DETAILED ACTION
Response to Amendment
The amendment and response filed on May 06, 2026 has been entered. Claims 1, 3, 5, and 6 are pending.
Claim Interpretation
As noted in the February 18, 2026 Office action (paragraph #13), for purpose of evaluating the prior art and applying the prior art to the claims, the B2 component is being interpreted as being a distinct compound from B1. That is, claim 1 is 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, the inclusion of a B2 component would be indistinguishable from B1 and the claimed content of B1 based on the total amount of B1 and B2 would not be meaningful in a patentability determination standpoint. The Applicant is encouraged to amend the claims to clarify the intended interpretation. For example, in claim 1, line 12, after the term “retardant” insert “other than (B1)”.
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 1, 5, and 6 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).
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.
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; claim 1). Nishiura discloses the ratio of the tetrabromobisphenol A-bis(2,3-dibromo-2-methylpropyl ether) (B1) to the bromine-containing flame retardant (B2) other than (B1) is 1/99 to 40/60 on a weight basis, which overlaps with the presently claimed range. As set forth in MPEP 2144.05, “ In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
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, 5, and 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, 2, 4, and 8; Table 1) in amounts that overlap the presently claimed ranges. As set forth in MPEP 2144.05, “ In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
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.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed May 06, 2026 have been fully considered but they are not persuasive.
With respect to the B1 content, it is argued that Nishiura only overlaps at the 40% point of the claimed range. This argument is not persuasive, because, as set forth above, an overlapping range is deemed to be prima facie obvious (see MPEP 2144.05).
The argument that Nishimua was cited in the corresponding ISR and WO for this application, but was found to have novelty and inventive step, is not persuasive. As set forth in MPEP 1845.01, “written opinions are nonbinding…on the elected States.”
The argument that the present invention, by incorporating claimed components B1, B2, C, and D in specific proportions, it is possible to achieve the technical effect of improving all of the flame retardancy, heat resistance, and moldability of a foamed molded article (see Tables 1, 2, and 3). The examiner agrees that Tables 1, 2, and 3 demonstrate the stated technical effect; however, the rejected claims are not commensurate in scope with this argument. Specifically, in the examples of the Tables, the B2 component comprises at least one member selected from the group consisting of tetrabromobisphenol A-bis(2,3-dibromopropyl ether), tris(2,3-dibromopropyl)isocyanurate, tris(tribromophenoxy)triazine, and brominated epoxy oligomer.
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.
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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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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