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 Arguments
Applicant’s response dated 12/24/2025 included amendment to the independent claims to require the integer q to be equal specifically to 1. Consequently, the rejections over the prior art of record are overcome. New prior art has been identified during search, and new grounds of rejection will be stated as necessitated by amendment.
Double patenting rejection of record, compound claims are maintained for the following reason. While compound claims disclose structure with different length of hydrocarbon chain, the compounds themselves are analogs of one another. Additionally, specification can be utilized as a dictionary to learn the meaning of the structure. The method claims of the co-pending application were not amended and therefore, the integer p encompasses instantly claim q being 1.
With respect to claim rejections over the prior art of record such rejections are moot. As mentioned above new prior art of record was applied as necessitated by amendment.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kang (US 2015/0005410).
With respect to claims 1 and 2, Kang discloses monomer that is utilized to form copolymers having flame retardant property. The monomer has a following structure:
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192
436
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Wherein R2 can be C4-C20 branched alkylene group, such as isopentane of instant formula 1, when integer m is 1 and integer n is Zero [0025].
With respect to claims 2 and 5, for branched alkyl groups, such as that based on isopentane R21 would be a methyl group.
With respect to claims 6 and 7, Kang discloses flame retardant molded article which can be obtained by casting. Consequently, casting would result in forming a film or a sheet [0046].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that the disclosure of Kang, encompasses claimed monomer and copolymer that it will form with other ethylenically unsaturated monomers such as acrylates or styrene.
Claims 1, 2, 6, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano (JP 2015/074740 translation provided).
With respect to claim 1, Nakano discloses reaction product of acrylate monomer having vinyl group (component a-1) with component B, which is a phosphoric acid ester which includes alkyl phosphates [0022]. Component a-1 are defined in [0014] contain vinyl group, where acrylate esters bearing vinyl group the location of the vinyl group on the hydrocarbon forming ester functionality. Consequently the vinyl group will be located on, for example, isopentane chain of the acrylate monomer. The vinyl ester of the acrylate has 1-9 carbon atoms which encompasses C5 hydrocarbon.
Consequently acrylate ester bearing vinyl group and polymerized in presence of phosphonic acid ester will meet the requirement of instant formula I.
With respect to claim 2, for isopentane, the R1 will be a methyl group.
With respect to claim 6, the polymer of Nakano is flame retardant [0039].
With respect to claim 7, article formed by Nakano includes plastic plate [0038].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that teachings of Nakano encompass polymerized monomer of the instant invention. Specifically, the extent to which integer n is claimed, the integer includes isoalkyl groups having vinyl unit, wherein vinyl unit refers to the ester group of the acrylate and not the ethylenic unsaturation that is utilized to polymerize monomer.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano (JP 2015/074740 translation provided).
With respect to claim 4, Nakano discloses reaction product of acrylate monomer having vinyl group (component a-1) with component B, which is a phosphoric acid ester which includes alkyl phosphates [0022]. Component a-1 are defined in [0014] contain vinyl group, where acrylate esters bearing vinyl group the location of the vinyl group on the hydrocarbon forming ester functionality. Consequently the vinyl group will be located on, for example, isopentane chain of the acrylate monomer. The vinyl ester of the acrylate has 1-9 carbon atoms which encompasses C5 hydrocarbon.
Consequently acrylate ester bearing vinyl group reacted with phosphonic acid ester will meet the requirement of instant formula (II).
With respect to claim 2, for isopentane, the R1 will be a methyl group.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that teachings of Nakano encompass polymerized monomer of the instant invention. Specifically, the extent to which integer n is claimed, the integer includes isoalkyl groups having vinyl unit, wherein vinyl unit refers to the ester group of the acrylate and not the ethylenic unsaturation that is utilized to polymerize monomer.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano (JP 2015/074740 translation provided).
With respect to claim 8, Nakano discloses reaction product of acrylate monomer having vinyl group (component a-1) with component B, which is a phosphoric acid ester which includes alkyl phosphates [0022]. Component a-1 are defined in [0014] comprises methyl methacrylate and a monomer (a-1) also referred to as “other monomer 1” wherein other monomer contains vinyl group [0013], and wherein acrylate esters bearing vinyl group the location of the vinyl group on the hydrocarbon forming ester functionality. Consequently the vinyl group will be located on, for example, isopentane chain of the acrylate monomer.
The vinyl ester of the acrylate has 1-9 carbon atoms which encompasses C5 hydrocarbon isoalkyl homologs [0014].
The polymerization of Nakano therefore is conducted in presence of another polymerizable component as depicted in the examples. Please note that the examples are utilized to reflect the process of polymerization in-situ not for the specific content utilized in the examples.
With respect to claim 10, , component a of the copolymer of Nakano comprises monomers a-1 and a-2, wherein component a-1 (the component of interest) is 99.6-99.9% of the copolymer [0009].
Within component a-1, MMA constitutes at least 50% of the monomers, which means that the content of the vinyl monomer can be at most 50% [0020].
Component b which is phosphonic acid ester and is utilized in an amount of 0.1-0.4 parts. By way of examples for approximately 77 parts of total monomer (Table 1), the content of phosphoric acid ester is utilized in amount of approximately at 11 parts. Having said that MMA is at least 50% of the monomer a, preferably at least 85% of monomer a, as such the content of vinyl monomer at most 50% which equates to 38 parts at 50% of MMA and 11.55 parts at 85% of MMA. This would encompass 1:1 ratio of vinyl acrylate to phosphonic acid acrylate.
In the light of the above disclosure, it would have been obvious to one of ordinary skill in the art to utilize the vinyl acrylate disclosed in Nakano including isopentane based vinyl acrylate with the (methyl)methacrylate and thereby obtain the claimed polymer.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano (JP 2015/074740 translation provided).
With respect to claim 11, Nakano discloses reaction product of acrylate monomer having vinyl group (component a-1) with component B, which is a phosphoric acid ester which includes alkyl phosphates [0022]. Component a-1 are defined in [0014] comprises methyl methacrylate and a monomer (a-1) also referred to as “other monomer 1” wherein other monomer contains vinyl group [0013], and wherein acrylate esters bearing vinyl group the location of the vinyl group on the hydrocarbon forming ester functionality. Consequently the vinyl group will be located on, for example, isopentane chain of the acrylate monomer.
The vinyl ester of the acrylate has 1-9 carbon atoms which encompasses C5 hydrocarbon isoalkyl homologs [0014].
The components of the composition include polymerized PMMA, methyl methacrylate ((a1) [0020], monomer having one vinyl functionality [0021], phosphoric esters [0022] and stabilizers such as hindered phenols [0027] and initiator [0032].
The polymerization of Nakano therefore is conducted in presence of another polymerizable component as depicted in the examples. Please note that the examples are utilized to reflect the process of polymerization in-situ not for the specific content utilized in the examples.
With respect to claim 112, , component a of the copolymer of Nakano comprises monomers a-1 and a-2, wherein component a-1 (the component of interest) is 99.6-99.9% of the copolymer [0009].
Within component a-1, MMA constitutes at least 50% of the monomers, which means that the content of the vinyl monomer can be at most 50% [0020].
Component b which is phosphonic acid ester and is utilized in an amount of 0.1-0.4 parts. By way of examples for approximately 77 parts of total monomer (Table 1), the content of phosphoric acid ester is utilized in amount of approximately at 11 parts. Having said that MMA is at least 50% of the monomer a, preferably at least 85% of monomer a, as such the content of vinyl monomer at most 50% which equates to 38 parts at 50% of MMA and 11.55 parts at 85% of MMA. This would encompass 1:1 ratio of vinyl acrylate to phosphonic acid acrylate.
In the light of the above disclosure, it would have been obvious to one of ordinary skill in the art to utilize the vinyl acrylate disclosed in Nakano including isopentane based vinyl acrylate with the (methyl)methacrylate and thereby obtain the claimed polymer.
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, 4-8, 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 9, 10, 12 and 13 of copending Application No. 18/037,455. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The discussion of the rejection from FOAM dated 9/24/2025 are incorporated here by reference. Although claims 1, 3-5 of ‘455 were amended to recite DOPO as the phosphoric acid ester, the rejection is maintained because the process is the same and independent claims 7 and 10 of ‘455 define integer p, which meets the instant integer q to be in a range of 0-7. Range of the integer p in the co-pending application encompasses compound of the instant invention.
Further, co-pending claims 7 and 10 of ‘455 are open to any phosphoric acid based compounds, because the limitation of DOPO was introduced only to claims 1 and 5 of ‘455 application. Consequently, the phosphoric esters include those of the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 January 26, 2025