Claims 1-13 are pending in the application. Claims 1-13 are rejected.
The 112(b) rejection has been overcome in view of the present amendment and response.
The rejections over JP 6864775 in view of Gallucci, and further in view of Kuwabara have been maintained.
The non-statutory double patenting rejection over US Patent No. 12,590,208 has been obviated in view of the terminal disclaimer filed on 08/07/2026.
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.
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.
Claims 1-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 6864775 (hereinafter “JP’775”) in view of US 2007/0066737 to Gallucci et al. (hereinafter “Gallucci”).
As to claims 1-3, JP’775 discloses a foamed thermoplastic resin particle having a glass transition temperature Tg of 80 to 130oC, and comprising a thermoplastic resin, wherein the thermoplastic resin includes a polyester resin and a polyimide resin wherein the polyimide resin is present in an amount of 20 to 40% by mass of the thermoplastic resin (paragraphs 6, 48 and 115). In particular, the thermoplastic resin contains 30 % by mass of the polyimide resin (table 1, example 1).
JP’775 discloses that the polyester resin comprises at least one selected from the group consisting of a polyethylene terephthalate resin, polybutylene terephthalate resin, a polyethylene naphthalate resin, a polyethylene furanoate resin, polybutylene naphthalate resin and a mixture thereof (paragraph 17).
JP’775 does not disclose the foamed particle further comprising a phosphorus in an amount of 0.15 to 1.00% by mass with respect to the total mass of the thermoplastic resin.
Gallucci, however, discloses a foamed article obtained from a flame-retardant composition comprising 1-99% by weight of a polyetherimide, 99-1% by weight of an aryl polyester resin, 0.1-30% by weight of silicone copolymer, 0-20 % by weight of one or more metal oxides, and up to 2% by weight of one or more phosphorus containing stabilizers comprising triaryl phosphites or aryl phosphonates (paragraphs 37-46; 65, 70 and 72). Each of which reads on the claimed phosphorus flamed retardant.
Gallucci also mentions that phosphate flame retardants are also added in the foamed article (paragraph 65). The foamed article has a reduced peak heat release energy and increased time to reach the peak heat release (abstract).
“Aryl Polyphosphates: Useful Halogen-free Flame Retardants for Polymers”, Li et al., Materials 2010, 3, 4746-4760, is used as evidence to establish a fact that aryl phosphonate is a flame-retardant agent and its phosphorus content ranging from 8.8 to 13 wt% (p 4748).
Li et al. (CN 104558714) is relied upon as evidence to establish a fact that triaryl phosphite is a flame-retardant material.
The phosphorous content of the aryl phosphonate disclosed in JP’775/Gallucci/Li will be up to 0.26 wt%. This overlaps the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate one or more phosphorus flame retardants disclosed in Gallucci in the thermoplastic resin disclosed in JP’775 motivated by the desire to impart flame retardant properties.
As to claim 4, JP’775 discloses that a molded body made of a plurality of foamed thermoplastic resin particles that are thermally fusion-bonded to each other (paragraph 114).
As to claims 5 and 7, the combined disclosures of JP’775 and Gallucci do not disclose the molded body achieving flame retardant properties corresponding to a V-0, V-1 on the UL-94 vertical burning test.
However, it appears that the molded body of JP’775 in view of Gallucci meets all structural limitations and chemistry required by the claims.
The resulting molded body comprises a plurality of foamed thermoplastic resin particles thermally fusion-bonded to each other. The foamed thermoplastic resin particle with glass transition temperature Tg of 80 to 130oC is comprised of a polyester resin, 20-40 % by mass of a polyimide resin, and up to 2% by mass of a phosphorus containing stabilizers, with respect to the total mass of the thermoplastic resin.
The phosphorus containing stabilizer comprises triaryl phosphite or aryl phosphonate and each of which reads on the claimed phosphorus flamed retardant.
The foamed article has a reduced peak heat release energy and increased time to reach the peak heat release (abstract).
“Aryl Polyphosphates: Useful Halogen-free Flame Retardants for Polymers”, Li et al., Materials 2010, 3, 4746-4760, is used as evidence to establish a fact that aryl phosphonate is a flame-retardant agent and its phosphorus content ranging from 8.8 to 13 wt% (p 4748).
Song et al. (CN 104558714) is relied upon as evidence to establish a fact that triaryl phosphite is a flame-retardant material.
The resulting phosphorous content of the aryl phosphonate is up to 0.26 wt%, overlapping the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate one or more phosphorus flame retardants disclosed in Gallucci in the thermoplastic resin disclosed in JP’775 motivated by the desire to impart flame retardant properties.
Therefore, the examiner takes the position that the flame-retardant properties corresponding to a V-0 or V-1 on the UL-94 vertical burning test would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 6, JP’775 discloses that the polyimide is present in an amount of 30 % by mass with respect to the total mass of the thermoplastic resin (table 1).
As to claim 8, JP’775 discloses that the molded body has a glass transition temperature Tg from 80 to 130oC (paragraphs 8 and 87).
As to claim 10, JP’775 discloses a method for producing a foamed thermoplastic resin particle comprising:
extruding a thermoplastic resin composition containing a thermoplastic resin, and foaming agent;
foaming the thermoplastic resin composition (paragraphs 101-103);
wherein the thermoplastic resin contains a polyester resin, a polyimide resin,
an amount of the polyimide resin is 20-40 % by mass with respect to a total mass of the thermoplastic resin (paragraphs 6, 48, and 115).
JP’775 does not disclose the foamed particle comprising a phosphorus in an amount of 0.15 to 1.00% by mass with respect to the total mass of the thermoplastic resin.
Gallucci, however, discloses a foamed article obtained from a flame-retardant composition comprising 1-99% by weight of a polyetherimide, 99-1% by weight of an aryl polyester resin, 0.1-30% by weight of silicone copolymer, 0-20 % by weight of one or more metal oxides, and up to 2% by weight of one or more phosphorus flame retardants (paragraphs 37-46; and 65).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate one or more phosphorus flame retardants disclosed in Gallucci in the thermoplastic resin disclosed in JP’775 motivated by the desire to impart flame retardant properties.
As to claim 11, JP’775 discloses that the thermoplastic resin contains 30% by mass of the polyimide resin with respect to a total mass of the thermoplastic resin (table 1).
As to claim 12, JP’775 discloses a method for producing a molded body comprising:
obtaining the foamed thermoplastic resin particles,
filling a cavity of a mod with the obtained foamed thermoplastic resin particles,
heating the foamed thermoplastic resin particles in the cavity to form secondary foamed particles; and
thermally fusion bonding the secondary foamed particles (paragraph 114).
As to claim 13, JP’775 discloses that the molded body is useful as an electrical component of automobiles (paragraph 83). JP’775 does not explicitly disclose a cell case or a battery case comprising the molded body.
It appears that the molded body of JP’775 and Gallucci meets all structural limitations and chemistry required by the claims. The resulting molded body comprises the plurality of foamed thermoplastic resin particles thermally fusion-bonded to each other. The foamed thermoplastic resin particle with a glass transition temperature Tg of 80 to 130oC, is made of a polyester resin, 20-40 % by mass of a polyimide resin, and up to 2% by mass of a phosphorus containing stabilizer, with respect to the total mass of the thermoplastic resin. The phosphorus containing stabilizer comprises triaryl phosphite or aryl phosphonate and each of which reads on the claimed phosphorus flamed retardant.
The foamed article has a reduced peak heat release energy and increased time to reach the peak heat release (abstract).
“Aryl Polyphosphates: Useful Halogen-free Flame Retardants for Polymers”, Li et al., Materials 2010, 3, 4746-4760, is used as evidence to establish a fact that aryl phosphonate is a flame-retardant agent and its phosphorus content ranging from 8.8 to 13 wt% (p 4748).
Song et al. (CN 104558714) is relied upon as evidence to establish a fact that triaryl phosphite is a flame-retardant material.
The resulting phosphorous content of the aryl phosphonate is up to 0.26 wt%, overlapping the claimed range.
Therefore, the examiner takes the position that the cell case or a battery case would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over JP’775 in view of Gallucci, as applied to claim 4 above, further in view of US 2019/0203010 to Kuwabara (hereinafter “Kuwabara”).
Neither JP’775 nor Gallucci discloses or suggests a composite material comprising a molded body and a fiber-reinforced resin layer attached to at least one surface of the molded body.
Kuwabara, however, discloses a composite material comprising a molded body and a fiber-reinforced resin layer attached to at least one surface of the molded body wherein the molded body is comprised of the plurality of expanded foamed particles thermally bonded to each other (abstract; and paragraphs 92, 97 and 98).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adhere a fiber-reinforced resin layer disclosed in Kuwabara to the molded body disclosed in JP’775/Gallucci motivated by the desire to construct a composite material excellent in surface toughness and mechanical strength.
Response to Arguments
Applicant alleges that the claim is rendered obvious in view of the combined disclosures of JP’775 and Gallucci for the following reasons.
Gallucci’s phosphorous compounds are stabilizers, not the flame retardants.
The examiner respectfully disagrees.
As previously discussed, “Aryl Polyphosphates: Useful Halogen-free Flame Retardants for Polymers”, Li et al., Materials 2010, 3, 4746-4760, is used as evidence to establish a fact that aryl phosphonate is a flame-retardant agent and its phosphorus content ranging from 8.8 to 13 wt% (p 4748).
Song et al. (CN 104558714) is relied upon as evidence to establish a fact that triaryl phosphite is a flame-retardant material.
Applicant asserts that the amount of phosphorus-containing stabilizer in Gallucci is different from the claimed amount of phosphorus.
The examiner respectfully disagrees.
Gallucci discloses the aryl phosphonate is present in an amount of up to 2 wt% (paragraphs 46 and 70). In view of the typical content of the phosphorus in the aryl phosphonate ranging from 8.8 to 13 wt% as evidenced by Li, the foamed article of Gallucci can include up to 0.26 wt% of the phosphorus. This overlaps the claimed range.
Applicant states that Gallucci’s system is comprised of a resorcinol-based polyester, not the polyester resin as presently claimed. Therefore, it is unclear whether the flame-retardant effect aimed by Gallucci would be achieved to the claimed polyester-based resin.
The examiner respectfully disagrees.
Gallucci does not need to disclose the claimed polyester resin because such was already addressed in JP’775.
Applicant’s statement is not commensurate in scope with the independent claims because nothing specific about the flame retardance of V-0, V-1, or V-2 has been recited in these claims.
As a matter of fact, the polymer blend of Gallucci comprising a resorcinol-based polyester, a polyimide, a silicone copolymer, and up to 2 wt% aryl phosphonate is a flame-retardant material. The aryl phosphonate can serve as a flame-retardant agent for the polymer blend including the resorcinol-based polyester. As the claimed polyester and the resorcinol-based polyester are in the same class of polyester, it is not seen that the same flame retardancy effect would not be achieved as the aryl phosphonate flame retardant is added to the claimed polyester resin.
Applicant argues that Gallucci fails to address problems specific to foams.
The examiner respectfully disagrees.
Gallucci does disclose the flame-retardant polymer blend composition can be formed into an article including a foam material using structural foam molding (paragraph 72).
Applicant contends that the specification of the claimed invention has demonstrated the criticality of the amounts of the polyimide resin and phosphorus for improved flame retardancy and moldability.
The examiner respectfully disagrees.
As shown in the tables of the Applicant’s disclosure, the molded body obtained through thermally fusing the foamed particles wherein each particle comprises 48-78 wt% PET, 10-40 wt% PEI, 0.22-0.88 wt% phosphorus, a nucleating agent and talc has a flame retardance of V-0, V-1 or V-2. However, none of these have been reflected in the claim. It is unclear whether the molded body of the foamed particles merely comprising PET, 5-45 wt% PEI and 0.15 to 1.00 wt% phosphorus in the absence of a nucleating agent and talc could achieve the same flame retardance discussed in the Applicant’s specification.
Accordingly, the rejections over JP’775 in view of Gallucci, and further in view of Kuwabara have been maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
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