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 .
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.
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.
(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.
Claims 1-2, 5-6, 8-9, 12-13 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2004-307747; however, for convenience, the machine translation will be cited below.
JP ‘747 exemplifies a flame-retardant pressure-sensitive adhesive comprising the following:
94 parts of butyl acrylate, which meets applicants’ (d)
2 parts of 2-hydroxyethyl acrylate, which meets applicants’ (b)
2 parts of methacrylic acid, which meets applicants’ (a) and
2 parts of N-vinylpyrrolidone, which meets applicants’ (c).
This adhesive is then mixed with 200 parts emulsified propoxyphosphazene, which meets applicants’ non-halogenated flame-retardant.
JP ‘747 exemplifies the adhesive as an emulsion prepared with water.
JP ‘747 anticipates instant claims 1-2, 5-6, 8-9, 12-13 and 17.
As to claim 18, JP ‘747 discloses applying the flame-retardant pressure-sensitive adhesive to a polyester film (Example 1).
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.
Claims 3-4, 7, 10-11, 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-307747, as applied above to claims 1-2, 5-6, 8-9, 12-13 and 16-18.
JP ‘747 anticipates instant claims 1-2, 5-6, 8-9, 12-13 and 16-18, as described above and applied herein as such, as JP ‘747 discloses a flame-retardant pressure-sensitive adhesive comprising acrylic acid, hydroxyethyl acrylate, N-vinyl pyrrolidinone, and C4 linear alkyl acrylate and a non-halogenated flame retardant.
As to claims 3-4, JP ‘747 teaches that fumaric acid can be as a functional equivalent to acrylic acid (para 47). Substituting acrylic acid in Example 10 of JP ‘747 is prima facie obvious.
As to claim 7, JP ‘747 teaches that the amount of polar-containing monomer is preferably 1-30 wt% based on 70-99 wt% of the alkyl (meth)acrylate. The range of 1-30 wt% overlaps with the claimed amount of 8-30 parts, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claims 10-11, JP ‘747 teaches that the alkyl (meth)acrylates can include esters having an alkyl group of 20 carbon atoms or less (para 46). Using hexyl acrylate in place of butyl acrylate is prima facie obvious, as this modification is clearly suggested by the teachings of JP ‘747.
As to claim 14, JP ‘747 teaches that ammonium polyphosphate can be used as a functional equivalent to the phosphazene compounds (para 34-35). Substituting the phosphazene compound in Example 10 of JP ‘747 is prima facie obvious.
As to claim 15, JP ‘747 teaches that the emulsified phosphazene can be present in an amount of 5-200 parts based on 100 parts of the adhesive. Modifying the amount of emulsified phosphazene in Example 10 to a lower amount to 5-45 parts is prima facie obvious and suggests the flame retardant in an amount of about 5-30 wt%. Therefore, it can be seen that the amount of flame retardant taught by JP ‘747 overlaps with the claimed range of 0.1-30 wt%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 19, JP ‘747 teaches that the polar-group containing monomer can also include a monomer having an amino group and includes dimethylaminoethyl acrylate. This monomer is known to protonate in water and therefore meets applicants’ cationic monomer.
Claims 1-6, 7-12 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/129355. For convenience, the machine translation will be cited below.
WO ‘355 teaches a flame-retardant pressure-sensitive adhesive tape comprising a base material made of a soft metal foil and an adhesive layer, where the adhesive layer is prepared from an acrylic copolymer, where the acrylic copolymer comprises the following:
1-50 wt%, preferably 10-20 wt% 2-ethylhexyl (meth)acrylate and 10-97 wt%, preferably 70-80 wt% of alkyl (meth)acrylate having 1-22 carbon atoms, where the molar ratio of 2-ethylhexyl (meth)acrylate to the alkyl (methacrylate) having 1-22 carbon atoms is preferably about 0.2, where both of these monomers meet applicants’ (d);
0.1-15 wt%, preferably 6-8 wt% of a vinyl acetate;
1-6 wt%, preferably 3.5-4 wt% of a carboxyl group containing monomer, specifically listed to include (meth)acrylic acid and fumaric acid, which meets applicants’ (a);
0.01-2 wt%, preferably 0.08-0.1 wt% of a monomer having a hydroxyl group, specifically listed to include 2-hydroxylethyl (meth)acrylate, 4-hydroxybutyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, etc., which meets applicants’ (b); and
up to 10 wt% of a functional monomer, specifically listed to include acrylamide, N-vinylpyrrolidone, dimethyl(meth)acrylamide, etc., and meets applicants’ (c).
Choosing the combination described above is prima facie obvious over instant claims 1
WO ‘355 teaches applying the adhesive onto a soft metal film, rendering it flame retardant.
WO ‘355 is prima facie obvious over instant claims 1-6 and 16.
As to claim 7, WO ‘355 teaches the acidic monomer, hydroxyl monomer and functional monomer in an amount of up to 18 wt%, which overlaps with the claimed amount of 8-30 wt%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claims 8-11, choosing a combination of 2-ethylhexyl (meth)acrylate and butyl acrylate is prima facie obvious, as described above.
As to claim 12, the metal foil meets applicants’ non-halogenated flame retardant and inorganic metal-containing compound.
As to claim 16, WO ‘355 teaches the method of polymerization to include emulsion polymerization, which inherently required the use of water.
As to claim 17, the amount of each monomer taught by WO ‘355 overlaps with the claimed amounts, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 19, WO ‘355 teaches that a monomer having an amino functional group, such as dimethylaminoethyl (meth)acrylate, is listed as a possible monomer which meets applicants’ cationic monomer.
As to claims 18 and 20, WO ‘355 teaches applying the adhesive to a metal foil and a release paper, and further teaches using it for repairing sealing of ducts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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