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.
Claim 5 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. It is indefinite whether the particle size limitation of claim 1 regarding F1, is required only for the F1 compound of claim 1, both the F1 compound of claim 1 and the F1 compound of claim 5, or only one of the compounds considered F1, either piperazine pyrophosphate or polypiperazine pyrophosphate or the silica of claim 5.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 5, 7, 8, 10, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ni et al. (EP 3135729 A1).
Regarding claims 1, 2, 5, and 7: Ni et al. teach a composition comprising a thermoplastic polyurethane (TPU) piperazine pyrophosphate [0014], diethyl phosphinate [0177], 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 [0003, 0013-0014, 0042, 0074]. Ni et al. teach the silicon dioxide as an anti-dripping agent [0052], when added, its effective in preventing dripping [0047]. 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.
Ni et al. teach that the composition silicon dioxide having a particle size of preferably 0.005 to 30 microns [0049], which overlaps the claimed range. 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).
Regarding claim 2: Ni et al. teach the component (B) of the flame-retardant TPU elastomer composition of the invention is preferably a piperazine polyphosphate [0013].
Regarding claim 8: Ni et al. teach the phosphorus-containing flame retardant is a derivative of phosphoric acid [0003, 0074].
Regarding claim 10: Ni et al. teach the piperazine pyrophosphate being used in amount of 18-21 pbw per 100 pbw of TPU [Table 1].
15.
Regarding claim 12: Ni et al. teach the TPU elastomer, the amount is preferably 100 parts, more preferably 50 parts, by mass per 100 parts by mass of the TPU elastomer [0112, table 1].
Regarding claim 13: Ni et al. teach a method of using the flame retardant TPU for making wire coverings [0114-0116].
Claim(s) 1, 2, 4, 5, and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motai et al. (JP 2005-053969 A).
Regarding claims 1, 2: Motai et al. teach a composition comprising a thermoplastic polymer [0044]; piperazine pyrophosphate and melamine pyrophosphate (a derivative of phosphoric acid [Examples; Table 1]. Motai et al. teach that the piperazine pyrophosphate has an average particle diameter of 10 microns [0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select thermoplastic polyurethane [0044] from the short, finite list in Motai et al. as the thermoplastic polymer.
Regarding claim 4: Motai et al. teach that the piperazine pyrophosphate is obtain by reacting 1 mol of piperazine and 1 mol of pyrophosphoric acid [0054], which will provide a phosphorous content of 23%.
Regarding claim 5: Motai et al. teach that the composition comprises 20 parts by mass or less of silicon oxide (same compound as silica) [0040]. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 8: The melamine pyrophosphate of Motai et al. [Examples; Table] is also being used as claimed F3.
Regarding claim 9: Since melamine pyrophosphate is being used as both F2 and F3, Motai et al. teach the claimed amount [Examples; Table 1].
Regarding claim 10: Motai et teach the claimed amount [Examples; Table 1].
Claim(s) 1, 2, 4, 7-10, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fei et al. (CN111961331A) in view of Motai et al. (JP 2005-053969 A).
Regarding claims 1, 2, 7, 10 and 12: Fei et al. teach a composition comprising 76 parts by weight of thermoplastic polyurethane, 15 parts flame retardant, and 5 parts of piperazine pyrophosphate [0031; Examples]. The flame retardant is 60:1 diethylaluminum hypophosphite (a derivative of phosphinic acid) [0032].
Fei et al. fail to teach the particle size of the piperazine pyrophosphate.
However, Motai et al. teach that the phosphate compound, piperazine pyrophosphate in an analogous composition should have an average particle diameter of 10 microns for good dispersibility, flame retardancy, impact resistance, and surface appearance of the molded article [0036; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an average particle diameter of 10 microns as taught by Motai et al. as the average particle diameter of the piperazine pyrophosphate of Fei et al. for good dispersibility, flame retardancy, impact resistance, and surface appearance of the molded article.
Regarding claim 4: Fei et al. teach piperazine pyrophosphate [Examples], which inherently meets the claimed phosphorous content. The theoretical lower limit for the compound is 17.7% phosphorus. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 8: Piperazine pyrophosphate is a derivative of phosphoric acid and is also being used as claimed F3.
Regarding claim 9: Fei et al. teach 5 parts of piperazine pyrophosphate and 15 parts flame retardant, which is 60:1 diethylaluminum hypophosphite (a derivative of phosphinic acid) [0031-0032; Examples].
Regarding claim 13: Fei et al. teach forming a cable sheathing from their composition [0005, 0006, 0027, 0047, 0059; Examples].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fei et al. (CN111961331A) and Motai et al. (JP 2005-053969 A) as applied to claim 1 above further in in view of Zhang et al. (CN 105541758 A).
Fei et al. fail to teach a water content.
However, Zhang et al. teach that the water content of piperazine pyrophosphate in a preferred embodiment, in an analogous composition, is 0.1 to 0.5% [0033] because piperazine pyrophosphate is easily hydrolyzed in water [0075].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a water content of 0.1 to 0.5% as taught by Zhang et al. as the water content of the piperazine pyrophosphate of Fei et al. to use an art tested water content, and to prevent hydrolyzing the piperazine pyrophosphate.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fei et al. (CN111961331A) and Motai et al. (JP 2005-053969 A) as applied to claim 1 above further in in view of Ni et al. (2017/0121502).
Fei et al. fail to teach silica.
However, Ni et al. et teach adding 1.5 to 3.0 parts by mass [0053] of silicon dioxide, with an average particle diameter of 30 microns [0049-0050] to an analogous composition to prevent dripping [0048].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1.5 to 3.0 parts by mass of silicon dioxide, with an average particle diameter of 30 microns as taught by Ni et al. to the composition of Fei et al. to prevent dripping [0048].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fei et al. (CN111961331A) and Motai et al. (JP 2005-053969 A) as applied to claim 1 above further in in view of Henze et al. (2017/0066906).
Fei et al. fail to teach a Mw for the polyurethane.
However, Henze et al. teach that, in an analogous composition for cable sheaths, that the Mw of a polyurethane should be 50,000 to 500,000 Da for processability and desired properties [0050].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a thermoplastic polyurethane with a Mw of 50,000 to 500,000 Da as taught by Henze et al. as the thermoplastic polyurethane in Fei et al. to provide processability and desired properties.
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
The applicant has alleged that Ni et al. fail to teach the claimed particle size. This is not persuasive because the claimed particle size is indefinite, and Ni et al. teach the claimed particle size for the silica.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. The amendment of claim 1 to include the limitations of claim 6, provides a new combination of limitations for all of the dependent claims. To reject the dependent claims, claim 1 must necessarily be rejected. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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