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
Claim 2 – 13, 15, and 16 are objected to because of the following informalities:
for consistency, Claim 2 should be amended to recite “said composition for preparing a foam” in Line 1 and “the composition for preparing a foam” in Line 6;
for consistency, Claims 3, 12, 13, and 16 should also be amended to recite the “composition for preparing a foam of claim 2”;
for consistency, Claims 4 – 11 should also be amended to recite the “isocyanate-reactive composition” in each instance in the claims;
the full name for the acronym MDI should be set forth in Claim 12, as it is the first time it is recited in the claims; and
it is suggested Claim 15 be amend to recite “wherein the foam is suitable for”.
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 – 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 because:
Claim 1 sets forth (A) a polyol and (C) a polyether alcohol compound. However, a polyether alcohol compound is itself a type of polyol. The metes and bounds of the claim are not clearly defined, as it is unclear if (A) a polyol must be different compound from (C) a polyether compound or if the recitation (A) a polyol may be met by a polyether alcohol compound. For the purposes of further examination, the former interpretation has been used.
As Claims 2 – 16 all ultimately depend on Claim 1, they inherit the above described deficiency and are therefore are also rejected under this statute.
Additionally, there is a lack of antecedent basis for the R3, subscript i, subscript j, and oxyalkylene segment Y in Claim 6. It is unclear if these recitations refer to the R3, subscript i, subscript j, and oxyalkylene segment Y in the polyether moiety which may be present in the polysiloxane (B) and/or in (C) the polyether alcohol. For the purposes of examination, Claim 6 will be interpreted as setting forth the provisos for R3, subscript i, subscript j, and oxyalkylene segment Y apply to either or both of the polyether moiety which may be present in the polysiloxane (B) and (C) the polyether alcohol.
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 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 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over us 2022.0017679 to Glos et al. (hereinafter Glos).
Regarding Claim 1. Glos teaches a polyol/isocyanate-reactive composition for preparing a foam comprising a polyol; and polyalkylsiloxanes ([0127] and Table 1).
The polyol component may comprise both polyether and polyester polyols [0098]. The polyether polyols may be prepared by polymerization of alkylene oxides onto a starter molecule having preferably 2 to 8 hydroxyl groups. The preferred alkylene oxides used are ethylene oxide and propylene oxide [0099]. The obtained polyols have molecular weights in the range of 500 to 15,000 g/mol [0099]. The disclosed polyether polyols thus correspond to a polyether alcohol of general formula HO-Y-R3-(-[Y]j-H)I in which each Y is independently an oxyalkylene segment, specifically an oxyethylene segment of general formula (C-nH2nO)m in which n is 2 or an oxyethylene segment of general formula (C-nH2nO)m in which n is 3; i is 1 to 7, as it is based upon the number of hydroxy groups in the starter molecule; and j is 0 to 1. m would further be expected to fall within the instantly claimed range of from 1 to 50 such that a molecular weight for the polyether polyol in the range of 500 to 15,000 g/mol is provided.
The polyalkylsiloxanes preferably conform to the following formula (1):
Ma-DbTcQ-d
wherein M corresponds to R11R12R13SiO1/2; D corresponds to R14R15SiO2/2-; T corresponds to R16SiO3/2-; Q corresponds to SiO4/2-; R11 – R16 correspond to identical or different C1-12 hydrocarbon radicals or H; a is 2 to 6; b is 0 to 8; c is 0 to 4; and d is 0 to 2 [0028] – [0029]. When expressed as a mole fraction with a sum total of 1, values a – d in Glos can be alternatively calculated to correspond to rougly 0.1≤a≤1; 0≤b≤0.8; 0≤c≤0.67; and 0≤d≤0.5.
The polyalkylsiloxanes of formula (1) of Glos thus correspond to a polysiloxane of the instantly claimed formula in which 0.1≤a≤1; 0≤b≤0.8; b’ is 0; 0≤c≤0.67; c’ is 0; 0≤d≤0.5; the ratio of a:d is therefore at least 1; each R1 is independently selected from C1-12 hydrocarbyl radicals or H; and each R2 corresponds to R1, i.e. a C1-12 hydrocarbyl radical or H. As R2 does not correspond to a polyether moiety of a general formula -Y-R3-([Y]j-Z)i-, Y, R3, j, Z, I, are absent are absent in this embodiment. Further, as b’ and c’ are each zero, R’ is also absent.
The Office recognizes that the mole fractions of 0≤b≤0.8; 0≤c≤0.67; and 0≤d≤0.5 and the molar ratio of a:d of at least 1 are not identical to the claimed ranges of 0≤b≤0.2; 0<c<0.2; and 0<d<0.7 and molar ratio of a:d of 0.7 to 1.2. However, they do overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 2. Glos teaches a composition for preparing a foam, said composition comprising the isocyanate-reactive composition of Claim 1; a polyisocyanate; an amine and/or metal catalyst; and water, optionally in conjunction an additional blowing agent ([0109]; [0127] and Table 1). The polyols and polyisocyanate react in the presence of said catalysts and blowing agent(s) [0090] – [0095].
Regarding Claim 3. Glos teaches the composition for preparing a foam of Claim 2 may further comprise a surfactant [0125]. While Glos does not expressly teach an aminosilicon compound is further provided, this component is set forth as optional in instant Claim 3 and is therefore not required to be present in the instantly claimed composition for preparing a foam.
Regarding Claim 4. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (i) the polyalkylsiloxanes of formula (1) of Glos correspond to a polysiloxane of the instantly claimed formula in which 0.1≤a≤1, as detailed in the rejection of Claim 1 above. The Office recognizes that this mole fraction is not identical to the instantly claimed range of 0.3 to 0.6. However, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 5. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (iii) each moiety corresponding to instantly claimed R1 in the polyalkylsiloxanes of formula (1) of Glos is independently selected from C1-12 hydrocarbyl radicals or H, as detailed in the rejection of Claim 1 above.
Regarding Claim 6. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (i) the polyether alcohol of Glos corresponds to a polyether alcohol of the instantly claimed formula in which i is from 1 to 7, as detailed in the rejection of Claim 1 above.
Regarding Claim 7. Glos teaches the isocyanate-reactive composition of Claim 1 wherein the polyether alcohol of Glos is prepared from alkoxylation with alkylene oxides of a starter molecule, which may be a di-, tri-, or tetra-hydric alcohol [0099]. Di-, tri-, and tetrahydric alcohols correspond to alcohol compounds having respectively two, three, and four hydroxyl groups [0099].
Regarding Claim 8. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (ii) the polyether alcohol of Glos has a molecular weight of from 500 to 15,000 g/mol [0098] – [0099].
Regarding Claim 9. Glos teaches the isocyanate-reactive composition of Claim 1 but is silent regarding (iii) the viscosity thereof. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Glos teach 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. an isocyanate-reactive composition having a viscosity 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.
Regarding Claim 10. Glos teaches the isocyanate-reactive composition of Claim 1 may comprise a tin catalyst. However, Glos teaches iron, bismuth, and zinc catalysts are suitable alternatives thereto [0114]. Thus, embodiments in which no tin catalyst is provided and therefore (i) the isocyanate-reactive composition is free of tin are readily envisioned from the reference disclosure.
Regarding Claim 11. Glos teaches the isocyanate-reactive composition of Claim 1 wherein the polyol component may comprise both polyether and polyester polyols [0098], i.e. polyol (A) comprises a polyester polyol.
Regarding Claim 12. Glos teaches the composition for preparing a foam of Claim 2 wherein component (D) may comprises polyphenylpolymethylene polyisocyanate [0111], i.e. a polymeric MDI.
Regarding Claim 13. Glos teaches a foam comprising the reaction product of the composition for preparing a foam of Claim 2 ([0090] – [0095]; [0109]; [0127]; and Table 1).
Regarding Claim 14. Glos teaches the foam of Claim 13 having a density of especially preferably 30 to 150 kg/m3 [0122].
Regarding Claim 15. Glos teaches the foam of Claim 13 is suitably used in insulation panels [0021].
Regarding Claim 16. Glos teaches a method of preparing a foam comprising mixing and curing the composition of Claim 2 to provide a foam ([0090] – [0095]; [0109]; [0126] – [0127]; and Table 1).
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 polysiloxanes having at least the M, T, and Q units set forth in the formula in instant Claim 1. In many of the references, these polysiloxanes are also further incorporated into any isocyanate-reactive composition.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. 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.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764