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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 4/25/2024 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. The provided copies of each non-patent literature publication are not legible. It has been placed in the application file, but the information referred to therein has not been considered.
Specification
The use of the terms EXOLIT, IRGAFOS, DER, DOW, BASF, ANTIOXIDANT 259, EPOXY CROSS-LINKER DER 671, and PBT315, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 8 is objected to because of the following informalities: “at least one of at least one of” is a typographical error. Appropriate correction is required.
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(n).
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 1-15 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.
The term “about” in claims 1, 2, 5, 6, and 7 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 1-15 are similarly rejected by their dependence in indefinite claims 1 and 5.
Regarding claims 1 and 5, the phrase "a phosphate or a phosphinate based flame retardant additive" renders the claim indefinite because it is unclear whether the limitation requires a phosphinate based flame retardant or any phosphate, or either a phosphinate based flame retardant or a phosphate based flame retardant. See MPEP § 2173.05(d). Dependent claims 1-15 are similarly rejected by their dependence in indefinite claims 1 and 5.
Claims 5 and 7 fail to recite a measurement basis for the ratio P/Si (for example, on a molar or weight basis), rendering the scope of the claim indefinite.
Regarding claim 13, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-4 and 8-12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nishihara et al (US 20030166757 A1, priority date 6/22/2001) in view of Venkataramani et al (US 6242520 B1, priority date 3/13/1997).
Regarding claims 1, 2, and 3, Nishihara discloses a coated particulate flame retardant polymer composition [0030], comprising:
A coated particulate flame retardant (A) comprising inorganic compound particles [0031] present from 0.001-10 parts by weight relative to 100 parts by weight of the thermoplastic polymer (B) [0044],
A coating compound which coats the inorganic compound particles and is at least one compound selected from the group consisting of silicon-containing compounds, aromatic-containing compounds, and a thermoplastic compound [0038],
Dispersed in a thermoplastic polymer (B) [0033] which is preferably a polyester (polycondensation polymer) [0111].
The inorganic compound particles used as the particulate flame retardant may be, for example, zinc phosphate (phosphate-based flame retardant) or a metal oxide such as tin oxide [0066].
Although Nishihara discloses the diameter of the coated particulate flame retardant as 1 to 1000 nm [0034], Nishihara does not particularly disclose the thickness of the coating nor that the coating comprises silica, alumina, beryllium oxide, zinc oxide, or titanium oxide.
In the same field of endeavor, Venkataramani discloses a flame retardant polymer composition with coated boron phosphate, comprising: an additive (flame retardant) comprising a boron phosphate core and a metal ion coating (13) which may be in the form of a metal oxide or hydroxide (19) of a group IIA metal (such as beryllium), a group IIb metal (such as zinc), or a group 4b metal (such as titanium) (13), of which salts of titanium, aluminum, or zinc, among others, are preferred (22); polysiloxanes (14); and a polymer selected from an immiscible polymer blend, miscible polymer blend, copolymer, thermoplastic polymer, and thermoset polymer (15). The thickness of the coating ranges from a monoatomic layer to about 1.5 microns, most preferably from 0.02 to 0.15 microns (20 to 150 nm) (21). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Venkataramani further discloses that this thickness is disclosed as sufficient to enhance the hydrolytic stability of the core without sacrificing its flame retardant properties (20) and that such coatings prevent ionization of the encapsulated phosphate flame retardant by creating a water-insensitive neutralized outer later (21). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the coated flame retardant polymer composition disclosed by Nishihara with the coating and coating thickness disclosed by Venkataramani, motivated by a desire to prevent flame retardant ionization and enhance the hydrolytic stability of the flame retardant without a loss of flame retardancy, with a reasonable expectation of success.
Regarding claim 4, the combination of Nishihara and Venkataramani discloses all limitations of claim 1. Nishihara discloses that the coated particulate flame retardant polymer composition optionally comprises a silane coupling agent (coupler component) [0074], which may have epoxy functional groups [0078-0088].
Regarding claims 8, 9, and 10, the combination of Nishihara and Venkataramani discloses all limitations of claim 1. Nishihara further discloses that the inorganic compound particles used as the particulate flame retardant may be, for example, zinc phosphate (a metal salt of a phosphorus containing compound as in claim 8, a metal phosphate as in claim 9, zinc phosphate as in claim 10) or a metal oxide (as in claim 8) such as tin oxide (tin compound as in claim 8) [0066].
Regarding claim 11, neither Nishihara or Venkataramani particularly disclose formation of the flame retardant coating with atomic layer deposition. However, it is noted that the combination of Nishihara and Venkataramani discloses all limitations of claim 1. When a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); MPEP 2113.
Regarding claim 12, Nishihara discloses that the thermoplastic polymer is preferably a polyester [0111].
Regarding claim 14, Nishihara discloses specific examples for the preparation of the coated flame retardant particles which involve preparation from 200-400°C (heat-treated) [0092].
Regarding claim 15, Nishihara also discloses shaped articles produced with the flame retardant polymer composition [0045].
Claims 5, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nishihara et al (US 20030166757 A1, priority date 6/22/2001) in view of Venkataramani et al (US 6242520 B1, priority date 3/13/1997) as applied to claim 1 above, and further in view of Matsumura et al (JP 2007169496 A, priority date 12/22/2005, English translation attached).
The above rejection with respect to Nishihara and Venkataramani is incorporated herein by reference in its entirety.
Regarding claims 5, 6, and 7, Nishihara discloses a coated particulate flame retardant polymer composition [0030], comprising:
A coated particulate flame retardant (A) comprising inorganic compound particles [0031] which may be zinc phosphate (phosphate-based flame retardant) [0066], present from 0.001-10 parts by weight relative to 100 parts by weight of the thermoplastic polymer (B) [0044],
A coating compound which coats the inorganic compound particles and is at least one compound selected from the group consisting of silicon-containing compounds, aromatic-containing compounds, and a thermoplastic compound [0038],
Optionally a silane coupling agent [0074], which may have epoxy functional groups [0078-0088], and
Dispersed in a thermoplastic polymer (B) [0033] which is preferably a polyester (polycondensation polymer) [0111].
As set forth above with respect to claim 1, Venkataramani discloses a coated flame retardant polymer composition, wherein the thickness of the coating ranges from a monoatomic layer to about 1.5 microns, most preferably from 0.02 to 0.15 microns (20 to 150 nm) (21). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Neither Nishihara or Venkataramani particularly discloses a silica coating for the encapsulated flame retardant.
In the same field of endeavor, Matsumura discloses a fireproof composition, comprising (page 2, lines 14-16):
A synthetic resin binder, and
Ammonium polyphosphate particles whose surface has been coated with an inorganic oxide particle, such as hydrophobic fine silica (page 2, lines 26-28), with a particle diameter of 0.001 to 5 microns (1 to 5000 nm) and preferably 0.001 to 1 micron (1 to 1000 nm) (page 3, lines 25-29), resulting in coated flame retardant particles with a diameter of 3 to 35 microns (3000 to 35000 nm) (page 2, lines 28-31).
Matsumura further discloses that use of silica is particularly preferred in terms of cost and performance (page 3, lines 8-11). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the coated flame retardant polymer composition disclosed by the combination of Nishihara and Venkataramani with the silica coating disclosed by Matsumura, motivated by a desire to lower costs and improve performance, with a reasonable expectation of success.
Neither Nishihara, Venkataramani, nor Matsumura particularly disclose a ratio of phosphorus to silica. It is noted that the instant application fails to provide a measurement basis (for example, on a molar or weight basis) for the ratio of phosphorus to silica. Additionally, the term “about” in patent claims has been interpreted by the Federal Circuit to mean “with some approach to the exactness in quantity, number, or time: Approximately.” Conopco, Inc. v. May Dep't Stores Co., 46 F.3d 1556, 1561 (Fed.Cir.1994). “Approximately” has been interpreted as “reasonably close to.” Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1581 (Fed.Cir.1995).
Treatment of the term “about” in relation to conditions of temperature and time is illustrated in, for example, Schreiber Foods, Inc. v. Saputo Cheese USA Inc., 83 F. Supp. 2d 942 (N.D. Ill.), dismissed, 243 F.3d 560 (Fed. Cir. 2000). In Schreiber, the court held that a claimed time range of “about 2 minutes to about 4 minutes” encompassed a range of 30 seconds to 10 minutes, while a temperature range of “about 190°F to about 205°F” was interpreted as encompassing a range of 150°F to 300°F. Schreiber at 950. Note that the range “about 190°F to about 205°F” is equivalent to “about 87.8°C to about 96.1°C” and the range of 150°F to 300°F is equivalent to 65.6°C to 148.9°C.
Given the flexibility used by the courts in interpreting the term “about,” it is evident that Nishihara’s disclosure of the coating compound being present from 0.01-100 wt% based on the weight of the encapsulated flame retardant [0098] reads on the claimed P/Si range of “about 5:1 to 100:1.” A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Nishihara et al (US 20030166757 A1, priority date 6/22/2001) in view of Venkataramani et al (US 6242520 B1, priority date 3/13/1997) as applied to claim 1 above, and further in view of Yang et al (CN 211005229 U, priority date 7/17/2019, English translation attached).
Regarding claim 13, the combination of Nishihara and Venkataramani discloses all limitations of claim 1 as set forth above. Nishihara further discloses that the thermoplastic polymer is preferably a polyester [0111]. Neither Nishihara nor Venkataramani particularly discloses the polyesters specified in claim 13.
In the same field of endeavor, Yang discloses a flame retardant acri Tiylic adhesive tape, comprising a silicon oxide powder coating, a PET (polyethylene terephthalate) base material layer, a flame retardant adhesive layer comprising a nitrogen-phosphorus fire retardant powder, and an insulating layer comprising an epoxy resin (page 1, lines 34-40). Yang particularly discloses that the PET component is transparent (page 1, line 48). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the coated flame retardant polymer composition disclosed by the combination of Nishihara and Venkataramani with the polyethylene terephthalate polymer disclosed by Yang, motivated by a desire to improve the transparency of the flame retardant polymer composition, with a reasonable expectation of success. "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed". KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). See also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason to combine the prior art references need not be the same as that of applicants).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lambert et al (KR 100642963 B1, priority date 2/2/2005, English translation attached) discloses a flame retardant polymer composition, comprising: a flame retardant, which is preferably phosphonic acids or phosphoric acids and their esters and salts; a porous support, which is selected from silica, alumina, silica-alumina, sodium aluminosilicate, calcium silicate, magnesium silicate, zirconia, magnesium oxide, calcium oxide, cerium oxide or titanium oxide, with silica being particularly preferred; which is dispersed in a polymer which may be a polyester such as polybutylene terephthalate, polypropylene terephthalate, polyethylene terephthalate, or mixtures thereof.
Hoechst AG (GB 1536525 A, priority date 5/22/1976, English translation attached) discloses a flame retardant plastic molding composition, comprising: a thermoplastic material, including (poly)urethane, polyamide, polyformaldehyde, polyethylene terephthalate, polybutylene terephthalate, and epoxy resin, among others (polycondensation polymers) (page 1, lines 50-52); and 1-10 wt% of red phosphorus particles which are at most 100 microns covered with 2-30 wt% of an aluminum hydroxide layer (corresponding to coating thicknesses ranging from 33 to 4500 nm) (page 1, lines 41-45).
Lee Ji Eun et al (KR 20210001483 A, priority date 6/28/2019, English translation attached) discloses a flame retardant thermoplastic polyurethane composition, comprising: a thermoplastic polyurethane resin; at least one flame retardant selected from isopropylated triaryl phosphates, melamine cyanurate, and phenoxyphosphazene oligomer; silica; and a silane coupling agent. The flame retardant is coated by silica.
Zucchelli et al (US 20100160523 A1, priority date 7/13/2007) discloses a hypophosphorous acid metallic salt characterized in that it is surface coated with at least one compound selected from alkali metal or alkali earth hydrates, hydrotalcite or hydrotalcite-like compounds, and alkali metal or alkali earth organic acid salts. The surface coating results in more flame retardant additives. Zucchelli discloses specific examples using PBT and polyamide 6,6 as the polymer.
Lee Chang Jin et al (WO 2019225976 A1, priority date 5/23/2019, English translation attached) discloses the coating of pigments with an alumina coating agent by atomic layer deposition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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