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 .
Election/Restrictions
Applicant’s election without traverse of Group I. in the reply filed on 12/3/2025 is acknowledged.
Claims 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected grouping of invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/3/2025.
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 1-10 and 19-20 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.
Claims are confusing as to intent because it cannot be definitively be determined what materials are being referred to by the expressions/abbreviations “HFOs” and “HFCOs” that are set forth by the claims without the actual intended material/claim element being recited along with the recited expressions/abbreviations on their first use in the claims.
Additionally, use of the designations 1224yd(Z), 1233zd(E) and 1336mzz(Z) may be utilized in the claims, but the need to be prefaced by “HFO-“ or “HFCO-“ to appropriately correlate them with the materials that they are being associated with.
Appropriate correction is required.
The claims are confusing as to intent because the basis for the recited ranges of % by weight values cannot be definitively determined without the claims reciting what weight is being referred to. In that the claims do not establish what weight constitutes the total upon which the ranges of % by weight values are based, the ranges of amounts and relevant proportions cannot be definitively determined.
Appropriate correction is required.
Regarding claims 2, 19 and 20, claims are confusing as to intent because the relevance of the aged thermal conductivity values of the claims cannot be definitively determined without age parameters being set forth by the claims.
Appropriate correction is required.
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 recites ranges of density and aged thermal conductivity values that extend beyond the ranges of values set forth by claim 19 from which it depends. Accordingly, it fails to include all the limitations of the claim upon which it depends. 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
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-10 and 19-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over WO 2020/263775.
WO 2020/263775 discloses a process for preparing a thermoplastic polymer foam by providing a thermoplastic melt of polystyrene with blowing agent that includes HFO-1336mzz and methyl formate in amounts as claimed, and extruding the melt to form polystyrene foam as claimed. (see page 1, line 16 -page 2, line 4; page 2, lines 25-27; page 6, lines 16-25; page 7, lines 4, 5; page 8, lines 11, 12, 22, 23; page 12, lines 20-24; page 13, lines 13, 14; page 14, lines 24-30; page 15, line 10-page 16, line 8; page 16, lines 16-22; page 19, lines 5-21).
The claims, including claims 4-7 and 19, differ from WO 2020/263775 in that overlap in that relative proportions of the respective blowing agents are not specifically expressed as claimed. However, overlapping proportions are disclosed for purposes of providing required foam forming effects {see page 2 lines 1-2}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the blowing agents of WO 2020/263775 in any proportions provided for by WO 2020/263775 in forming the foams of WO 2020/263775 for the purpose of imparting their respective foam forming effects in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claim 2, 19 and 20, densities of less than 23kg/m3 are disclosed {page 19 lines 5-21}. Further, though thermal conductivities as claimed are not specified, owing to the closeness of the material, process operations, blowing agents and respective densities, as well as polystyrenes known usefulness in insulation applications, it is held that it would necessarily follow that the products formed by the processes provided for by WO 2020/263775 would have thermal conductivity values to the degree as defined by this claim.
Regarding claim 3, in that HFO-1336mzz and methyl formate are allowed to be the only blowing agents utilized is sufficient to meet the requirements of this claim.
Regarding claims 8-10, though difference may be evident in the specific selection of blowing agents of these claims, WO 2020/263775 does provide for additional inclusion of other blowing agents, including HFO’s, alkanes and ethers (see page 4 lines 3-9). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any of the blowing agents provided for by WO 2020/263775 in forming the foams of WO 2020/263775 for the purpose of imparting their respective foam forming effects in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, it would have been obvious to have utilized them in any amount for purposes of achieving their foam forming function with the expectation of success in the absence of a showing of new or unexpected results.
Further, regarding claim 19, amounts of total blowing agent as claimed are disclosed by WO 2020/263775 {page 12 line 22}.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kontomaris & Basu et al. are cited for their relevant blowing agents and polymer preparations in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765