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 .
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 1-10 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.
Regarding claim 1, the claim recites "the number of carbon atoms in the long-chain phosphate is 16 to 24" in line 4. It is unclear whether the recited number of carbon atoms refers to the number of carbon atoms in a single substituent group of the long-chain phosphate, or to the sum of the carbon atoms in both of the substituent groups. For the purpose of further examination, this limitation will be interpreted as the sum of the carbon atoms in both substituent groups. This is based on the instant specification stating that in Formula I the sum of the number of carbon atoms in R1 and R2 is preferably 16 to 24 (¶58 of the instant specification). The same statement is made regarding the R groups of Formula II and Formula III (¶60, 62 of the instant specification).
Regarding claim 3, this claim more specifically claims the long-chain phosphate by providing three chemical formulas. However, the formulas are not present in the claim. For the purpose of further examination, the structures for these formulas will be taken from paragraph 57 of the instant written description.
Regarding claims 2 and 4-10, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In claim 3, Formula I is a phosphate as it is a phosphorus atom bonded to four oxygen atoms. However, Formula II is a phosphite (bonded to three oxygen atoms) and Formula III is a phosphinate (bonded to two oxygen atoms and two carbon atoms). Claim 3 depends from claim 1, which requires the second component of the composition to be a "long-chain phosphate." A phosphite and a phosphinate are not the same chemically as a phosphate, even though they are all phosphorus-containing compounds. Therefore, since claim 3 broadens the scope of claim 1, it fails to further limit the claim from which it depends. For the purpose of further examination, Formula II and Formula III will be interpreted as they are defined in claim 3, that is as defining a long-chain phosphite and a long-chain phosphinate. Additionally, any of the structures belonging to any of the three formulae will be treated as meeting the limitation of “long-chain phosphate” as it is used in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claims 4-6, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 105061500) in view of Miyata et al. (US 5,151,455). For convenience, the citations below for Chen et al. are taken from an English language machine translation included herewith.
Regarding claims 1, 2, and 7-10, Chen et al. teaches a superfine particle size dialkylphosphinate having the structure of formula (I)
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wherein R1 and R2 are the same or different and are methyl, ethyl, propyl, butyl, pentyl, cyclopentyl, cyclohexyl or octyl, M is Mg, Ca, Al, Fe, or Zn (an alkyl phosphinate wherein Y is aluminum, calcium or magnesium), and m is 2 to 4 (Page 2, lines 22-29). The particle diameter of the dialkylphosphinate is from 0.1 μm to 20 μm, preferably from 1 μm to 10 μm, and more preferably from 2 μm to 6 μm (Page 2, lines 31-32), and Chen et al. expressly teaches that the flame retardant required for high-end applications such as epoxy resin electronic potting glue, FFC insulating film, and epoxy resin-based printed circuit boards is extremely fine, D(95) < 20 μm (Page 1, line 47 to Page 2, line 1).
Chen et al. teaches that the dialkylphosphinate is prepared by a process comprising a) reacting an aqueous solution of a dialkylphosphinic acid and/or an alkali metal salt of a dialkylphosphinic acid with an aqueous solution of a metal compound (a metathesis reaction), filtering, and washing to obtain a dialkylphosphinate filter cake; b) adjusting the pH of water with a pH adjusting agent and adding a modifier to formulate an aqueous solution of the modifier; and c) adding the dialkylphosphinate filter cake of step a) to the aqueous solution of the modifier of step b) and stirring (Page 2, line 46 to Page 3, line 5). The modifier is therefore mixed with the alkyl phosphinate after the filtration and washing of step a) and after the completion of the metathesis of step a). The metal compound of step a) is selected from salts including magnesium sulfate, magnesium chloride, calcium chloride and calcium acetate (Page 3, line 24). Chen et al. further teaches that the mass of the modifier in the aqueous modifier solution is from 0.1 to 5% by weight of the theoretical mass of the dialkylphosphinate (Page 3, lines 46-47). The dialkylphosphinate is accordingly present in an amount of from 95 to 99.9% by weight (calculated by Examiner; 100 - 5 = 95 and 100 - 0.1 = 99.9). Chen et al. further teaches a high polymer composition comprising the dialkylphosphinate, wherein the high polymer is one or more of an epoxy resin potting compound, an FFC insulating film, an epoxy resin-based printed circuit board PCB, a thermoplastic polyester elastomer TPEE, or a thermoplastic elastomer TPE (Page 4, lines 6-15).
Chen et al. does not teach that the modifier is a long-chain phosphate. Chen et al. teaches that the modifier is a silane coupling agent, a titanate coupling agent, an aluminate coupling agent, or calcium stearate (Page 3, lines 35-40). However, Miyata et al. teaches a flame retardant comprising 100 parts by weight of magnesium hydroxide the surface of which is treated with a phosphoric ester of the formula (I)
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wherein R represents an alkyl or alkenyl group having 10 to 30 carbon atoms, M represents an atom belonging to group 1A of the periodic table or NH4+, and n represents 1 or 2 (Col. 2, lines 11-23). Group 1A of the periodic table are the alkali metals which include sodium and potassium. Therefore, formula (I) of Miyata et al. corresponds to Formula I of claim 3 wherein x is 2, M is sodium or potassium, and R1 and R2 are both an alkyl having 10 to 12 carbon atoms. Miyata et al. teaches that the amount of the phosphoric ester, which is a surface-treating agent, is 0.1 to 10% by weight, preferably 1 to 5% by weight, based on the magnesium hydroxide (Col. 2, lines 47-49). Miyata et al. teaches that the surface treatment is carried out by preparing a suspension of the particulate flame retardant in water, warming the suspension, adding a solution of the phosphoric ester in water with stirring, and thereafter dehydrating and drying the surface-treated product (Col. 2, line 64 to Col. 3, line 12), which is the same manner of surface treatment as that taught in step c) of Chen et al. Miyata et al. further teaches that the phosphoric ester is used in combination with 0.1 to 10 parts by weight of a salt of a metal other than an alkali metal with a higher fatty acid, such as magnesium stearate, aluminum stearate, zinc stearate or calcium palmitate (Col. 4, lines 49-52). Chen et al. and Miyata et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of surface-treated particulate flame retardants for polymer compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use a phosphoric ester, as taught by Miyata et al., as the modifier applied to the dialkylphosphinate, as taught by Chen et al., and would have been motivated to do so because Miyata et al. teaches that surface treatment of a particulate flame retardant with such a phosphoric ester improves the resistance of the flame retardant to water and acids (Col. 2, lines 1-7).
Regarding claims 3 and 4, the phosphoric ester of Miyata et al. has the formula (I) as set forth above wherein R is an alkyl or alkenyl group having 10 to 30 carbon atoms, M is an atom belonging to group IA of the periodic table, and n is 1 or 2 (Col. 2, lines 11-23). This formula corresponds to Formula I of claim 3, wherein R1 and R2 are the same alkyl having 10 to 12 carbon atoms, M is sodium or potassium, and x is 2. The compound taught by R being an alkyl with 12 carbon atoms is sodium (potassium) di(dodecyloxy) phosphate, a species recited in claim 4.
Regarding claims 5 and 6, these claims further define compounds which are not required to be present in the composition, as claimed in claim 3, because the limitation is met by the presence of a compound of Formula I.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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