DETAILED ACTION
Pending Claims
Claims 30, 31, 33, and 37-53 are pending.
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 .
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.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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 30, 31, 33, and 37-53 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 claims 30, 31, 33, and 37-53, independent claim 30 is drawn to: (30) a flame retardant polymer comprising: a part A comprising an epoxide-functional material; a part B comprising a first and second esterified acid. These two co-reactive parts are potentially a precursor to a polymer; however, it is unclear how these two co-reactive parts represent a polymer (molecule). For the purpose of the prior art search, the claims have been interpreted as a two-part composition. Claims 31, 33, and 37-53 are rejected because they are dependent from claim 30.
Further regarding claims 30, 31, 33, and 37-53, independent claim 30 goes on to state the following property limitation:
wherein the polymer meets vertical burn and/or smoke density requirements (or some other requirement) as set forth in 14 C.F.R. §25.853 and 14 C.F.R. §25.856 (the United States Code of Federal Regulations for compartment interiors, including but not limited to 14 C.F.R. §25.853(a), and the referenced Appendix F and procedures referenced therein.
It is unclear if this property relates to the two (unreacted) co-reactive parts or a material formed from these two parts. It is also unclear if the language “(or some other requirement)” refers to any other requirement or another requirement within the cited code of federal regulations for compartment interiors. For the purpose of the prior art search, the claims have been interpreted as a two-part composition capable of producing a material meeting vertical burn and/or smoke density requirements as set forth in 14 C.F.R. §25.853 and 14 C.F.R. §25.856. Claims 31, 33, and 37-53 are rejected because they are dependent from claim 30.
Further regarding claim 53, claim 53 recites the limitation "the foaming" in the polymer of claim 40. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102/103
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.
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 30, 31, 33, 37-43, 47, 50, and 51 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 Langer et al. (US Pat. No. 4,613,661).
Claims 30, 31, 33, 37-43, 47, 50, and 51 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Langer et al. (US Pat. No. 4,613,661).
Regarding claims 30, 31, 37, and 47, Langer et al. disclose: (30) a two-part composition (column 2, line 58 through column 3, line 9) comprising:
a part A comprising an epoxide-functional material (column 3, lines 26-30); and
a part B comprising a first and second esterified acid (column 3, lines 21-25; column 3, line 31 through column 4, line 39: “substantial completion” and “substantial amounts of the desired monoester” would include the monoester and minor amounts of the starting diester);
(31) wherein the two-part composition is applied to a substrate for cavity filling, cavity reinforcement, acoustic modification, adhesion, or some combination thereof (column 6, lines 38-51: adhesion);
(37) wherein the two-part composition is free of any additional blowing agent (column 6, lines 29-37: reference is silent regarding “blowing agents” as additives); and
(47) wherein the two-part composition is free of polyurethane and/or isocyanate (column 6, lines 29-37: reference is silent regarding “polyurethane and/or isocyanate” materials).
Langer et al. fail to explicitly disclose that their composition is: (30) capable of producing a material meeting vertical burn and/or smoke density requirements as set forth in 14 C.F.R. §25.853 and 14 C.F.R. §25.856. However, the skilled artisan would have expected the composition of Langer et al. to be capable of producing the instantly claimed flame retardant material because Langer et al. satisfies all of the material/chemical limitations of the claimed invention. At the very least, the skilled artisan would have expected the teachings of Langer et al. to obviously embrace embodiments capable of producing the instantly claimed flame retardant material because the composition of Langer et al. satisfies all of the material/chemical limitations of the claimed invention.
Therefore if not anticipated by Langer et al., the skilled artisan would have expected the teachings of Langer et al. to obviously embrace embodiments capable of producing the instantly claimed flame retardant material because the composition of Langer et al. satisfies all of the material/chemical limitations of the claimed invention.
Regarding claim 33, Langer et al. disclose: (33) a method comprising adding the two-part composition to a material (column 6, lines 29-37). They fail to explicitly disclose that the method is: (33) in order to reduce particulated flame retardant usage in the material to attain flame retardancy performance as compared with a material without the polymer. However, it has been found that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The two-part composition used in the method of Langer et al. appears to be capable of performing the intended use because it satisfies all of the material/chemical limitations of the claimed invention.
Regarding claims 38 and 43, Langer et al. disclose: (43) wherein the epoxide-functional material is a liquid epoxy resin (column 7, lines 12-13; see also column 5, lines 9-24). Their first esterified acid (see column 3, lines 31-49) is formed from a pyrophosphate diester, which is derived from pyrophosphoric acid (see column 3, lines 11-25). Accordingly, they fail to explicitly disclose: (38) wherein the first esterified acid is formed with phosphoric acid. However, it has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113).
Regarding claim 41, Langer et al. fail to explicitly disclose: (41) wherein the first esterified reaction product has a pH of below about 3. However, the skilled artisan would have expected the ester of Langer et al. to satisfy this property because the ester of Langer et al. satisfies all of the material/chemical limitations of the instantly claimed esterified reaction product. At the very least, the skilled artisan would have expected the ester of Langer et al. to obviously embrace embodiments capable of satisfying the instantly claimed property because the ester of Langer et al. satisfies all of the material/chemical limitations of the instantly claimed esterified reaction product.
Regarding claims 39, the teachings of Langer et al. are as set forth above and incorporated herein to anticipate or obviously satisfy claim (39) – see discussion above regarding claim 38.
Regarding claim 42, the teachings of Langer et al. are as set forth above and incorporated herein to anticipate or obviously satisfy claim (42) – see discussion above regarding claim 41.
Regarding claims 40 and 50, Langer et al. disclose: (50) wherein the two-part composition is substantially free of any additional curing agents (see column 3, lines 10-30; see also column 6, lines 29-37: curing agent is added when later used to prepare the coating composition). Langer et al. fail to explicitly disclose: (40) wherein each esterified ester includes a plurality of monoesters and diesters, wherein the diesters are present in an amount of less than 25% of the amount of monoesters as measured by NMR. Rather, their monoesters are formed by a hydrolysis reaction of pyrophosphate diester to “substantial completion”, wherein “substantial amounts of the desired monoester” is generated (see column 4, lines 28-39). This implies that small amounts of the starting pyrophosphate diester remain, satisfying the instantly claimed range. At the very least, the small amounts of remaining pyrophosphate diester would have obviously satisfied the claimed range.
Regarding claim 51, Langer et al. fail to explicitly disclose: (51) wherein upon contact between part A and part B, the two-part composition achieves a relatively non-flowable state in less than 10 minutes. However, the skilled artisan would have expected the composition of Langer et al. to satisfy this property because the composition of Langer et al. satisfies all of the material/chemical limitations of the instantly claimed composition. At the very least, the skilled artisan would have expected the composition of Langer et al. to obviously embrace embodiments capable of satisfying the instantly claimed property because the composition of Langer et al. satisfies all of the material/chemical limitations of the instantly claimed composition.
Claims 30, 31, 33, 37-39, 41-44, 47, and 49 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 Akimoto et al. (JP H09-176285 A).
Regarding claims 30, 31, 37-39, 43, 44, 47, and 49, Akimoto et al. disclose: (30) a two-part composition (Abstract; paragraphs 0007-0008 & 0032-0033) comprising:
a part A comprising an epoxide-functional material (paragraphs 0027-0031); and
a part B comprising a first and second esterified acid (paragraphs 0033 & 0011-0016);
(31) wherein the two-part composition is applied to a substrate for cavity filling, cavity reinforcement, acoustic modification, adhesion, or some combination thereof (Abstract; paragraph 0006: adhesion);
(37) wherein the two-part composition is free of any additional blowing agent (paragraphs 0032 & 0036-0042: reference is silent regarding “blowing agents” as additives);
(38) wherein the first esterified acid is formed with phosphoric acid (paragraphs 0033 & 0012); (43) wherein the epoxide-functional material is a liquid epoxy resin (paragraphs 0027-0031 & 0044-0051); (44) wherein the epoxide-functional material has a functionality of greater than 2 (paragraph 0028: polyglycidyl ether of phenol-formaldehyde condensates);
(39) wherein the second esterified acid is formed with phosphoric acid (paragraphs 0033 & 0012);
(47) wherein the two-part composition is free of polyurethane and/or isocyanate (paragraphs 0032 & 0036-0042: reference is silent regarding “polyurethane and/or isocyanate” materials); and
(49) wherein the first or second esterified acid is formed from 2-Ethylhexyl Glycidyl Ether (paragraph 0015).
Akimoto et al. fail to explicitly disclose that their composition is: (30) capable of producing a material meeting vertical burn and/or smoke density requirements as set forth in 14 C.F.R. §25.853 and 14 C.F.R. §25.856. However, the skilled artisan would have expected the composition of Akimoto et al. to be capable of producing the instantly claimed flame retardant material because Akimoto et al. satisfies all of the material/chemical limitations of the claimed invention. At the very least, the skilled artisan would have expected the teachings of Akimoto et al. to obviously embrace embodiments capable of producing the instantly claimed flame retardant material because the composition of Akimoto et al. satisfies all of the material/chemical limitations of the claimed invention.
Therefore if not anticipated by Akimoto et al., the skilled artisan would have expected the teachings of Akimoto et al. to obviously embrace embodiments capable of producing the instantly claimed flame retardant material because the composition of Akimoto et al. satisfies all of the material/chemical limitations of the claimed invention.
Regarding claim 33, Akimoto et al. disclose: (33) a method comprising adding the two-part composition to a material (paragraphs 0036-0042). They fail to explicitly disclose that the method is: (33) in order to reduce particulated flame retardant usage in the material to attain flame retardancy performance as compared with a material without the polymer. However, it has been found that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The two-part composition used in the method of Akimoto et al. appears to be capable of performing the intended use because it satisfies all of the material/chemical limitations of the claimed invention.
Regarding claims 41 and 42, Akimoto et al. fail to explicitly disclose: (41 & 42) wherein the first esterified reaction product has a pH of below about 3. However, the skilled artisan would have expected the ester of Akimoto et al. to satisfy this property because the ester of Akimoto et al. satisfies all of the material/chemical limitations of the instantly claimed esterified reaction product. At the very least, the skilled artisan would have expected the ester of Akimoto et al. to obviously embrace embodiments capable of satisfied the instantly claimed property because the ester of Akimoto et al. satisfies all of the material/chemical limitations of the instantly claimed esterified reaction product.
Claim Rejections - 35 USC § 103
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Akimoto et al. (JP H09-176285 A).
Regarding claim 52, the teachings of Akimoto et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (52) wherein the viscosity of the epoxide-functional material under reaction conditions, room temperature, or both, is below about 5000 centipoise (CPs) (in accordance with ASTM D445-15). However, the various epoxy resins disclosed by Akimoto (see paragraphs 0027-0031 & 0044-0051), including low-molecular weight bisphenol-F epoxy resins, appear to obviously embrace resins capable of satisfying the instantly claimed property.
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Langer et al. (US Pat. No. 4,613,661).
Regarding claim 52, the teachings of Langer et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (52) wherein the viscosity of the epoxide-functional material under reaction conditions, room temperature, or both, is below about 5000 centipoise (CPs) (in accordance with ASTM D445-15). However, the various epoxy resins disclosed by Akimoto (see column 5, lines 9-24), including low-molecular weight diglycidyl ethers, appear to obviously embrace resins capable of satisfying the instantly claimed property.
Claims 45, 46, 48, and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Langer et al. (US Pat. No. 4,613,661) in view of Hanafin et al. (US Pat. No. 6,096,812).
Regarding claims 45 and 46, the teachings of Langer et al. are as set forth above and incorporated herein. They disclose that their composition is used to formulate an intumescent coating (see Abstract; column 6, lines 38-51). They contemplate the use of various additives (see column 6, lines 29-37). However, they fail to explicitly disclose: (45) wherein the two-part composition includes a physical and/or a chemical blowing agent so that the resulting polymer is a foam; and (46) including an inorganic compound containing one or more of calcium, silicon, sodium, or some other alkali metal or alkali earth metal.
Hanafin et al. disclose a related epoxy-based intumescent coating material (see Abstract). They demonstrate that blowing agents, including calcium carbonate, are recognized in the art as suitable additives for this type of epoxy-based intumescent coating material (see column 6, lines 42-51). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulae the overall intumescent coating of Langer et al. with the instantly claimed blowing agent because: (a) Langer et al. contemplate the use of various additives for their intumescent coating; (b) Hanafin et al. disclose a related epoxy-based intumescent coating material and demonstrate that blowing agents, including calcium carbonate, are recognized in the art as suitable additives for this type of epoxy-based intumescent coating material; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claims 48 and 53, the combined teachings of {Langer et al. and Hanafin et al.} fail to explicitly disclose: (48) an expanded foam that does not shrink by more than about 10% of its maximum displacement during or after foaming; and (53) wherein the foaming reduces the density of the polymer by at least about 30% as compared with the density in an unfoamed state. However, the skilled artisan would have expected the composition resulting from the combined teachings of {Langer et al. and Hanafin et al.} to obviously embrace embodiments capable of satisfying these properties because the composition resulting from the combined teachings of {Langer et al. and Hanafin et al.} obviously satisfies all of the material/chemical limitations of the claimed invention.
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 30, 31, 33, 37-45, 47, 48, and 50-53 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,976,160.
Claim 46 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12 of U.S. Patent No. 11,976,160 in view of Hanafin et al. (US Pat. No. 6,096,812).
Regarding 30, 31, 33, 37-45, 47, 48, and 50-53:
Claims 30, 31, 33, 38-42, 47, 51, and 52 are anticipated by or obviously embraced by patented claims 1-20.
Claim 37 is anticipated by or obviously embraced by patented claims 3 and 17.
Claims 43 and 44 are obviously embraced by patented claims 1-20.
Claims 45, 48, and 53 are anticipated by or obviously embraced by patented claims 11-12.
Claims 50 is anticipated by or obviously embraced by patented claim 6.
Regarding claim 46, Hanafin et al. disclose a related epoxy-based formulation (see Abstract). They demonstrate that calcium carbonate is recognized in the art as suitable blowing agent for epoxy-based formulations (see column 6, lines 42-51). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Claims 30, 31, 33, 38-45, 47, 48, and 50-53 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,535,698.
Claim 46 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 of U.S. Patent No. 11,535,698 in view of Hanafin et al. (US Pat. No. 6,096,812).
Regarding claims 30, 31, 33, 38-45, 47, 48, and 50-53:
Claims 30, 31, 33, 38-43, 45, 47, 48, and 50-53 are anticipated by or obviously embraced by patented claim 12.
Claim 44 is obviously embraced by patented claim 12.
Regarding claim 46, Hanafin et al. disclose a related epoxy-based intumescent coating material (see Abstract). They demonstrate that calcium carbonate is recognized in the art as suitable blowing agent for epoxy-based formulations (see column 6, lines 42-51). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Claims 30, 31, 33, 37-44, 47, and 50-52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 10,550,220.
Regarding claims 30, 31, 33, 37-44, 47, and 50-52:
Claims 30, 31, 33, 37-43, 47, and 50-52 are anticipated by or obviously embraced by the reactants used in the patented method.
Claim 44 is obviously embraced by the reactants used in the patented method.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
January 8, 2026