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 .
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.
Claim 18 is 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.
Regarding claim 18, the phrase "more preferably" 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.
Claim(s) 1-9 and 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 2005/0209357).
Regarding claims 1, 2, 4, and 5; Xu et al. teaches, in a preferred embodiment, a cationically polymerizable composition comprising 54.8% by weight of epoxy group containing compounds (10.857 UVR6000 + 8.883 Epon825 + 20.510 Epon 1163 + 14.8 Nanopox XP 22/0516 (24.676 Nanopox XP 22/0516 contains 40% silica (9.8% by weight instant D) and 60% bisphenol A diglycidyl ether (14.8% by weight epoxy compound)) (instant A; as calculated by Examiner), CPI6976 (cationic photoinitiator; instant B), 9.87% by weight Phosflex TPP (triphenyl phosphine flame retardant), which is substituted by an organophosphinate (instant C)[0071]. The total solids content of the 9.87% by weight organophosphinate (instant C) and the filler compound (9.8% by weight silica; Nanopox contains 40% silica and 60% bisphenol A diglycidyl ether; instant D) is not more than 70% by weight of the total composition (as calculated by Examiner) [Table6; Ex15; Table1].
Xu et al. does not explicitly disclose the organophosphinate flame retardant employed in an amount of at least 10% by weight. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05]. Thus, a person of ordinary skill in the art, at the time of filing, would have expected a composition employing 9.87% by weight of an organophosphinate flame retardant to have substantially similar properties as compared to a composition employing 10% by weight of the same organophosphinate flame retardant. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Xu et al. teaches the compositions are liquid [0095] and does not teach the use and/or addition of a solvent (thus the composition is solvent-free).
Regarding claim 3; Epon 825 (Resolution Performance Products) is a bisphenol A diglycidyl ether (aromatic epoxy) [Table1].
Regarding claim 6; Xu et al. teaches, in a preferred embodiment, a cationically polymerizable composition comprising 58.8% by weight of epoxy group containing compounds (10.732 UVR6000 + 9.427 Epon825 + 6.439 Epiclon N-740 + 16.098 Epon 1163 + 16.098 DER 442 (instant A; as calculated by Examiner), CPI6976 (cationic photoinitiator; instant B), 19.664% by weight Fyrolflex BDP (bisphenol A bis(diphenyl phosphate) flame retardant), which is substituted by an organophosphinate (instant C)[0071]. The total solids content of the 19.664% by weight organophosphinate (instant C) and 0% weight filler compound (instant D) is not more than 70% by weight of the total composition (as calculated by Examiner) [Table5; Ex7; Table1].
Xu et al. does not explicitly disclose the organophosphinate flame retardant employed in an amount of at least 20% by weight. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05]. Thus, a person of ordinary skill in the art, at the time of filing, would have expected a composition employing 19.664% by weight of an organophosphinate flame retardant to have substantially similar properties as compared to a composition employing 20% by weight of the same organophosphinate flame retardant. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Xu et al. teaches the compositions are liquid [0095] and does not teach the use and/or addition of a solvent (thus the composition is solvent-free).
Regarding claims 7 and 8; Xu et al. teaches the preferred embodiment further comprises 11.168% by weight of Reofos BAPP (phosphorous containing flame retardant) [Table6, Ex15; Table1]. The amount of the phosphinate flame retardant is 9.87% by weight and the amount of the filler (silica) is 9.8% by weight, as set forth above [Table6, Ex15; Table1].
Regarding claim 9; Xu et al. teaches the preferable cationic photoinitiator (CPI6976) is a mixture of triarylsulfonium hexafluoroantimonate salts [Table1].
Regarding claim 14; Xu et al. teaches the composition may further comprise oxetane compounds [0007].
Regarding claims 15-17; Xu et al. does not explicitly teach the organophosphinate in an amount of at least 20% by weight and fails to teach 15-40% by weight of fillers. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of flame retardant and filler, and would have been motivated to do so in order to achieve adequate flame retarding properties and toughness properties. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Regarding claims 18-19; Xu et al. teaches a mixture of photoinitiators (activated at different wavelengths), comprising metallocenium and onium compounds [0032].
Regarding claims 20-21; Xu et al. teaches the flame retardant can include alkyl and aryl phosphinates [0071] and may further comprise aluminum and zinc salts [0076]. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 2005/0209357), as evidenced by Sinocure® 6976 Data Sheet.
Regarding claim 10; Xu et all. Teaches employing CPI6976 (mixture of triarylsulfonium hexafluoroantimonate salts), which has excitation between 200nm and 380nm.
Sinocure® 6976 provides evidence that CPI6976 has excitation between 200nm and 380nm.
Response to Arguments
Applicant's arguments filed 04 March 2026 have been fully considered but they are not persuasive.
Applicants argue the action points to Phosflex TPP which is a phosphorous containing compound; one skilled in the art would know that triphenyl phosphate is no organophosphinate. The Examiner points out that the rejection must be viewed as a whole, wherein the example comprising Phosflex TPP is relied upon for a starting point of the amount of the flame retardant, however the Phosflex TPP may be substituted by an organophosphinate flame retardant, as taught by Xu et al. [0071]. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
As such, Xu et al. renders obvious the basic claimed polymerizable compositoin.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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