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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 9, 2026 has been entered.
Specification
The amendment filed January 9, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. Additionally, MPEP 1893.01(d) states that “[a]mendments, even those considered to be minor or to not include new matter, may not be incorporated into the translation”. Translated Tables 1 – 3 and 5 contain at least the following material which is not supported by the original disclosure:
in Table 1, the hydrophobic fractions reported for Examples 1, 2, 4, and 5 are different from those in the foreign priority document;
in Table 2, hydrophobic fractions reported for Examples 7 – 9, 12 – 14, and 17 – 18 are different from those in the foreign priority document;
the entirety of Table 3 does not correspond to “Tabelle 3”in the foreign priority document; and
in Example 30 of Table 5, the values for parts by weight of Polyether polyol 1, TEP, Cyclopentane 95, Solstice® LBA – as well as proportion of Solstice LBA and hydrophobic fraction - are different from those in foreign priority document.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 – 8 and 10 – 16 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.
Upon further consideration of the claims, it is noted that there is a lack of antecedent basis for the “the” content of aliphatic hydrophobic groups recited in the second to last paragraph of Claim 1. No content of aliphatic hydrophobic groups is recited prior to this phrase. It is also unclear if this content refers specifically to a content of aliphatic hydrophobic groups provided by compounds g) or the overall content of aliphatic hydrophobic groups in the reaction mixture. As Claims 2 – 8 and 10 – 16 all ultimately depend on Claim 1, they also inherit this deficiency. For the purposes of further examination, this phrase in Claim 1 will be interpreted as setting forth an overall content of aliphatic hydrophobic groups in the reaction mixture.
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 January 9, 2026 have been fully considered. The Office responds as follows:
Specification Objections
The translated tables of the specification filed January 9, 2026 and statement that the translation is accurate are noted. However, Tables 1 – 3 and 5 do introduce new matter, for the reasons detailed in the objection to the specification above.
Claim Objections
The Office agrees the amendment to Claim 5 is sufficient to overcome the outstanding objection thereto. Accordingly, this objection 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) with respect to the recitation of the “halogenated hydrocarbon compound (d1)”. Accordingly, the outstanding rejection under 35 U.S.C. 112(b) of all pending claims has been withdrawn. However, upon further consideration of the claims, a new rejection under 35 U.S.C. 112(b) is set forth with respect to the recitation of “the” content of aliphatic hydrocarbon groups.
Claim Rejections under 35 U.S.C. 102
Applicant’s arguments with respect to the hydrophobic content of STEPANPOL® are found persuasive. Accordingly, the rejection of Claims 1, 2, 6 – 8, 10, and 14 – 16 as being anticipated by WO 2018/218102 to Ling, as evidenced by the translation of the Internal Search Report for PCT/EP2021/067249, has been withdrawn. In the present action, Ling is now combined with newly discovered US 2019/0375878 to Singh et al. (hereinafter Singh) to render obvious the claimed process in which the aliphatic hydrocarbon group content is in the claimed range.
Claim Rejections under 35 U.S.C. 103
Applicant’s arguments with respect to the outstanding obviousness rejections over Ling and Ling in view of Huang are noted. However, as detailed above, Singh is now combined with Ling to render obvious the claimed process in which the aliphatic hydrocarbon group content is in the claimed range.
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