12.59DETAILED 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 .
Response to Amendment
The preliminary amendment filed on July 28, 2023 has been entered. Claims 1-6 are pending.
Information Disclosure Statement
The references cited in the PCT international search report by the JPO have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.
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 3 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.
Claim 3 recites the limitation "the component (B2)" in line 2. There is insufficient antecedent basis for this limitation in the claim. This rejection can be overcome by changing the dependency of claim 3 to claim 2.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bellin et al. (US Pub 2023/0212368). The effective filing date of Bellin et al. is June 10, 2020 which is prior to the effective filing date of the present application, i.e., February 04, 2021.
Bellin discloses a foamed film formed from a polystyrene resin composition comprising a flame retardant ([0076]-[0081]). Example 4 (Table 1) discloses a flame retardant that comprises 1.5 wt% of tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether), i.e., SR-130, 0.1 wt% of a fatty acid zinc, i.e., Zn-stearate, and 0.1 wt% of a fatty acid metal salt that is not a fatty acid zinc, i.e. Ca-stearate.
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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Bellin et al. (US Pub 2023/0212368) in view of Nishiura (US Pub 2021/0009778).
Claims 2 and 4 are being interpreted as though component (B2) is a distinct compound from (B1). That is, claims 2 and 4 are being interpreted as though the flame retardant composition comprises tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether) (B1) and another bromine-containing flame retardant that is not tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether) (B2). If an embodiment where (B1) and (B2) can be the same compound in intended to read on claims 2 and 4, then these claims would be anticipated by Bellin for the reasons set forth above.
Bellin does not disclose using a blend of two bromine-containing compounds, but does disclose that any bromine containing compound with sufficient thermal stability and high bromine content may be used [0036]. Bellin specifically discloses the use of tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether) and tetrabromobisphenol A-bis(2,3-dibromopropyl ether) [0036]. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Also, case law holds that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose...[T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06. Further, Nishiura discloses such a bromine-containing composition blend useful as a flame retardant for styrene-based foamed articles (Table I). In present case, it would have been obvious to one of ordinary skill in the art to prepared the composition of Bellin wherein the flame retardant includes a combination of tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether) with one of the other disclosed bromine-containing flame retardant compounds, such as tetrabromobisphenol A-bis(2,3-dibromopropyl ether), as taught in Nishiura, to form a flame retardant composition with the expectation that the resulting composition would be useful the same purpose taught by Bellin.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Nishiura (US Pub 2021/0009778) in view of JP2016-130280). An English language machine translation of JP ‘280 is attached to this Office Action.
Nishiura discloses foamed article formed from a flame-retardant expandable styrene-based resin composition. The flame retardant composition comprises the claimed components (B1), (B2), and (C) (claims 1, 4, and 8; Table 1) within the presently claimed ranges. Nishiura does not disclose including a fatty acid metal salt that is not a fatty acid zinc, i.e., component (D), but does disclose that other known additives may be included in the composition [0040]. JP ‘280 discloses that it is known in the art to provide a flame-retardant expandable styrene-based resin composition with a calcium stearate compound (line 526) within the presently claimed amount (lines 625-630). It would have been obvious to one of ordinary skill in the art to have prepared the a flame-retardant expandable styrene-based resin composition of Nishiura wherein the composition further included a calcium stearate additive in an amount within the presently claimed range, motivated by the desire to incorporate a conventional known additive to the composition of Nishiura.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781