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
In their response dated wherein the claims were amended such that claims 1-4 and 6 are deleted. Applicants argued following:
With respect to claim 5:
Neither prior art of Kang or Jang disclose or prompt one of ordinary skill in the art to adopt or consider the compound specified in present claim 5.
The process of Kang or Jang is different as it is synthesized using different process.
Response:
Both Kang and Jang were utilized to reject claim 5 only. Claim 5 is a product claim not process as such the arguments directed at process of making the compound are not commensurate with the scope of claims as presented before the office or the scope of the rejection. Additionally, patentable weight is attributed to the compound and not to the process by which it is made.
Kang teaches the compound for following reason: The compound of Kang has formula 1 as follows:
PNG
media_image1.png
150
366
media_image1.png
Greyscale
Wherein the phosphorous moiety is the same as applicant’s phosphorous moiety (see [0027]).
The polymerizable acrylate part of the molecule in its broadest reasonable interpretation is substituted or unsubstituted hydrocarbon [0025] wherein a hydrocarbon is defined as linear C1-C20 carbon chain.
Jang is applicable as anticipatory rejection because it teaches the same formula as Kang and the disclosure is pretty much similar to Kang and therefore will also be restated as an obviousness rejection.
In both cases while specifying the content of the carbon atoms within the aliphatic group that content encompasses the compound of claimed invention. Specifically, per MPEP 2131.02 III, a generic disclosure can anticipate a claim when the reference describes the limitation but does not expressly spell out the limitation as arranged or combined in the claim. In such situations the boards have decided that out of all possible combinations (in this case length of the aliphatic moiety) 1 length is enough to render the reference anticipatory, especially when in the narrower embodiment, the m integer is 1-10. As such aliphatic moiety of 8 carbon atoms is at once envisaged.
With respect to claim 7, the applicants argued that the phosphorous-based compound of the prior art is not a phosphorous of the instant invention.
Response:
Instant independent claims 7 and 10 require as pointed out by the applicants phosphorous based compound selected from phosphinous acid ester, phosphonous acid ester and phosphorous acid diester. Nakano refers to the compounds utilized as phosphoric acid esters however (phosphonic was a typo), these compounds are defined as including alkyl phosphate ester which is an alternative name for phosphorous acid esters and include diesters (see [0022-0023] of Nakano. To overcome this prior art the applicants should narrow the scope of the phosphorous based compound.
Additionally, instant claim 7 is completely independent of the instant claim 5 and does not require limitations of claim 5. Consequently, phosphorous based compounds of Nakano meet instant claims.
Komura was utilized to specifically include acrylic allyl monomer comprising 8 carbon atoms not to replace the polymerization process. This is because independent claim 7 discloses broad range of monomers wherein integer p can be zero. The reason why the examiner indicated that the monomer would polymerize in the same manner it is because the backbone of the polymer is still based on acrylates and the pendant group is still an allyl group. These groups as discloses in Komura are the same functional groups of Nakano (functional equivalent).
It should also be noted that while Nakano discloses flame retardant composition, instant claim 10 does not require a polymer. It only requires presence of monomers which are polymerizable in any fashion and in any order as none are listed.
Consequently, all rejections of record are maintained and are incorporated here by reference. Rejections will be restated to reflect amendments (cancellation) of claims.
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 § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 5 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kang (US 2015/0005410).
With respect to claim 5, Kang discloses flame retardant thermoplastic copolymer comprising ethylenically unsaturated monomers. The phosphorus containing monomer of Kang has following formula I:
PNG
media_image2.png
192
436
media_image2.png
Greyscale
Wherein m is an integer from 1 to 10, integer n can be 0, and R2 is methyl. For m being 8, Kang meets the required monomer of instant claim 5. In the preferred embodiment the phosphorus part of the formula 1 is 9,10-dihydro, 9-oxa-10-phosphaphenanthrene [0027]. A block made from the monomer of formula 1 above will meet the polymer having structural formula of instant claim 1.
The composition comprises additional flame retardants and other additives as described in [0018], composition is utilized to make a molded article [0009]. The method of making an article includes casting, which in turn will form film or a sheet [0046].
Claim 5 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jang (us 2014/0187688).
With respect to claim 5, Jang discloses composition comprising monomer having formula 1 as follows:
PNG
media_image2.png
192
436
media_image2.png
Greyscale
Wherein m is an integer from 1 to 10, integer n can be 0, and R2 is methyl. For m being 8, Kang meets the required monomer of instant claim 5. In the preferred embodiment the phosphorus part of the formula 1 is 9,10-dihydro, 9-oxa-10-phosphaphenanthrene ([0039] see also examples). A block made from the monomer of formula 1 above will meet the polymer having structural formula of instant claim 1. Monomer of formula 1 of Jang can be polymerized with other acrylate-based monomers. These monomers include allyl methacrylates [0082].
The composition of Jang is flame retardant (Abstract) and used in casting, which in turn indicates formation of film or a sheet [0109]. The article has high transparency and refractive index [0009].
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 7-9 are rejected under 35 U.S.C. 103 as being unpatentable Nakano (JP 2015-074740) in view of Komura (JP 63-211253 translation attached).
With respect to claim 7, Nakano discloses copolymer where mixture of acrylate monomers is polymerized in situ with phosphoric acid ester (claims 1 and 2 of Nakano).
The acrylate monomers of Nakano are selected from acrylates comprising one vinyl group with methyl methacrylate as main component and small content of acrylates having two vinyl groups. As such methyl methacrylate and acrylates having two vinyl group are viewed as copolymerizable monomers.
Acrylate bearing one vinyl group include acrylates based on propyl (meth)acrylates, butyl (meth)acrylates, and higher alkyl (meth)acrylates. The monomers can be utilized in combination of two or more [0014]. The compounds listed in the office action meet the limitation of integer p of the instant claim 7. Acrylates of Nakano meet the limitation of the instant formula (III) because it is well established that 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, butyl chain of the acrylate monomer.
In any event, these monomers are polymerized in situ with phosphonic acid ester group. Since chemical structure of phosphonic acid ester has not been disclosed in instant claim 7, any phosphorous or phosphonic acid ester group will meet the claims. The vinyl ester of the acrylate has 1-9 carbon atoms.
While Nakano discloses various vinyl bearing monomer which encompass C1-C9, however C8 is not explicitly recited.
With respect to claim 8, Komura discloses newly synthesized acrylate monomer also bearing a vinyl group wherein the compound has following formula:
PNG
media_image3.png
80
344
media_image3.png
Greyscale
The compound of Komura can be utilized as a raw material for copolymerization of synthetic monomers.
As such, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize acrylate of Komura bearing vinyl group along with the monomers of Nakano. The monomer of Komura also bears vinyl group which indicates that it would be subject to the same reaction scheme as the vinyl groups bearing acrylates of Nakano. The reactivity of the vinyl group will be the same in the compound of Komura will be the same or better as the reactivity of the vinyl groups in Nakano based on the distance from the polymer backbone. Additionally, the length of the monomer in Komura is within the bounds of C1-C9 of Nakano. Additionally, as Komura indicated in addition to good reactivity, the polymers utilized 7-octyl (meth)acrylate the final polymer will have better flexibility between vinyl and methacryloyl groups (see Means of solving the problem section of Komura).
With respect to claim 9, 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.
With respect to claim 13, Nakano teaches polymerization of MMA and vinyl monomer in presence of phosphonic acid ester is conducted in presence of radical initiator [0033].
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable Nakano (JP 2015-074740) in view of Komura (JP 63-211253 translation attached).
With respect to claim 10, Nakano discloses flame retardant composition comprising a copolymer where mixture of acrylate monomers is polymerized in situ with phosphoric acid ester and antioxidant (claims 1 and 2 of Nakano). The composition is utilized to make molded articles (claim 13).
The acrylate monomers of Nakano are selected from acrylates comprising one vinyl group with methyl methacrylate as main component and small amount of acrylates having two vinyl groups. As such methyl methacrylate and acrylates having two vinyl group are viewed as copolymerizable monomers.
Acrylate bearing one vinyl group include acrylates based on propyl (meth)acrylates, butyl (meth)acrylates, and higher alkyl (meth)acrylates. The monomers can be utilized in combination of two or more [0014]. The compounds listed in the office action meet the limitation of integer p of the instant claim 7. Acrylates of Nakano meet the limitation of the instant formula (III) because it is well established that 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, butyl chain of the acrylate monomer.
In any event, these monomers are polymerized in situ with phosphonic acid ester group. Since chemical structure of phosphonic acid ester has not been disclosed in instant claim 7, any phosphorous or phosphonic acid ester group will meet the claims. The vinyl ester of the acrylate has 1-9 carbon atoms.
Nakano discloses various vinyl bearing monomer which encompass C1-C9, however C8 is not explicitly recited.
With respect to claim 11, Komura discloses newly synthesized acrylate monomer also bearing a vinyl group wherein the compound has following formula:
PNG
media_image3.png
80
344
media_image3.png
Greyscale
The compound of Komura can be utilized as a raw material for copolymerization of synthetic monomers.
As such, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize acrylate of Komura bearing vinyl group along with the monomers of Nakano. The monomer of Komura also bears vinyl group which indicates that it would be subject to the same reaction scheme as the vinyl groups bearing acrylates of Nakano. The reactivity of the vinyl group will be the same in the compound of Komura will be the same or better as the reactivity of the vinyl groups in Nakano based on the distance from the polymer backbone. Additionally, the length of the monomer in Komura is within the bounds of C1-C9 of Nakano. Additionally, as Komura indicated in addition to good reactivity, the polymers utilized 7-octyl (meth)acrylate the final polymer will have better flexibility between vinyl and methacryloyl groups (see Means of solving the problem section of Komura).
With respect to claim 12, 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.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 April 28, 2026
Prosecution Insights