Claims 1, 2, 7-12, 14, and 16-20 are pending in the application. Claims 3-6, 13 and 15 have been cancelled. Claims 11, 12, 14, and 16-20 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1, 2, and 7-10 are rejected.
The rejection over Handa in view of Wilczak has been maintained.
New ground of rejection is made in view of newly discovered references to Kress et al. (US 2019/0211962) and Mukawa et al. (US 2008/0072987).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0208094 to Handa et al. (hereinafter “Handa”) in view of US 2009/0220717 to Wilczak et al. (hereinafter “Wilczak”).
As to claims 1 and 2, Handa discloses a polymeric foam for packaging applications, is obtained from a composition including a polymer, and a blowing agent blend comprising methyl formate, and hydrofluoroolefin (abstract, and paragraph 41).
“The foamable polymer composition comprising” allows inclusion of an additional foaming material other than the blowing agent composition in the foamable polymer composition. As a result, the hydrofluoroolefin pertains to the claimed blowing agent composition while the methyl formate, as discussed in the Handa reference, reads on the additional foaming agent.
The polymer comprises polystyrene, polyolefin, polyethylene terephthalate, polycarbonate or any combinations thereof (paragraph 49). Handa also discloses that a film/foam structure comprises the polymeric foam and a film layer provided thereon for providing aesthetics, mechanical strength and gas-barrier properties to the film/foam structure (paragraph 70).
Handa does not explicitly disclose the gas-barrier film layer comprising a dispersion comprising a solids content of from 35 to 60 wt% wherein the solids comprise 20 to 99.9 wt% of at least one polymer selected from polyvinylidene dichloride (PVDC), polyvinylidene fluoride (PVDF), polyvinyl alcohol, ethylene vinyl alcohol and combinations or copolymers thereof, and 0.1 to 20 wt% of a viscosity modifier, based on the total amount of the solids present in the gas-barrier film layer.
Wilczak, however, discloses a coated article for packaging applications, comprising a substrate and one or more coatings on the substrate (abstract). The substrate is made of a polymeric foam material (paragraphs 140-141). The one or more coatings include a gas barrier layer which is obtained from a dispersion comprising a polymer, additives and a solvent wherein the polymer is PVDC, PVOH or a combination thereof (paragraph 86). In particular, the gas barrier layer comprises a dispersion of a vinyl alcohol polymer or copolymer with a solids content of 35 to 45 wt% (paragraph 89). This is within the claimed range.
As indicated in Wilczak’s paragraph 166, “the percentages given are percent by weight of the materials in the coating solution exclusive of solvent, sometimes referred to as the “solids” although not all non-solvent materials are solid.” Therefore, the total amount of the gas barrier layer is equal to the total amount of the solids.
The gas barrier layer contains additives in an amount of 1 to 20 wt%, based on the total amount of the solids of the gas barrier layer (paragraphs 166 and 168). That is, the polymer is present in an amount of 80 to 99 wt% based on the total weight of the solid. The additives comprise clay nanoparticles, an oxygen scavenger, carbon black, or a surfactant, and one of these equated to the claimed viscosity modifier (paragraphs 170-182).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a gas barrier layer disclosed in Wilczak for the gas barrier film layer disclosed in Handa motivated by the desire to provide the foam/film structure which is excellent in gas barrier performance over the wide range of humidity conditions (see paragraph 81 of Wilczak).
As to claims 7 and 8, Handa does not explicitly disclose the gas barrier layer being formed directly on both major surfaces; or at least one minor surface of the foam structure.
Wilczak, however, teaches that the gas barrier layer is applied to the substrate by dip, spray or flow coating a dispersion or emulsion (paragraph 109). A maleic anhydride modified polypropylene copolymer is added to the gas barrier layer to aid in the adhesion of the gas barrier layer to the substrate (paragraph 156). The gas barrier layer is formed directly on the entire surface of the substrate (figure 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to (i) substitute a gas barrier coating disclosed in Wilczak for the gas barrier film layer disclosed in Handa and (ii) apply said gas barrier film layer directly on the entire surface of the foam structure of Handa, motivated by the desire to provide the foam/film structure which is excellent in gas barrier performance over the wide range of humidity conditions (see paragraph 81 of Wilczak).
As to claims 9 and 10, Handa discloses that the foam/film structure has the R-value after 45 days of at least 5.0 per inch (paragraph 82 and figure 10).
Handa does not explicitly disclose the R-value after 180 days of at least 5.0 per inch. However, it appears that the foam/film structure of Handa in view of Wilczak meets all structural limitations and chemistry required by the claims.
The resulting foam/film structure comprises a polymeric foam and a gas barrier film layer provided thereon wherein the polymeric foam is obtained from a composition comprising a polymer, and a blowing agent blend comprising methyl formate, and hydrofluoroolefin. The polymer comprises polystyrene, polyolefin, polyethylene terephthalate, polycarbonate and any combinations thereof.
The resulting gas barrier film layer is a gas barrier coating obtained from a dispersion comprising a vinyl alcohol polymer or copolymer with a solids content of 35 to 45 wt% (paragraph 89). This is within the claimed range. The gas barrier layer contains additives in an amount of 1 to 20 wt%, based on the total amount of the solids of the gas barrier layer (paragraphs 166 and 168). That is, the polymer is present in an amount of 80 to 99 wt% based on the total weight of the solids. The additives comprise clay nanoparticles, an oxygen scavenger, carbon black, or a surfactant, and one of these equated to the claimed viscosity modifier (paragraphs 170-182).
Therefore, the examiner takes the position that the R-value after 180 days of at least 5.0 per inch would be present as like material has like property.
Response to Arguments
The rejection over Handa in view of Wilczak has been maintained for the following reasons. Applicant alleges Handa discloses the blowing agent composition comprising methyl formate and one of the co-blowing agents (abstract). Handa fails to disclose the blowing agent composition consisting of HFC, HCFO, HFO, or combinations thereof.
The examiner respectfully disagrees.
“The foamable polymer composition comprising” allows inclusion of an additional foaming material other than the blowing agent composition in the foamable polymer composition. As a result, the hydrofluoroolefin pertains to the claimed blowing agent composition while the methyl formate, as discussed in the Handa reference, reads on the additional foaming agent.
Applicant further states while the barrier coating of the claimed invention is provided to keep the blowing agent in the foam, Handa teaches away from such the barrier coating because the methyl formate blowing agent escapes rapidly to enhance flame resistance of the foam.
The examiner respectfully disagrees.
Applicant’s statement appears to misinterpret the Handa reference. The description in paragraph 104 merely indicates that the rapid escape of methyl formate gas from the foam during a fire enhances the flame-retardant properties by diluting the concentrations of flammable gases generated during combustion. It’s illogical to assert that the gas barrier layer promotes the release of methyl formate when the foam structure is not exposed to fire, as the primary function of the gas barrier layer is to stop or reduce gas diffusion through it. Thus, Handa does not advocate for the gas barrier layer to facilitate the diffusion of methyl formate out of the foam, contrary to the Applicant’s argument.
It is suggested that incorporation of limitation of the foamable polymer composition that is free of methyl formate would be sufficient to exclude Handa as prior art. Support for the negative limitation can be found at paragraph 63 of published application.
Claims 1, 2, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0211962 to Kress et al. (hereinafter “Kress”) in view of US 2008/0072987 to Mukawa et al. (hereinafter “Mukawa”).
As to claims 1 and 2, Kress discloses a thermally insulated conduit pipe 1 comprising at least one medium pipe 4, at least one thermal insulation 3 wrapped around the medium pipe, and at least one outer jacket 2 arranged around the thermal insulation (abstract).
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In particular, the thermally insulated conduit pipe comprises a medium pipe, a thermal insulation wrapped around the medium pipe, a barrier layer on the thermal insulation and an outer jacket on the barrier layer (paragraph 77).
Kress discloses that the thermal insulation is obtained from a thermoplastic matrix polymer comprising polyethylene terephthalate, polyethylene or polypropylene; and a blowing agent comprising HFO 1233zd or HFO 1336mzz (paragraphs 45 and 135). The blowing agent. In particular, the thermal insulation is obtained from a thermoplastic matrix polymer comprising polyethylene; 50-100 vol% HFO 1233zd; and 0-50 vol% Cycloalkane (paragraph 57-59). The zero proportion of cycloalkane indicates that the blowing agent consists of 100 vol% HFO 1233zd, meeting the claimed requirement. Further, the blowing agent consists of 100 vol% HFO 1233zd (paragraph 147).
Kress discloses that the barrier layer comprises a polyethylene vinyl alcohol (paragraph 87). The barrier layer reduces a diffusion rate of the blowing agent out of the thermal insulation material (paragraph 71).
Kress does not explicitly disclose the barrier layer comprising a dispersion or emulsion comprising a solids content of from 35 to 60 wt% wherein the solids comprise 20 to 99.9 wt% of at least one polymer selected from polyvinylidene dichloride (PVDC), polyvinylidene fluoride (PVDF), polyvinyl alcohol and combinations or copolymers thereof; and 0.1 to 20 wt% of a viscosity modifier, based on the total amount of the solids present in the barrier layer.
Mukawa, however, discloses a refrigerant transport hose comprising a tubular gas impermeable material layer on a base layer (abstract). The gas impermeable material layer is composed of polyvinyl alcohol (PVOH) and nano-filler particles having plate shape (abstract). Mukawa also teaches that the nano-filler particles are provided to enhance the barrier properties against refrigerant gas of the gas impermeable material layer (abstract). In particular, Mukawa discloses that the gas impermeable material layer comprises a dispersion comprising PVOH, water and nanofiller particles (paragraph 46). The presence of water indicates that the solids can be present in an amount of less than 100 wt%. This overlaps the claimed range.
The gas impermeable layer contains 98-96 wt% PVOH, and 2-4 wt% of nano-filler particles (figure 10). The nano-filler particles comprise nanoclay, graphite, mica and talc and each of which corresponding to the claimed viscosity modifier or the claimed additive (paragraph 37).
Mukawa does not specifically disclose the solids content of the solids in a range of 35 to 60 wt% based in the total amount of the dispersion.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the solids content will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the solids content is critical or provides unexpected results. Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the solids content in the range instantly claimed, motivated by the desire to reduce diffusion of the blowing agent out of the thermal insulation material. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a dispersion of PVOH and nano-filler particles disclosed in Mukawa for formation of the barrier layer disclosed in Kress motivated by the desire to reduce the quantity of leakage of the blowing agent from the thermal insulation material.
As to claims 7 and 8, Kress discloses that the thermally insulated conduit pipe comprises a medium pipe, a thermal insulation wrapped around the medium pipe, a barrier layer on the thermal insulation and an outer jacket on the barrier layer (paragraph 77). The barrier layer is formed directly on both major surfaces; or at least one minor surface of the thermal insulation material.
As to claims 9 and 10, neither Kress nor Mukawa discloses or suggest the thermal insulation/ barrier layer has the R-value after 45 days of at least 5.0 per inch (paragraph 82 and figure 10).
However, it appears that the thermal insulation/ barrier layer of Kress as modified by Mukawa meets all structural limitations and chemistry required by the claims.
The resulting thermally insulated conduit pipe comprises a medium pipe, a thermal insulation wrapped around the medium pipe, a barrier layer on the thermal insulation and an outer jacket on the barrier layer. The thermal insulation is obtained from a thermoplastic matrix polymer comprising polyethylene terephthalate, polyethylene or polypropylene; and a blowing agent comprising HFO 1233zd or HFO 1336mzz. The blowing agent consists of 100 vol% HFO 1233zd.
The resulting barrier layer is obtained from a dispersion comprising PVOH, water and nanofiller particles. The barrier layer contains 98-96 wt% PVOH and 2-4 wt% of nano-filler particles comprising nanoclay, graphite, mica and talc.
Therefore, the examiner takes the position that the R-value after 180 days of at least 5.0 per inch would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Response to Arguments
New ground of rejection is made in view of new combination of Kress et al. (US 2019/0211962) and Mukawa et al. (US 2008/0072987) (see rejection above).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21, 41 and 42 of copending Application No. 18/452,210 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the claimed invention are fully encompassed by those of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/617,203 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the claimed invention are fully encompassed by those of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/617,218 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the claimed invention are fully encompassed by those of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
All of the provisional nonstatutory double patenting rejections have been maintained because Applicant did not distinctly and specifically point out the supposed errors in the rejections.
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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights