparing a phosphorus-containing acrylate comprising mixing, in toluene, 9,10-dihydro-9-oxa-10-phosphaphenanthrene-10-oxide with hydroxyethyl methacrylate, and a polymerization inhibitor [024-027]. Suda et al. and Mu et al. are analogous art because they are both concerned with the same field of endeavor, namely methods for producing phosphorus-containing acrylate compounds. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the polymerization inhibitor, as taught by Mu et al., to the method Suda et al., and would have been motivated to do so in order to prevent unwanted and/or premature polymerization/reaction.
Regarding claims 21-22; Suda et al. teaches the product obtained can be used after purification by extraction etc. and purification by column chromatography etc. (i.e. removal of unreacted reactants including the diol diacrylate) [031]. The Examiner makes note that “removing unreacted α,ω-alkyl diol diacrylate is carried out by vacuum distillation and/or liquid-liquid extraction with a hydrocarbon solvent” are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Regarding claim 23; Suda et al. teaches the reaction is carried out in the presence of a solvent, such as toluene [029].
Regarding claim 24-25; Suda et al. teaches the reaction is carried out in the presents of trimethylamine (hindered tertiary amine) in an amount of 0.1 mol% to 1 mol of the polyfunctional (meth)acrylate (a1) [030], which equates to 0.2 mol% (as calculated by Examiner) per 1 mol of oxaphosphaphenantrene. Suda et al. teaches a 0.5:1 molar ratio of HCA to diacrylate (a1) and a 0.1:1 molar ratio of amine to diacrylate [028, 030]; therefore 0.5 (HCA): 1(diacrylate (a1)): 0.1 (amine) equates to a molar ratio of 1(HCA): 2(diacrylate (a1)): 0.2(amine).
Regarding claims 35-36; Suda et al. teaches the product obtained can be used after purification by extraction etc. and purification by column chromatography etc. (i.e. removal of unreacted reactants including the diol diacrylate) [031]. The Examiner makes note that “removing unreacted α,ω-alkyl diol diacrylate is carried out by vacuum distillation and/or liquid-liquid extraction with a hydrocarbon solvent” are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Regarding claim 37; Suda et al. teaches the reaction is carried out in the presents of trimethylamine (base) in an amount of 0.1 mol% to 1 mol of the polyfunctional (meth)acrylate (a1) [030], which equates to 0.2 mol% (as calculated by Examiner) per 1 mol of oxaphosphaphenantrene (HCA). Suda et al. teaches a 0.5:1 molar ratio of HCA to diacrylate (a1) and a 0.1:1 molar ratio of amine to diacrylate [028, 030]; therefore 0.5 (HCA): 1(diacrylate (a1)): 0.1 (amine/base) equates to a molar ratio of 1 (HCA): 2 (diacrylate (a1)): 0.2 (amine/base).
Regarding claim 38-39; Suda et al. teaches the multi-functional (meth)acrylate (a1) may be a difunctional (meth)acrylate such as 1,3-butylene glycol diacrylate [019].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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