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 .
Claims 1, 12-13, 24 and 26-27 are pending.
Claims 1, 12 are under examination on the merits.
Claims 1, 13, 24 are amended.
Claims 2-9, 10, 14-21, 22 are previously canceled.
Claims 11, 23 and 25 are newly canceled.
No claims are newly added.
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 1, 12 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.
The term “and the like” in claim 1 final line of item (b) renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Furthermore, the list of tertiary amines is not a proper Markush group. Proper Markush wording is “selected from the group consisting of…..and [final option]”.
Claim 12 depends on claim 1 and does not remedy these deficiencies and is rejected for the same reason.
Claim Rejections - 35 USC § 103
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 rejection in the previous action of claims 1, 11 and 12 under 35 U.S.C. 103 as being unpatentable over US 20080188582 by Lehmann et al in view of US 3954684 by Farrissey et al is repeated and amended herein to reflect applicant’s amendment. The rejection is now evidenced by US 3745133 by Comunale et al.
Lehmann describes a method for producing polyurethane and polyisocyanurate rigid foams.
Regarding claim 1, Lehmann describes a product (abstract) of an active hydrogen-containing compound, a catalyst and a blowing agent (paragraph 8) wherein the catalyst is an isocyanurate (trimer) catalyst including ammonium salt of formic acid (paragraph 41) which the instant specification indicates is a “phase transfer trimer” catalyst (instant specification paragraph 31). The blowing agent is not a chlorofluorocarbon (paragraph 32, 38) and is specifically formic acid (paragraph 32) or C5 hydrocarbon blowing agents (paragraph 34).
Lehmann does not specifically describe the ammonium salt of formic acid that is instantly required, or the specific tertiary amine.
Farrissey describes a foam process using tertiary amine/quaternary ammonium salt catalyst.
Farrissey describes catalysts to produced polyisocyanurates (abstract). Farrissey is more specific than Lehmann in that he describes specific lower-alkanoic acid quaternary ammonium salts wherein the quaternary substituents are independently selected from the group consisting of lower-alkyl and aralkyl (col 1 ln 60-65). Farrissey specifically describes benzyl alongside lower alkyl groups for the R groups (col 1 ln 60-65, col 2 ln 12-20), which reads on the claimed benzyltrimethylammonium formate and benzyltrimethylammonium acetate. Farrissey specifically describes formic or acetic acid as the carboxylic acid component (col 2 ln 9-11) of the quaternary ammonium.
Regarding the newly specified tertiary amine, Farrisey states that US 3745133 by Comunale et al is incorporated by reference for a more complete list of tertiary amines. Comunale describes at least the instant N,N dimethylpiperazine, triethylene diamine, triethylamine and tributylamine (col 8 ln 10-20) as tertiary amines. See Comunale col 8 ln 10-75 for full list.
It would be obvious to one of ordinary skill to select combinations of phase transfer trimerization catalyst and tertiary amines instantly disclosed because Farrissey describes them as possibilities.
Farrissey states that his combination of tertiary amine catalyst with lower-alkanoic acid quaternary ammonium salt results in foams with high thermal resistance, low flame spread and low smoke generation (col 5 ln 66-col 6 ln 2). Thus it would be obvious to one of ordinary skill to use the isocyanurate (trimer) catalyst combination described by Farrissey where Lehmann more broadly describes an ammonium salt of carboxylic acid in order to arrive at a foams with high thermal resistance, low flame spread and low smoke generation.
Regarding claim 12, Lehmann describes embodiments with foam stabilizers, fillers, and/or pigments (paragraph 43).
Response to Arguments
Applicant’s argument p.8 paragraph 2 of Remarks submitted 5/29/26 has been considered but is not persuasive. Applicant states that neither Lehman nor Farrissey describes the claimed catalyst composition and blowing agent. This is not found convincing because Farrissey as evidenced by US 3745133 by Comunale et al, which is incorporated by reference into Farrissey, describes several of the tertiary amines, and Farrissey describes some of the phase transfer trimerization catalysts, as outlined above in rejection. As previously cited, Lehman describes the C5 blowing agent. Since the combinations claimed are obvious to one of ordinary skill, the claims are not patentable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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