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 26 and 44 are objected to because of the following informalities:
it is suggested the claim amended to recite “the isocyanate (iso) index” in the final line of the claim; and
Claim 44 should be amended to recite “the expanding foam insulation material of claim 26”.
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 26 – 45 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:
There is a lack of antecedent basis for “the” polyisocyanate component recited in (i) of Claim 26, as well as in Claims 27, 28, and 33. It is unclear to which of the at least one polyisocyanate(s) initially set forth this phrase refers. For the purposes of further examination, “the” polyisocyanate component in the aforementioned claims will be interpreted as referring to the at least one polyisocyanate set forth in (a), (b), and (c).
There is a lack of antecedent basis for “the” polyol and/or polyamine component recited in (ii) of Claim 26, as well as in Claims 29, 30, and 34. It is unclear to which of the at least one polyol(s) and at least one polyamine(s) initially set forth this phrase refers. For the purposes of further examination, “the” polyol and/or polyamine components in the aforementioned claims will be interpreted as referring to the at least one polyol and the at least one polyamine set forth in (a), (b), and (c).
There is a lack of antecedent basis for “the” polymerizable composition recited in (iii) of Claim 26, as well as in Claims 31 – 34. It is unclear to which of the polymerizable compositions initially set forth this phrase refers. For the purposes of further examination, “the” polymerizable composition in the aforementioned claims will be interpreted as referring to the polymerizable composition set forth in (a), (b), and (c).
Claim 43 sets forth “an expanding foam insulation product of claim 26”. However, Claim 26 is directed to an expanding foam insulation material, rather than a product. Accordingly, Claim 43 will be interpreted as setting forth the expanding foam insulation material of Claim 26.
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 26 – 40 and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/225651 to Kanzaki et al. (hereinafter Kanzaki). For the purposes of examination, citations for Kanzaki are taken from an English language equivalent of the document, EP 3 636 684.
Regarding Claims 26 – 34 and 38. Kanzaki teaches a composition for producing a polyurethane foam which is suitably used in sound and heat insulation applications ([0007], [0073], and [0074]), i.e. an expanding foam insulation material that is dispensable and expandable to provided an expanded foam insulation material.
The expanding foam insulation material is a polymerizable composition comprising a polyol and a polyisocyanate. The expanded foam insulation material obtained is a polyurethane [0015].
The preferred polyisocyanate used is toluene diisocyanate [0027] – [0028], which is a polyisocyanate having a functionality of 2. The particularly preferred polyol is a polypropylene glycol [0024], i.e. a polyol having a functionality of 2. The isocyanate index of the composition is preferably 80 to 130 [0030].
Regarding Claims 35 – 37. Kanzaki teaches the expanding foam insulation material of Claim 26 but is silent with respect to the claimed properties. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kanzaki 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. an expanding foam insulation material 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 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.
Regarding Claim 39. Kanzaki teaches the expanding foam insulation material of Claim 26 further comprises a foaming/blowing agent [0035].
Regarding Claim 40. Kanzaki teaches the composition of Claim 26 but is silent with respect to the claimed properties. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kanzaki 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. an expanded foam insulation material having a flame spread and smoke index at a thickness of 4” which are within 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.
Regarding Claim 43. Kanzaki teaches an expanded foam insulation material that is the cured product of the expanding foam insulation material of Claim 26 [0007].
Claim 45 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/225651 to Kanzaki et al. (hereinafter Kanzaki). For the purposes of examination, citations for Kanzaki are taken from an English language equivalent of the document, EP 3 636 684.
Regarding Claim 45. Kanzaki teaches a composition for producing a polyurethane foam which is suitably used in sound and heat insulation applications ([0007], [0073], and [0074]), i.e. an expanding foam insulation material that is dispensable and expandable to provide an expanded foam insulation material.
Kanzaki is silent with respect to the maximum foam height and local pressure maximum 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. However, as detailed in the rejection of Claims 26 and 35 above, Kanzaki teaches a composition prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, which results in a composition having the instantly claimed properties. Therefore, the claimed effects and physical properties - i.e. an expanding foam insulation material having a difference between a time of the local pressure maximum in excess of 50 Pa and a time of 95% maximum foam height of no more than 80 seconds - 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.
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 41 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/225651 to Kanzaki et al. (hereinafter Kanzaki), as applied to Claim 26 above, and further in view of US 2002/0020827 to Munzenberger et al. (hereinafter Munzenberger). For the purposes of examination, citations for Kanzaki are taken from an English language equivalent of the document, EP 3 636 684.
Regarding Claim 41. Kanzaki teaches the expanding foam insulation material of Claim 26 may further comprise a flame retardant [0064] but does not expressly teach it corresponds to one of the claimed species. However, Munzenberger teaches ammonium polyphosphate as a suitable flame retardant for polyurethane foams [0021]. Kanzaki 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 select ammonium polyphosphate as the flame retardant in Kanzaki. The motivation would have been 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, Munzenberger shows that ammonium polyphosphate is known in the art as a suitable flame retardant for polyurethane foams [0021].
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/225651 to Kanzaki et al. (hereinafter Kanzaki), as applied to Claim 26 above, and further in view of US 2002/0020827 to Munzenberger et al. (hereinafter Munzenberger), as evidenced by US 2024/0254364 to Morinaga et al. (hereinafter Morinaga).
Regarding Claim 42. Kanzaki teaches the expanding foam insulation material of Claim 26 but does not expressly teach it 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 Kanzaki. 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]).
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/225651 to Kanzaki et al. (hereinafter Kanzaki), as applied to Claim 26 above, and further in view of US 2017/0080614 to Lamm. For the purposes of examination, citations for Kanzaki are taken from an English language equivalent of the document, EP 3 636 684.
Regarding Claim 44. Kanzaki teaches the expanding foam insulation material of Claim 26 may be used as a heat insulating material [0074] but does expressly describe 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]). Kanzaki 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 Kanzaki 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].
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