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 Objections
Claims 38, 41 – 43, 46, 49 – 53, 57, and 65 are objected to because of the following informalities:
for consistency, Claims 38, 42, 46, 49 – 53, 57, and 65 should be amended to recite “the phenolic foam” in each instance;
“W/m.K” should be substituted with “W/m∙K” in Claims 38 and 57;
it is suggested Claim 41 be amended to recite “(i) isopropyl chloride;
it is suggested Claim 43 be amended to recite “at least one of a hydrofluoroolefin or a chlorinated hydrofluoroolefin”.
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 40 – 46, 48 – 63, and 65 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 metes and bounds of Claims 40 – 42, 44, 45, 46, 48, 53, 56, 63, and 65 are not clearly defined by the phrase “for example”. It is unknown whether limitations following this phrase are required by the claim or optional. For the purposes of further examination, limitations following this phrase will be interpreted as optional.
The metes and bounds of Claims 41, 42, 45, 46, 48, 49, 52, 57, 61, 63, and 65 are not clearly defined by the phrase “such as”. It is unknown whether limitations following this phrase are required by the claim or optional. For the purposes of further examination, limitations following this phrase will be interpreted as optional.
The metes and bounds of Claims 50 – 52, 56, 60, and 62 are not clearly defined by the use of the word “suitably”. It is unknown whether limitations following this word are required by the claim or optional. For the purposes of further examination, limitations following “suitably” will be interpreted as optional.
The metes and bounds of Claim 51 are not clearly defined by the use of the word “preferably”. It is unknown whether limitations following this word are required by the claim or optional. For the purposes of further examination, limitations following “preferably” will be interpreted as optional.
There is a lack of antecedent basis for the at least one chlorinated hydrofluoroolefin in Claim 54. The claim on which Claim 54 depends, Claim 43, sets forth at least one of hydrofluoroolefin or chlorinated hydrofluoroolefin, rather than at least one chlorinated hydrofluoroolefin. For the purposes of further examination, Claim 54 will be interpreted as simply setting forth the chlorinated hydrofluoroolefin.
Similarly, there is a lack of antecedent basis for the at least one hydrofluoroolefin in Claim 55. The claim on which Claim 54 depends, Claim 43, sets forth at least one of hydrofluoroolefin or chlorinated hydrofluoroolefin, rather than at least one hydrofluoroolefin. For the purposes of further examination, Claim 55 will be interpreted as simply setting forth the hydrofluoroolefin.
There is also a lack of antecedent basis for the hydrocarbon in Claim 56. Neither Claim 56 nor the claim on which Claim 56 depends, Claim 38, sets forth a hydrocarbon prior to this recitation. For the purposes of further examination, Claim 56 will be interpreted as setting forth said blowing agent comprises a hydrocarbon, wherein said hydrocarbon comprises at least one butane and/or at least one pentane.
There is also a lack of antecedent basis for the at least one chlorinated hydrochloroolefin in Claims 58 and 59. Claims 58 and 59, as well as independent Claim 57, do not forth at least one chlorinated hydrochloroolefin prior to this recitation. For the purposes of further examination, Claims 58 and 59 will be interpreted as setting forth said blowing agent comprises at least one chlorinated hydrochloroolefin, wherein the at least one chlorinated hydrochloroolefin is selected from the recited species.
There is also a lack of antecedent basis for the at least one C3-6 hydrocarbon in Claim 60. Claim 60, as well as independent Claim 57, do not forth at least one C3-6 hydrocarbon prior to this recitation. For the purposes of further examination, Claims 60 will be interpreted as setting forth said blowing agent comprises at least one C3-6 hydrocarbon, wherein the at least one C3-6 hydrocarbon is selected from the recited species.
Claim 61 sets forth molecular weight ranges for the phenolic resin but does not provide the units thereof. For the purposes of further examination, the recited molecular weight be interpreted to be in units of grams/mole.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 38 – 42, 46, 47, 49 – 53, 56, and 61 – 65 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2020/031863 to Yamada et al. (hereinafter Yamada). For the purposes of examination, citations for Yamada are taken from an English language equivalent of the document, EP 3 835 344.
Regarding Claims 38, 39, 42, 46, and 51. Yamada teaches a phenolic foam formed from a foamable phenolic resin composition and a blowing agent [0008].
In Inventive Example 3, the foam is prepared from 108 parts by weight a phenolic resin mixture; 5 parts by weight red phosphorus; 9 parts by weight of a blowing agent mixture; and 16 parts by weight of a curing agent mixture ([0049] and [0051]; Table 1). Using these amounts, red phosphorus can be calculated to be present in an amount of roughly 3.6 weight percent, based on the weight of the phenolic foam.
The phenolic foam has a density of 34 kg/m3 (Table 1) and a closed cell content of 94% (Table 2).
Yamada is silent with respect to the FIGRA0.2MJ and thermal conductivity of the foam at 10°C. However, Yamada does teach the thermal conductivity at 20°C of the foam prepared in Example 3 is 0.01940 W/m∙K (Table 1). As thermal conductivity and temperature are positively correlated, it would thus be reasonably expected that the foam prepared in Example 3 would have a thermal conductivity that is less than 0.01940 W/m∙K when measured at 10°C. Moreover, Yamada teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a phenolic foam having values for FIGRA0.2MJ and thermal conductivity at 10°C in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 40, 41, and 56. Yamada teaches the phenolic foam according to Claim 38 wherein the blowing agent is a mixture/blend of isopentane, i.e. a saturated C5 hydrocarbon, and isopropyl chloride [0049], i.e. a saturated C3 hydrocarbon that is substituted with chlorine.
Regarding Claim 47. Yamada teaches the phenolic foam according to Claim 38 wherein the average particle diameter of the red phosphorus is measured in microns [0049]. The red phosphorus used in Example 3 is therefore reasonably considered to be in micronized form.
Regarding Claims 49 and 50. Yamada teaches the phenolic foam according to Claim 38 but is silent with respect to its total heat release value when measured according to EN13823 and average cell diameter. However, Yamada teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a phenolic foam having a total heat release value when measured according to EN13823 and average cell diameter that are in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 52 and 53. Yamada teaches the phenolic foam according to Claim 38 but is silent with respect to its limiting oxygen index and stable moisture content. However, Yamada teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a phenolic foam having limiting oxygen index and stable moisture content values that are in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 61. Yamada teaches the phenolic foam according to Claim 38 wherein the phenolic resin has a number average molecular weight of 380 g/mol [0047].
Regarding Claim 62. Yamada teaches the phenolic foam according to Claim 38 wherein the inventive phenolic resins are prepared using molar ratio of phenol groups to aldehyde groups of about 1:1 to 1:3 [0018].
Regarding Claim 63. Yamada teaches the phenolic foam according to Claim 38 wherein the phenolic resin has a viscosity of 10,000 mPa∙s at 25°C [0047].
Regarding Claim 64. Yamada teaches the phenolic foam according to Claim 38 wherein the blowing agent mixture is provided in an amount of 9.0 parts by weight per 108 parts by weight of the phenolic resin mixture comprising 100 parts by weight of the phenolic resin [0047] – [0048], i.e. 9.0 parts by weight per 100 parts by weight of the phenolic resin.
Regarding Claim 65. Yamada teaches the phenolic foam according to Claim 38 has a density of 34 kg/m3 (Table 1).
Claims 57 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2020/031863 to Yamada et al. (hereinafter Yamada). For the purposes of examination, citations for Yamada are taken from an English language equivalent of the document, EP 3 835 344.
Regarding Claim 57. Yamada teaches a phenolic foam formed by foaming and curing a foamable composition [0008].
In Inventive Example 3, the foamable composition comprises 108 parts by weight a phenolic resin mixture comprising a phenolic resin and foam stabilizer/surfactant; 16 parts by weight of a curing agent mixture; 9.0 parts by weight of a blowing agent mixture; and 5 parts by weight red phosphorus ([0048] – [0051]; Table 1). The curing agent mixture consists of p-toluenesulfonic acid and xylenesulfonic acid [0049], which are described by Yamada as acidic curing agents/catalysts [0030]. Using the aforementioned amounts, red phosphorus can further be calculated to be present in an amount of roughly 3.6 weight percent, based on the weight of the phenolic foam.
The phenolic foam has a density of 34 kg/m3 (Table 1) and a closed cell content of 94% (Table 2).
Yamada is silent with respect to the FIGRA0.2MJ and thermal conductivity of the foam at 10°C. However, Yamada does teach the thermal conductivity at 20°C of the foam prepared in Example 3 is 0.01940 W/m∙K (Table 1). As thermal conductivity and temperature are positively correlated, it would thus be reasonably expected that the foam prepared in Example 3 would have a thermal conductivity that is less than 0.01940 W/m∙K when measured at 10°C. Moreover, Yamada teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a phenolic foam having values for FIGRA0.2MJ and thermal conductivity at 10°C in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 60. Yamada teaches the phenolic foam according to Claim 38 wherein the blowing agent is a mixture/blend including isopentane [0049], i.e. a saturated C5 hydrocarbon.
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 43 – 45, 48, 54, and 55 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/031863 to Yamada et al. (hereinafter Yamada), as applied to Claim 38 above. For the purposes of examination, citations for Yamada are taken from an English language equivalent of the document, EP 3 835 344.
Regarding Claims 43 – 45, 54, and 55. Yamada teaches the phenolic foam of Claim 38. In Inventive Example 3, the blowing agent used is a mixture/blend of isopentane, i.e. a saturated C5 hydrocarbon, and isopropyl chloride [0049], i.e. a saturated C3 hydrocarbon that is substituted with chlorine.
Thus, Yamada does not teach a hydrofluoroolefin and/or chlorinated hydrofluoroolefin is present in the blowing agent mixture. However, in the general disclosure, Yamada teaches the concept of further including HFO-1336mzz or HCFO-1233zd in the blowing agent component for preparing the inventive foams [0027]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include HFO-1336mzz or HCFO-1233zd in the blowing agent mixture of inventive Example 3 of Yamada. The motivation would have been that Yamada teaches these particular blowing agents contribute to further improvement of properties, in particular the flame resistance, of the obtained phenolic foams [0026] – [0027].
Regarding Claim 48. Yamada teaches the phenolic foam according to Claim 38 wherein the average particle diameter of the red phosphorus 25 to 35 microns [0049].
The Office recognizes this size is not identical to the instantly claimed range. However, it is the Office’s position that the values are close enough that one of ordinary skill in the art would have expected similar properties. 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.
Claims 58 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/031863 to Yamada et al. (hereinafter Yamada), as applied to Claim 57 above. For the purposes of examination, citations for Yamada are taken from an English language equivalent of the document, EP 3 835 344.
Regarding Claims 58 and 59. Yamada teaches the phenolic foam of Claim 57. In Inventive Example 3, the blowing agent is a mixture/blend of isopentane, i.e. a saturated C5 hydrocarbon, and isopropyl chloride [0049], i.e. a saturated C3 hydrocarbon that is substituted with chlorine.
Thus, Yamada does not teach a hydrofluoroolefin and/or chlorinated hydrofluoroolefin is present in the blowing agent mixture. However, in the general disclosure, Yamada teaches the concept of further including HFO-1336mzz or HCFO-1233zd in the blowing agent component for preparing the inventive foams [0027]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include HFO-1336mzz or HCFO-1233zd in the blowing agent mixture of inventive Example 3 of Yamada. The motivation would have been that Yamada teaches these particular blowing agents contribute to further improvement of properties, in particular the flame resistance, of the obtained phenolic foams [0026] – [0027].
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to phenolic foams comprising red phosphorus.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764