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 Election/Restrictions
Applicant's election of Invention I (claims 1-3) without traverse in the reply filed on 07/17/2026 is acknowledged.
Claims 1-6 are pending. Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-3 are currently under examination.
Claim Objections
Claims 1-3 are objected to because of the following informalities:
In claim 1, the preamble “Oxygen encapsulating agents, characterized by using phosphate products, …, with the use of phosphoric ester additives,” is objected to for its lack of a transitional phrase. Applicant is suggested to rewrite the preamble in order to improve clarity in the claim, e.g., “Oxygen encapsulating agents comprising phosphate products, ..., and phosphoric ester additives,” or some equivalent.
In claims 2 and 3, the preamble “Oxygen encapsulating agents, in accordance with claim 1 and characterized by said additive …to be used…” is objected to for its lack of a transitional phrase. Applicant is suggested to rewrite the preamble in order to improve clarity in the claim, e.g., “The oxygen encapsulating agents in accordance with claim 1 comprising said additive…” or some equivalent.
Appropriate correction is required.
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 1-3 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-3 are generally narrative and indefinite, failing to conform with current U.S. practice, and appear to be in a European-style claim format. Applicant is suggested to amend the claims such that they conform with U.S. practice.
Regarding claim 1, the phrase "particularly" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of the compact prosecution, claim 1 is interpreted as “Oxygen encapsulating agents comprising phosphate products and phosphoric ester additives, resulting in a synergistic effect on fire suppression.”
Claim 2 depends from claim 1 and recites “said additive I”. There is insufficient antecedent basis for this limitation “additive I” in claim 1. For the purpose of compact prosecution, this limitation “said additive I” is interpreted as “said additive”.
Claim 2 contains parenthesis, e.g., “(octyl, iso- octyl, 2 ethyl hexanol, dimethyl hexyl)”. Such parenthetical information renders the claim indefinite because it is unclear whether the limitation within the parenthesis is part of the claim or not. For the purpose of the compact prosecution, the Office will assume that the limitation within the parenthesis is part of the claim. Applicant is suggested to revise the claim to remove the parenthesis in order to overcome the rejection.
Claim 2 also recites “the reaction between phosphorus pentoxide and the alcohols represented by R in the formula”. It is unclear what kind of formula it is. The instant invention describes below (instant US Publication paragraphs [0053]-[0056], [0071]):
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Therefore, for the purpose of compact prosecution, the limitation in claim 2 is interpreted as “The oxygen encapsulating agents in accordance with claim 1 comprising said additive, wherein said additive is obtained from the reaction between phosphorus pentoxide and alcohols, said additive is represented by the formula:
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wherein R is octyl, iso-octyl, 2 ethyl hexyl, dimethyl hexyl, n-decyl, isodecyl, dimethyl octyl, trimethyl hexyl, dodecyl, iso-dodecyl, trimethyl nonyl, tridecyl, iso-tridecyl, myristyl, hexadecyl, cetyl, cetyl stearyl, stearyl, oleyl, arachidyl, or eicosyl.”
Claim 3 depends from claim 1 and recites “said additive II”. There is insufficient antecedent basis for this limitation “additive II” in claim 1. For the purpose of compact prosecution, this limitation “said additive II” is interpreted as “said additive”.
Claim 3 recites “cetylstearyl)”. It is unclear what the half parentheses “)” means. Appropriate correction is required.
Claim 3 also recites “said additive II to be used, is obtained from the reaction between phosphorus pentoxide and ethoxylated alcohols, represented in the formula as R1O”. It is unclear what kind of formula it is. However, the instant invention describes below (instant US Publication paragraphs [0074]-[0077]):
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Therefore, for the purpose of compact prosecution, the limitation in claim 3 is interpreted as “The oxygen encapsulating agents in accordance with claim 1 comprising said additive, wherein said additive is obtained from the reaction between phosphorus pentoxide and ethoxylated alcohols, said additive is represented by the formula:
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wherein R1O(CH2CH2O)n is 2 ethyl hexyl 2 EO, n-decyl 30 EO, iso-decyl 3 to 8 EO, lauryl 2 to 10 EO, tridecyl 3 to 15 EO, isotridecyl 3 to 15 EO, cetyl 2 to 20 EO, stearyl 2 to 20 EO, or oleyl from 2 to 20 EO.”
Claims 2-3 are also rejected for their dependency on claim 1.
Appropriate correction/clarification is required.
Claim Interpretation
In addition to the foregoing, the Office makes the additional notes of claim interpretation.
Claims 2 and 3 are product-by-process claims.
Claim 2 recites “said additive I to be used is obtained from the reaction between phosphorus pentoxide and the alcohols represented by R in the formula”.
Claims 3 recites “said additive II to be used, is obtained from the reaction between phosphorus pentoxide and ethoxylated alcohols, represented in the formula as R1O”.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113.
Therefore, claim 2 merely requires that “The oxygen encapsulating agents in accordance with claim 1 comprising said additive, wherein said additive is represented by the formula:
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wherein R is octyl, iso-octyl, 2 ethyl hexyl, dimethyl hexyl, n-decyl, isodecyl, dimethyl octyl, trimethyl hexyl, dodecyl, iso-dodecyl, trimethyl nonyl, tridecyl, iso-tridecyl, myristyl, hexadecyl, cetyl, cetyl stearyl, stearyl, oleyl, arachidyl, or eicosyl.”
Claim 3 merely requires that “The oxygen encapsulating agents in accordance with claim 1 comprising said additive, wherein said additive is represented by the formula:
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wherein R1O(CH2CH2O)n is 2 ethyl hexyl 2 EO, n-decyl 30 EO, iso-decyl 3 to 8 EO, lauryl 2 to 10 EO, tridecyl 3 to 15 EO, isotridecyl 3 to 15 EO, cetyl 2 to 20 EO, stearyl 2 to 20 EO, or oleyl from 2 to 20 EO.”
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.
(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.
1. Claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Shimizu (WO 2014/010380 A1, hereinafter Shimizu).
Regarding claim 1, the limitation “Oxygen encapsulating” is an intended use/result, the limitation “resulting in a synergistic effect on fire suppression” is an intended result, they do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Shimizu teaches a flame retardant agent comprising component (A) an acidic phosphate ester, and component (B) an alkyl acid phosphate ester ([0046]).
Thus, the acidic phosphate ester of in Shimizu reads on the claimed phosphate product. The alkyl acid phosphate ester of Shimizu reads on the claimed phosphoric ester additive.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
2. Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20230078842 A, hereinafter Lee).
Regarding claim 1, the limitation “Oxygen encapsulating” is an intended use/result, the limitation “resulting in a synergistic effect on fire suppression” is an intended result, they do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Lee teaches a flame retardant and self-extinguishing composition comprising a flame retardant, and a phosphoric acid ester type anionic surfactant (abstract, claim 1), wherein the flame retardant comprises a phosphorus-based flame retardant such as melamine phosphate-based flame retardant (claim 1, [0068]). The melamine phosphate-based flame retardant in Lee reads on the claimed phosphate product. The phosphoric acid ester type anionic surfactant in Lee reads on the claimed phosphoric ester additive.
Lee also teaches that the phosphoric acid ester type anionic surfactant functions to achieve excellent strength, shock absorption, and resilience, as well as excellent flame retardancy and self-extinguishing properties ([0104]).
Lee does not teach the claimed agent at once under the meaning of anticipation.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the flame retardant composition comprising a flame retardant comprising a phosphorus-based flame retardant such as melamine phosphate-based flame retardant, and a phosphoric acid ester type anionic surfactant as taught by Lee, in order to make the composition having good flame retardancy and self-extinguishing property, and also having high strength and good shock absorption performance with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 2, Lee teaches that the phosphoric acid ester type anionic surfactant can be an alkyl (C8 to 12) phosphate ester ([0105]), which reads on the claimed additive represented by the formula, wherein R is octyl.
3. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20230078842 A) as applied to claims 1 and 2 above, and further in view of Harada (JP 2013096021 A, hereinafter Harada).
The disclosure of Lee is relied upon as set forth above.
Regarding claim 3, Lee teaches that the phosphoric acid ester type anionic surfactant can be a polyoxyethylene alkyl (C12 to 18) ether phosphate ester ([0105]).
Lee also teaches that the phosphoric acid ester type anionic surfactant functions dispersion, and has excellent flame retardancy and self-extinguishing property by including phosphate ester ([0104]).
Lee does not teach how many molar number of EO in the polyoxyethylene alkyl (C12 to 18) ether phosphate ester surfactant.
However, Harada teaches a flame retardant agent comprising an aromatic phosphorus-based flame retardant, wherein the aromatic phosphorus-based flame retardant is dispersed in water by using a surfactant (claim 1, [0050]). Thus, the flame retardant agent of Harada comprises an aromatic phosphorus-based flame retardant and a surfactant.
Harada also teaches that the surfactant can be a higher alcohol phosphate ester, such as tridecyl polyoxyethylene ether phosphate (EO addition molar number 4) ([0090], [0105]), which reads on the claimed phosphoric ester additive, and also reads on the claimed additive represented by the formula, wherein R1O(CH2CH2O)n is tridecyl 3 to 15 EO.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the tridecyl polyoxyethylene ether phosphate (EO addition molar number 4) surfactant as taught by Harada as the polyoxyethylene alkyl (C12 to 18) ether phosphate ester surfactant in Lee, in order to function dispersion, and have good flame retardancy and self-extinguishing property by including phosphate ester with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
4. Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Harada (JP 2013096021 A, hereinafter Harada).
Regarding claims 1 and 3, the limitation “Oxygen encapsulating” is an intended use/result, the limitation “resulting in a synergistic effect on fire suppression” is an intended result, they do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Harada teaches a flame retardant agent comprising an aromatic phosphorus-based flame retardant, wherein the aromatic phosphorus-based flame retardant is dispersed in water by using a surfactant (claim 1, [0050]). Thus, the flame retardant agent of Harada comprises an aromatic phosphorus-based flame retardant and a surfactant.
Harada also teaches that the aromatic phosphorus-based flame retardant can be a monophosphate represented by the following formula (II):
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Wherein Ar1, Ar2, and Ar3 represent the same aryl group (claim 1), which reads on the claimed phosphate product.
Harada also teaches that the surfactant can be a higher alcohol phosphate ester, such as tridecyl polyoxyethylene ether phosphate (EO addition molar number 4) ([0090], [0105]), which reads on the claimed phosphoric ester additive, and also reads on the claimed additive represented by the formula, wherein R1O(CH2CH2O)n is tridecyl 3 to 15 EO.
Harada does not teach the claimed agent at once under the meaning of anticipation.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the flame retardant agent comprising an aromatic phosphorus-based flame retardant such as a monophosphate represented by the formula (II), and a surfactant such as tridecyl polyoxyethylene ether phosphate (EO addition molar number 4) as taught by Harada, in order to disperse the flame retardant in water with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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