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 .
Information Disclosure Statement
The information disclosure statement filed on 6 March 2024 contains a typo for Foreign Patent Document #34, IDS states “2020206436”, but included document is “WO 2020/206346 A1.” The IDS also contains a duplicate citation in the U.S. Patents section (#15 and #16).
The information disclosure statement filed 6 March 2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Foreign Patent Document #7 was not provided with an English translation or an explanation of the relevance.
The information disclosure statement filed 6 March 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Foreign Patent Document #1, 3, and 15 were cited in the information disclosure statement, but no copy was provided.
Additionally, the following foreign patent documents were provided to the patent office, but not listed in the information disclosure statement, and thus, not considered:
WO 2020/198139 A1 (01 October 2020)
CN 109401715 A (01 March 2019) (also no translation included)
CN 110669308 A (10 January 2020) (also no translation included)
WO 2016/028970 A1 (25 February 2016)
CN 115694850 A (23 April 2021) (also no translation included)
CN 110903805 A (24 March 2020) (also no translation included)
WO 98/42762 (1 October 1998)
Specification
The disclosure is objected to because of the following informalities: Paragraphs in the specification should be individually and consecutively numbered using at least four Arabic numerals enclosed in square brackets. See MPEP §608.01(I) and 37 C.F.R. 1.52(b)(6)
Appropriate correction is required.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 62 was amended in a preliminary amendment to change the weight ratio of fire resistance improving additives claimed from one related to acid components to one related to the entirety of the second component. The previously submitted claim had antecedent basis in the specification in ¶[139], but the new limitation in Claim 62 does not have support in the specification.
Abstract
The abstract of the disclosure is objected to because the abstract is required to be provided on a separate sheet that does not include other parts of the application or other material. The provided abstract is the first page of the related PCT publication. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b)(I)(C). See also 37 C.F.R. 1.72(b).
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Claim 55 is both marked as cancelled (claims 22-55 (Cancelled)) and currently amended. Appropriate correction required.
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 9, 11, 17, 21, 59, 61, and 62 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance;
claim 9 recites the broad recitation “linear,” and the claim also recites “preferably short linear chained (n<1000)” which is the narrower statement of the range/limitation.
claim 9 recites the broad recitation “branched,” and the claim also recites “preferably long chain branched (n>1000)” which is the narrower statement of the range/limitation.
claim 11 recites the broad recitation “the first component in an amount of about 25% or less,” and the claim also recites “19% or less, or even 15% or less” which is the narrower statement of the range/limitation.
claim 17 recites the broad recitation “particle size of about 20 microns or less,” and the claim also recites “10 microns or less, or even 5 microns or less” which is the narrower statement of the range/limitation.
claim 21 recites the broad recitation “wherein the functionality… is about 2 or more,” and the claim also recites “3 or more, or even 4 or more” which is the narrower statement of the range/limitation.
claim 59 recites the broad recitation “an amount of between about 40% and 95%,” and the claim also recites “more preferably between about 50% and 80%, or even more preferably between about 60% and 70%” which is the narrower statement of the range/limitation.
claim 61 recites the broad recitation “weight ratio… between about 2.5:1 and 9:1,” and the claim also recites “preferably between about 3:1 and 8.5:1, or even between about 3.3:1 and 4.6:1” which is the narrower statement of the range/limitation.
claim 62 recites the broad recitation “weight ratio… between about 2:1 and 1:10,” and the claim also recites “preferably between about 1:1 and 1:8, or even between about 1:2 and 1:4” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 20-21, 55-56, and 59 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Czaplicki, WO2020/101732.
Regarding Claim 1, Czaplicki teaches a two component epoxy/phosphate ester foam material (¶[0002]). The two component system including an A side and a B side where the A side includes an epoxy and the B side includes a phosphate ester (¶[0020]) where the phosphate ester is produced from the reaction of phosphoric acid and various epoxide functional monomers (¶[0021]). Czaplicki further teaches a need for foam materials with desirable fire, smoke, and toxicity properties (¶[0005]) and that foam materials may include one or more additives to improve composition properties such as flame retardants (¶[0054]).
Regarding Claim 2, Czaplicki teaches the A side and the B side may be mixed to form a resulting reaction product that cures at a temperature of less than 50°C (¶[0020]).
Regarding Claim 3, Czaplicki teaches curing may occur at room temperature (¶[0026]). A person having ordinary skill in the art at the effective date of filing would reasonably expect that any reaction mixture that contains two components that are reactive at room temperature would initiate reacting, in this case curing, immediately upon mixing of the two components at room temperature.
Regarding Claim 4, Czaplicki teaches that the curing may occur at room temperature or at a temperature of about 23 °C (¶[0026]) and further that the curing time may be less than 15 minutes, from 5 to 10 minutes, less than 30 minutes or less than 60 minutes (¶[0010]).
Regarding Claim 5, Czaplicki teaches there is a need for foam materials which utilize components capable of curing without the need for additional components (¶[0005]) and further that the method presented by Czaplicki may be free of any additional curing agent (¶[0005]).
Regarding Claim 20, Czaplicki teaches epoxy resin can be any conventional dimeric, oligomeric, or polymeric epoxy material containing at least one epoxy functional group, such as aliphatic, cycloaliphatic, aromatic epoxies (¶[0029]), or novolac resins (¶[0034-0035]).
Regarding Claim 21, Czaplicki teaches the A side (epoxy resin) may be formulated by using a functionality higher than two (¶[0016 & 0038]).
Regarding Claim 55, Czaplicki teaches the phosphate esters may be selected from mono-esters, di-esters, or tri-esters (¶[0050]) by reaction of epoxide functional material with phosphoric acid (¶[0051]).
Regarding Claim 56, Czaplicki teaches epoxy resins may be di-functional glycidyl ether epoxies which may be obtained from cashew nutshell liquid (¶[0032]).
Regarding Claim 59, Czaplicki teaches the phosphate ester may be present in an amount of about 60% to about 70% by weight of the second component (¶[0023]).
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 61-62 are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki.
Czaplicki teaches the fire-resistant two-part system according to Claim 55. Specifically, Czaplicki teaches a need for foam materials with desirable fire, smoke, and toxicity properties (¶[0005]) and that foam materials may include one or more additives to improve composition properties such as flame retardants (¶[0054]). Czaplicki also teaches the use of additives in the second component of the two-part system that contains the acid esters. In Table 3, Formulation D, Czaplicki teaches a second component that contains 86.2% by weight of acid esters and 13.8% by weight of additives. This is a weight ratio of 6.2:1 acid esters to additives in the second component meeting the ratio in instant claim 61 and a weight ratio of 1:7.2 of second component to additives. Czaplicki does not teach that the specific additives in this example are fire resistance improving additives.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the two-part system as taught by Czaplicki in Table 3, Formulation D with other additives, such as flame-retardants, motivated by the desire taught by Czaplicki of improving fire, smoke and toxicity properties of the resulting foamed material.
Claims 7-8, 11, 15, 17, and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki in view of the article titled “A Review of Current Flame Retardant Systems for Epoxy Resins” authored by Weil et al., published in Journal of Fire Sciences (2004) 22, 25-40.
Czaplicki teaches the two-part system of claim 5, and further teaches materials can include one or more additives for improving properties such as flame retardants. Czaplicki does not teach specific additives, such as phosphorus-based materials or metal hydroxides.
However, Weil does teach a variety of flame-retardant additives that are used in epoxy resins used for electronics, specifically for printed wiring boards (pg. 26, ¶2). Specifically, Weil teaches:
metal hydroxide fillers (pg. 30, ¶6) and additive phosphorus compounds (pg. 32, ¶2), addressing instant claim 7
use of dihydrooxaphosphaphenanthrene (DOPO) (pg. 33, ¶4), ammonium polyphosphate (pg. 36, ¶2), addressing instant claim 8 and 67
a formulation containing ~10 wt% ammonium polyphosphate, Hostaflam422, in the first part of the formulation (Table 2, Part 1), 675 lbs of fire-retardant mix, which is 64% ammonium polyphosphate, resulting in 432 lbs of ammonium polyphosphate present in ~4500 lbs of part 1 of the formulation, addressing instant claim 11
metal hydroxide fillers such as alumina trihydrate (ATH), which is an alternative chemical name for aluminum hydroxide, and Mg(OH)2 (pg. 30, ¶6), addressing instant claim 15
a specific formulation containing ATH where the ATH is preferably <5µm average diameter for improved heat resistance, addressing instant claim 17
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have searched the relevant art for flame retardant additives for epoxy resins, found the teachings of Weil and utilized specific additives as taught by Weil to improve the flame retardant properties of the two component material taught by Czaplicki with a reasonable expectation of success given Czaplicki teaching that flame retardant additives can be included to improve the two component foam.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki in view of Weil as further evidenced by the ExolitTM AP 422 technical datasheet published by Clariant International Ltd.
Czaplicki in view of Weil teaches the fire-resistant two-part system containing ammonium polyphosphate as the phosphorus-based material from instant Claim 8. Weil specifically teaches use of ammonium polyphosphate such as EXOLIT 422 (pg. 36, ¶4), which was formerly sold as Hostaflam 422, and which is a phase II ammonium polyphosphate, known in the art to be long chain branched (n>1000), as evidenced by the ExolitTM AP 422 datasheet, addressing instant claim 9.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki in view of Weil as applied to claim 8 above, and further in view of the article titled “Exploring the Modes of Action of Phosphorus-Based Flame Retardants in Polymeric Systems” authored by Rabe et al., and published in Materials (2017) 10, 455.
Czaplicki in view of Weil teaches the fire-resistant two-part system of Claim 8, and more specifically teaches a high degree of flame-retardant efficacy with the use of aluminum diethylphosphinate as an additive in epoxy resins (pg. 32, ¶6) but does not teach that the phosphinate functions to decompose when heated and releases diethyl phosphinic acid in the gas phase.
However, Rabe teaches “In many polymers, aluminum diethyl phosphinate (AlPi) is reported to exhibit high activity in the gas phase by releasing diethylphosphinic acid” (pg 2, ¶1). Even more specifically, Rabe teaches a commercially available AlPi flame retardant, Exolit OP935, which is established as an effective flame inhibitor in epoxy resins (pg. 3, ¶2).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that use of a phosphinate such as aluminum diethyl phosphinate as taught by Czaplicki in view of Weil would function to decompose when heated to release diethyl phosphinic acid in the gas phase as taught by Rabe.
Conclusion
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/S.E.M./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
