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 Objections
Claims 1 – 15, 17, 23, and 24 are objected to because of the following informalities:
“[t]he composition” should be replaced with “[t]he foam composition” in each instance in Claims 1 – 15 and 17;
it is suggested Claims 1, 17, 23, and 24 be amended to recite “the diluent is present in an amount of about 0.1 to 30 wt%”;
Claim 2 should be amended to recite “comprise
the phrase “glycidyl epoxide” is recited twice consecutively in Claim 4.
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 3, 4, 11, 22, and 23 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.
There is lack of antecedent basis for the phenol (singular) recited in Claim 3. Claim 2, on which Claim 3 depends, only sets forth phenols (plural) and it is then unclear to which of these phenols Claim 3 refers. For the purposes of further examination, Claim 3 will be interpreted as referring to the “phenols”.
There is lack of antecedent basis for the polyol recited in Claim 11. Neither Claim 11 nor independent Claim 1 set forth a polyol prior to this recitation. For the purposes of further examination, Claim 11 will be interpreted as depending on Claim 10, which does set forth a polyol.
There is lack of antecedent basis for the external stimulus recited in Claim 22. Neither Claim 22 nor independent Claim 17 set forth an external stimulus prior to this recitation. For the purposes of further examination, Claim 22 will be interpreted as depending on Claim 18, which does set forth external stimulus.
There is lack of antecedent basis for the cationic polymerization referred to in the fourth and third to last lines of Claim 23. Independent Claim 23 does not set forth an cationic polymerization prior to this recitation. For the purposes of further examination, Claim 23 will be interpreted as setting form the foam composition is polymerized prior to a cationic polymerization.
There is a lack of antecedent basis for “the” composition set forth in the phrase “the diluent is present in about 0.1 to 30 wt%, based on the total weight of the composition”. It is unknown to which the previously recited compositions “the” composition refers. For the purposes of further examination, Claims 23 and 24 will be interpreted as setting forth the diluent is present in about 0.1 to 30 wt%, based on the total weight of the foam composition.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 11, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0202953 to Lesser et al. (hereinafter Lesser)
Regarding Claims 1 – 3, 5, 7, and 10. In Example 4, Lesser teaches a composition comprising:
3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate, i.e. a first non-glycidyl epoxide (Table 4). 3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate is set forth as a suitable species of cationically polymerizable first epoxide in instant Claims 5 and 7;
bisphenol A diglycidyl ether (Table 4), i.e. a second glycidyl epoxide which is different from the first non-glycidyl epoxide. Glycidyl ethers based on bisphenol A are set forth as a suitable species of cationically polymerizable first epoxide in instant Claim 3;
p-(octyloxyphenyl)phenyliodonium hexafluoroantimonate (Table 4). Onium salts are set forth as cationic initiators in [0076] of the PG-PUB of the instant application; and
1,1,2,2-tetraphenyl-1,2-ethanediol (Table 4), i.e. a species of polyol. Polyols are set forth as suitable diluents in instant Claim 10. 1,1,2,2-tetraphenyl-1,2-ethanediol, i.e. the diluent, is provided in an amount of 2.000 weight percent of the composition.
Lesser further teaches the composition undergoes an ionic polymerization reaction in a spatially propagating reaction front or in a global reaction that occurs throughout the entire composition (Abstract).
Lesser does not expressly teach characterize the above described composition as a foam composition. However, it has been held that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. As Lesser teaches a chemical composition comprising all of the instantly claimed ingredients in the instant claimed amounts, it must also necessarily correspond to a foam composition.
Regarding Claim 4. Lesser teaches the foam composition of Claim 1 wherein
bisphenol A diglycidyl ether, corresponding to the claimed second glycidyl epoxide, is present in an amount of 34.380 weight percent (Table 4).
Regarding Claim 6. Lesser teaches the foam composition of Claim 1 wherein
3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate, corresponding to the first non-glycidyl epoxide, is present in an amount of 51.570 weight percent (Table 4).
Regarding Claim 8. Lesser teaches the foam composition of Claim 1 comprises diphenyl(2,4,6 trimethylbenzoyl)phosphine oxide (Table 4). Lesser describes this compound as a free radical initiator in [0065].
The composition also comprises p-(octyloxyphenyl)phenyliodonium hexafluoroantimonate (Table 4). Onium salts are set forth as cationic initiators in [0076] of the PG-PUB of the instant application.
Regarding Claim 9. Lesser teaches the foam composition of Claim 1 comprises diphenyl(2,4,6 trimethylbenzoyl)phosphine oxide in an amount of 0.500 weight percent (Table 4).
Regarding Claim 11. Lesser teaches the foam composition of Claim 1 comprises 1,1,2,2-tetraphenyl-1,2-ethanediol (Table 4), i.e. a species of polyol and diluent. Using its known molecular weight and functionality, 1,1,2,2-tetraphenyl-1,2-ethanediol can be calculated to have a hydroxyl number of roughly 306 mgKOH/g.
Regarding Claim 15. Lesser teaches a sample/article comprising the foam composition of Claim 1 ([0090] – [0091]).
Regarding Claim 16. Lesser teaches the article of Claim 15 but does not expressly teach it is a porous. Lesser is additionally silent regarding its density. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Lesser 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 porous article having a density in the instantly claimed range, 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.
Claims 17 – 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0202953 to Lesser et al. (hereinafter Lesser)
Regarding Claims 17, 20, and 21. In Example 4, Lesser teaches a method comprising mixing together a mixture prepared by a composition comprising:
3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate, i.e. a first non-glycidyl epoxide (Table 4). 3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate is set forth as a suitable species of cationically polymerizable first epoxide in instant Claims 5 and 7;
bisphenol A diglycidyl ether (Table 4), i.e. a second glycidyl epoxide which is different from the first non-glycidyl epoxide. Glycidyl ethers based on bisphenol A are set forth as a suitable species of cationically polymerizable first epoxide in instant Claim 3;
p-(octyloxyphenyl)phenyliodonium hexafluoroantimonate (Table 4). Onium salts are set forth as cationic initiators in [0076] of the PG-PUB of the instant application; and
1,1,2,2-tetraphenyl-1,2-ethanediol (Table 4), i.e. a species of polyol. Polyols are set forth as suitable diluents in instant Claim 10. 1,1,2,2-tetraphenyl-1,2-ethanediol, i.e. the diluent, is provided in an amount of 2.000 weight percent of the composition.
Lesser does not expressly teach characterize the above described process as a process for manufacturing a foam and is silent regarding the temperature attained by the polymerized mixture and propagation rate. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Lesser teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. the manufacture of a foam composition in which the temperature obtained by the polymerized mixture and propagation rate are in the claimed ranges, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. 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 using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claims 18 and 22. Lesser teaches the method of Claim 17 further comprises subjecting the formulation/mixture to a UV lamp [0091], i.e. external stimulation. Lesser teaches UV light initiates radical polymerization [0089].
Regarding Claim 19. Lesser teaches the method of Claim 17 comprising mixing in dark conditions [0084].
Claim 23 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0202953 to Lesser et al. (hereinafter Lesser)
Regarding Claim 23. In Example 4, Lesser teaches a composition comprising:
an acrylate/free radical polymerizable composition comprising diphenyl(2,4,6 trimethylbenzoyl)phosphine oxide (Table 4). Lesser describes this compound as a free radical initiator in [0065]. The epoxy/free radical polymerizable composition further comprises trimethylolpropane triacrylate (Table 4), which has three functional acrylate groups. Acrylates are set forth as free radically polymerizable monomers in [0110] of the PG-PUB of the instant application; and
an epoxy/cationically polymerizable composition comprising:
3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate, i.e. a first non-glycidyl epoxide (Table 4). 3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate is set forth as a suitable species of cationically polymerizable first epoxide in instant Claims 5 and 7;
bisphenol A diglycidyl ether (Table 4), i.e. a second glycidyl epoxide which is different from the first non-glycidyl epoxide. Glycidyl ethers based on bisphenol A are set forth as a suitable species of cationically polymerizable first epoxide in instant Claim 3;
p-(octyloxyphenyl)phenyliodonium hexafluoroantimonate (Table 4).
Onium salts are set forth as cationic initiators in [0076] of the PG-PUB of the instant application; and
1,1,2,2-tetraphenyl-1,2-ethanediol (Table 4), i.e. a species of polyol. Polyols are set forth as suitable diluents in instant Claim 10. 1,1,2,2-tetraphenyl-1,2-ethanediol, i.e. the diluent, is provided in an amount of 2.000 weight percent of the composition.
Lesser teaches free radical polymerization may occur prior to cationic polymerization [0078]. Lesser further teaches the composition undergoes an ionic polymerization reaction in a spatially propagating reaction front or in a global reaction that occurs throughout the entire composition (Abstract).
Lesser does not expressly teach characterize the above described composition as a foam composition. However, it has been held that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. As Lesser teaches a chemical composition comprising all of the instantly claimed ingredients in the instant claimed amounts, it must also necessarily correspond to a foam composition.
Claim 24 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0202953 to Lesser et al. (hereinafter Lesser)
Regarding Claim 24. In Example 4, Lesser teaches a method of manufacturing a composition comprising mixing together a mixture comprising:
an acrylate/free radical polymerizable composition comprising diphenyl(2,4,6 trimethylbenzoyl)phosphine oxide (Table 4). Lesser describes this compound as a free radical initiator in [0065]. The epoxy/free radical polymerizable composition further comprises trimethylolpropane triacrylate (Table 4), which has three functional acrylate groups. Acrylates are set forth as free radically polymerizable monomers in [0110] of the PG-PUB of the instant application; and
an epoxy/cationically polymerizable composition comprising:
3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate, i.e. a first non-glycidyl epoxide (Table 4). 3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexane carboxylate is set forth as a suitable species of cationically polymerizable first epoxide in instant Claims 5 and 7;
bisphenol A diglycidyl ether (Table 4), i.e. a second glycidyl epoxide which is different from the first non-glycidyl epoxide. Glycidyl ethers based on bisphenol A are set forth as a suitable species of cationically polymerizable first epoxide in instant Claim 3;
p-(octyloxyphenyl)phenyliodonium hexafluoroantimonate (Table 4).
Onium salts are set forth as cationic initiators in [0076] of the PG-PUB of the instant application; and
1,1,2,2-tetraphenyl-1,2-ethanediol (Table 4), i.e. a species of polyol.
Polyols are set forth as suitable diluents in instant Claim 10. 1,1,2,2-tetraphenyl-1,2-ethanediol, i.e. the diluent, is provided in an amount of 2.000 weight percent of the composition.
Lesser further teaches initiating free radical polymerization and cationic polymerization of the acrylate and epoxy portions [0078].
Lesser does not expressly teach characterize the above described process as a process for manufacturing a foam. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Lesser teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. the manufacture of a foam composition, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. 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 using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0202953 to Lesser et al. (hereinafter Lesser), as applied to Claim 1 above.
Regarding Claim 13. Lesser teaches the foam composition of Claim 1 but does not expressly teach including a filler in Example 4. However, Lesser does teach the concept of including a filler in the disclosed composition in the general disclosure [0069]. 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 a filler in the composition of Example 4 of Lesser. The motivation would have been that fillers are additives which provide advantages, such as enhanced mechanical properties and the reduction of material costs.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0202953 to Lesser et al., as applied to Claim 1 above, and further in view of US 6,890,964 to Czaplicki et al. (hereinafter Czaplicki).
Regarding Claims 12 and 14. Lesser teaches the foam composition of Claim 1 but does not expressly teach including fumed silica in Example 4. However, Czaplicki teaches the concept of including fumed silica in epoxy compositions and that it functions as both a nucleating agent and filler therein (Column 7, Lines 27 – 40). Lesser and Czaplicki are analogous art as they are in applicant’s field of endeavor, namely epoxy compositions. 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 fumed silica in the composition of Example 4 of Lesser. Lesser does teach the concept of including a filler in the disclosed composition in the general disclosure [0069]. The motivation would have been, then, 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, Czaplicki shows that fumed silica is known in the art to be a suitable filler for epoxy compositions (Column 7, Lines 27 – 40).
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to epoxy compositions and foams manufactured therefrom.
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