DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Title
The title is changed: FIBER-REINFORCED FLAME-RETARDANT POLY PHOSPHATE RESIN COMPOSITION AND MOLDED ARTICLE USING THE SAME
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 .
Claims 1-7, 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashida (US20160024301A1) in view of Troutman (WO 03/085039).
Re claims 1-7, 14 and 21, Hayashida teaches an object made from glass-fiber reinforced polycarbonate resin composition [1, 14, 399]. Hayashida discloses the ratio of fiber length to fiber diameter is 2-120 (L/D = 2-120) [184] and the diameter of the glass fiber is 10-50 microns [14]. Therefore, the length is calculated as 20-6000 microns (2*10 to 120*50) or 0.02-6 mm (overlapping applicant’s claimed range). Hayashida discloses using 100 parts polycarbonate-polydiorganosiloxane, 10-300 parts glass fiber, 5-25 parts adhesion improving agent, 5-45 parts phosphorous-based flame retardant, and 0.01-3 parts dripping inhibitor [Abstract] equating to 5.5-73.2% (overlapping applicant’s claimed range of 15 wt% - 56 wt%). Therefore, it is calculated that the composition comprises 5.5-73.2% (10/(10+100+25+45+3) – 300/(300+100+5+5+0.01) glass fiber. While not explicit, the thickness of a sheet, not explicit either but is a function dependent upon its desired end use. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to have selected from the overlapping portion of the ranges of mm length, wt% of claimed glass fibers and thickness of the sheet for improving mechanical strength such as at least weld strength as taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Further re claim 1, Hayashida discloses that the object can have a coating [401], however, there is no disclosure of coating (layer) as presently claimed.
Troutman discloses flame retardant coating (page 1, 1st paragraph) that is used on substrates including thermoplastics and glass fibers (page 7, 5th paragraph). The coating includes melamine based flame retardants including melamine cyanurate, melamine borate, melamine phosphate, and melamine polyphosphate (page 56) and carbonific such as dipentaerythritol and tripentaerythritol (page 71, 2nd paragraph). The composition also includes additional phosphates (page 71, last paragraph). The composition is used to form layer 5 microns to 10 mils (254 microns) in thickness (page 14, second paragraph).
In light of the motivation for using flame retardant coating disclosed by Troutman as described above, it would have been obvious to one of ordinary kill in the art at the time of the effective filing date of the claimed invention to use the flame retardant coating as the coating of Hayashida in order to produce an article with flame retardance.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashida (US20160024301A1) in view of Troutman (WO 03/085039) and further in view of Eckstein et al. (US 20030166749A1).
Hayashida is relied upon above.
Re claims 7-8, Hayashida doesn’t teach the percentage in the sheet or thickness as claimed.
Re claim 7, Eckstein teaches [52] thickness of a molded jacket depends on the requirements of the desired end use application. Typical thickness of the jacket is from about 0.020 to about 0.050 inches (508 micrometers to 1270 micrometers, overlapping applicant’s claimed range of 150 micrometers to 2450 micrometers). Re claim 8, Eckstein discloses the composition is 100 wt% (overlapping at least 90 wt%) of the composition is extruded into the sheet wire and cable jacket see Example 2.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to have selected from the overlapping portion of the ranges of thickness and percentage as they are typical for forming the article, jacket of Eckstein taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashida (US20160024301A1) in view of Troutman (WO 03/085039 and further in view of Sato et al. (US20120329920A1).
Hayashida is relied upon above.
Re claim 16, Hayashida doesn’t teach the sodium polyphosphate.
However, Sato teaches thermoplastic flame retardant compositions using [0134] polyphosphate comprising salts derived from phosphoric acid and polyphosphoric acid, and sodium salt.
It would have been obvious to one of ordinary skill in the art at the effective filing date time to have modified the polyphosphate composition of Hayashida to have used, added or substituted the specific sodium polyphosphate of Sato for forming a similar composition having a similar use in flame retardant compositions.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wen (US 20190264002) in view of Kabeya et al. (US 2017/0226327 A1) and further in view of Troutman (WO 03/085039).
Re claims 17-20, Wen discloses object made from flame retardant composition comprising polypropylene-based resin having melt flow index of 10-100 g/10 min (0025, 0030), heterophasic polypropylene copolymer having melt flow index of 0.1-8 g/10 min (0031, 0069), and flame retardant including piperazine phosphate (0013).
Wen does not disclose that the composition comprises glass fiber.
Kabeya discloses flame retardant composition comprising polypropylene-based resin (0036) as well as glass fiber to improve physical properties such as rigidity, impact strength and the like of the polypropylene resin composition and its molded article of the present invention but also contributes toward improving additional properties thereof such as heat resistance, dimensional stability (reduction in the linear expansion coefficient, etc.), low-contractility, scratch resistance, etc. (0241). Kabeya teaches [0015, 0249] depending on the glass fiber to be used, the fiber length is preferably from 2 mm to 20 mm (overlapping applicant’s up to 5.45 mm) for affecting the properties.
In light of the motivation for using glass fiber disclosed by Kabeya as described above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to use glass fibers in the flame retardant composition of Wen in order to produce a composition with improved physical properties such as rigidity, impact strength and also improved heat resistance, dimensional stability (reduction in the linear expansion coefficient, etc.), low-contractility, and scratch resistance.
Wen in view of Kabeya disclose objects made from the composition (Wen – 0156) but no disclosure that the article is coated with coating as claimed.
Troutman discloses flame retardant coating (page 1, 1st paragraph) that is used on substrates including thermoplastics and glass fibers (page 7, 5th paragraph). The coating includes melamine based flame retardants including melamine cyanurate, melamine borate, melamine phosphate, and melamine polyphosphate (page 56) and carbonific such as dipentaerythritol and tripentaerythritol (page 71, 2ⁿᵈ paragraph). The composition also includes additional phosphates (page 71, last paragraph). The composition is used to form layer 5 microns to 10 mils (254 microns) in thickness (page 14, second paragraph).
In light of the motivation for using flame retardant coating disclosed by Troutman as described above, it would have been obvious to one of ordinary kill in the art at the time of the effective filing date of the claimed invention to use the flame retardant coating on the objects of Wen in view of Kabeya in order to produce an article with further improved flame retardance.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Arguments
Applicants argue that the selection of melamine compound and pentaerythritol compound from Troutman must each be made from a vast genus of compounds with no explanation of why one would make such selections.
However, the fact remains that Troutman explicitly discloses the use of melamine based flame retardants including melamine cyanurate, melamine borate, melamine phosphate, and melamine polyphosphate (page 56) and carbonific such as dipentaerythritol and tripentaerythritol (page 71, 2ⁿᵈ paragraph). While each compound may have to be picked from a list, it would be obvious to select each compound absent evidence to the contrary.
Given that the compounds disclosed by Troutman includes melamine compound (melamine cyanurate, melamine borate, melamine phosphate, and melamine polyphosphate) and dipentaerythritol and tripentaerythritol identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any flame retardant and any carbonific in Troutman including the claimed melamine compound and dipentaerythritol and tripentaerythritol absent some evidence to the contrary. One of ordinary skill in the art would consider all the compounds disclosed by Troutman to be equivalent and interchangeable and equally suitable absent a showing of criticality by applicant of the claimed melamine compound and dipentaerythritol and tripentaerythritol. In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Troutman discloses a finite number of flame retardants and carbonifics and given that the reference discloses all the flame retardants and carbonifics being equally applicable, there would be a reasonable expectation of success when using specific flame retardant and carbonific as set forth by the examiner. It is further noted the fact that “..the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.….”; See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”).
Applicants argue that Troutman does not disclose one compound comprising both melamine and pentaerythritol moieties.
However, nothing in the present claims requires a single compound to have both melamine and pentaerythritol moieties. This can be seen in claim 2 which discloses compound only having melamine moieties and claim 3 which discloses compounds only having pentaerythritol moieties.
Applicants argue that the data in the present specification establishes the criticality of the claimed fiber length.
However, the data is not persuasive given that it is not commensurate in scope with the scope of the claims. Specifically, the examples use (i) specific thermoplastic in specific amount while the claims encompass any thermoplastic in any amount, (ii) specific glass fibers having one length in specific amount while the claims encompass glass fibers having broader length in any amount, and (iii) specific coating known under the tradename Envirograf HW01-EP-GC while the coating of the present claims encompass any melamine compound and any pentaerythritol compound in any amount.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
