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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 3, 5, 6, and 8 – 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent Claims 1, 6, and 8 now set forth a blowing agent comprising greater than 50 weight percent of a halogenated olefin compound. However, the original specification contains no general teaching of this range. The original specification also does not provide a sufficient number of examples which are representative of the entire claimed range of greater than 50 weight percent such that this range would have been readily envisioned from the original disclosure.
As all other pending claims ultimately depend on the aforementioned independent claims, they incorporate the subject matter thereof and are also rejected under this statute.
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.
Claims 1 – 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,403,665 to Sieker et al. (hereinafter Sieker) in view of US 2018/0194889 to Günther et al. (hereinafter Günther), as evidenced by US 2012/0078010 to Barnicki et al. (hereinafter Barnicki).
Regarding Claims 1 – 3 and 5. Sieker teaches a polyurethane formulation comprising:
a polyol blend containing a tertiary amine catalyst and an organic carboxylic acid (Column 1, Lines 37 – 40). A preferred tertiary amine catalyst is dimethylaminopyridine (Column 5, Line 1 – 2), which corresponds to an alkylaminopyridine of instantly claimed formula (1) in which each R is methyl. The most preferred organic carboxylic acids used are lactic acid, glycolic acid, and citric acid (Column 2, Lines 27 – 28). All of these acids are set forth as carboxylic acids of instantly claimed formula (3) in the instant application (see [0030] of the PG-PUB of the instant application). Sieker further teaches the polyol blends are stable for several weeks (Column 1, Lines 44 – 45), which necessarily involves contacting the tertiary amine catalyst and carboxylic acid for a prolonged period of time. Furthermore, Barnicki provides evidence that mixtures of tertiary amines and carboxylic acids undergo a reaction in which the tertiary amine is protonated by the carboxylic acid modifier [0058]. Contacting the dimethylaminopyridine and one of the aforementioned most preferred species of carboxylic acid in Sieker would then be reasonably expected to result in a reaction which obtains the instantly claimed instantly claimed acid-blocked alkylaminopyridine catalyst;
a polyisocyanate (Column 6, Lines 3 – 38), i.e. a compound containing isocyanate functional groups;
a polyester polyol (Column 1, Lines 37 – 38), i.e. an active hydrogen-containing compound;
a blowing agent (Column 5, Lines 9 – 32); and
N-methylimidazole, i.e. a tertiary amine catalyst other than said acid-blocked alkylaminopyridine catalyst which contains at least one tertiary amino group, which may additionally be provided and contacted with a carboxylic acid corresponding to instantly claimed formula (3) (Column 1, Lines 37 – 45; Column 2, Lines 27 – 28; and Column 5, Line 1 – 2).
Sieker is silent with respect to the weight ratio (a) to (e) of dimethylaminopyridine, i.e. the alkylaminopyridine of instantly claimed formula (1), relative to N-methylimidazole. However, Sieker does teach the total amount of tertiary amine catalyst provided is from about 0.01 to about 10 parts by weight per 100 parts by weight polyol (Column 5, Lines 4 – 5). When a blend of dimethylaminopyridine and N-methylimidazole is used, each catalyst must be provided in an amount of greater than 0 parts by weight and less than about 10 parts by weight, corresponding to a weight ratio (a):(e) of >0:<100 to <100:>0. While this range is not identical to the instantly claimed range, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05) Moreover, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) 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 optimize the weight ratio (a):(e) of dimethylaminopyridine to N-methylimidazole in Sieker to enhance the improvement in reaction profile associated with these catalysts (Column 5, Lines 1 – 3).
Sieker also does not expressly teach the blowing agent is a halogenated olefin compound. However, Günther teaches the concept of providing hydrohaloolefins as the blowing agents, i.e. a blowing agent comprising 100 weight percent hydrohaloolefins, in the preparation of polyurethanes [0189]. Sieker and Günther are analogous art as they are from the same field of endeavor, namely polyurethane foams. 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 provide a hydrohaloolefin as the blowing agent in Sieker. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Günther shows that hydrohaloolefins are known in the art to be suitable blowing agents for the preparation of polyurethane foams. Moreover, hydrohaloolefins are especially desirable blowing agents as they have low coefficients of both global warming and ozone destruction.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 6,403,665 to Sieker et al. (hereinafter Sieker) in view of US 2018/0194889 to Günther et al. (hereinafter Günther), as evidenced by US 2012/0078010 to Barnicki et al. (hereinafter Barnicki).
Regarding Claim 6. Sieker teaches a polyol blend containing a tertiary amine catalyst and an organic carboxylic acid for use in forming rigid polyurethane foams (Column 1, Lines 37 – 47), i.e. a catalyst package for use in forming a polyurethane material.
A preferred tertiary amine catalyst is dimethylaminopyridine (Column 5, Line 1 – 2), which corresponds to an alkylaminopyridine of instantly claimed formula (1) in which each R is methyl. The most preferred organic carboxylic acids used are lactic acid, glycolic acid, and citric acid (Column 2, Lines 27 – 28). All of these acids are set forth as carboxylic acids of instantly claimed formula (3) in the instant application (see [0030] of the PG-PUB of the instant application). Sieker further teaches the polyol blends are stable for several weeks (Column 1, Lines 44 – 45), which necessarily involves contacting the tertiary amine catalyst and carboxylic acid for a prolonged period of time. Furthermore, Barnicki provides evidence that mixtures of tertiary amines and carboxylic acids undergo a reaction in which the tertiary amine is protonated by the carboxylic acid modifier [0058]. Contacting the dimethylaminopyridine and one of the aforementioned most preferred species of carboxylic acid in Sieker would then be reasonably expected to result in a reaction which obtains the instantly claimed instantly claimed acid-blocked alkylaminopyridine catalyst; and
N-methylimidazole, i.e. a tertiary amine catalyst other than said acid-blocked alkylaminopyridine catalyst which contains at least one tertiary amino group, which may additionally be provided and contacted with a carboxylic acid corresponding to instantly claimed formula (3) (Column 1, Lines 37 – 45; Column 2, Lines 27 – 28; and Column 5, Line 1 – 2).
Sieker is silent with respect to the weight ratio (a) to (e) of dimethylaminopyridine, i.e. the alkylaminopyridine of instantly claimed formula (1), relative to N-methylimidazole. However, Sieker does teach the total amount of tertiary amine catalyst provided is from about 0.01 to about 10 parts by weight per 100 parts by weight polyol (Column 5, Lines 4 – 5). When a blend of dimethylaminopyridine and N-methylimidazole is used, each catalyst must be provided in an amount of greater than 0 parts by weight and less than about 10 parts by weight, corresponding to a weight ratio (a):(e) of >0:<100 to <100:>0. While this range is not identical to the instantly claimed range, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05) Moreover, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) 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 optimize the weight ratio (a):(e) of dimethylaminopyridine to N-methylimidazole in Sieker to enhance the improvement in reaction profile associated with these catalysts (Column 5, Lines 1 – 3).
Sieker does not expressly teach the blowing agent is a halogenated olefin compound. However, Günther teaches the concept of providing hydrohaloolefins as the blowing agents, i.e. a blowing agent comprising 100 weight percent hydrohaloolefins, in the preparation of polyurethanes [0189]. 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 provide a hydrohaloolefin as the blowing agent in Sieker. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Günther shows that hydrohaloolefins are known in the art to be suitable blowing agents for the preparation of polyurethane foams. Moreover, hydrohaloolefins are especially desirable blowing agents as they have low coefficients of both global warming and ozone destruction.
Claims 8 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,403,665 to Sieker et al. (hereinafter Sieker) in view of US 2018/0194889 to Günther et al. (hereinafter Günther), as evidenced by US 2012/0078010 to Barnicki et al. (hereinafter Barnicki).
Regarding Claim 8. Sieker teaches a method for producing a polyurethane foam/material comprising reacting/contacting a polyisocyanate, i.e. a compound containing isocyanate functional groups, and a polyol blend (Column 1, Lines 37 – 47; and Column 6, Lines 3 – 38). The polyol blend contains a polyester polyol, i.e. an active hydrogen-containing compound; optional additives; and a blowing agent (Column 1, Lines 37 – 38; Column 5, Lines 9 – 32).
The polyol blend further comprises a tertiary amine catalyst and an organic carboxylic acid (Column 1, Lines 37 – 40). A preferred tertiary amine catalyst is dimethylaminopyridine (Column 5, Line 1 – 2), which corresponds to an alkylaminopyridine of instantly claimed formula (1) in which each R is methyl. The most preferred organic carboxylic acids used are lactic acid, glycolic acid, and citric acid (Column 2, Lines 27 – 28). All of these acids are set forth as carboxylic acids of instantly claimed formula (3) in the instant application (see [0030] of the PG-PUB of the instant application). Sieker further teaches the polyol blends are stable for several weeks (Column 1, Lines 44 – 45), which necessarily involves contacting the tertiary amine catalyst and carboxylic acid for a prolonged period of time. Furthermore, Barnicki provides evidence that mixtures of tertiary amines and carboxylic acids undergo a reaction in which the tertiary amine is protonated by the carboxylic acid modifier [0058]. Contacting the dimethylaminopyridine and one of the aforementioned most preferred species of carboxylic acid in Sieker would then be reasonably expected to result in a reaction which obtains the instantly claimed instantly claimed acid-blocked alkylaminopyridine catalyst.
Sieker further teaches N-methylimidazole, i.e. a tertiary amine catalyst other than said acid-blocked alkylaminopyridine catalyst which contains at least one tertiary amino group, may additionally be provided in the polyol blend (Column 5, Line 1 – 2).
Sieker is silent with respect to the weight ratio (a) to (e) of dimethylaminopyridine, i.e. the alkylaminopyridine of instantly claimed formula (1), relative to N-methylimidazole. However, Sieker does teach the total amount of tertiary amine catalyst provided is from about 0.01 to about 10 parts by weight per 100 parts by weight polyol (Column 5, Lines 4 – 5). When a blend of dimethylaminopyridine and N-methylimidazole is used, each catalyst must be provided in an amount of greater than 0 parts by weight and less than about 10 parts by weight, corresponding to a weight ratio (a):(e) of >0:<100 to <100:>0. While this range is not identical to the instantly claimed range, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05) Moreover, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) 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 optimize the weight ratio (a):(e) of dimethylaminopyridine to N-methylimidazole in Sieker to enhance the improvement in reaction profile associated with these catalysts (Column 5, Lines 1 – 3).
Sieker does not expressly teach the blowing agent is a halogenated olefin compound. However, Günther teaches the concept of providing hydrohaloolefins as the blowing agents, i.e. a blowing agent comprising 100 weight percent hydrohaloolefins, in the preparation of polyurethanes [0189]. 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 provide a hydrohaloolefin as the blowing agent in Sieker. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Günther shows that hydrohaloolefins are known in the art to be suitable blowing agents for the preparation of polyurethane foams. Moreover, hydrohaloolefins are especially desirable blowing agents as they have low coefficients of both global warming and ozone destruction.
Regarding Claims 9 – 10 . Sieker teaches a rigid polyurethane foam produced by the method of Claim 8 (Column 1, Lines 37 – 47; and Column 6, Lines 3 – 38).
Regarding Claim 11. Sieker teaches a sprayed rigid polyurethane foam prepared from the polyurethane material of Claim 9 (Column 1, Lines 39 – 44).
Response to Arguments
Applicant's arguments filed June 29, 2026 have been fully considered. Applicant argues that the applied references do not disclose or suggest the use of a halogenated olefin compound in the amounts claimed. However, this newly presented limitation was found to raise a new matter issue, as detailed in the corresponding rejection under 35 U.S.C. 112(a).
Nonetheless, it is the Office’s position that the applied references render obvious the new limitation of a blowing agent which contains greater than 50 weight percent of a hydrohaloolefin. Specifically, Günther teaches the concept of providing hydrohaloolefins as blowing agents, i.e. a blowing agent comprising 100 weight percent hydrohaloolefins, in the preparation of polyurethanes [0189].
While the Office acknowledges that Günther expresses a preference for the use of water as a blowing agent, it has been held that prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. (MPEP 2143(I)) Thus, Günther’s disclosure of water as a preferred blowing agent does not constitute a teaching away from other embodiments, e.g. embodiments in which a hydrohaloolefin is instead provided as the blowing agent.
Applicant additionally argues unexpected results are achieved when halogenated olefin compounds are provided as a major component of the blowing agent system, including desirable reactivity profiles and foam properties. Whether the 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 other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) The Office respectfully submits that data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims sets forth a blowing agent comprising greater than 50 weight percent of a halogenated olefin compound. However, the examples provided only test a blowing agent which is roughly 85 weight percent of a single species of halogenated olefin compound (1233zd). The data is then insufficient to conclude that the alleged unexpected results would be achieved for any blowing agent composition comprising any halogenated olefin compound in any amount of greater than 50 weight percent, as is instantly claimed.
The outstanding rejections under 35 U.S.C. 103 have consequently been maintained.
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.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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