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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 23, 2026 has been entered.
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 – 4, 6 – 11, 13, and 17 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over JPH08219372 to Hashida et al. (hereinafter Hashida) in view of US 2011/0039964 to Williams et al. (hereinafter Williams), as evidenced by US 2022/0153905 to Sodano et al. (hereinafter Sodano). For the purposes of examination, citations for Hashida are taken from a machine translation of the document obtained from the European Patent Office website in April 2026.
Regarding Claims 1 – 3, 6, and 7. Hashida teaches a urethane resin composition which produces a foam comprising isocyanurate bonds [0005], i.e. a reactive composition for making a polyisocyanurate (PIR) foam. In Example 1, the PIR foam is formed by reacting an isocyanate composition, a polyol/isocyanate-reactive composition, and water [0022]. In this example, the reactive composition specifically comprises:
a) the isocyanate composition comprising isocyanate A [0022];
b) the isocyanate-reactive composition comprising polyol A. Polyols correspond to a type of isocyanate-reactive compound. The isocyanate A is added to the container in a subsequent step [0022], i.e. the isocyanate and isocyanate-reactive compositions are provided in separate containers;
c) an imidazole-based urethane reaction catalyst A [0021] – [0022]. Sodano provides evidence that imidazole catalysts are trimerization catalysts [0016], i.e. they promote the formation of isocyanurate groups;
d) cyclopentane as foaming agent A [0021] – [0022]. Cyclopentane is a hydrocarbon physical blowing agent having a lambda gas value ≤ 12 mW/m∙K (see [0029] of the PG-PUB of the instant application);
e) an epoxide compound with an equivalent weight of 141 g/mol [0021] – [0022], which reacts with carbon dioxide [0005]. The epoxide compound in Hashida also then functions a carbon dioxide scavenging compound;
f) the water [0022]; and
g) a carbon dioxide fixation catalyst which promotes the epoxy reaction with CO2 to form a cyclic carbonate [0005] and [0018], which comprise tetrabutyl ammonium bromide [0021] – [0022].
Using the amount of all ingredients reported in [0022], the one or more isocyanate-reactive compounds (Polyol A) can be calculated to be provided in an amount of roughly 32 weight percent of the total weight of the isocyanate-reactive composition.
Hashida does not teach a molar amount of the at least one epoxy compounds in the reactive composition is at least 7.8 times higher than the molar amount of carbon dioxide formed by the water present in the reactive composition after reaction with the one or more isocyanate-reactive compounds in Example 1. However, Hashida does teach water need not be employed as a foaming agent to achieve the intended effect of the invention [0026]. Additionally, secondary reference Williams teaches the concept of providing a reactive composition that is most preferably “substantially free” of water, wherein “substantially free” allows for the presence of impurities in the raw materials of the reactive composition [0026]. Hashida and Williams are analogous art as they are from the same field of endeavor, namely isocyanate-based reactive compositions for the preparation of 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 eliminate the added water in Example 1 of Hashida, while allowing for trace impurities of water in the raw materials of the reactive composition as suggested by Williams. The motivation would have been that eliminating added water, while allowing for trace impurities thereof, in the reactive composition would provide for a simplified process in which less ingredients are used and no additional steps need be performed to eliminate water entirely from the raw materials.
When Hashida is modified by Williams in the manner proposed, the molar amount of the epoxy compound relative to the molar amount of carbon dioxide generated by near zero moles of water would thus correspond to a quantity approaching infinity and therefore greater than 7.8 times or 10 times higher than the molar amount of carbon dioxide generated. Additionally, when near zero moles of water are provided, the NCO index of the foam can be calculated to be roughly 122, by using the report equivalent weight of the isocyanate, hydroxyl value of the polyol, and amounts of each provided as set forth in [0021] – [0022] of Hashida.
Regarding Claim 4. Hashida teaches the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1. Using the amounts of all ingredients reported in [0022], all epoxy compounds (i.e. Epoxy A) can be calculated to be provided in an amount of roughly 12 weight percent of the total weight of the isocyanate-reactive composition.
Regarding Claim 8. Hashida teaches the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1 wherein the blowing agent used is cyclopentane, rather than one of the instantly claimed species. However, Williams teaches the concept of using a trifluoropropene or tetrafluoropropene HFO blowing agent such as 1-chloro-3,3,3-trifluoropene or 1,3,3,3-tetrafluoropropene in the preparation of a foam [0028]. Both of these compounds are described as blowing agents having a lambda gas value ≤ 12 mW/m∙K (see [0094] – [0096] of the PG-PUB of the instant application). These blowing agents may be used in conjunction with a hydrocarbon blowing agent such as cyclopentane [0030]. Before the effective filing date of the instantly claimed invention, it would have been obvious to substitute at least some of the cyclopentane blowing agent in Example 1 of Hashida with 1-chloro-3,3,3-trifluoropene or 1,3,3,3-tetrafluoropropene. The motivation would have been that these blowing agents have been observed to provide better insulation performance (k-factor) in the foams in which they are included.
Regarding Claim 9. Hashida teaches the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1 but is silent regarding the particular isocyanate which is used in Example 1. However, in the general disclosure, Hashida teaches toluene diisocyanate (TDI) or methylene diphenyl diisocyanate (MDI) may be provided as the isocyanate [0020]. Before the effective filing date of the instantly claimed invention, it would have been obvious toa person of ordinary skill in the art to provide TDI or MDI as the isocyanate in Example 1 of Hashida. 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, Hashida shows that both TDI and MDI are suitably used as isocyanates in the disclosed reactive compositions [0020].
Regarding Claim 10. Hashida teaches the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1 wherein the isocyanate-reactive compound used is Polyol A, which has a hydroxyl number of 460 mgKOH/g [0021] – [0022]. As this compound is a polyol, it must have multiple hydroxyl groups and therefore a hydroxyl functionality of at least 2.
Regarding Claim 11. Hashida teaches the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1. Using the amounts of all ingredients reported in [0022], the physical blowing agent (i.e. Foaming agent A) can be calculated to be provided in an amount of roughly 5 weight percent of the total weight of the isocyanate-reactive composition.
Regarding Claim 13. Hashida teaches a process for making a PIR comprising insulation foam comprising combining the ingredients of the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1. Example 1 of Hashida, when modified with Williams in the manner detailed in the rejection of Claim 1, has an isocyanate index of roughly 122 ([0005] and [0022]).
Regarding Claims 17 – 19. Hashida teaches a PIR comprising insulation foam prepared from the process of Claim 13 ([0005] and [0022]).
Hashida does not expressly characterize the foam as stabilized and is silent with respect to the amount of carbon dioxide therein, as well as its density. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hashida, when modified with Williams in the manner proposed, 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 stabilized PIR foam having a carbon dioxide content, density, and stabilized thermal conductivity 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 20. Williams teaches a thermal insulator comprising the stabilized PIR comprising insulation foam of Claim 17 ([0005] and [0022]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over JPH08219372 to Hashida et al.(hereinafter Hashida) in view of US 2011/0039964 to Williams et al. (hereinafter Williams), as evidenced by US 2022/0153905 to Sodano et al. (hereinafter Sodano) – as applied to Claim 1 above – and further as evidenced by US 2018/0313028 to Tomoda et al. (hereinafter Tomoda). Again, for the purposes of examination, citations for Hashida are taken from a machine translation of the document obtained from the European Patent Office website in April 2026.
Regarding Claim 5. Hashida teaches the reactive composition for making a polyisocyanurate (PIR) foam of Claim 1 wherein the epoxy compound used in Example 1 is DENACOL® EX-313 which has an equivalent weight of 141 g/mol [0021] – [0022]. Tomoda provides evidence that DENACOL® EX-313 is a liquid epoxy [0141].
Claims 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over JPH08219372 to Hashida et al. (hereinafter Hashida) in view of US 2011/0039964 to Williams et al. (hereinafter Williams), as evidenced by US 2022/0153905 to Sodano et al. (hereinafter Sodano) – as applied to Claims 1 and 13 above – and further in view of WO 99/61503 to Swinnen et al. (hereinafter Swinnen).
Regarding Claims 14 – 16. Hashida teaches the process of Claim 13 but does not expressly teach steps of sealing the foam with a gas diffusion tight sealing or aging the foam. However, Hashida teaches the concept of enveloping a polyisocyanurate foam and hermetically sealing the foam in a gastight vessel (Abstract; Page 1, first paragraph). A person of ordinary skill in the art would readily recognize that enveloping and hermetically sealing the foam necessarily involves covering 100% of a foam’s surfaces. Suitable materials for the gastight vessel include polypropylene and polyvinyl alcohol (Page 10, fourth paragraph). Swinnen further teaches a step of heating/ageing the foam (Page 10, fourth paragraph), e.g. at 150°C for 10 minutes (Page 12, second paragraph). As such conditions are within the scope of original Claim 16, it would be reasonably expected that the aging step of Swinnen would necessarily achieve a stable low lambda value as set forth in the instant claims. Hashida and Swinnen are analogous art as they are from the same field of endeavor, namely processes of making polyisocyanurate comprising insulation 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 further include the above described processing steps taught by Swinnen in the method of Hashida. The motivation would have been that Swinnen teaches this method is specifically useful for the preparation of evacuated insulation panels which may be used in refrigeration appliances (Page 1, Paragraphs 1 – 3).
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or suggest a reactive composition comprising all of the instantly claimed ingredients in the instantly claimed amounts including at least one blowing agent having a lambda gas value ≤ 12 mW/m∙K and a blowing agent having a lambda gas value ≥ 12 mW/m∙K (see [0142] of the PG-PUB of the instant application) in a weight ratio of 95/5 to 5/95.
JPH08219372 to Hashida et al. corresponds to the closest prior art, teaching a reactive composition comprising all of the instantly claimed ingredients, including at least one blowing agent having a lambda gas value ≤ 12 mW/m∙K (cyclopentane). However, while Hashida does teach blowing agents other than cyclopentane may be provided, Hashida does not teach a blowing agent having a lambda gas value ≥ 12 mW/m∙K is further included. All of the blowing agents disclosed are selected for their low thermal conductivity, which is correlated with a low lambda gas value. Nor does any other prior art reference provide the necessary teaching would lead a person of ordinary skill in the art to substitute 5 to 95 weight percent of the cyclopentane in Hashida with a blowing agent having a lambda gas value ≥ 12 mW/m∙K.
Response to Arguments
Applicant's arguments filed March 23, 2026 have been fully considered. The Office responds as follows:
Claim Objections and Rejections Under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding claim objection and rejections under 35 U.S.C. 112(b) and (d). The outstanding claim objection and rejections under 35 U.S.C. 112(b) and (d) have consequently been withdrawn.
Rejections Under 35 U.S.C. 103
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections under 35 U.S.C. 103 over US 2011/0039964 to Williams et al. in view of US 2003/0092777 to Leitner; US 2011/0039964 to Williams et al. in view of US 2003/0092777 to Leitner and US 5,380,768 to Cranston et al.; US 2011/0039964 to Williams et al.in view of US 2003/0092777 to Leitner and WO 99/61503 to Swinnen et al. None of the applied references teach any of the species of catalyst promoting epoxy reaction with carbon dioxide now required by Claim 1.
However, the instant application is not in condition for allowance in light of the new rejections set forth under 35 U.S.C. 103 in view of newly applied primary reference JPH08219372 to Hashida et al.
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
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