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 .
Specification
The disclosure is objected to because of the following informalities: “phsophonate” is misspelled three times in Paragraph 0007 (see the penultimate line of page 2 of the specification as filed), and four times in Paragraph 0055 (see lines 14-15 of Paragraph 0055 of the specification as filed), and should probably read “phosphonate”.
Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: “phsophonate” is misspelled three times on line 17 and should probably read “phosphonate”. Appropriate correction is 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 11-15 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. Claim 11 recites, “A method for preparing a composite flame retardant for an all-solid-state rechargeable battery, the method comprising mixing a phosphorus flame retardant and a melamine flame retardant in a solvent at a weight ratio of about 65:35 to about 95:5 to prepare a mixture; and filtering and drying the mixture to obtain a composite flame retardant that includes core particles including a phosphorus flame retardant and a coating layer on a surface of the core particles, the coating layer including a melamine flame retardant” (emphasis added). However, given that lines 6-7 recite that the core particles include “a phosphorus flame retardant” (instead of the phosphorus flame retardant) and that the coating layer includes “a melamine flame retardant” (instead of the melamine flame retardant), it is unclear as to whether “a phosphorus flame retardant” included I the core particles and “a melamine flame retardant” included in the coating layer are the same as the phosphorus flame retardant and the melamine flame retardant that are mixed at a weight ratio of about 65:35 to about 95:5. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 12-15 do not remedy the above and hence are indefinite for the same reasons.
Claim 14 is (further) 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. Claim 14 recites, “preparing a first solution in which the phosphorus flame retardant is dispersed in a solvent, preparing a solution in which a melamine flame retardant is dispersed in a solvent, and dropping a first solution into the second solution and stirring” (emphasis added) on lines 3-7, such that it is unclear whether “a melamine flame retardant” on line 5 is the same melamine flame retardant as recited in instant claim 11 from which claim 15 depends, and whether “a first solution” on line 7 is the same as the “first solution” recited on lines 3-4. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted 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. If the prior art structure is capable of performing the intended use, then it meets the claim. Lastly, it is noted that in general, when reading a preamble in the context of an entire claim, if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In light of the above, it is noted that “for an all-solid-state rechargeable battery” as recited in the preamble of claims 1, 11, and 16 does not appear to provide any distinct definition of the claimed invention’s limitations and given that the body of each of claims 1, 11, and 16 describes a complete invention, the “for an all-solid-state rechargeable battery” preamble recitation has not been given any patentable weight in the rejections below. Additionally, if the above preamble recitation is interpreted as constituting an intended end use of the composite flame retardant and elastic sheet, then it is noted that a prior art reference disclosing a composite flame retardant and/or elastic sheet capable of the same intended end use will be considered as meeting the claim(s).
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 1-10, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (USPN 6,291,068). Wang discloses melamine-coated ammonium polyphosphate (APP) particles as a core material to be coated with a coating layer of thermoplastic resin wherein the resulting thermoplastic resin-coated particles are incorporated into a resin composition as a flame retardant component that is then molded into a molded article (Abstract), such as a molded plate (or “sheet”) as in the working examples (Examples, reading upon the claimed ), wherein Wang specifically discloses examples wherein the melamine-coated APP particles (APP-1) as the core material have an average particle size of about 17 µm (as in instant claim 9) and are formed by coating APP particles having an average particle size of about 15 µm (reading upon the instantly claimed “core particles including a phosphorus flame retardant” as in instant claim 1, and more particularly, with an average diameter as in instant claim 2 and including phosphate as in instant claim 3, and ammonium phosphate as in instant claim 4) with melamine (as in instant claims 1 and 7) such that the surface of the APP particles are approximately uniformly coated with melamine (Reference Example 1), and thus, the thickness of the approximately uniform melamine coating on the melamine-coated APP particles (APP-1( is about 1 µm based upon the above initial and coated average particle sizes, reading upon the claimed “coating layer” thickness ranges of “less than or equal to about 1 µm” as in instant claim 1 and “about 900 nm” (i.e., about 0.9 µm) of instant claim 5, as well as the claimed “in the form of a continuous film or an island” as in instant claim 6. Hence, Wang anticipates instant claims 1-7 and 9.
With respect to instant claim 8, given that above about 1 µm thickness of the approximately uniform melamine coating layer and the average particle size of about 15 µm of the starting APP particles of Reference Example 1, Wang clearly discloses a ratio of the coating thickness to “a diameter of the core particle” of about 0.067 falling within the claimed range of about 0.01 to about 0.1, thereby anticipating instant claim 8.
With respect to instant claim 10, Wang discloses that the melamine-coated APP particles are formed from 1900 parts by weight of APP and 100 parts by weight of melamine to provide 2000 parts by weight of the melamine-coated APP particles, and thus “a weight ratio of the phosphorus flame retardant of the core particle [i.e., APP] and the melamine flame retardant as the coating layer” of 19:1 (i.e., 95:5), and hence, Wang anticipates instant claim 10.
With respect to instant claims 16 and 18, Wang discloses a molded sheet formed from 100 parts by weight of polystyrene resin and 30 parts by weight of the thermoplastic resin-coated APP particles that in several working examples include 100 parts by weight of the melamine-coated APP particles (APP-1) per 110 parts by weight of the thermoplastic resin-coated APP particles, and hence, Wang clearly discloses an “elastic sheet” comprising a polymer resin, and “the composite flame retardant as claimed in claim 1” wherein the content of the melamine-coated APP particles (APP-1) as the claimed composite flame retardant falls within the claimed range as recited in instant claim 18, thereby anticipating instant claims 16 and 18 (Examples).
Claims 1-10, 16, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukumura (USPN 5,534,291). Fukumura discloses a process for producing melamine-coated ammonium polyphosphate comprising powdery ammonium polyphosphate (as in instant claims 3-4) that is uniformly coated with melamine (as in instant claims 1 and 6-7) without changing the shape of the ammonium polyphosphate and can be used as a flame-retardant component to be added to or impregnated in thermoplastic resins (Abstract, Col. 1, lines 10-15), with working examples specifically resulting in melamine-coated ammonium polyphosphate particles comprising ammonium polyphosphate (APP) as core particles thereof and melamine as a coating layer provided on the APP core particles as in instant claim 1, with average particle sizes of the uncoated APP particles falling within the claimed range as recited in instant claim 2, and given the weight parts of melamine and APP utilized to produce said coated particles reading upon the claimed weight ratio of instant claim 10, and the respective average particle sizes thereof as shown in Table 1 falling within the claimed average particle diameter range of instant claim 9 and providing a coating thickness falling within the claimed thickness ranges of instant claims 1 and 5, as well as reading upon the claimed ratio of the coating thickness to the diameter of the core particles as in instant claim 8, Fukumura anticipates instant claims 1-10 (Entire document, particularly Abstract; Col. 1, lines 10-15; Examples, Table 1).
With respect to instant claims 16, 18, and 19, in addition to the discussion above with respect to instant claim 1, Fukumura discloses that 20 parts by weight of the respective melamine-coated APP particles obtained in the respective examples are blended with 80 parts by weight of polypropylene resin and then formed into pellets that are utilized to produce test pieces or sheets having a thickness of 1.6 mm (i.e., 1600 µm, falling within the claimed range as recited in instant claim 19; Examples, and Col 5., lines 53-61), reading upon the claimed “elastic sheet comprising: a polymer resin, and the composite flame retardant as claimed in claim 1” as recited in instant claim 16, with the 20 parts of the melamine-coated APP particles as the claimed “composite flame retardant” to the 80 parts by weight of the polypropylene resin as the claimed “polymer resin” falling within the claimed range as recited in instant claim 18. Hence, Fukumura anticipates instant claims 16, 18, and 19.
Claims 1, 3-4, 6-7, 10-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Staendeke (USPN 4,467,056). Staendeke discloses a particulate agent for impeding the combustibility of combustible materials (Abstract), specifically as a flame-retardant agent for rendering polyurethanes and polyurethane foams flameproof (Col. 2, lines 11-16), wherein the flame-retardant particulate agent has a mean particle size of from approximately 0.01 to 0.05 mm (i.e., approximately 10-50 µm) and comprises approximately 75 to 99% by weight of ammonium polyphosphate in the form of individual particles (reading upon the claimed “core particles including a phosphorus flame retardant” as in instant claims 1 and 11, and particularly as in instant claims 3-4), and approximately 1 to 25% by weight, preferably 2.5 to 10% by weight, of a hardened water-insoluble polycondensation product of melamine and formaldehyde (a “melamine flame retardant” as in instant claims 1 and 11 given that melamine formaldehyde has flame retardant properties) encasing the individual ammonium polyphosphate particles (reading upon the claimed “coating layer on a surface of the core particles, the coating layer including a melamine flame retardant” as in instant claims 1 and 11 as well as “in the form of a continuous film or an island” as in instant claim 6 and “includes melamine” as in instant claim 7 as broadly interpreted; Abstract, Col. 1, line 45-Col. 2, line 1). Staendeke discloses a method of producing the particulate agent by applying the melamine/formaldehyde to the ammonium polyphosphate particles, for example, by the following steps: “the ammonium polyphosphate is suspended in methanol, the suspension is heated until the methanol refluxes weakly [i.e., about 65°C or the boiling point of methanol falling within the claimed temperature range as recited in instant claim 13] and subsequently an aqueous methanolic solution of the melamine/formaldehyde resin is introduced dropwise into the suspension” (reading upon the solvents recited in instant claims 12) and “[a]fter a post-reaction period of, for example, from 0.5 to 2 hours [as in instant claim 13], the suspension is filtered and the filter residue is dried for 150 to 180 minutes in a stream of nitrogen at 100°C” (as in instant claims 11 and 15; Col. 2, lines 17-28), with working examples having a content of melamine/formaldehyde resin in the end product ranging from 2.5 to 17.8% by weight with specific examples falling within the claimed weight ratio range of instant claims 10 and 11 with respect to the encased particles and the mixture of materials for the method of preparing the encased particles, respectively (Examples 1-5, Table); and given the above mean particle size range for the resulting encased ammonium polyphosphate particles as disclosed by Staendeke, e.g., approximately 10-50 µm, and the weight percentages of the examples thereby providing at least one example with a thickness of the melamine formaldehyde coating of “less than or equal to about 1 µm” as in instant claim 1, the Examiner takes the position that Staendeke anticipates the method as recited in instant claims 11-13 and 15 and discloses the claimed invention with sufficient specificity to anticipate the composite flame retardant as recited in instant claims 1, 3-4, 6-7, and 10.
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.
Alternatively, claims 1, 3-4, 6-7, and 10, as well as claims 2, 5, 8-9, 14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Staendeke (USPN 4,467,056) as applied above to claims 1, 3-4, 6-7, 10-13, and 15, and further discussed below.
The teachings of Staendeke are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory with respect to product claims 1, 3-4, 6-7, and 10 (in addition to method claims 11-13 and 15) for the reasons discussed above wherein based upon the above mean particle size range for the resulting encased ammonium polyphosphate particles as disclosed by Staendeke, e.g., approximately 10-50 µm, and the weight percentages of the content of melamine/formaldehyde resin in the resulting encased ammonium polyphosphate particles, at least one working example would provide a coating thickness of “less than or equal to about 1 µm” as recited in instant claim 1, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1, 3-4, 6-7, and 10 would have been obvious over the teachings of Staendeke given that one having ordinary skill in the art before the effective filing date of the claimed invention would have reasonably expected at least one of the working examples taught by Staendeke utilizing ammonium polyphosphate having a degree of condensation of n~700, commercially available under the tradename EXOLIT® 263, as a core particle upon which the melamine/formaldehyde is coated to produce encased particles with a content of the melamine/formaldehyde as shown in the Table, to provide a coating thickness within the claimed range (particularly given estimates based upon working Example 1 of related Staendeke, USPN 4,347,334, wherein EXOLIT® 263 encased within phenol/formaldehyde constituting 9.5% by weight of the encased particles has an average size of 0.04 mm/40 µm as shown in the attached Google AI calculation results), and/or given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any content of melamine/formaldehyde within the approximately 1 to 25% by weight range taught by Staendeke to provide encased ammonium polyphosphate particles having any mean size within the range taught by Staendeke of from approximately 10 to 50 µm, which would provide a coating thickness with the claimed ranges as recited in instant claims 1 and 5 based upon estimates of the densities thereof (as evidenced by the attached Google AI calculation results). Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1, 3-4, 6-7, and 10 (alternatively) would have been obvious over the teachings of Staendeke.
With respect to instant claims 2, 5, and 8-9, given the above ranges for the mean particle size of the encased particles and the weight percentage ranges for the ammonium polyphosphate and melamine/formaldehyde of the encased particles as taught by Staendeke as discussed above, wherein the mean size of from approximately 10 to 50 µm, overlaps the claimed range of about 5 µm to about 31 µm as recited in instant claim 9, with the weight percentage of melamine/formaldehyde to ammonium polyphosphate of the encased particles of said mean particle size suggesting an average particle diameter of the starting ammonium polyphosphate particles as in instant claim 2, as well as a thickness as in instant claim 5 and thickness ratio as in instant claim 8 (based upon similar calculations as above), the claimed invention as recited in instant claims 2, 5, and 8-9 would have been obvious over the teachings of Staendeke.
With respect to instant claim 14, in addition to the discussion above with respect to instant claim 11, from which claim 14 depends, Staendeke specifically teaches an example wherein ammonium polyphosphate particles are suspended in methanol and heated until the methanol refluxed weakly (reading upon the claimed “preparing a first solution in which the phosphorus flame retardant is dispersed in a solvent”), followed by mixing with an aqueous methanolic solution of a melamine/formaldehyde resin (reading upon the claimed “preparing a second solution in which a melamine flame retardant is dispersed in a solvent”) by introducing the aqueous methanolic solution (the “second solution”) into the suspension (the “first solution”) dropwise while stirring, such that unlike claim 14, Staendeke teaches “dropping” the second solution into the first solution and stirring (Example 1). However, given that the order of adding ingredients is prima facie obviousness and/or that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to alternatively introduce the suspension of ammonium polyphosphate particles into the aqueous methanolic solution of melamine/formaldehyde as in the instantly claimed “dropping a first solution into the second solution”, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 14 would have been obvious over the teachings of Staendeke.
With respect to instant claims 16-21, it is again noted that Staendeke teaches that the flame-retardant agent can be used for rendering polyurethanes (as in instant claim 17) and polyurethane foams (as in instant claim 21) flameproof, and given that Staendeke teaches that the content of the coated flame-retardant agent in polyurethane foam is approximately 5 to 50% by weight, based on the amount of alcoholic (e.g., polyol) component in the polyurethane (Col. 2, lines 11-16), thereby reading upon and/or rendering obvious the claimed about 1 to 60 parts by weight based on 100 parts by weight of the polyurethane resin as in instant claim 18, Staendeke teaches a flameproof polyurethane foam comprising a urethane resin as a polymer resin as in instant claims 16-17, particularly a polyurethane “foam rubber” as in instant claim 21, in a flame retardant content as in instant claim 18, such that the only difference between the teachings of Staendeke and the claimed invention as recited in instant claims 16-21, is that Staendeke does not specifically teach that the flameproof polyurethane foam is provided in the form of a sheet as in instant claim 16, and particularly a sheet having a thickness as recited in instant claims 19-20. However, given that Staendeke does not limit the end use, shape, or dimensions of the flameproof polyurethane foam to any particular end use application, shape, or dimensions, and that the selection of shape and size, e.g., thickness, of the polyurethane foam in general is a matter of choice which a person of ordinary skill in the art would have found obvious absent evidence that a particular shape and/or size, e.g., thickness, was/were significant or provided criticality and/or unexpected results, the Examiner takes the position that the claimed invention as recited in instant claims 16-21 would have been obvious over the teachings of Staendeke, especially given that a “sheet” is an obvious form or shape of polyurethane foam and that a thickness greater than and/or on the same order of magnitude as the mean particle size of the encased particles as taught by Staendeke would have been obvious to one skilled in the art.
Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Mikami (US2009/0088495A1). Mikami teaches a flame-retardant particle (10) (Fig. 1) and a method of producing the flame-retardant particle (10) by a wet process or dry process (Paragraphs 0032-0034), wherein the flame-retardant particle (10) is a composite particle comprising a core particle (2) containing a compound having a structure represented by formula (1) that further contains at least one kind of a flame retarder selected from the group consisting of a phosphorus-based flame retarder (as in instant claim 1) and a nitrogen-based flame retarder, present in a content of preferably 1 mass% or more, more preferably 5 mass% or more, based on the entire core particle (2) with an example utilizing 10wt% (Paragraphs 0017-0021, Example 3); and a coating particle (4) that covers at least a part of a surface of the core particle (2) (generally reading upon the claimed coating layer of instant claim 1 in the form of an island as in instant claim 6) and contains at least one member selected from the group consisting of an inorganic particle, an organic particle, and a metal particle (Claim 6), wherein the organic particle as the coating particle (4) may be a particle comprising an organic polymer (Claim 8) such as a melamine resin (Paragraph 0027) which is known to have flame retardant properties and thus reading upon the claimed “coating layer on a surface of the core particles, the coating layer including a melamine flame retardant” as recited in instant claim 1 (Entire document, particularly Abstract; Fig. 1; Paragraphs 0017-0021, 0027 and 0032-0034; and Claims 1, 4, 6, and 8). Mikami teaches that in an exemplary embodiment, the content of the coating particle (4) in the flame-retardant particle (10) is preferably from 5 to 100 parts by mass, per 100 parts by mass of the core particle (2) (reading upon the weight ratio as recited in instant claim 10, particularly given the open-ended content range of the phosphorus flame retardant and/or the 10wt% utilized in the examples; Paragraph 0035, and Examples); and that in this exemplary embodiment, the flame retardant particle (10) preferably has a volume average particle diameter of 5 µm or less (overlapping and thus reading upon and/or rendering obvious the claimed average particle diameter as recited in instant claim 9) while the volume average particle diameter of the coating particle (4) is preferably 1/5 or less of the volume average particle diameter of the core particle (2), more preferably 1/10 or less of the volume average particle diameter of the core particle (2) and 1 nm or more (Paragraph 0037), and given that the average particle diameter of the coating particle (4) would correspond to the thickness of the claimed coating layer, reading upon and/or rendering obvious the claimed coating layer thickness of less than or equal to about 1 µm as recited in instant claim 1, as well as the claimed average particle diameter of the core particles of about 5 µm to about 30 µm as recited in instant claim 2, the claimed thickness range of about 10 nm to about 900 nm as recited in instant claim 5, and the ratio of a thickness of the coating layer to a diameter of the core particle as recited in instant claim 8. Hence, given the above and that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize a core particle (2) comprising phosphorus-based flame retarder, such as those recited in Paragraph 0018 like triphenyl phosphate (Paragraphs 0017-0018), reading upon the phosphorus flame retardant as recited in instant claims 1 and 3-4, in combination with any of the suitable organic coating particles (4) taught by Mikami, such as an organic coating particle (4) comprising melamine resin, thus “a coating layer including a melamine flame retardant” that “includes melamine” as in instant claims 1 and 7, the claimed invention as recited in instant claims 1-10 would have been obvious over the teachings of Mikami given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claims 11-15, in addition to the teachings above wherein a content of phosphorus flame retardant in the core particle (2) and a content of the melamine resin as the coating particle (4) reads upon and/or renders obvious the claimed weight ratio as recited in instant claim 10 (and hence also reading upon and/or rendering obvious the weight ratio of claim 11), Mikami teaches that in a wet process of producing the flame-retardant particle (10), for example, “a compound having a structure represented by formula (1) and a flame retarder which is used, if desired, are dissolved or dispersed in a solvent such as ethyl acetate, the resulting solution [i.e., preparing a first solution in which the phosphorus flame retardant is dispersed in a solvent as in instant claim 14] is particulated by suspending and stirring it in water [as in instant claim 12] where a coating particle 4 is dispersed [i.e., “mixing…in a solvent…to prepare a mixture” as in instant claim 11 and “preparing a second solution in which a melamine flame retardant is dispersed in a solvent, and dropping a first solution into the second solution and stirring” as in instant claim 14], and the solvent is removed under heating at a temperature of about 80°C with stirring [e.g., “drying the mixture” as in instant claim 11 and “drying is performed in a temperature range of about 80°C to about 180°C” as in instant claim 15] and suspending the system, whereby a flame-retardant particle 10 with at least a part of the core particle 2 surface being covered by the coating particle 4 is produced” (Paragraph 0033); and given that Mikami teaches that other solvents may be utilized wherein the heating temperature at the removal of solvent is adjusted according to the solvent used (Paragraph 0033), with working examples utilizing filtration (as in instant claim 11) to recover the produced flame-retardant particle (10) and then vacuum drying (also reading upon the claimed “filtering and drying the mixture” as in instant claim 11; Examples), the Examiner takes the position that the claimed invention as recited in instant claims 11, 12, 14, and 15 would have been obvious over the teachings of Mikami. Further, with respect to instant claim 13, given that Mikami does not limit the mixing temperature and/or mixing time for producing the flame-retardant particle (10), and teaches examples wherein the components are mixed for an hour and then subjected to solvent removal by heating at a liquid temperature of 80°C at which point the compound of formula (I) is particulated and at the same time, the surface thereof is coated with the coating particles (Examples), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 13 would have been obvious over the teachings of Mikami wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum mixing temperature and mixing time based upon the materials utilized to produce the flame-retardant particle (10), with the claimed ranges being obvious given that Mikami utilizes similar times and temperatures in the examples.
With respect to instant claims 16-21, Mikami teaches that the flame-retardant particle (10), as discussed in detail above and reading upon the claimed composite flame retardant as recited in claim 1, may be incorporated into a resin composition comprising a resin such as a thermoplastic polyurethane, an acrylic resin, a silicone resin, or various rubbers as recited in Paragraph 0040, alone or in combination of two or more thereof (Paragraph 0040, as in instant claim 17); in a content of the flame-retardant particle (10) of preferably 1 to 100 parts by mass, more preferably from 5 to 50 parts by mass, per 100 parts by mass of the resin (Paragraph 0041, as in instant claim 18); and then utilized to produce a formed body, “by a known method such as injection molding, injection compression molding, press molding, extrusion molding, blow molding, calendar molding, coating molding, cast molding or dipping molding” (Paragraph 0045). Mikami teaches that the resin formed body is not particularly limited in its usage with examples thereof recited in Paragraph 0046, and given that Mikami teaches test specimens formed as strips or sheets having a thickness of 2.0 mm, reading upon the claimed thickness of “about 100 µm to about 2,000 µm” as recited in instant claim 19, the Examiner takes the position that the claimed invention as recited in instant claims 16-19 would have been obvious over the teachings of Mikami given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, with respect to instant claim 20, given that Mikami does not limit the shape or size/thickness of the resin formed body and teaches suitable applications in Paragraph 0046 that would suggest a thickness on the same order as the claimed range recited in instant claim 20, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 20 would have been obvious to one having ordinary skill in the art based upon the teachings of Mikami wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum shape and size/thickness of the resin formed body for a particular end use. Similarly, with respect to instant claim 21, given that several of the end uses taught by Mikami with respect to the resin composition, including one comprising a rubber as the resin, are known to be provided in the form of a foam, e.g., casings or housings, food tray, building material, etc., the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 21 would have been obvious to one having ordinary skill in the art based upon the teachings of Mikami.
Claims 1-10 and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Fujisaki (WO2023/149212A1, please refer to the attached machine translation for the below cited sections), in view of Wang or Fukumura or Staendeke or Mikami (each discussed in detail above and incorporated herein by reference), and as further evidenced by Cao (Kinetic Study on Surface Modification of Ammonium Polyphosphate with Melamine). Fujisaki teaches a secondary battery (i.e., a rechargeable battery), such as any of the types of secondary batteries recited in Paragraph 0011, including a lithium-ion polymer battery (thereby teaching and/or suggesting a solid polymer electrolyte), wherein the battery comprising two or more cell structures (1), each including a positive electrode, a negative electrode, and an electrolyte layer between the positive and negative electrodes, housed within a battery case (10), and a resin foamed sheet positioned on the inner surface of the battery case accommodating the battery cells and/or positioned between adjacent battery cells, preferably sandwiched between them, to isolate them from each other (as in instant claims 22-23; Paragraphs 0001-0002, and 0006-0016; Fig. 1). Fujisaki teaches that examples of resin materials for the foamed sheet may include thermoplastic resins, thermosetting resins, and elastomer resins, such as those recited in Paragraph 0019 including as polyolefin resins like polypropylene (e.g., as in Fukumura), polystyrene resin (e.g., as in Wang), acrylic resin (e.g., as in Mikami), thermoplastic polyurethane resin (e.g., as in Staendeke or Mikami), and various rubbers (e.g., as in Mikami, with the above resins also recited in Cao, Introduction, and reading upon the polymer resins as recited in instant claims 17 and 21); and that the foamed sheet may be provided in the form of a laminate including a flame-retardant layer (Paragraph 0016), or as a single-layer sheet that further comprises flame retardants mixed into the resin composition as needed (Paragraphs 0035 and 0050), as well as a heat absorbent such as inorganic particles (Paragraph 0026-0030), a heat storage material preferably in the form of coated particles covered with an outer shell made of organic material such as melamine resin (Paragraphs 0031-0033), and other additives as needed (Paragraph 0035). Fujisaki teaches that organic and inorganic flame retardants can be used as appropriate with examples thereof including phosphorus compounds, halogen compounds, or guanidine compounds, with specific examples thereof including monoammonium phosphate, disammonium phosphate, triesters of phosphate, phosphite esters, phosphonium salts, and triamide phosphate (Paragraph 0035); and although Fujisaki clearly teaches that the flame retardants may be used in combinations of two or more types, Fujisaki does not teach that the flame retardant utilized is a composite particle comprising a phosphorus flame retardant as core particles and a coating layer on a surface of the core particles wherein the coating layer includes a melamine flame retardant and has a thickness of less than or equal to about 1 µm as recited in instant claim 1 (from which instant claims 16-23 depend). However, given that Fujisaki is concerned with the dispersibility of heat absorbers, heat storage materials, etc. (e.g., flame retardants and other additives), in the resin as noted in Paragraph 0019 with respect to the preference of thermoplastic resins from the viewpoint of improving the mechanical strength of the foamed sheet and dispersibility of such additives, or as noted in Paragraphs 0023, 0025, and 0029, as well as providing flame retardant properties to effectively prevent or delay the spread of fire (Entire document, particularly Paragraphs 0005, 0028, and 0056-0060), and that it is well established in the art that melamine is a functionally equivalent organic flame retardant in the art to nitrogen containing flame retardants taught by Fujisaki, and that by coating phosphate flame retardants with melamine resulting in melamine-coated phosphate particles, or composite flame retardant particles as in the instant invention, dispersibility of the phosphate flame retardant in a resin can be improved, and/or synergistic flame retardant properties and/or intumescent flame retardant properties can be obtained (as evidenced by Wang or Fukumura or Staendeke or Mikami, each as discussed in detail above and incorporated herein by reference; or as evidenced by Cao, Entire document, particularly Abstract and Introduction with respect to improved dispersibility in a resin); it would have been obvious to one having ordinary skill in the art to provide the phosphorus flame retardants taught by Fujisaki as melamine-coated particles or composite particles with melamine provided as a coating layer thereon as in the claimed invention given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way. Further, given that it would have been obvious to one having ordinary skill in the art to utilize any known phosphate-containing flame retardant in the art that can be incorporated into resins like those recited by Fujisaki, such as the coated or composite flame retardants taught by Wang or Fukumura or Staendeke or Mikami (reading upon instant claims 1-10 as discussed in detail above), the use of a coated or composite flame retardant as the flame retardant in the foamed sheet taught by Fujisaki would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. Hence, absent any clear showing of criticality and/or unexpected results, instant claims 1-10 as well as instant claims 16-17 and 21-23 would have been obvious over the combined teachings of Fujisaki in view of Wang or Fukumura or Staendeke or Mikami (and as further evidenced by Cao), given that it is prima facie obviousness to use a known technique to improve similar devices in the same way and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 18, although Fujisaki does not specifically limit the content of the flame retardant in foamed sheet, given the contents of the resin, heat absorbent, and other components as recited in Paragraphs 0030, and 0049-0050, particularly the additive contents as recited in Paragraph 0050 falling within the claimed range, the claimed invention as recited in instant claim 18 would have been obvious over the combined teachings of Fujisaki in view of Wang or Fukumura or Staendeke or Mikami (and as further evidenced by Cao), wherein one skilled in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum content of the composite flame retardant to provide the desired degree of flame retardancy for a particular end use.
With respect to instant claims 19-20, Fujisaki teaches that the thickness of the foamed sheet for the secondary battery is preferably 100 µm to 20,000 µm, more preferably 100 µm to 6,000 µm, and even more preferably 100 µm to 1,000 µm (Paragraph 0036), reading upon the claimed thickness ranges as recited in instant claims 19-20, and hence, the claimed invention as recited in instant claims 19-20 would have been obvious over the combined teachings of Fujisaki in view of Wang or Fukumura or Staendeke or Mikami (and as further evidenced by Cao).
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 1-10 and 16-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 9, 12-14, 21-25, and 27-28 of copending Application No. 18/651818 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are similarly directed to a composite flame retardant for an all-solid-state rechargeable battery (copending claims 1-4, 6, 9, and 12-14, with copending claims 2-4 reciting the same limitations as in instant claims 2-4, respectively; copending claim 6 reciting essentially the same limitations as recited in instant claim 6; copending claim 9 reciting the same limitation as recited in instant claim 7; and the ranges recited in copending claims 13, 12, and 14, overlapping and hence rendering obvious the claimed ranges of instant claims 8, 9, and 10, respectively); an elastic sheet for an all-solid-state rechargeable battery comprising the composite flame retardant (copending claims 21-25 reciting the same limitations as recited in instant claims 16-18 and 20-21, respectively, with the thickness range of copending claim 24 also reading upon the thickness range of instant claim 19); and an all-solid-state rechargeable battery comprising an elastic sheet or resin layer comprising the composite flame retardant (copending claims 27-28 reciting the same limitations as recited in instant claims 22-23, respectively), wherein the only difference between instant claim 1 and copending claim 1 as well as the above noted instant and copending claims is that the coating layer is recited in instant claim 1 has having a thickness of “less than or equal to about 1 µm”, while copending claim 1 recites a thickness of the coating layer of “greater than about 1 µm and less than or equal to about 6 µm” overlapping the claimed “less than or equal to about 1 µm” of instant claim 1, and hence rendering the thickness range obviousness as recited in instant claim 1 as well as the claimed “about 10 nm to about 900 nm” as recited in instant claim 5 given that “about 900 nm” is obvious over “greater than about 1 µm”. Hence, instant claims 1-10 and 16-23 would have been obvious over copending claims 1-4, 6, 9, 12-14, 21-25, and 27-28 as noted above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights