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 .
Election/Restrictions
Applicant’s election without traverse of methyl formate as (b) the first co-blowing agent species, isobutane as (c) the second co-blowing agent species in the reply filed on 12/10/2024 is acknowledged.
Claims 4, 8, 13, 17, 18, and 19 reciting ethanol and combination of methyl formate and ethanol as (b) the first co-blowing agent species, claim 6 reciting dimethyl ether and combination of dimethyl ether and isobutane as (c) the second co-blowing agent species are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/10/2024.
Response to Amendment
The amendment filed on 6/4/2025 has been entered. Claim(s) 1, 10-11, 13-15 and 17 is/are currently amended. Claim(s) 9 has/have been cancelled. Claim(s) 1-8 and 10-20 is/are pending with claim(s) 4, 6, 8, 13 and 17-19 withdrawn from consideration. Claim(s) 1-3, 5, 7, 10-12, 14-16 and 20 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 6/4/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 6/4/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the invention as now claimed produces an unexpected improvement in both the lambda of foam made with the blowing agent and an unexpected decrease in foam density.
In response, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 1 recites from about 50% by weight to about 70% by weight of one or more HFOs having three carbon atoms and/or one or more HFCOs having three carbon atoms. This covers a wide variety of HFOs and HFCOs. However, the examples only employ two components, 1234ze(E) and 1233zd(E), with amounts ranging from about 55 to 65% [0150-0188 spec.]. It is not known if other HFOs and HFCOs (e.g., 1233zd(Z), 1224yd(Z), …) will give the same result; or amounts around 50% and 70% will give the same result. Claim 1 recites a first co-blowing agent consisting essentially of from about 5% to about 20% by weight of methyl formate. However, the examples only employ about 10-15% by weight of methyl formate. It is not known if about 5% and about 20% of methyl formate will give the same result. Similarly, the claimed amounts of isobutane and carbon dioxide exceed the ranges in the examples. Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-3, 5, 7, 10-12, 14-16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Horn (US 20110288192 A1) in view of Chen (US 20200262995 A1).
Regarding claims 1-3, 5 and 7, Van Horn teaches blowing agents comprising tetrafluoropropene (HFO) and at least one co-blowing agent selected from carbon dioxide, alkanes and an alcohol used in the preparation of extruded polystyrene foams having low density [abstract and 0003]. The blowing agent comprises about 50 wt% or more tetrafluoropropene, including trans-isomer of 1,3,3,3-tetrafluoropropene (1234ze(e)) [0012], 5-50 wt % of an alkane including butanes [0020 and claims 3 and 14], and 0-3 wt% of carbon dioxide [0020].
The examiner submits that the 1234ze(e) reads on the claimed (a) HFO; and its amount of about 50 wt% or more overlaps the claimed amount of from about 50% by weight to about 70% by weight. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Van Horn does not teach the claimed (b) methyl formate. In the same field of endeavor, Chen teaches a blowing agent for extruded polystyrene foam comprising transHFO-1234ze [abstract]. Chen teaches that the composition comprises co-blowing agents including methyl formate and ethanol [0011]. Thus, Chen discloses methyl formate to be art-recognized equivalents to ethanol which is equally useful as a blowing agent. Therefore, it would have been obvious to one of ordinary skill to utilize methyl formate instead of ethanol as the other blowing agent in Van Horn’s composition because it is obvious to substitute art-recognized equivalents for the same purpose. See MPEP 2144.06. Since Van Horn teaches 5-40 wt% of ethanol as stated above, it would be obvious to use about 5-40 wt% of methyl formate, which overlaps the claimed (b) from about 5% to about 20% by weight of methyl formate.
Van Horn teaches butanes, which include two isomers: n-butane and isobutane. Isomers are compounds with the same formula but a different arrangement of atoms in the molecule. Isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), MPEP 2144.09.II. Additionally, Van Horn describe similarities in utility of butanes and claimed isobutane. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); MPEP 2144.09. It would have been obvious to one of ordinary skill in the art at the time of the invention to select isobutane as the blowing agent, as it is expected to possess similar properties and have the same utility as a blowing agent. Van Horn’s 5-50 wt % of isobutane overlaps the claimed (c) from about 20% to about 40% by weight of isobutane.
Van Horn’s 0-3 wt% of carbon dioxide overlaps the claimed (d) from about 2% to about 5% by weight of carbon dioxide.
The transitional phrase “consisting essentially of” serves to limit the claim scope to only those components recited and those that do not affect basic and novel characteristics of the claim. Van Horn’s blowing agent composition comprises “tetrafluoropropene and at least one co-blowing agent selected from carbon dioxide, water, alkanes, 1,1-difluoroethane, an alcohol or mixtures thereof” [claim 1]. There is no required component that will affect basic and novel characteristics of the claim.
Regarding claims 10-12 and 14, Van Horn teaches blowing agents comprising tetrafluoropropene (HFO) and at least one co-blowing agent selected from carbon dioxide, alkanes and an alcohol used in the preparation of extruded polystyrene foams having low density [abstract and 0003]. The blowing agent comprises about 50 wt% or more tetrafluoropropene, including trans-isomer of 1,3,3,3-tetrafluoropropene (1234ze(e)) [0012], 5-50 wt % of an alkane including butanes [0020 and claims 3 and 14], and 0-3 wt% of carbon dioxide [0020].
Van Horn does not teach 1233zd(e). In the same field of endeavor, Chen teaches a blowing agent composition for extruded polystyrene foams [0004] comprising trans-HFO-1234ze (equivalent to 1234ze(e)) and trans-HCFO-1233zd (equivalent to 1233zd(e)) [0014]. Since Chen recognized 1234ze(e) and 1233zd(e) are equivalent for the same purpose of being used as a blowing agent in similar extruded polystyrene foam product, it would have been obvious for one of ordinary skill in the art at the time of filing to combine 1234ze(e) and 1233zd(e) in Van Horn’s composition. It is prima facie obvious to combine or substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. The combination of 1234ze(e) and 1233zd(e) reads on the claimed (a). It would have been obvious to have a blowing agent composition comprising about 50 wt% or more of a combination of 1234ze(e) and 1233zd(e). Van Horn’s amount of about 50 wt% or more overlaps the claimed amount of from about 45% by weight to about 65% by weight of a combination of 1234ze(E) and 1233zd(E). A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Van Horn does not teach the claimed (b) methyl formate. Chen teaches that the composition comprises co-blowing agents including methyl formate and ethanol [0011]. Thus, Chen discloses methyl formate to be art-recognized equivalents to ethanol which is equally useful as a blowing agent. Therefore, it would have been obvious to one of ordinary skill to utilize methyl formate instead of ethanol as the other blowing agent in Van Horn’s composition because it is obvious to substitute art-recognized equivalents for the same purpose. See MPEP 2144.06. Since Van Horn teaches 5-40 wt% of ethanol as stated above, it would be obvious to use about 5-40 wt% of methyl formate, which overlaps the claimed (b) from about 5% to about 15% by weight of methyl formate.
Van Horn teaches butanes, which include two isomers: n-butane and isobutane. Isomers are compounds with the same formula but a different arrangement of atoms in the molecule. Isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), MPEP 2144.09.II. Additionally, Van Horn describe similarities in utility of butanes and claimed isobutane. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); MPEP 2144.09. It would have been obvious to one of ordinary skill in the art at the time of the invention to select isobutane as the blowing agent, as it is expected to possess similar properties and have the same utility as a blowing agent. Van Horn’s 5-50 wt % of isobutane overlaps the claimed (c) from about 25% to about 40% by weight of isobutane in claim 10 and from about 30% to about 40% by weight of isobutane in claim 12, respectively.
Van Horn’s 0-3 wt% of carbon dioxide overlaps the claimed (d) from about 3% to about 5% by weight of carbon dioxide.
Van Horn teaches “at least one co-blowing agent selected from carbon dioxide, water, alkanes, 1,1-difluoroethane, an alcohol or mixtures thereof” [claim 1]; and “where the alkane is selected from pentanes, butanes or mixtures thereof [claim 3]. Thus, only one compound in the above list is needed for the co-blowing agent. When isobutane is selected as the co-blowing agent, there is no need for the other compounds. This meets the limitation of “consisting essentially of” and “consists of”.
Regarding claim 15, Van Horn in view of Chen teaches that the blowing agent comprises about 50 wt% or more of a combination of 1234ze(e) and 1233zd(e) as stated above.
Chen teaches the blowing agent comprising from about 1 to about 99 wt % of 1234ze(e) and from about 2 to about 90 wt % of 1233zd(e) [0014]. It would have been obvious to one of ordinary skill in the art at the time of the invention to form a blowing agent according to Van Horn including about 50 wt% or more of a combination of 1234ze(e) and 1233zd(e), that comprises about 1 to about 99 wt % of 1234ze(e) and about 2 to about 90 wt % of 1233zd(e), as Chen demonstrates this range to be suitable for similar blowing agent composite. This represents the use of a suitable range of 1234ze(e) and 1233zd(e) in a blowing agent which are compositionally similar to those of Chen and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141. The about 1 to about 99 wt % of 1234ze(e) and about 2 to about 90 wt % of 1233zd(e) overlap the claimed from about 30% by weight to about 50% by weight of 1234ze(E) and from about 10% by weight to about 20% by weight of 1233zd(E).
Van Horn in view of Chen teaches about 5-40 wt% of methyl formate as stated above, which overlaps the claimed (b) from about 5% to about 15% by weight of methyl formate.
Van Horn teaches 5-50 wt % of isobutane as stated above, which overlaps the claimed 20-40% isobutane.
Van Horn teaches 0-3 wt% of carbon dioxide as stated above, which overlaps the claimed (d) from about 3% to about 5% by weight of carbon dioxide. Since Van Horn’s 1234ze(e), 1233zd(e), methyl formate, isobutane, and carbon dioxide meet the limitation of (a1), (a2), (b), (c) and (d), the limitation of “the (a1), (a2), (b),(c) and (d) together comprise at least about 97% by weight of the blowing agent” is automatically met.
Regarding clam 16, Van Horn in view of Chen teaches about 1 to about 99 wt % of 1234ze(e) and about 2 to about 90 wt % of 1233zd(e) as stated above, overlapping the claimed (a1) about 40% by weight of 1234ze(E) and (a2) about 13% by weight of 1233zd(E), respectively. Van Horn in view of Chen teaches about 5-40 wt% of methyl formate as stated above, which overlaps the claimed (b) from about 10% by weight of methyl formate. Van Horn teaches 5-50 wt % of isobutane as stated above, which overlaps the claimed (c) 33% isobutane. Van Horn teaches 0-3 wt% of carbon dioxide as stated above, which overlaps the claimed (d) from about 3% to about 5% by weight of carbon dioxide. Since Van Horn’s 1234ze(e), 1233zd(e), methyl formate, isobutane, and carbon dioxide meet the limitation of (a1), (a2), (b), (c) and (d), the limitation of “the (a1), (a2), (b),(c) and (d) together comprise at least about 97% by weight of the blowing agent” is automatically met.
Regarding claim 20, Van Horn teaches 50 wt% or more of 1234ze(e) as stated above, overlapping the claimed (a) from about 60% to about 65% by weight of 1234ze(E). Van Horn in view of Chen teaches about 5-40 wt% of methyl formate as stated above, which overlaps the claimed (b) from about 5% to about 15% by weight of methyl formate. Van Horn teaches 5-50 wt % of isobutane as stated above, which overlaps the claimed (c) from about 15% to about 35% by weight of isobutane. Van Horn teaches 0-3 wt% of carbon dioxide as stated above, which overlaps the claimed (d) from about 3% to about 5% by weight of carbon dioxide.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762