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 .
Double Patenting
Applicants’ request for abeyance is acknowledged to the extent that applicants’ lack of response to the cited rejection will not be treated as non-responsive. However, since the rejection is still proper it will be maintained until such time as a proper response to it is filed or conditions appropriate for removal of the rejection are present.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 fails to further limit the amount of polyisocyanate and catalyst composition. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-2, 7-8, 13-14, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,509,392 to Jhaveri et al.
As to claims 1-2, 7-8, 13-14, and 20, Jhaveri discloses a binder composition comprising 18 grams of a polyol component, 27 grams of a polyisocyanate component and 0.18 grams of catalyst, useful catalyst include potassium acetate, dizaobicycloundecance, alkali metal salts of aliphatic carboxylic acids as well as 0.03 to 5.0% by weight of urethane catalysts such as dibutyltin dilaurate, phenyl mercuric acetate, bismuth or lead naphthenate (6:17-27). Jhaveri discloses wherein the catalyst composition is dissolved in propylene carbonate or dibasic esters (6:33-35) wherein the content of solvent is 0 up to 95% by weight based on the weight of the catalyst (6:35-37). Jhaveri discloses wherein solvent in amounts of 10 to 30% by weight are used to dissolve the polyisocyanate component (5:3-5). The content of polyisocyanate within the composition is 60% or greater (note ratio of 3:1 to 10:1, 5:37-34). At the time of filing it would have been obvious to a person of ordinary skill in the art to use more polyisocyanate within the binder of Jhaveri to improve hot strength (5:16-17). The content of catalyst and solvent composition sit within the claimed range. A person of ordinary skill in the art could routinely work through different amounts of catalyst and solvent including those within the broad claimed ranges to lower viscosity, thus increasing volume of catalyst that allows for larger amounts of catalyst to be weighted and/or metered into foundry sand mold compositions (6:26-30).
As to claim 21, Jhaveri discloses wherein the binder further includes aggregate materials such as sand, silica, zircon, and chromite (7:3-5).
Claims 3-6, 9-12, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,509,392 to Jhaveri et al.
As to claims 3-9, Jhaveri discloses a binder composition comprising 18 grams of a polyol component, 27 grams of a polyisocyanate component and 0.18 grams of catalyst, useful catalyst include potassium acetate, dizaobicycloundecance, alkali metal salts of aliphatic carboxylic acids as well as 0.03 to 5.0% by weight of urethane catalysts such as dibutyltin dilaurate, phenyl mercuric acetate, bismuth or lead naphthenate (6:17-27). Jhaveri discloses wherein the catalyst composition is dissolved in propylene carbonate or dibasic esters (6:33-35) wherein the content of solvent is 0 up to 95% by weight based on the weight of the catalyst (6:35-37).
Jhaveri does not expressly disclose the metal complex.
However, Kiso within the same field of endeavor teaches a catalyst composition
comprising a mixture of cooper acetylacetonate and a bicyclic tertiary amine (Abstract, 2:17-
25). Stengel further discloses the use of copper acetate, copper acetylacetonate, or copper
salicylate as suitable catalyst to improve isocyanate reaction speed that is dissolved in dimethyl
sulfoxide that is used in amounts that range from 0.04 to 10 wt% of the catalyst composition
(0006-0011) with the rest being the solvent (0055-0057).
At the time of filing it would have been obvious to substitute the copper ion catalyst of
Kojima with the catalyst composition of Kiso to improve curing speed and to avoid toxicity problems typically associated with tin catalysts to improve environmental issues (1:44-54, 0003
Stengel).
As to claims 10-18, Jhaveri in view of Stengel disclose solvent blends including amines
and mixtures of N-alkyl amides including dimethylformamide or N-methyl pyrrolidone or
organic carbonates including propylene carbonate and DMSO (0055). At the time of filing it
would have been obvious to a person of ordinary skill in the art to substitute one known solvent
for another type of solvent including blends of certain solvents to improve solubility, improve
fluidity and film forming of the binder and based on the tenet wherein it is prima
facie obvious to add a known ingredient to a known composition for its known function. In re
Lindner 173 USPQ 356; In re Dial et al 140 USPQ 244.
Response to Arguments
Applicant’s arguments with respect to claims 1-18 and 20-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763