Claims 1-23 are pending in the application. Claims 18-23 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1-17 are rejected.
The 112, second paragraph rejection has been withdrawn in view of the present amendment and response.
Other rejections have been maintained.
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.
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.
Claims 1-10, and 12-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2016/0289453 to Cai et al. (hereinafter “Cai”).
Cai discloses an ULDC foam material having a density of 40 to 100 kg/m3 within the claimed range (abstract), and comprising cellulose fibers, a foaming agent, water and additives (example 4).
The ULDC foam material contains about 78.5-80 wt% of the cellulose fibers, and 3.5 wt% of foaming agent based on 100 wt% of the solids content (example 4). As shown in examples 2, and 4, the ULDC formulation comprises boric acid and zinc borate, respectively, and each of which is a fire-retardant material.
Alternatively, the ULDC formulation includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). In particular, the ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10). The contents of the cellulose fibers and the Perlite flame retardant are within the claimed ranges.
Cai does not explicitly disclose the ULDC foam material experiencing a fire growth rate index (FIGRA) of less than 120 W/s and a total heat release (THR) of less than 7.5 MJ in accordance with Single Burning Item method (EN 13823).
However, it appears that the ULDC foam material meets all structural limitations and chemistry required by the claim. The ULDC foam material has a density of 40 to 100 kg/m3 within the claimed range, and comprises cellulose fibers, a foaming agent, water and additives (example 4). The ULDC foam material contains about 78.5 wt% of the cellulose fibers, and 3.5 wt% of foaming agent (example 4). The additives comprise zinc borate or boric acid and each of which being the fire/smoke retardant agent (example 2 and 4). Alternatively, the ULDC formulation includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). In particular, the ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10). The contents of the cellulose fibers and the flame- retardant Perlite are within the claimed ranges.
Therefore, the examiner takes the position that the FIGRA of less than 120 W/s and the THR of less than 7.5 MJ in accordance with Single Burning Item method (EN 13823) would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claims 2-5, Cai discloses that the ULDC foam material has a density of 50 or 90 kg/m3 within the claimed range (figure 8).
As to claim 6, Cai discloses that the ULDC formulation includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). The ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10).
As to claim 7 and 8, Cai discloses that the ULDC foam material contains 3.5 wt% of foaming agent (example 4).
As to claim 9, Cai discloses that the ULDC foam material contains 0.13 wt% of foaming agent (example 11).
As to claims 10, Cai discloses that the ULDC foam material comprises zinc borate or boric acid (examples 2 and 4) and each of which corresponding to the claimed fire/smoke retardant agents. Further, the ULDC formulation includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). The ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10). The perlite reads on the claimed mineral-based flame- retardant agent.
As to claim 12, Cai discloses that the foaming agent is sodium dodecyl sulphate (SDS) (paragraph 122).
As to claim 13-16, Cai discloses that the ULDC foam material comprises a sizing agent comprising alkyl ketene dimer (AKD), and an adhesive material comprising polyvinyl alcohol (paragraph 122). The ULDC foam material comprises 1.91 wt% AKD (example 4).
As to claim 17, the ULDC foam material can be used as a building thermal and acoustic insulation material, a protective packaging material, an air filter product or a hygiene product (abstract).
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cai as applied to claim 1 above, further in view of Zheng et al. (hereinafter “Zheng”), “Improving Fire Retardancy of Cellulosic Thermal Insulating Materials by Coating with bio-based fire Retardants”, Nordic Pulp & Paper Research Journal 2019, 34(1) 96-106.
Cai discloses an ULDC foam material having a density of 40 to 100 kg/m3 within the claimed range (abstract), and comprising cellulose fibers, a foaming agent, water and additives (example 4).
The ULDC foam material contains about 78.5-80 wt% of the cellulose fibers, and 3.5 wt% of foaming agent based on 100 wt% of the solids content (example 4). As shown in examples 2, and 4, the ULDC formulation comprises boric acid and zinc borate, respectively, and each of which is a fire-retardant material.
Alternatively, the ULDC formulation includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). In particular, the ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10). The contents of the cellulose fibers and the Perlite flame retardant are within the claimed ranges.
Cai does not explicitly disclose the ULDC foam material experiencing a FIGRA of less than 120 W/s and a THR of less than 7.5 MJ in accordance with Single Burning Item method (EN 13823) (which the examiner does not agree for the reasons discussed above).
Zheng, however, discloses a composite material comprising a cellulosic thermal insulating material and a fire-retardant coating provided thereon. The cellulosic thermal insulating material is produced from recycled cotton fibers and chemithermomechanical pulp (CTMP) fibers and SDS surfactant (Methods, page 97). The fire-retardant coating comprises microfibrillated cellulose (MFC) binder in combination with fire retardant agents including sulfonated kraft lignin, nanoclay, expandable graphite and synergetic fire retardants (table 1). The fire-retardant coating comprises 20% by weight of the composite material (table 2). The composite material has a total heat release of 0.4, 4.2 and 7.0 MJ within the claimed range (table 4).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a fire-retardant coating material disclosed in Zheng on the ULDC foam material of Cai motivated by the desire to obtain the ULDC foam having a low total heat release resulting in effective flame retardancy.
The combined teachings of Cai and Zheng does not explicitly disclose the FIGRA of less than 120 W/s.
However, the combined disclosures of Cai and Zheng result in the ULDC foam meeting all structural limitations and chemistry require by the claims. The ULDC foam material has a density of 40 to 100 kg/m3 within the claimed range, and comprising cellulose fibers, a foaming agent, water and additives.
The ULDC foam material contains about 78.5-80 wt% of the cellulose fibers, and 3.5 wt% of foaming agent based on 100 wt% of the solids content. As shown in examples 2, and 4, the ULDC formulation comprises boric acid and zinc borate, respectively, and each of which is a fire-retardant material.
The ULDC formulation includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). In particular, the ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10). The contents of the cellulose fibers and the Perlite flame retardant are within the claimed ranges. The coated foam material comprises the ULDC foam and the fire-retardant coating on the foam. The fire-retardant coating comprises microfibrillated cellulose (MFC) binder in combination with fire retardant agents including sulfonated kraft lignin, nanoclay, expandable graphite and synergetic fire retardants (table 1). The coated foam material has a total heat release of 0.4, 4.2 and 7.0 MJ within the claimed range (table 4).
Therefore, the examiner takes the position that the FIGRA of less than 120 W/s would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Response to Arguments
Applicant alleges that Cai contains no fire performance data; therefore, it is improper to state the FIGRA of less than 120 W/s and the THR of less than 7.5 MJ would inherently be present.
The examiner respectfully disagrees.
As shown in figure 8, the smoke production of the ULDC foam is extremely low compared with other commercial thermal insulation products. The ULDC foam is a flame-retardant foam material. Further, a flame-retardant additive including boric acid, zinc borate and perlite is incorporated in the ULDC foam (examples 2, 4; and table 4).
Further, neither experimental data nor factual evidence has been provided to demonstrate that Cai could not achieve the FIGRA of less than 120 W/s and the THR of less than 7.5 MJ.
As previously discussed, it appears that Cai’s ULDC foam material meets all structural limitations and chemistry required by the claim. The ULDC foam material with a density of 40 to 100 kg/m3 obtained from a composition comprising cellulose fibers, a foaming agent, water and additives (example 4). The ULDC foam material contains about 78.5 wt% of the cellulose fibers, and 3.5 wt% of foaming agent (example 4). The ULDC foam material contains zinc borate or boric acid and each of which being the fire/smoke retardant agent (example 2 and 4). The ULDC formulation also includes perlite 10, perlite 30, perlite 50 and perlite 150 (paragraph 73 and table 4). The ULDC formulation contains 23 wt% of perlite and 77 wt% of cellulose fibers (table 4, ULDC-Perlite 30, ULDC-Perlite 30-CF10). The contents of the cellulose fibers and perlite flame retardant are within the claimed ranges.
Therefore, the examiner takes the position that the FIGRA of less than 120 W/s and the THR of less than 7.5 MJ in accordance with Single Burning Item method (EN 13823) would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Applicant states that the claimed FIGRA and THR values would not be present because the material differences in fire-retardant composition between Cai and the claimed invention. Applicant’s statements are not commensurate in scope with the claim because the differences have not been presently claimed.
Applicant further asserts that Cai already incorporates fire/smoke additive in its formulation. Therefore, there is no motivation to add a fire-retardant coating on the surface of the foam material.
The examiner respectfully disagrees.
Zheng discloses a composite material comprising a cellulosic thermal insulating material, and a fire-retardant coating provided thereon. The cellulosic thermal insulating material is produced from recycled cotton fibers and chemithermomechanical pulp (CTMP) fibers and SDS surfactant (Methods, page 97). The fire-retardant coating comprises microfibrillated cellulose (MFC) binder in combination with fire retardant agents including sulfonated kraft lignin, nanoclay, expandable graphite and synergetic fire retardants (table 1). The composite material has a total heat release of 0.4, 4.2 and 7.0 MJ within the claimed range (table 4).
One of ordinary skill in the art would have been motivated to provide the fire-retardant coating material disclosed in Zheng on the foam material of Cai to obtain the coated foam having a low THR value resulting in effective flame retardancy. That is a motivation to modify the references. Accordingly, a prima facie case of obviousness is said to exist.
Conclusion
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights