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 .
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 5, 8 - 9 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 pre-AIA the applicant regards as the invention.
Claim 5 recites the first retardant (F1) comprising silica in an amount in the range of 0.001-5%wt. However, it is not clear if said weight percentages are based on the weight of the flame retardant (F1) or on the weight of the overall composition. For the purpose of prosecution, the amount of silica is considered as based on the weight percentage of the composition.
Claim 8 and claim 9, dependent on claim 8, recite “wherein the composition comprising a further phosphorous-containing flame retardant (F3), which is a derivative of phosphoric acid.” This language is considered to be indefinite because claim 1 (from which claim 8 depends) already requires a phosphorus-containing flame retardant (F2) selected from the group consisting of derivatives of phosphinic acid, derivatives of phosphonic acid, and derivatives of phosphoric acid. The indefiniteness comes from claim 8 requiring the (F3) flame retardant to be a derivative of phosphoric acid which was already an option for flame retardant (F2). It is unclear whether (F3) is in addition to the derivative of phosphoric acid optionally listed in (F2), and if they are the same or different.
Claim Analysis
Summary of Claim 1:
A composition comprising at least the components (i) to (iii):
a thermoplastic polyurethane
a first flame retardant (F1) selected from the group consisting of piperazine pyro- phosphate and polypiperazine pyrophosphate
a phosphorus-containing flame retardant (F2) selected from the group consisting of derivatives of phosphinic acid, derivatives of phosphonic acid, and derivatives of phosphoric acid.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 7, 10, 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei (CN 111961331, Wei’331) as listed on the IDS dated 7/11/2023.
Regarding claims 1, 2 and 7, Wei’331 teaches a composition comprising halogen-free flame-retardant thermoplastic polyurethane (TPU), piperazine pyrophosphate (¶12), and a hypophoshite such as calcium hypophosphite (¶10), which is a derivative of phosphinic acid (¶ 11-12, 23, 6).
Regarding claims 10 and 12, Wei’331 teaches/exemplifies the flame-retardant thermoplastic polyurethane composition comprising 76 pbw of TPU, 15 pbw of flame retardant, i.e. derivative of phosphinic acid and 5 pbw of piperazine pyrophosphate (¶ 31, 32, 33).
Regarding claim 13, Wei’331 teaches the method comprising forming cable sheath materials comprising the TPU composition (¶ 9, 6, 27).
Claim(s) 1 - 2, 5, 7, 8, 10, 12, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ni (EP 3135729, Ni’729); as listed on the IDS dated 7/11/2023.
Regarding claims 1, 2, 7, Ni’729 teaches a composition comprising a thermoplastic polyurethane (TPU) piperazine pyrophosphate (¶14), diethyl phosphinate (¶77), phosphorus-containing compound, such as melamine phosphate, melamine polyphosphate, or a condensed phosphoric ester, as a halogen-free flame, and derivatives of phosphoric acid, which may be used in admixture (¶ 3, 13-14, 42, 74).
Regarding claim 2, Ni’729 teaches the component (B) of the flame-retardant TPU elastomer composition of the invention is preferably a piperazine polyphosphate (¶ 13).
Regarding claim 5, Ni ’729 teaches the silicon dioxide as an anti-dripping agent (¶ 52), when added, its effective in preventing dripping [¶ 47]. The anti-dripping properties of silicone dioxide enhance the flame retardancy of the piperazine flame retardant and as such the silicone dioxide is interpreted to be part of the first flame retardant F1.
Regarding claim 8, Ni’729 teaches the phosphorus-containing flame retardant is a derivative of phosphoric acid (¶ 3, 74).
Regarding claim 10, Ni’729 teaches the piperazine pyrophosphate being used in amount of 18-21 pbw per 100 pbw of TPU (Table 1).
Regarding claims 12, Ni’729 teaches the TPU elastomer, the amount is preferably 100 parts, more preferably 50 parts, by mass per 100 parts by mass of the TPU elastomer (¶ 112, table 1).
Regarding claim 13, Ni’729 teaches a method of using the flame retardant TPU for making wire coverings (¶114 - 116).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ni (EP 3135729, Ni’729) in view of Zhang (CN 105541758, based on machine translation).
The discussion with respect to Ni (EP 3135729, Ni’729) set forth in paragraphs 9-16 above, is incorporated here by reference.
Ni’729 does not explicitly teach the water content in piperazine pyrophosphate flame-retardant of the piperazine pyrophosphate.
However, Zhang, from the same field of endeavor, teaches flame retardant compositions comprising piperazine pyrophosphates having a water content within the 0.1 to 0.5% range (¶ 5, 34) which overlaps the claimed range of less than 1 % by weight.
It would have been obvious to a one of ordinary skill in the art to include the piperazine pyrophosphate having water content of as low as 0.1-0.5%wt of Zhang as the piperazine pyrophosphate in the composition of Ni’729, since said piperazine pyrophosphate is having excellent flame-retardant properties (¶ 5) and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ni (EP 3135729, Ni’729) in view of Nakanishi (US 2006234043 (A1) as set forth above for claims 1-2, 7, 10, 12-13.
The discussion with respect to Ni (EP 3135729, Ni’729) set forth in paragraphs 9 -16 above, is incorporated here by reference.
Ni’729 does not explicitly teach the phosphorus content in the piperazine pyrophosphate.
However, Nakanishi teaches the nitrogen-containing polyphosphate flame retardants including piperazine pyrophosphate having phosphorus content a range from 15 to 30% by mass, wherein a favorable flame retardancy can be achieved through the addition and blending of only a small quantity of such component, which is desirable (¶ 67, 65).
Based on the combined teachings of Ni’729 and Nakanishi, it would have been obvious to a one of ordinary skill in the art to include the piperazine pyrophosphate having phosphorus content of 15-30%wt of Nakanishi as the piperazine pyrophosphate in the composition of Ni’729, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ni (EP 3135729, Ni’729) as listed on the IDS dated 7/11/2023.
Regarding claim 6, Ni ‘729 teaches the composition according to claim 5 wherein the first flame retardant comprises silica as set forth above and incorporated herein by reference.
Ni’729 teaches the amount of silicon dioxide having particle size is preferably 0.005 to 30 µm (¶ 49) which overlaps the claimed range from 5 to 100 µm. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Claim 9, 11, are rejected under 35 U.S.C. 103 as being unpatentable over Ni (EP 3135729, Ni’729) in view of Henze (WO 2015128213 (A1) based on machine translation).
The discussion with respect to Ni (EP 3135729, Ni’729) set forth in paragraphs 9-16 above, is incorporated here by reference.
Regarding claim 9, Henze teaches the proportion of the flame retardant (F1), i.e. derivatives of phosphoric acid in the composition according to the invention is in the range of 3 to 15 wt.%, based on the total composition (¶ 54, 59, 60) which overlaps the claimed range from 1 % to 30 % by weight.
Regarding claim 11, Henze teaches the thermoplastic polyurethane has a mean molecular weight (Mw) in the range of 50,000 to 500,000 Da (¶ 37) which overlaps the claimed ranges range from 50,000 to 500,000 Da.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMADAS SR SATHUNURU whose telephone number is (571)272-1687. The examiner can normally be reached 7:30AM to 3:30PM.
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/RAMADAS SATHUNURU/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764