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 .
Response to Preliminary Amendment
The preliminary amendment submitted on 15 November 2023 has been entered. After entry of the amendment claims 1-18 are currently pending in the application.
Claim Objections
Claims 1, 3, 6-8, and 11-12 are objected to because of the following informalities:
Applicant needs to remove the commas from the numerical expressions as commas are not conventional US terminology. For example, in claim 1, “20,00” should be “20.00”. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 13-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims directed to “Use of” are not directed to one of the four categories of invention.
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 9 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 9 is confusing as it recites “boric acid and borax pentahydrate” however claim 7, does not recite either of these materials as being an example of the first fire retardant. Clarification is requested.
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 (or as subject to pre-AIA 35 U.S.C. 102) 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)(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.
Claims 1-3, and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kukkonen et al (US Patent Publication No. US 2020/039106 A1).
The reference teaches, in paragraphs [0170]-[0174], Solution 6 (solution according to invention) comprised, mixed together, the following components:
77.52 wt-% Cublen K 3543 (an ammonium salt of HEDP acid, pH=7.0);
[0172] 18.60 wt-% HEDP acid (60 wt-% solution); and
[0173] 3.88 wt-% monoethanolamine.
The instant claims are met by the reference.
As for claim 1, the reference teaches monoethanolamine and Cublen K 3543 which meets the fire retardant. The amount of the fire retardant falls within the claimed range as well as the weight ratio.
As for claim 2, the Cublen K 3543 is a phosphorus and ammonium based compound.
As for claim 3, the amount of the monoethanolamine falls within the claimed range.
As for claim 14, paragraph [0106] teaches the application by pressure impregnation and paragraph [0108] teaches immersion impregnation.
As for claim 15, the reference teaches, in paragraph [0110], that the composition may be sprayed or rolled on and, in paragraph [0112], by painting and these methods would result in a coating be applied.
As for claim 16, paragraph [0112], teaches application by spraying.
As for claim 17, a natural fiber product is taught by the reference.
As for claim 18, paragraph [0125], teaches various products such as plywood, oriented strand boards, laminated veneer lumber, etc.
Claims 1-2, 4-5, 11 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PCT International Publication No. WO 91/00327 A1.
The reference teaches, in Formulation 1 of Table , a composition comprising:
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The instant claims are met by the reference.
As for claim 1, the reference teaches a fire retardant comprising monoethanolamine and as fire retardants: H3BO3 (boric acid), ammonium hydroxide and dicyandiamide. The amount of fire retardants fall within the claimed range. The weight ratio of monoethanolamine and the fire retardant falls within the claimed ratio range.
As for claim 2, the reference teaches boric acid which meets the boron-based compound, ammonium hydroxide which meets the ammonium compound.
As for claim 4, the reference teaches boric acid.
As for claim 5, the weight ratio of monoethanolamine and the first fire retardant falls within the claimed ratio range.
As for claim 11, the reference teaches boric acid.
As for claim 14, claims 23 and 26 of the reference teaches impregnation. See also the last paragraph of page 21 which teaches vacuum or vacuum pressure impregnation.
As for claim 15, the treating of the wood with the fire retardant can be considered to be a coating.
As for claim 16, the last paragraph of page 21 teaches dipping.
As for claim 17, a wood product treated with the fire retardant is taught, see for example, claims 23+.
As for claim 18, page 27, line 13, teaches plywood.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by China Patent Specification No. CN 104924390 A.
The reference teaches, on page 1, paragraphs 3 and 5 of the Summary of the Invention and claim 1, a wood flame retardant consisting of the following parts by weight: 15-25 parts of ammonium polyphosphate, 10-15 parts of diammonium hydrogen phosphate, 5-10 parts of magnesium hydroxide, 5-10 parts of aluminum hydroxide, 15-30 parts of silica sol, 3-10 parts of carbonate, 2-5 parts of surfactant, and 15-25 parts of reinforcing agent. The surfactant is the surfactant is selected from at least one of monoethanolamine, diethanolamine, sodium dodecylsulfonate, and fatty alcohol polyoxyethylene ether.
The instant claims are met by the reference.
As for claim 1, the ammonium polyphosphate, diammonium hydrogen phosphate, magnesium hydroxide and aluminum hydroxide meets the fire retardant component. The surfactant may be monoethanolamine. The amount of the fire retardant falls within the claimed range. The weight ratio of monoethanolamine and the fire retardants falls within the claimed ratio range.
As for claim 2, the reference teaches phosphorus-based compounds, ammonium-based compounds and mineral hydroxides.
As for claim 3, the amount of monoethanolamine falls within the claimed range.
As for claim 4, the reference teaches aluminum hydroxide (also known as aluminum trihydrate) and ammonium polyphosphate.
As for claim 5, the weight ratio of monoethanolamine and the first fire retardants falls within the claimed ratio range.
As for claim 6, the amount of the first fire retardants fall within the claimed range.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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 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 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over China Patent Specification No. CN 104924390 A.
The reference was discussed previously, above.
The instant claims are obvious over the reference.
As for claim 7, the reference teaches ammonium polyphosphate in an amount that overlaps the claimed range of amounts and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 12, it is believed that the composition has a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious. This is based on the fact that some of the listed components are solid materials.
Claims 1-13 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over PCT International Publication No. WO 2018/122406 A.
The reference teaches, in claim 1, a fire retardant composition for use in wood composite panels, whereby said composition comprises
- at least one fire retardant agent chosen from the group of ammonium
(poly)phosphates such as monoammonium dihydrogen phosphate (MAP), diammonium hydrogen phosphate (OAP, both technical and fertilizer grade) ammonium polyphosphate, melamine phosphate or melamine polyphosphate; ammonium sulfate; ammonium chloride; ammonium sulfamate; guanidine phosphate; guanidine hydrogen phosphate; guanidine sulfamate; guanidine carbonate; methylene urea, urea phosphate and alkaline earth phosphates or any mixture thereof, whereby the total concentration of said fire retardant agent in the composition is between 25 and 100 % by dry weight of said composition,
- optionally at least one smoke suppressing agent, whereby the total concentration of smoke suppressing agents is between 0 and 25 % by dry weight of said composition; and
- a pH regulating compound.
The smoke suppressing agent, when present, is chosen from the group of borate minerals, boric acid or a salt thereof such as zinc borate, borax (decahydrate or pentahydrate), disodium octaborate (anhydrous or tetrahydrate); calcium or magnesium phosphates (e.g. monocalcium phosphate, dicalcium phosphate), magnesium ammonium phosphate (anhydrous or hydrate) and magnesium hydroxide or a mineral thereof such as brucite; or any mixture thereof (see page 7, lines 23-29).
The pH regulating compound (see claim 15) is chosen from the group of monoammonium dihydrogen or diammonium hydrogen phosphate (both technical and fertilizer grade), guanidine phosphate, guanidine hydrogen phosphate, guanidine carbonate, ammonium or aluminum sulfate, magnesium phosphate, magnesium ammonium phosphate, monoethanolamine, phosphoric acid, sulfamic acid, magnesium phosphate, mono- or dicalcium phosphate, mono-, di-, trialkali metal phosphates, ammonia or an ammonia mania solution, melamine or any mixture thereof. The amount of the pH regulating compound is between 2 and 60 wt% (see claim 17).
The instant claims are obvious over the reference.
As for claim 1, the reference teaches many different fire retardants agents including ammonium polyphosphate, guanidine phosphate, etc. The pH regulating compound may be monoethanolamine and the weight ratio of the monoethanolamine and fire retardant overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, the reference teaches phosphorus-based compounds, guanidine-based compounds, and ammonium-based compounds.
As for claim 3, the amount of the monoethanolamine overlaps the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 4, the reference teaches, at least, ammonium polyphosphate, ammonium sulfate, guanidine phosphate, and urea phosphate.
As for claim 5, the ratio of the monoethanolamine to the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 6, the amount of the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the reference teaches ammonium polyphosphate and urea phosphate.
As for claim 8, the reference teaches, in claim 2, that the fire retardant composition can comprise an intumescent composition. Claim 3 recites that the total concentration of the fire retardant agent is between 25 and 100% dry weight of the composition. Claim 4 recites said intumescent formulation comprises a mixture of one or more acid components, one or more spumific agents, a pH regulating compound and optionally one or more carbonific components, a binding component and/ or an ablative acting fire retarding component. Claim 6 recites that said acid components are chosen from the group of phosphoric acid, sulfuric acid, boric acid, monoammonium dihydrogen phosphate, diammonium hydrogen phosphate, ammonium polyphosphate, ammonium sulfate, ammonium halides, urea phosphate, guanyl urea phosphate, guanidine carbonate, melamine phosphate, melamine polyphosphate, melamine cyanurate, pentaerythritol phosphate, guanidine phosphate and other amine and amide phosphates. The amount of said acid components ranges from between 10.0 and 95.0% by dry weight of the formulation. Claim 7, recites that the spumific agents are chosen from the group of melamine, melamine cyanurate, melamine phosphate, melamine polyphosphate and other melamine-based compounds, guanidine phosphate, guanidine sulfate, guanidine carbonate and other guanidine salts. Based on what is disclosed in these claims, claim 8 is rendered obvious as the reference suggests a first fire retardant such as ammonium polyphosphate in combination with another fire retardant such as boric acid. The amounts of the components overlap the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 9, the reference teaches that a mixture of boric acid and borax pentahydrate can be utilized as the smoke suppressing agent. While the amounts of each of them is not disclosed it is within the level of ordinary skill in the art to determine the amount of the mixture to provide the desired smoke suppression effect without producing any unexpected results absent evidence to the contrary. The smoke suppression is a results effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As for claim 10, the reference suggests a composition that can comprises borax pentahydrate as the smoke suppressing agent in combination with another fire retardant such as diammonium phosphate or monoammonium phosphate.
As for claim 11, the reference teaches boric acid.
As for claim 12, the composition has a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, the reference teaches, on page 13, lines 27+, that the retardant can be added to the wood chips and resin material used to make a wood panel.
As for claim 15, this is rendered obvious by claims 22-23 of the reference, as the prior art teaches applying the composition by spraying to the wood panel and this would result in the composition being applied as a coating.
As for claim 16, the reference teaches spraying.
As for claim 17, a fire retardant product is produced (see page 14, lines 26+).
As for claim 18, the reference teaches a medium-density fiberboard, high-density fiberboard, oriented strand board, and particle board (see page 14, lines 30-34).
Claims 1-13 and 15-18 are rejected under 35 U.S.C. 103 as being obvious over Wiehn et al (US Patent No. 11,613,703 B2).
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
The reference teaches, in claim 1, a method for flame retarding a wood composite panel comprising: applying a composition to the wood composite panel, wherein the composition comprises at least one fire retardant agent chosen from monoammonium dihydrogen phosphate (MAP); di-ammonium hydrogen phosphate (DAP); ammonium polyphosphate; melamine phosphate; melamine polyphosphate; guanidine phosphate; guanidine hydrogen phosphate; and any combinations thereof, whereby a total concentration of said fire retardant agent in the composition is 25 to 98% by dry weight of the composition; at least one smoke suppressing agent, whereby a total concentration of smoke suppressing agents is 1-20% by dry weight of said composition; and a pH regulating compound, wherein the wood composite panel comprises a resin, and the pH of a 10% aqueous solution of the composition is 4.2-5.2 and the resin is methylene diphenyl diisocyanate (MDI). Claim 8 teaches that said smoke suppressing agent is chosen from borate minerals, boric acid or a salt thereof, calcium or magnesium phosphates and magnesium hydroxide or a mineral thereof. Claim 10 teaches that said pH regulating compound is chosen from monoammonium dihydrogen, diammonium hydrogen phosphate, guanidine phosphate, guanidine hydrogen phosphate, guanidine carbonate, ammonium or aluminum sulfate, magnesium phosphate, magnesium ammonium phosphate, monoethanolamine, phosphoric acid, sulfamic acid, magnesium phosphate, mono- or dicalcium phosphate, mono-, di-, trialkali metal phosphates, ammonia or ammonia solution, melamine, and combinations thereof. Claim 11 teaches that the total concentration of said pH regulating compound is between 2 and 60% by dry weight of the composition.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches many different fire retardants agents including ammonium polyphosphate, guanidine phosphate, etc. The pH regulating compound may be monoethanolamine and the weight ratio of the monoethanolamine and fire retardant overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, the reference teaches phosphorus-based compounds, guanidine-based compounds, and ammonium-based compounds.
As for claim 3, the amount of the monoethanolamine overlaps the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 4, the reference teaches, at least, ammonium polyphosphate, ammonium sulfate, guanidine phosphate, and urea phosphate.
As for claim 5, the ratio of the monoethanolamine to the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 6, the amount of the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the reference teaches ammonium polyphosphate and urea phosphate.
As for claim 8, the reference teaches, in claim 2, that the fire retardant composition further comprises a mixture of one or more acid components, one or more spumific agents, and optionally one or more carbonific components, a binding component and/or an ablative acting fire retarding component. Claim 2 recites said intumescent formulation comprises a mixture of one or more acid components, one or more spumific agents, a pH regulating compound and optionally one or more carbonific components, a binding component and/ or an ablative acting fire retarding component. Claim 3 recites that said acid components are chosen from the group of phosphoric acid, sulfuric acid, boric acid, monoammonium dihydrogen phosphate, diammonium hydrogen phosphate, ammonium polyphosphate, ammonium sulfate, ammonium halides, urea phosphate, guanyl urea phosphate, guanidine carbonate, melamine phosphate, melamine polyphosphate, melamine cyanurate, pentaerythritol phosphate, guanidine phosphate and other amine and amide phosphates. The amount of said acid components ranges from between 10.0 and 95.0% by dry weight of the formulation (column 6, lines 47+). Claim 5, recites that the spumific agents are chosen from the group of melamine, melamine cyanurate, melamine phosphate, melamine polyphosphate and other melamine-based compounds, guanidine phosphate, guanidine sulfate, guanidine carbonate and other guanidine salts. Based on what is disclosed in these claims, claim 8 is rendered obvious as the reference suggests a first fire retardant such as ammonium polyphosphate in combination with another fire retardant such as boric acid. The amounts of the components overlap the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 9, the reference teaches that a mixture of boric acid and borax pentahydrate can be utilized as the smoke suppressing agent. While the amounts of each of them is not disclosed it is within the level of ordinary skill in the art to determine the amount of the mixture to provide the desired smoke suppression effect without producing any unexpected results absent evidence to the contrary. The smoke suppression is a results effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As for claim 10, the reference suggests a composition that can comprises borax pentahydrate as the smoke suppressing agent in combination with another fire retardant such as diammonium phosphate or monoammonium phosphate.
As for claim 11, the reference teaches boric acid.
As for claim 12, the composition has a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, the reference teaches, on column 9, lines 52+, and claim 16, that the retardant can be added to the wood chips and resin material used to make a wood panel.
As for claim 15, this is rendered obvious by claim 17 of the reference, as the prior art teaches applying the composition by spraying to the wood panel and this would result in the composition being applied as a coating.
As for claim 16, the reference teaches spraying.
As for claim 17, a fire retardant product is produced (see abstract and claim 18).
As for claim 18, the reference teaches a medium-density fiberboard, high-density fiberboard, oriented strand board, and particle board (see claim 19).
Claims 1-13 and 15-18 are rejected under 35 U.S.C. 103 as being obvious over Wiehn et al (US Patent No. 12,312,530 B2).
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
The reference teaches, in claim 1, a fire retardant composition for use in wood composite panels, whereby said composition is an intumescent formulation which comprises
- at least one fire retardant agent chosen from the group of ammonium
(poly)phosphates such as monoammonium dihydrogen phosphate (MAP), diammonium hydrogen phosphate (OAP, both technical and fertilizer grade) ammonium polyphosphate, melamine phosphate or melamine polyphosphate; ammonium sulfate; ammonium chloride; ammonium sulfamate; guanidine phosphate; guanidine hydrogen phosphate; guanidine sulfamate; guanidine carbonate; methylene urea, urea phosphate and alkaline earth phosphates or any mixture thereof, whereby a total concentration of said fire retardant agent in the composition is 25-98% by dry weight of said composition, one or more guanidinium-based spumific agents, optionally at least one smoke suppressing agent, whereby a total concentration of smoke suppressing agents is 0-25% by dry weight of said composition; and a pH regulating compound, characterized in that a pH of a 10% aqueous solution of said composition is 4.0-6.0, and dry weight of all components of the composition totals 100%.
The smoke suppressing agent, is chosen from borate minerals, boric acid or a salt thereof, calcium phosphate, magnesium phosphate, magnesium hydroxide or a mineral thereof, and any combination thereof. Claim 8 teaches that the pH regulating compound is chosen from the group of monoammonium dihydrogen or diammonium hydrogen phosphate (both technical and fertilizer grade), guanidine phosphate, guanidine hydrogen phosphate, guanidine carbonate, ammonium or aluminum sulfate, magnesium phosphate, magnesium ammonium phosphate, monoethanolamine, phosphoric acid, sulfamic acid, magnesium phosphate, mono- or dicalcium phosphate, mono-, di-, trialkali metal phosphates, ammonia or an ammonia mania solution, melamine or any mixture thereof. The amount of the pH regulating compound is between 2 and 60 wt% (see claim 10).
The instant claims are obvious over the reference.
As for claim 1, the reference teaches many different fire retardants agents including ammonium polyphosphate, guanidine phosphate, etc. The pH regulating compound may be monoethanolamine and the weight ratio of the monoethanolamine and fire retardant overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, the reference teaches phosphorus-based compounds, guanidine-based compounds, and ammonium-based compounds.
As for claim 3, the amount of the monoethanolamine overlaps the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 4, the reference teaches, at least, ammonium polyphosphate, ammonium sulfate, guanidine phosphate, and urea phosphate.
As for claim 5, the ratio of the monoethanolamine to the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 6, the amount of the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the reference teaches ammonium polyphosphate and urea phosphate.
As for claim 8, the reference teaches, in claim 4, that said intumescent formulation comprises a mixture of one or more acid components, one or more spumific agents, a pH regulating compound and optionally one or more carbonific components, a binding component and/ or an ablative acting fire retarding component. Claim 4 recites that said acid components are chosen from the group of phosphoric acid, sulfuric acid, boric acid, monoammonium dihydrogen phosphate, diammonium hydrogen phosphate, ammonium polyphosphate, ammonium sulfate, ammonium halides, urea phosphate, guanyl urea phosphate, guanidine carbonate, melamine phosphate, melamine polyphosphate, melamine cyanurate, pentaerythritol phosphate, guanidine phosphate and other amine and amide phosphates. The amount of said acid components ranges from between 10.0 and 95.0% by dry weight of the formulation (claim 3). Claim 11, recites that the spumific agents are chosen from the group of chosen from guanidine phosphate, guanidine sulfate, guanidine carbonate, and any combination thereof. Based on what is disclosed in these claims, claim 8 is rendered obvious as the reference suggests a first fire retardant such as ammonium polyphosphate in combination with another fire retardant such as boric acid. The amounts of the components overlap the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 9, the reference teaches that a mixture of boric acid and borax pentahydrate can be utilized as the smoke suppressing agent. While the amounts of each of them is not disclosed it is within the level of ordinary skill in the art to determine the amount of the mixture to provide the desired smoke suppression effect without producing any unexpected results absent evidence to the contrary. The smoke suppression is a results effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As for claim 10, the reference suggests a composition that can comprises borax pentahydrate as the smoke suppressing agent in combination with another fire retardant such as diammonium phosphate or monoammonium phosphate.
As for claim 11, the reference teaches boric acid.
As for claim 12, the composition has a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, the reference teaches, in claim 16, that the retardant can be added to the cellulose material and resin material and used to make a wood panel.
As for claim 15, this is rendered obvious by claims 19 and 22 of the reference, as the prior art teaches applying the composition by spraying or applying to the wood panel and this would result in the composition being applied as a coating.
As for claim 16, the reference teaches spraying.
As for claim 17, a fire retardant product is produced (see claim 20).
As for claim 18, the reference teaches a medium-density fiberboard, high-density fiberboard, oriented strand board, and particle board (see claim 21).
Claims 1-13 and 15-18 are rejected under 35 U.S.C. 103 as being obvious over Wiehn et al (US Patent No. 12,467,000 B2).
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
The reference teaches, in claim 1, a fire retardant composition disposed on a wood composite panel comprising a phenol-formaldehyde resin, whereby said composition is an intumescent formulation comprising: at least one fire retardant agent chosen from monoammonium dihydrogen phosphate (MAP); di-ammonium hydrogen phosphate (DAP); ammonium polyphosphate; melamine phosphate; melamine polyphosphate; ammonium sulfate; ammonium chloride; ammonium sulfamate; guanidine phosphate; guanidine hydrogen phosphate; guanidine sulfamate; methylene urea, urea phosphate; alkaline earth phosphates; and any combinations thereof, whereby a total concentration of said fire retardant agent in the composition is at least 25-98% by dry weight of said composition, one or more guanidinium-based spumific agents, optionally at least one smoke suppressing agent, whereby a total concentration of smoke suppressing agents is 0-25% by dry weight of said composition; and a pH regulating compound, characterized in that a pH of a 10% aqueous solution of said composition is 6.0-8.0, and dry weight of all components of the composition totals 100%.
The smoke suppressing agent, is chosen from borate minerals, boric acid or a salt thereof, calcium phosphate, magnesium phosphate, magnesium hydroxide or a mineral thereof, and any combination thereof. Claim 3 teaches that the pH regulating compound is chosen from the group of monoammonium dihydrogen or diammonium hydrogen phosphate (both technical and fertilizer grade), guanidine phosphate, guanidine hydrogen phosphate, guanidine carbonate, ammonium or aluminum sulfate, magnesium phosphate, magnesium ammonium phosphate, monoethanolamine, phosphoric acid, sulfamic acid, magnesium phosphate, mono- or dicalcium phosphate, mono-, di-, trialkali metal phosphates, ammonia or an ammonia mania solution, melamine or any mixture thereof. The amount of the pH regulating compound is between 2 and 60 wt% (see claim 5).
The instant claims are obvious over the reference.
As for claim 1, the reference teaches many different fire retardants agents including ammonium polyphosphate, guanidine phosphate, etc. The pH regulating compound may be monoethanolamine and the weight ratio of the monoethanolamine and fire retardant overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, the reference teaches phosphorus-based compounds, guanidine-based compounds, and ammonium-based compounds.
As for claim 3, the amount of the monoethanolamine overlaps the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 4, the reference teaches, at least, ammonium polyphosphate, ammonium sulfate, guanidine phosphate, and urea phosphate.
As for claim 5, the ratio of the monoethanolamine to the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 6, the amount of the first retardant overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the reference teaches ammonium polyphosphate and urea phosphate.
As for claim 8, the reference teaches, in claim 2, that said intumescent formulation comprises a mixture of one or more acid components, one or more spumific agents, a pH regulating compound and optionally one or more carbonific components, a binding component and/ or an ablative acting fire retarding component. Claim 7 recites that said acid components are chosen from the group of phosphoric acid, sulfuric acid, boric acid, monoammonium dihydrogen phosphate, diammonium hydrogen phosphate, ammonium polyphosphate, ammonium sulfate, ammonium halides, urea phosphate, guanyl urea phosphate, guanidine carbonate, melamine phosphate, melamine polyphosphate, melamine cyanurate, pentaerythritol phosphate, guanidine phosphate and other amine and amide phosphates. The amount of said acid components ranges from between 10.0 and 95.0% by dry weight of the formulation (claim 6). Claim 9, recites that the spumific agents are chosen from the group of chosen from guanidine phosphate, guanidine sulfate, guanidine carbonate, and any combination thereof. Based on what is disclosed in these claims, claim 8 is rendered obvious as the reference suggests a first fire retardant such as ammonium polyphosphate in combination with another fire retardant such as boric acid. The amounts of the components overlap the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 9, the reference teaches that a mixture of boric acid and borax pentahydrate can be utilized as the smoke suppressing agent. While the amounts of each of them is not disclosed it is within the level of ordinary skill in the art to determine the amount of the mixture to provide the desired smoke suppression effect without producing any unexpected results absent evidence to the contrary. The smoke suppression is a results effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Further, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As for claim 10, the reference suggests a composition that can comprises borax pentahydrate as the smoke suppressing agent in combination with another fire retardant such as diammonium phosphate or monoammonium phosphate.
As for claim 11, the reference teaches boric acid.
As for claim 12, the composition has a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, the reference teaches, in claims 17 and 18, that the retardant can be added to the cellulose material and resin material and used to make a wood panel.
As for claim 15, this is rendered obvious by claims 18 and 20 of the reference, as the prior art teaches applying the composition by spraying or applying to the wood panel and this would result in the composition being applied as a coating.
As for claim 16, the reference teaches spraying.
As for claim 17, a fire retardant product is produced (see claim 19).
As for claim 18, the reference teaches a medium-density fiberboard, high-density fiberboard, oriented strand board, and particle board (see claim 19).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8, 11-13 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,312,530 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations recited in the instant claims and therefore are rendered obvious by said claims.
As for claim 1, this claim is taught by the prior patent as the prior patent teaches some of the same fire retardants as instantly claimed and teaches a pH regulating compound which can be monoethanolamine. The amount of the retardant falls within the claimed range. Based on the amount of the monoethanolamine (pH regulating compound) and fire retardant the weight ratio overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, this claim is taught by the prior patent as some of the fire retardant agents in claim 1 of the reference are phosphorus-based compounds, ammonium-based compounds and guanidine-based compounds.
As for claim 3, the prior patent teaches, in claim 10, that the amount of the pH regulating compound ranges from 2-60% which overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 4, the prior patent teaches, in claim 1, a number of the claimed fire retardants.
As for claim 5, the weight ratio is overlapped by the amounts recited in the prior patent and overlapping ranges are deemed to be obvious.
As for claim 6, the prior art teaches an amount that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the prior patent teaches, in claim 1, a number of the claimed fire retardants.
As for claim 8, the prior art teaches that the smoke suppressing agent may be borate minerals or boric acid and this would meet the further fire retardant. As for the amount, the amount is overlapping by the range of amounts recited in the prior patent.
As for claim 11, the prior art teaches that the smoke suppressing agent may be borate minerals or boric acid and this would meet the first fire retardant. As for the amount, the amount is overlapping by the range of amounts recited in the prior patent.
As for claim 12, the prior art in the claims, teaches a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, this is rendered obvious by claim 18 of the prior patent.
As for claim 15, this is rendered obvious by claim 22, as the prior patent teaches applying the composition to the wood panel and this would result in the composition being applied as a coating.
As for claim 16, this is rendered obvious by claims 18-19 of the prior art.
As for claim 17, this is rendered obvious by claim 20 of the reference.
As for claim 18, this is rendered obvious by claim 21 of the reference.
Claims 1-8, 11-12 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,467,000 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations recited in the instant claims and therefore are rendered obvious by said claims.
As for claim 1, this claim is taught by the prior patent as the prior patent teaches some of the same fire retardants as instantly claimed and teaches a pH regulating compound which can be monoethanolamine. The amount of the retardant falls within the claimed range. Based on the amount of the monoethanolamine (pH regulating compound) and fire retardant the weight ratio overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, this claim is taught by the prior patent as some of the fire retardant agents in claim 1 of the reference are phosphorus-based compounds, ammonium-based compounds and guanidine-based compounds.
As for claim 3, the prior patent teaches, in claim 5, that the amount of the pH regulating compound ranges from 2-60% which overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 4, the prior patent teaches, in claim 1, a number of the claimed fire retardants.
As for claim 5, the weight ratio is overlapped by the amounts recited in the prior patent and overlapping ranges are deemed to be obvious.
As for claim 6, the prior art teaches an amount that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the prior patent teaches, in claim 1, a number of the claimed fire retardants.
As for claim 8, the prior art teaches that the smoke suppressing agent may be borate minerals or boric acid and this would meet the further fire retardant. As for the amount, the amount is overlapping by the range of amounts recited in the prior patent.
As for claim 11, the prior art teaches that the smoke suppressing agent may be borate minerals or boric acid and this would meet the first fire retardant. As for the amount, the amount is overlapping by the range of amounts recited in the prior patent.
As for claim 12, the prior art in the claims, teaches a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 15, this is rendered obvious by claim 18 which teaches the application of a coating.
As for claim 16, this is rendered obvious by claims 17-18 of the prior art.
As for claim 17, this is rendered obvious by claim 19 of the reference.
As for claim 18, this is rendered obvious by claim 19 of the reference.
Claims 1-8, 11-13, and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,613,703 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations recited in the instant claims and therefore are rendered obvious by said claims.
As for claim 1, this claim is taught by the prior patent as the prior patent teaches some of the same fire retardants as instantly claimed and teaches a pH regulating compound which can be monoethanolamine. The amount of the retardant falls within the claimed range. Based on the amount of the monoethanolamine (pH regulating compound) and fire retardant the weight ratio overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, this claim is taught by the prior patent as some of the fire retardant agents in claim 1 of the reference are phosphorus-based compounds, ammonium-based compounds and guanidine-based compounds.
As for claim 3, the prior patent teaches, in claim 12, that the amount of the pH regulating compound ranges from 2-60% which overlaps the claimed range and 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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 4, the prior patent teaches, in claim 1, a number of the claimed fire retardants.
As for claim 5, the weight ratio is overlapped by the amounts recited in the prior patent and overlapping ranges are deemed to be obvious.
As for claim 6, the prior art teaches an amount that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the prior patent teaches, in claim 1, a number of the claimed fire retardants.
As for claim 8, the prior art teaches that the smoke suppressing agent may be borate minerals or boric acid and this would meet the further fire retardant. As for the amount, the amount is overlapping by the range of amounts recited in the prior patent.
As for claim 11, the prior art teaches that the smoke suppressing agent may be borate minerals or boric acid and this would meet the first fire retardant. As for the amount, the amount is overlapping by the range of amounts recited in the prior patent.
As for claim 12, the prior art in the claims, teaches a dry weight that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, this is rendered obvious by claim 16 of the prior patent.
As for claim 15, this is rendered obvious by claim 16 of the prior patent, as the prior patent teaches applying the composition to the wood panel and this would result in the composition being applied as a coating.
As for claim 16, this is rendered obvious by claim 17 of the prior art.
As for claim 17, this is rendered obvious by claim 18 of the reference.
As for claim 18, this is rendered obvious by claim 19 of the reference.
Conclusion
No claims are allowed.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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November 29, 2025