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 § 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 1 – 8, 10, 11, and 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/218102 to Ling et al. (hereinafter Ling) in view of US 2019/0375878 to Singh et al. (hereinafter Singh), as evidenced by the translation of the Internal Search Report for PCT/EP2021/067249 which was provided by applicant to the United States Patent and Trademark Office on December 22, 2022 (hereinafter the ISR) and the Safety Data Sheet for STEPANPOL® PS 2412 to Stepan Company (hereinafter Stepan).
Regarding Claims 1 and 8. Ling teaches a process for preparing a rigid polyisocyanurate foam (Paragraphs 1 – 2 of Page 3). In Example 1, the process comprises mixing and curing a reaction mixture that comprises:
LUPRANAT® M20S which is a commercially available aromatic polyisocyanate;
STEPANPOL® PS2352 which is a polyester polyol and the only isocyanate-reactive compound present;
DABCO® K15 and POLYCAT® 5 as catalysts;
water, HFO-1336mzzm(Z), and cyclopentane as blowing agents;
TMCP as a flame retardant; and
NIAX® L-6900 as a surfactant/auxiliary/additional substance (Table A).
The blowing agents of the reaction mixture of Example 1 of Ling comprise HFO-1366mzz(Z) (Table A) This compound is set forth as a species of the instantly claimed at least one aliphatic halogenated hydrocarbon compound (d1) in the instant specification (see [0138] of the PG-PUB of the instant application). The blowing agents of these reaction mixture also further comprise cyclopentane (Table 6), which is a hydrocarbon compound having 5 carbon atoms. HFO-1366mzz(Z)/(d1) and cyclopentane are each provided in an amount of 39.75 mole percent in the blowing agent mixture of Example 1 of Ling (Table 28). (d1) and (d2) can then be calculated to be present in amounts of roughly 50 mole percent each, based upon the total content of the blowing agents (d1) and (d2) in the reaction mixture.
The ISR provides evidence that the isocyanate index of the reaction mixture is 261 (Page 12).
Ling is silent with respect to an overall content of aliphatic hydrophobic groups present in the reaction mixture. The Office notes that no compound having aliphatic hydrophobic groups is provided in this example, other than the polyester polyol STEPANPOL® PS 2352. However, secondary reference Singh teaches the concept of providing either STEPANPOL® PS 2352 or PS 2412 as a polyester polyol in the preparation of a polyisocyanurate foam [0017]. Stepan provides evidence that STEPANPOL® PS 2412 is based on diethylene glycol, phthalic anhydride, and tris(chloroisopropyl)phosphate (Page 1, “3. Composition/information on ingredients” section), which are compounds containing no aliphatic hydrophobic groups. Ling and Singh are analogous art as they are from the same field of endeavor, namely polyisocyanurate foams for insulation. 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 substitute STEPANPOL® PS 2412 for STEPANPOL® PS 2352 in Example 1 of Ling. No compound having aliphatic hydrophobic groups would then be provided and thus the content of aliphatic groups in the reaction mixture would be reasonably expected to be 0 weight percent. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Singh shows that STEPANPOL® PS 2412 and STEPANPOL® PS 2352 are both known commercially available polyester polyols for the preparation of polyisocyanurate foams [0017], thus providing obviousness of substituting one for the other in such compositions.
With respect to the number average content of isocyanate-reactive hydrogen atoms of components (b1) and (b2): when STEPANPOL® PS 2412 is substituted for STEPANPOL® PS 2352 in Example 1 of Ling as proposed, the isocyanate-reactive compound will consist of STEPANPOL® PS 2412. Stepan provides evidence that STEPANPOL® PS 2412 is based on diethylene glycol (Page 1, “3. Composition/information on ingredients” section), an initiator having two hydroxy groups and therefore a functionality of 2. STEPANPOL® PS 2412 would consequently be reasonably expected to also have a functionality of 2 and thus corresponds to instantly claimed polyesterol (b2). The number average content of isocyanate-reactive hydrogen atoms of components (b1) and (b2) in this example would also then be 2.
Regarding Claim 2. Ling teaches the process of Claim 1 wherein the only hydrocarbon compound (d2) used is cyclopentane (Table A), i.e. a cycloaliphatic hydrocarbon compound. (d2) in Example 1 of Ling thus comprises 100 mole percent cycloaliphatic hydrocarbon compounds.
Regarding Claim 3. Ling teaches the process of Claim 1 but does not teach an isomer of pentane is further provided in Example 1. However, in the general disclosure, Ling teaches the HFO-1336mzzm(Z) and cyclopentane are provided in an amount of at least 70% by weight of the blowing agent composition and more preferably in a weight ratio of about 50:50 to about 60:40. The remainder of the blowing agent composition, i.e. less than 30 weight percent, may then correspond to a co-blowing agent. n-pentane, i.e. a isomer of pentane, is expressly set forth as a suitable co-blowing agent (see last paragraph of Page 5 – first full paragraph of Page 17).
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 n-pentane as a co-blowing agent in Example 1 of Ling. Using the known molar masses of HFO-1336mzzm(Z), cyclopentane, and n-pentane and the reported weight percentages and weight ratios thereof, n-pentane can be calculated to be suitably provided in an amount of up to roughly 40 mol% of the blowing agent composition. The motivation would have been, for example, that the presence of n-pentane may provide advantages over cyclopentane, e.g. increased cell fineness and stability.
Regarding Claim 4. Ling teaches the process of Claim 1 but does not teach 1-chloro-3,3,3-trifluoropropene is further provided in Example 1. However, in the general disclosure, Ling teaches the HFO-1336mzzm(Z) and cyclopentane are provided in an amount of at least 70% by weight of the blowing agent composition and more preferably in a weight ratio of about 50:50 to about 60:40. The remainder of the blowing agent composition, i.e. less than 30 weight percent, may then correspond to a co-blowing agent. 1233zd(E), i.e. 1-chloro-3,3,3-trifluoropropene, is expressly set forth as a suitable co-blowing agent (see last Paragraph of Page 5 – first full paragraph of Page 17). 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 1-chloro-3,3,3-trifluoropropene as a co-blowing agent in Example 1 of Ling. Using the known molar masses of HFO-1336mzzm(Z), cyclopentane, and 1-chloro-3,3,3-trifluoropropene and the reported weight percentages and weight ratios thereof, 1-chloro-3,3,3-trifluoropropene can then be calculated to be suitably provided in an amount of up to roughly 26 mol% of the blowing agent composition. The motivation would have been, for example, that replacing some of the 1336mzzm(Z) with 1233zd(E) may be desirable as the latter compound has a slightly lower global warming potential.
Regarding Claim 5. Ling teaches the process of Claim 1 but does not expressly teach the blowing agents further comprise formic acid. However, in the general disclosure, Ling teaches the concept of further including formic acid as a co-blowing agent (Paragraph 1 of Page 18). 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 formic acid as a co-blowing agent in Example 1 of Ling. The motivation would have been, for example, that formic acid is generally less expensive than the other hydrocarbon blowing agents provided and thus could lower the costs associated with preparation of the foam.
Regarding Claims 6 and 7. Ling teaches the process of Claim 1 wherein POLYCAT® 5 and DABCO® K15 are used as catalysts (Table A). POLYCAT® 5 is a commercially available form of pentamethyldiethylenetriamine, while K15 is a commercially available form of potassium 2-ethylhexanoate.
Regarding Claim 8. Ling teaches the process of Claim 1. As indicated in the rejection of Claim 1, it is the Office’ position that would have been obvious to a person of ordinary skill in the art to substitute STEPANPOL® PS 2412 for STEPANPOL® PS 2352 in Example 1 of Ling, which is the only isocyanate-reactive compound provided in Example 1. The isocyanate-reactive compounds in Example 1 thus would continue to comprise 0 weight percent polyetherol (b1) and 100 weight percent polyesterol (b2). Limitations directed to polyetherol (b1) do not then further limit the claims.
Regarding Claim 10. Ling teaches the process of Claim 1. As indicated in the rejection of Claim 1, it is the Office’ position that would have been obvious to a person of ordinary skill in the art to substitute STEPANPOL® PS 2412 for STEPANPOL® PS 2352 in Example 1 of Ling. Stepan provides evidence that STEPANPOL® PS 2412 is based on phthalic anhydride (Page 1, “3. Composition/information on ingredients” section), i.e. an aromatic dicarboxylic acid derivative.
Regarding Claim 11. Ling teaches the process of Claim 1 but uses TMCP in Example 1, which is not a halogen-free flame retardant. However, in the general disclosure, Lin teaches non-halogenated flame retardants, e.g. antimony oxide and aluminum trihydrate, are also suitably used in the disclosed process (see first paragraph of Page 20). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art the replace halogen-substituted phosphate flame retardant TMPP in Example 1 of Ling with a halogen-free flame retardant, e.g. antimony oxide or aluminum trihydrate. The motivation would have been that the use of halogen-substituted phosphate flame retardants is increasingly being restricted, due to their negative impact on human health and the environment.
Regarding Claim 14. Ling teaches the process of Claim 1 wherein an isocyanate component comprising an aromatic polyisocyanate is mixed with a polyol component consisting of polyols/isocyanate-reactive compounds, catalyst, surfactants, and blowing agents (Paragraph 2 of Page 25; Table A).
Regarding Claim 15. Ling teaches the process of Claim 1 wherein the blowing agents are added individually to the polyol blend (Paragraph 2 of Page 25).
Regarding Claim 16. Ling teaches a rigid polyisocyanurate foam prepared by the process of Claim 1 (Paragraphs 1 – 2 of Page 3; Example 1).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/218102 to Ling et al. (hereinafter Ling) in view of US 2019/0375878 to Singh et al. (hereinafter Singh), as evidenced by the translation of the Internal Search Report for PCT/EP2021/067249 which was provided by applicant to the United States Patent and Trademark Office on December 22, 2022 (hereinafter the ISR) and the Safety Data Sheet for STEPANPOL® PS 2412 to Stepan Company (hereinafter Stepan) – as applied to Claim 1 above – and further in view of WO 2016/184433 to Huang et al. (hereinafter Huang).
Regarding Claims 12 and 13. Ling teaches the process of Claim 1 but does not expressly teach the reaction mixture is applied to a continuously moving outer layer. However, Huang also teaches a process of making a rigid polyisocyanurate foam wherein the reaction mixture is applied to continuously moving outer layers, namely an upper layer and a bottom layer driven by conveyors/belts ([0035] and Figure 3), such that a sandwich element is formed. Line and Huang are analogous art as they are from the same field of endeavor, namely processes of making a rigid polyisocyanurate 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 include the above described process steps of Huang in the process of Ling. The motivation would have been that Huang describes this to be a suitable method for the preparation of sandwich elements, which is an application for the rigid polyisocyanurate foam expressly envisioned by Ling (see last Paragraph of Page 2).
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered. The Office responds as follows:
Specification Objections
Applicant’s arguments are found persuasive. Accordingly, the outstanding objection to the specification has been withdrawn.
Claim Rejections under 35 U.S.C. 112(b)
The Office agrees the amendment to Claim 1 is sufficient to overcome the outstanding rejection under 35 U.S.C. 112(b). Accordingly, the outstanding rejection under 35 U.S.C. 112(b) of all pending claims has been withdrawn.
Claim Rejections under 35 U.S.C. 103
Applicant argues that the outstanding rejection does not set forth a proper calculation of aliphatic hydrophobic group content of components b) to g), as it is applicant’s position that blowing agents (d1) and d2) must be considered in calculating this content.
The Office respectfully disagrees. The rejection relies on Example 1 of Ling, which utilizes a combination of 1366mzz(Z) and cyclopentane as the blowing agent. 1366mzz(Z) is set forth as a species of the instantly claimed at least one aliphatic halogenated hydrocarbon compound (d1) in the instant specification (see [0138] of the PG-PUB of the instant application). 1366mzz(Z) corresponds to (Z)-1,1,1,4,4,4-hexafluoro-2-butene which a compound having a total of four carbon atoms. Cyclopentane is a hydrocarbon compound having 5 carbon atoms and thus corresponds to instantly claimed hydrocarbon compound (d2).
An applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999) The instant specification defines “a hydrophobic group as meaning an aliphatic hydrocarbon having preferably more than 6, particularly preferably more than 8 and less than 100 and in particular at least 10 and at most 50 directly adjacent carbon atoms” (see [0039] of the PG-PUB of the instant application).
Further, Inventive Example 24 of the instant specification uses 8.2 parts by weight of a commercially available form of the (d1) 1366mzz(Z) blowing agent used in Ling (OPTEON® 1100). Table 5 reports the proportion of hydrophobic groups in components (b) – (g) is zero. Thus, applicant also does not include this compound in its calculation of hydrophobic content.
Consequently, in light of the instant specification, 1366mzz(Z) and cyclopentane were not included in the calculations of aliphatic hydrophobic group content of Example 1 of Ling. These compounds do not meet the definition provided as they each have less 6 carbon atoms, nor do they appear to be used in calculating the content of hydrophobic groups as exemplified in the instant specification.
Applicant’s identification of a typo referring to Tables 6 and 28 is noted. The outstanding rejection is based upon Example 1 and, thus, applicant is correct that Table 6 refers to Table A and Table 28 refers to Page 28 of the reference.
In response to applicant’s argument that the mole percentages disclosed in Ling are only relevant to the gas content contained within each foam cell of Ling, Ling sets forth that those “skilled in the art will appreciate that in…Examples 1 and 2 above the total moles of blowing agent in each examples has been maintained to about the same value”(see last sentence on Page 28).
Applicant additionally argues that the Example 1 composition of Ling includes 5.30 wt% HFO-1336mzzm(Z) and 2.2.5 wt% cyclopentane, corresponding to molar proportions of these compounds which are outside the scope of the present claims. This is not found persuasive. Using the aforementioned amounts and known molar masses of each compound, HFO-1336mzzm(Z)/(d1) and cyclopentane/(d2) can be calculated to each be provided in an amount of 50 mol percent, based on the total content of (d1) and (d2). Each amount lies in the claimed molar proportion ranges for (d1) and (d2), of respectively 20 and 60 mol% and 40 and 80 mol%.
Applicant additionally argues that the Example 1 composition of Ling includes 5.30 wt% HFO-1336mzzm(Z) and 2.2.5 wt% cyclopentane, corresponding to a total content of aliphatic hydrophobic groups outside the scope of the present claims. This argument is not found persuasive because, as detailed above, these compounds are not suitably included in the calculation of the claimed aliphatic hydrophobic group content. The Office consequently maintains the position that the aliphatic hydrophobic group content, as instantly claimed, arising from the proposed combination of references would be reasonably expected to be zero, for the reasons detailed in the rejection of Claim 1 under 35 U.S.C. 103 above.
Applicant’s argument that Huang does not cure the deficiencies of the other applied references is not persuasive, as the alleged deficiencies have been addressed above.
Conclusion
THIS ACTION IS MADE FINAL. 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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