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 26 is objected to because of the following informalities: it is suggested the claim be amended to recite “the polyisocyanate component has a polyisocyanate functionality in the range of 2.1-2.6; and/or”.
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 27 – 30 and 33 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:
The metes and bounds of Claims 27, 28, and 33 are not clearly defined, as it is unknown if the lower limit for the polyisocyanate functionality of 2.1 set forth in Claim 26 is required by the claims. For the purposes of further examination, the polyisocyanate functionality ranges recited in the aforementioned claims will be interpreted to each have a lower limit of 2.1.
The metes and bounds of Claims 29 and 30 are not clearly defined, as it is unknown if the lower limit for the polyol functionality of 2.1 set forth in Claim 26 is required by the claims. For the purposes of further examination, the polyol functionality ranges recited in the aforementioned claims will be interpreted to each have a lower limit of 2.1.
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 26, 29, 30, 32, 34, 37 – 40, 46, 47, and 51 are rejected under 35 U.S.C. 103 as being unpatentable over WO 01/51538 to Galina et al. (hereinafter Galina) in view of US 2017/0080614 to Lamm, as evidenced by CA 2 290 490 to St. Clair et al. (hereinafter St. Clair).
Regarding Claims 26, 29, 30, 32, 34, 37, 38, 40, 46, and 47. Galina teaches a formulation for preparing a rigid polyurethane foam for heat insulation (Page 1, Lines 1 – 5), i.e. an expanding foam insulation material that is dispensable and expandable to provide an expanded foam insulation material.
In Example 1, the expanding foam insulation material corresponds to a polymerizable composition comprising a polyol component consisting of at least one polyol (Polyol A), as well as a polyisocyanate component consisting of one isocyanate (CARADATE® 30) (Table 1). The expanded foam insulation material obtained is a polyurethane (Page 1, Lines 1 – 5).
St. Clair provides evidence that CARADATE® 30 is a polyisocyanate having a functionality of 2.6 (see footnote of Table 1 of the reference). Additionally, Galina discloses Polyol A has a functionality of 2.4 (Page 7, Lines 21 – 23), as well as that the expanding foam insulation material of Example 1 is reacted at an isocyanate index of 125 (Table 1).
Galina is silent with respect to the claimed properties of the expanding foam insulation material. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Galina teaches a composition 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. materials having a local pressure maximum, time difference between a time of the local pressure maximum and a time of 95% maximum foam height, a volume which does not deviate from a linear relationship with the mass of the expanding foam insulation material, a flame spread and smoke index at a thickness of 4” in the instantly claimed ranges - 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.
Additionally, Galina teaches the concept of providing rigid polyurethane foams as heat insulation for buildings (Page 1, Lines 1 – 5) but does not expressly describe the steps in such a method. However, Lamm teaches a method of dispending insulating foam into a building cavity comprising at least one elongated wall surface in which a plurality of openings are formed. A dispensing tube is inserted through a first opening in the plurality of openings and a first portion/shot of the expanding foam insulation material is dispensed and allowed to expand within the cavity ([0030] – [0031]). Galina and Lamm are analogous art as they are from the same field of endeavor, namely foam materials for insulation applications. Before the effective filing date of the instantly claimed invention, it would have been obvious to a utilize the foam insulation material of Galina in the method of Lamm. The motivation would have been that Lamm’s particular method provides a minimally invasive method for dispensing heat insulating foam materials into buildings in both retrofitting and new construction applications [0030].
Regarding Claim 39. Galina in view of Lamm, as evidenced by St. Clair, teaches the method of Claim 26. In Example 1 of Galina, water and n-pentane are provided as blowing agents (Table 1).
Regarding Claim 51. Galina in view of Lamm, as evidenced by St. Clair, teaches the method of Claim 26. As detailed in the rejection of independent Claim 26, Galina teaches the isocyanate index of the expanding foam insulation material is 125 in Example 1 (Table 1). However, in the general disclosure, Galina teaches the isocyanate index of the expanding foam insulation material may be, most suitably, as low as 100 (Page 7, Lines 3 – 5). 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 provide the expanding foam insulation material of Example 1 of Galina with an isocyanate index as low as 100. The motivation would have been that lowering the isocyanate index may provide advantages such as reducing problems associated with using water as a blowing agent, wherein water is one of the blowing agents used in Example 1 of Galina.
Claims 27, 28, 33, and 48 – 50 are rejected under 35 U.S.C. 103 as being unpatentable over WO 01/51538 to Galina et al. (hereinafter Galina) in view of US 2017/0080614 to Lamm, as evidenced by CA 2 290 490 to St. Clair et al. (hereinafter St. Clair) – as applied to Claims 26 and 38 above – and further in view of US 2014/015193 to Yin et al. (hereinafter Yin).
Regarding Claims 27, 28, and 33. Galina in view of Lamm, as evidenced by St. Clair, teaches the method of Claim 26. As detailed in the rejection of Claim 26, Galina discloses the expanding foam insulation material of Example 1 is reacted at an isocyanate index of 125 (Table 1).
As is further detailed in the rejection of Claim 26, St. Clair provides evidence that CARADATE® 30 is a polyisocyanate having a functionality of 2.6 (see footnote of Table 1 of the reference). The Office recognizes that this polyisocyanate functionality is outside the instantly claimed ranges of no more than 2.5 and no more than 2.3 However, Yin teaches the concept of providing a polyisocyanate with a functionality as low as 2.1 [0025]. Galina and Yin are analogous art as they are from the same field of endeavor, namely rigid polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to provide the isocyanate component in Example 1 of Galina with an isocyanate index as low as 2.1 as taught by Yin. The motivation would have been that lowering the isocyanate functionality may provide advantages such as a reduction in crosslinking, which may result in advantages such as increased impact resistance and a reduction in brittleness of the obtained foamed product.
Regarding Claim 48. Galina in view of Lamm, as evidenced by St. Clair, teaches the method of Claim 38. As detailed in the rejection of independent Claim 26, Galina discloses Polyol A has a functionality of 2.4 (Page 7, Lines 21 – 23).
As is further detailed in the rejection of Claim 26, St. Clair provides evidence that CARADATE® 30 is a polyisocyanate having a functionality of 2.6 (see footnote of Table 1 of the reference). The Office recognizes that this polyisocyanate functionality is outside the instantly claimed range of 2.1 to 2.4. However, Yin teaches the concept of providing a polyisocyanate functionality as low as 2.1 [0025]. Before the effective filing date of the instantly claimed invention, it would have been obvious to provide the isocyanate component in Example 1 of Galina with an isocyanate index as low as 2.1 as taught by Yin. The motivation would have been that lowering the isocyanate functionality may provide advantages such as a reduction in crosslinking, which may result in advantages such as increased impact resistance and a reduction in brittleness of the obtained foamed product.
Regarding Claims 49 and 50. Galina in view of Lamm and Yin, as evidenced by St. Clair, teaches the method of Claim 48. As detailed in the rejection of independent Claim 26, Galina teaches the isocyanate index of the expanding foam insulation material is 125 in Example 1 (Table 1). However, in the general disclosure, Galina teaches the isocyanate index of the expanding foam insulation material may be, most suitably, as low as 100 (Page 7, Lines 3 – 5). 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 provide the expanding foam insulation material of Example 1 of Galina with an isocyanate index as low as 100. The motivation would have been that lowering the isocyanate index may provided advantages such as reducing problems associated with using water as a blowing agent, as water is one of the blowing agents used in Example 1 of Galina.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over WO 01/51538 to Galina et al. (hereinafter Galina) in view of US 2017/0080614 to Lamm, as evidenced by CA 2 290 490 to St. Clair et al. (hereinafter St. Clair) – as applied to Claims 26 and 40 above – and further in view of US 2002/0020827 to Munzenberger et al. (hereinafter Munzenberger).
Regarding Claim 41. Galina in view of Lamm, as evidenced by St. Clair, teaches the method of Claim 26.
Galina uses trichloro isopropyl phosphate (TCPP) as a flame retardant in Example 1, rather than one of the instantly claimed species of flame retardant. However, Munzenberger teaches both TCPP and ammonium polyphosphate as suitable flame retardants for polyurethane foams [0021]. Galina and Munzenberger are analogous art as they are from the same field of endeavor, namely polyurethane 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 substitute TCPP in Example 1 of Galina with ammonium polyphosphate. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Munzenberger teaches both TCPP and ammonium polyphosphate as a suitable flame retardants for polyurethane foams [0021], thus providing obviousness of substituting one for the other in such formulations.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over WO 01/51538 to Galina et al. (hereinafter Galina) in view of US 2017/0080614 to Lamm and US 2002/0020827 to Munzenberger et al. (hereinafter Munzenberger), as evidenced by CA 2 290 490 to St. Clair et al. (hereinafter St. Clair) – as applied to Claim 41 above – and further as evidenced by US 2024/0254364 to Morinaga et al. (hereinafter Morinaga).
Regarding Claim 42. Galina in view of Lamm, as evidenced by St. Clair, teaches the method of Claim 26.
Galina does not expressly teach the expanding foam insulation material further comprises a hydrophobic silica. However, Munzenberger teaches incorporating a hydrophobized silica, such as AEROSIL® 200, as a thixotropic agent in a polyurethane foam composition ([0022] and [0039]). Morinaga provides evidence that AEROSIL® 200 has a D50 particle size of 12 nm [0114]. 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 incorporate AEROSIL® 200 as an additive in the expanding foam insulation material of Galina. The motivation would have been that Munzenberger teaches this compound is a thixotropic agent which improves handling of foamable polyurethane compositions and provides the ability to adjust their viscosity and flow properties ([0022] and [0039]).
Response to Arguments
Applicant's arguments filed April 14, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections to the claims. Accordingly, all outstanding claim objections have been withdrawn. However, a new claim objection is now set forth in light of the amendments to the claims.
Rejections under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the claims under 35 U.S.C. 112. Accordingly, all outstanding rejections under 35 U.S.C. 112 have been withdrawn. However, new rejections of the claims under 35 U.S.C. 112(b) are presently set forth in light of the amendments to the claims.
Rejections under 35 U.S.C. 103
a. Applicant argues that the present inventors found that relatively low isocyanate functionalities and isocyanate indexes provided materials with low maximum pressures, which was found to be desirable to lessen the risk of blow out. However, the Office respectfully submits that an expanding foam insulation material having a polyisocyanate functionality in the newly claimed range of 2.1 to 2.6 and an isocyanate index in the range of 160 is disclosed by newly applied Galina, as evidenced by St. Clair.
Specifically, in Example 1, Galina teaches a expanding foam material comprising CARADATER® 30 (Table 1). St. Clair provides evidence that CARADATE® 30 is a polyisocyanate having a functionality of 2.6 (see footnote of Table 1 of the St. Clair reference). Additionally, the expanding foam insulation material of Example 1 is reacted at an isocyanate index of 125 (see Table 1 of the Galina reference). The fact, then, that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (MPEP 2145)
b and d. Applicant’s arguments with respect to Kanzaki are hereby moot, as the rejections in view of this reference have been withdrawn in light of the amendments to the instant claims.
c. Applicant’s arguments with respect to Lamm’s failure to teach the chemical, kinetic, or physical properties of its expanding foam materials are not persuasive, as these features are addressed by newly applied Galina in the new grounds of rejection under 35 U.S.C. 103 above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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
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
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