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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-11 in the reply filed on 7/7/2026 is acknowledged.
Applicants’ election of Group I Species Lithium Secondary Battery in the reply filed on 7/7/2026 is acknowledged. Because applicants did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/30/2026 9/6/2024 3/13/2024 have been considered by the examiner.
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 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 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 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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 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.
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.
INTRODUCTION/CLAIM INTERPRETATION
The following claim interpretation and introduction is expressly incorporated into each and every rejection below as though fully set forth therein.
The below cited prior art discloses ranges which overlap and/or encompass the instantly claimed ranges as to amount, ratio and size etc. As such a prima facie showing of obviousness of said ranges and/or ratios is established. See MPEP 2144.05(I): "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)" Further the examiner notes that [g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The prior art teaches the claimed composition and stated species as below set forth. Since the prior art teaches the claimed chemicals and species thereof, they will necessarily possess the claimed functionality. For example, a fatty acid while recited in prior art to act in one function will also function as the claimed dispersant. Similarly, a chemical which is basic but recited as another function (i.e. buffer, etc.) in the prior art still maintains its functionality as a basic chemical. It is known by those of ordinary skill in the art at the time of filing the invention that chemicals are multi-functional. The intended use as a dispersant does not distinguish the claimed species taught by the prior art where it may be used in another function. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
35 USC 102/ Han et al
Claim(s) 1, 2, 4, 5, 7 and 9 is/are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Han et al EP 3883010 A1
Regarding Claims 1, 2, 4, 5, 7 and 9
Han et al EP 3883010 A1 discloses a coating for a secondary battery comprising a metal hydroxide and a coupling agent such as a silicate-based coupling agent (Abstract) including magnesium hydroxide [0016] (including lithium-ion secondary batteries [0023-0025])
Inorganic particles of magnesium hydroxide have D50 20 nm to 10 microns or 100 nm to 2 microns [0032-0034](overlapping the range of claim 3) for flame retardance [0030]
Comprising a dispersant [0019] in an amount 0.2 pbw to 10 pbw based on 100 pbw of the inorganic material [0044](overlapping the ratio of claim 6)
The dispersant includes a polyamine, an oil soluble amine, a fatty acid, a sorbitan fatty acid ester [0020] (meeting claim 1 for dispersant claim 4 for carboxyl group and claim 5 for fatty acid)
The coating includes solvents such as water [0046] (meeting solvent and water of claims 1 and 7)
In addition to the metal hydroxide the coating may comprise a metal oxide including calcium oxide [0049-0050]
The composition comprises a dispersant such as an oil soluble amine compound and an oil soluble polyamine [p0020 Meeting the limitations of claim 9 for a basic additive)
35 USC 103/ Han et al
Claim(s) 3, 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han et al EP 3883010 A as applied to claims 1, 2, 4, 5, 7 and 9
Han discloses the limitations above set forth.
Further Regarding Claim 3: Inorganic particles of magnesium hydroxide have D50 20 nm to 10 microns or 100 nm to 2 microns [0032-0034](overlapping the range of claim 3) for flame retardance [0030]
Further Regarding Claims 6 and 8: Han discloses the composition comprising a dispersant [0019] in an amount 0.2 pbw to 10 pbw based on 100 pbw of the inorganic material [0044](overlapping the ratio of claim 6)
The inorganic material includes magnesium hydroxide [0031-0032] is I an amount of 50 pbw to 95 pbw of the total weight of the solid content of the coating layer [0035] (overlapping the claimed ratio of claim 6)
The coupling agent is 0.5 to 30 pbw based on 100 pbw of the inorganic material [0042]
Solid content in the slurry maybe16 wt.% [0057] (rendering obvious the instantly claimed range of claim 8 esp. where the amount of other required solids are also considered.)
35 USC 103/ Han et al in view of McLaughlin
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han et al EP 3883010 A as applied to claims 1, 2, 3, 4, 5, 6, 7, 8 and 9 further in view of McLaughlin et al (US 5,948,323)
Further Regarding Claim 10:
Han discloses the limitations above set forth.
Han while teaching a coating comprising a flame retardant of magnesium hydroxide [0013] which improves flame retardancy [0030] does not teach the composition comprising magnesium carbonate.
McLaughlin et al (US 5,948,323) discloses flame retardant particles dispersed in water (Abstract) including magnesium hydroxide and hydrated magnesium carbonate (meeting claims 9-10)and phosphates such as melamine pyrophosphate, melamine etc. (Ci2 L7-30) The flame retardant is for use in coatings (Abstract)
The composition comprises finely divided particles which provide flame retardant and smoke suppressant properties (Claim 1 reference) The particles have an average particle size of less than 0.5 microns and at least 99.9 % of the particles have sizes less than 1 micron (C2 L5-65) (overlapping the range of claim 3)
The composition comprises water (C 2 L65-68) (meeting claim 1 and 7)
The composition comprises a dispersant (C5 L7-20) including wetting agents commercially available, anionic, cationic amphoteric and nonionic (C5 L20-35) such as Disperse-Ayd W-22 a polyacrylate copolymer (i.e. a carboxyl group)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add magnesium carbonate as taught by McLaughlin to the composition of Han to impart additional flame retardancy and also to improve smoke suppression properties in the composition of Han with a reasonable expectation of success.
Both magnesium hydroxide and magnesium carbonate are used for fire retardancy, as such combining them would be obvious to try by one of ordinary skill in the art at the time of filing the invention. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted)
35 USC 102/ Wolfovich
Claim(s) 1, 2, 4 and 7 is/are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Wolfovich Swissa lison et al (WO 2022034585A1) (published 2/17/2022)(instant effective filing date 3/14/2023)
Regarding Claims 1, 2, 4, 7 and 9:
Wolfovich Swissa lison et al (WO 2022034585A1) (published 2/17/2022) discloses a flame-retardant coating composition (meeting the limitation for a coating composition) in the form of an aqueous dispersion (meeting the limitation for an aqueous solvent of claim 1 and water of claim 7) (see claim 1 reference)
Comprising a dispersant at a concentration of 0.1 to 3 wt.% (P14 last par)(see claim 11 reference) the dispersant includes a polyacrylate (see claim 12 reference meeting the limitation for containing one or more carboxyl groups of claim 4 of instant claims)
Comprising magnesium hydroxide (claim 6 reference meeting claim 1 for a flame retardant and claim 2 for the species of claim retardant) the magnesium hydroxide is in the form of particles (Abstract) and claim 1 reference) having a particle size distribution of d50 less than or equal to 3 microns and d90 less than or equal to 6 pm (see claim 20 of reference) (overlapping the ant of claim 3)
The flame retardant includes magnesium hydroxide , brominated polymeric flame-retardant powder in water-based binder dispersion (See claim 17 of reference)
The magnesium hydroxide in an amount of 2 to 10 wt.% (see claim 9 of reference)
The composition comprises water in amounts such as 10-50 wt.% (see claims 7-9 of reference) (meeting the limitation for an aqueous solvent of claim 1 and 7)
The composition further comprises additives such as dispersants, wetting agents, agents, defoamers, substrate wetting agents and rheology modifiers (see claim 10 reference) as well as preservatives, stabilizers, pH buffers, curing agents, sequestering agents, suspending agents, detergents dyes and pigments (P17 L1-3 meeting and rendering obvious a basic additive of claim 9) defoamers include silicone containing defoamers and long chain decyne diols (rendering obvious a basic additive)
The composition comprises rheology additive of 0.1 to 3 wt.% each including polymer modified clays and thickeners (P16 last par) and coalescing agents including propylene glycol and water-soluble alkyl ethers of propylene glycols etc. (P16 L3-12 meeting the limitation for a basic additive of claim 9) the composition comprises wetting agents such as glycol and/or ether solvents in a water-based dispersion (P16)
35 USC 103/ Wolfovich
Claim(s) 3, 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wolfovich Swissa lison et al (WO 2022034585A1) (published 2/17/2022)(instant effective filing date 3/14/2023) as applied to claims 1, 2, 4, 7 and 9 above.
Regarding Claims 3, 6 and 8:
Wolfovich discloses the limitations above set forth. Wolfovich discloses Comprising a dispersant at a concentration of 0.1 to 3 wt.% (P14 last par)(see claim 11 reference) the dispersant includes a polyacrylate (see claim 12 reference meting the limitation for containing one or more carboxyl groups of claim 4 of instant claims)
Comprising magnesium hydroxide (claim 6 reference) the magnesium hydroxide is in the form of particles (Abstract) and claim 1 reference) having a particle size distribution of d50 less than or equal to 3 microns and d90 less than or equal to 6 pm (see claim 20 of reference) (overlapping the range of claim 3)
The flame retardant includes magnesium hydroxide , brominated polymeric flame-retardant powder in water-based binder dispersion (See claim 17 of reference)
The magnesium hydroxide in an amount of 2 to 10 wt.% (see claim 9 of reference)
The composition comprises water in amounts such as 10-50 wt.% (see claims 7-9 of reference) (meeting the limitation for an aqueous solvent of claim 1 and 7) (where the magnesium hydroxide particles are overlapping/within the range of solids of claim 8)
(overlapping the ratio of claim 6 dispersant 0.1 – 3 wt. % : flame retardant 2 – 10 wt.% such as when the dispersant is 1 % and the magnesium hydroxide is 2 %)
The composition further comprises additives such as dispersants, wetting agents, agents, defoamers, substrate wetting agents and rheology modifiers (see claim 10 reference) as well as preservatives, stabilizers, pH buffers, curing agents, sequestering agents, suspending agents, detergents dyes and pigments (P17 L1-3 meeting and rendering obvious a basic additive) defoamers include silicone containing defoamers and long chain decyne diols (rendering obvious a basic additive)
The composition may comprise additional additives such as a rheology additive of 0.1 to 3 wt.% each including polymer modified clays and thickeners (P16 last par) and coalescing agents including propylene glycol and water-soluble alkyl ethers of propylene glycols etc. (P16 L3-12) the composition comprises wetting agents such as glycol and or ether solvents in a water-based dispersion (P16)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action for prior art comprising the claimed flame-retardant water etc. for example:
Martinez US 20120312190 discloses a flame retarding additive incorporated into coatings (See claim 1 reference) comprising a magnesium hydroxide with an average particle size of 1 nanometer to 10 microns the composition is in water solvents (reference claim 26 and Abstract) in an amount of 5 to 99 wt. % (see reference claim 27) and a dispersant in an amount of 0.5 to 10 wt.% (see claim 28 of reference)
The dispersants include salts of poly carboxylic acids, (Table 1) meeting the limitation for one or more carboxyl groups of claim 4)
The composition comprises hydro carbonate (Table 2)
Martinez US 20120312190 discloses a flame retarding additive incorporated into coatings (See claim 1 reference) comprising a magnesium hydroxide with an average particle size of 1 nanometer to 10 microns the composition is in water solvents (reference claim 26 and Abstract) in an amount of 5 to 99 wt. % (see reference claim 27) and a dispersant in an amount of 0.5 to 10 wt.% (see claim 28 of reference)
Kobayashi et al (US 5,543,444) discloses a phosphorus flame retarding comprising fine phosphorus powder having particle size of 10 microns or smaller where 80 % wt. is smaller than 20 microns and having an average particle size of 15 microns or smaller and particles of 35 microns or smaller are 80 wt.% and a dispersant (Abstract)
The dispersant includes various surfactants, inorganic ammonium salts and organic compounds with an amino group (C L60-65) and other examples which enhance the dispersibility of the phosphorus articles and inhibit agglomeration (C3 L1-5)
The composition comprising inorganic compounds such as aluminum hydroxide and magnesium hydroxide in an aqueous solution. The phosphorus is 10-100 pbw per 100 pbw water. The water is 5-30 wt.% and the hydroxide is 1 to 30 pbw per 100 pbw of the phosphorus (C3 L25-45)
The composition comprises a filler such as aluminum hydroxide and magnesium hydroxide at 1 to 35 pbw per 100 pbw of the phosphorus and improves mechanical strength (C4 L7-18)
The composition further comprises inorganic compounds such as magnesium carbonate (C 4 L48-67) (meeting claims 9-10)
KR 20160129567A (cited on IDS) discloses a coating for electrochemical devices comprising a flame-retardant coating layer (Abstract)
The flame retardant includes flame retardant particles, inorganic particles a binder polymer and a solvent (64) the flame-retardant particles include aluminum and magnesium in the form of aluminum hydroxide and magnesium hydroxide and boehmite (65-66)and combinations thereof (83)(112)
The particles of the flame retardant are in the range of 0.001 to 10 microns (113)
The binder includes poly butyl acrylate polyvinyl acetate etc. (67)
The composition comprises a plasticizer including fatty acids with 10-20 carbons (72) (meeting the limitations for a dispersant of claims 1, 4, 5)
The composition comprises a solvent of water (116)
The composition is dispersed (11) and solvents aid in the infirmity of the dispersion such as acetone, water etc. (116)
Miyamoto et al (US 2006/0293415) discloses a flame-retardant particle composition comprising an organic compound or polysilicone and a metal hydrate with an average particle diameter of 1 to 50 microns in an amount of 50-150 pbw per 100 pbw of the resin [0011]-[0012] (Abstract) the metal hydrate include Mg (i.e. magnesium hydroxide) (Abstract) (see also [0027])
The composition comprises polyamino acid salts [0017]
The composition is in an aqueous solution and includes a dispersant [0017] the liquid incudes water [0016] The composition comprises an organic compound with a binding group including a carboxylic acid and an amino group [0035]
The composition comprises organic compounds with higher fatty acids [0039] [0066]
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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