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
Applicant’s request for continued examination was received. Pending claims are 1, 7-9, 15, 16, 29 and 31.
Claim Interpretation
Applicants’ claims were amended to further limit water glass to be reaction product of SiO2 and Na2O in water. It should be noted that this limitation is in a product by process format, however it does impart a specific chemical structure to the water glass.
Claims are also amended to further limit the content of the dry matter in the combination of water and waterglass emulsion. One of ordinary skill in the art would know that sodium silicate molecules would be dispersed in water and the viscotiy of the liquid will depend on the between SiO2 and Na2O.
pMDI is specifically interpreted as polymer having following structure (including isomers):
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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, 7-9, 15, 16, 29 and 31 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.
Applicant’s independent claim 1 recites following:
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Applicants’ independent claim 29 recites following:
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Per MPEP 2111.03 and MPEP 2173 the claims are indefinite because the meets and bounds of the invention are not particularly or distinctly claimed. Specifically, applicant’s first two lines of the independent claims lack transitional phrases such as “comprising” “consisting essentially of” or “consisting”. Lack of these transitional phrases, fails to determine the scope of the claims as to what is and is not included. While specification teaches use of pMDI, water glass and a filler, the specification cannot be read into the claims.
Under broadest reasonable interpretation, as long as the prior art discloses emulsion of water glass and pMDI regardless what else is included, how stable the composition is, how fast cure or crosslinking occurs. The specification as filed mentions various types of additives which renders determination of meets and bounds more difficult.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7-9, 15, 16, 29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Markusch (US 3,981,831).
With respect to claim 1, Markusch discloses adhesive or coating composition (col. 12, l. 52-55) comprising (col. 5, l. 16-20):
Organic polyisocyanate
Aqueous alkali metal silicate solution (water glass)
Amphiphilous compound having 1-9 carbon atoms.
Water glass is a reaction product of SiO2 and Na2O (col. 8, l. 33-35).
Component c, appears to catalyze the reaction between silicate and isocyanate (see top of col. 11), which compound, based on the specification is encompassed by the instant claim 1. Markusch discloses use TDI and MDI as well as polyphenyl-polymethylene-isocyantes, often abbreviated as PAPI, which is the same as polymeric MDI (CAS 9016-87-9) see col. 6, l. 15).
The ratio of isocyanate to water glass is in a range of 70:30 to 20:80 which encompasses water glass to pMDI ratio of 1.2-6, where excess of water glass is present. According to claim 1 of Markusch, the content of alkali silicate in the water is in a range of 20-70%. More preferred embodiment is 20-54% (col. 8, l. 50-64). The amount in which (water and water silicate) is utilized is a result effective variable.
Markush clearly states that the choice of the concentration of the water glass solution depends mainly on the desired end-product. Compact materials or materials with closed cells are preferably prepared with concentrated silicate solution which main, if necessary be adjust to a low viscosity by the addition of alkali of metal hydroxide. Solutions with concentrations of 40-70% by weight may be prepared this way. On the other hand, for producing open-celled light weight foams it is preferred to use silicate solutions with concentrations of 20-54% by weight in order to obtain low viscosities, sufficiently long reaction times and low unit weights (see col. 8, starting line 49). Products with low silicate content of 1-30% are preferably prepared in cases where the organic polymer properties are the most important and the silicate content is required, for example, to achieve better binding of the fillers (col. 12, l. 11-17). Small concentrations of silicate solutions are formed where a polyisocyanate is required to be hardened with water, to form a non-cellular, homogeneous material (col. 12., l. 18-21).
Consequently, it would have been obvious to one of ordinary skill in the art to adjust the content of water glass and silicate based on the intended use of the end product. One of ordinary skill in the art would readily understand, based on the teachings of Markusch, the importance of the ratios and adjust such ratios to obtain either uniformly dispersion and binding, open cell foam, closed cell foam.
With respect to claim 7, the ratio of MDI to silicate is 70:30 to 20:80, consequently the ratio of 0.5 or more is met (see rejection of claim 1).
With respect to claim 8, examples disclose use water glass with ratio of SiO2 to Na2O of 2:1 (Example 1). Specification of Markusch (col. 8) teaches ratios of 4:1 to 0.2:1.
With respect to claims 9 and 15, the polyisocyanates include polymeric component have viscosity of 500cP (500 mPa*s) or less (NCO I-IV) before NCO formation of emulsion as measured at 25oC. As it was mentioned above, the content of the water glass depends on the intended use. If the viscosity is too low, alkali metal compounds can be added. Consequently, depending on the intended use of the final product the viscosity of the emulsion can be adjusted. Articles that are coatings, putties and adhesive have water content of at least 30%, which without upper range disclosed, includes amounts higher than 100%.
Markusch further teaches that water glass is the hardening agent for isocyanate, when water glass is added to the NCO component the pot life of the composition can range from 0.2-10 hours, upon curing the final product will solidify (see Col. 11) rendering viscosity very low.
With respect to the method of claims 29 and 31 as well as claims 15 and 16, isocyanate and waterglass were first mixed together vigorously and then mixed together with high speed mixed for 15 second. After 62 second the composition solidified (Example 1). Examples 7-15 utilized the same process but without blowing agent. In each case after 30 minutes viscosity would be less than 1000mPAs (see settling time in second in Table 2).
While Markusch clearly establishes how result effective the composition is, especially with respect to the content of water and waterglass, based on his teachings one of ordinary skill in the art would be motivated to utilized low silicate content (1-30%) to obtain uniformly dispersed polymer composition. The content of water can be adjusted based on the type of the final product as well and to adjust viscosity.
Per MPEP 2111.03, if applicants do not utilize transitional phrases such as “consisting of” “comprising” or “consisting essentially of” to define the scope of the claim with respect to what unrecited additional components or steps are, if any, are excluded from the scope of the claims the determination of what is excluded by a transitional phrase must be made on case-by-case basis. In this case examiner concluded that teachings of Markusch apply since the emulsion when cured is also capable of providing an adhesive as it is in the instant invention, regardless what it takes to get there.
Additionally, MPEP 2173 requires optimizing patent quality by providing clear notice to the public of the boundaries of the inventive subject matter protected by a patent grant which fosters innovation and competitiveness.
Having said that the examiner invites applicants to an interview to further discuss the invention. Specifically, Markusch requires presence of component C, which per applicants’ examples, is not required in order to facilitate the cure of the polyisocyanate. Presence of component C may be contributing to the speed with which the composition cures, which are much shorter times, however without lower limits on viscosity utilizing term “consisting essentially of” may be the best way to overcome the rejection. This suggestion is based on the applicant’s examples, where the emulsion is utilizes water glass, pMDI where the emulsion was still stable after 30 minutes. This would not be achievable by Markusch because once the components are mixed the reaction is instantaneous and cures within 110 seconds ( longest settling time in Markusch reference). However, since components do not recite term “consisting essentially off” which would exclude reactive compounds, compound c is encompassed by the instant claims.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 15, 2026
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