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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/807,638, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, US appl ‘638 discloses adding a 4-phenyl propyl pyridine as part of exemplified PEP SET 3401 CATALYST (paragraph 0027) but fails to support a liquid curing catalyst comprising any other pyridine compound. Therefore, the effective filing date is the actual filing date, 7/5/2023.
Claim Objections
Claims 2, 3, 5, and 15 are objected to because of the following reasons:
With respect to claims 2 and 3, the term “the binder precursor” is inconsistent with previous recitation “polyurethane binder precursor” (from claim 1) and should read as “the polyurethane binder precursor.”
With respect to claim 5, the term “the catalyst” is inconsistent with previous recitation “liquid curing catalyst” (from claim 1) and should read as “the liquid curing catalyst.”
With respect to claim 15, the term “the catalyst” is inconsistent with previous recitation “liquid curing catalyst” (from claim 10) and should read as “the liquid curing catalyst.” Also the term “the binder precursor” is inconsistent with previous recitation “polyurethane binder precursor” (from claim 10) and should read as “the polyurethane binder precursor.” Lastly, the sentence should end ion a period and not a semi-colon.
Appropriate correction is required.
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.
Claims 2, 3, 5, 9, 14, and 15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In these claims, the term “about” is indefinite because it is unclear to what extent the term extends the scope of the endpoints.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The amount of yellow iron oxide of 2 wt % or less includes an amount 0 wt % is outside the scope of claim 1 which requires yellow iron oxide. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 9-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vivas (US 2021/0276074).
With respect to claims 1, 6, 10, Vivas discloses a “no bake” foundry mix composition (abstract). For example, PEP SET MAGNA 1215/2215 polyurethane-forming binder system comprising a first part containing phenolic resole resin and a second part comprising an isocyanate component; liquid PEP SET 3401 CATALYST comprising 4-phenyl propyl pyridine (paragraphs 0027); silica sand as foundry aggregate; and yellow iron oxide (paragraph 0028).
With respect to claims 2, 3, 5, 15, in the example, the polyurethane binder is present in an amount of 1.2 wt % based on sand, and the amount of liquid curing liquid is 4 wt % based on the first part of the polyurethane-forming binder system (paragraph 0028).
With respect to claim 4, the catalyst is kept separate from the second part of the polyurethane binder precursor (paragraph 0016).
With respect to claims 9, 14, and 16, in the example, 3 wt % of 70/30 mass ratio a sand additive to yellow iron oxide is added based on sand, which provides for an amount of yellow iron oxide of 0.9 wt % based on sand.
With respect to claims 11-13, Vivas teaches combining yellow iron oxide with red iron oxide, black iron oxide, and wüstite (abstract).
Claims 1, 4, 6, 9-11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schafer (US 4,124,556).
With respect to claims 1, 6, 10, and 11, Schafer discloses molding compositions for foundry core comprising a polyurethane resin, aggregate (sand), and iron oxide (abstract), wherein the examples include silica sand (col. 4, lines 12-14), two part polyurethane resin including polyisocyanate and a benzylic ether resin (i.e., polyol) (col. 4, lines 30-35), iron oxide pigment that is a mixture of 4 parts yellow iron oxide and 1 part red iron oxide pigment (col. 4, lines 25-28), and a curing catalyst that is liquid dimethylethylamine or 4-phenyl-propyl-pyridine (Table I).
With respect to claims 4, Schafer discloses adding the catalyst with the resin binder component during preparation of the foundry mold (col. 3, lines 51-57; col. 4, lines 30-42) and therefore discloses keeping the catalyst separate from the polyisocyanate until use.
With respect to claims 9, 14, Schafer discloses that the iron oxide is present in an amount of 0.25-5 parts by weight per 100 parts by weight aggregate, which substantially overlaps with claimed range.
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 of this title, 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 2, 3, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Schafer (US 4,124,556).
With respect to claims 2 and 3, the discussion with respect to Schafer in paragraph 7 above is incorporated here by reference.
Examples E and F in Table I include 2.5 wt % of total binder precursor (Resin, Part I + Resin, Part II) and 1.5 wt % of the first part of the binder precursor based on the amount of sand (foundry aggregate) which does not overlap with claimed 1.0-1.2 wt % and 0.55-0.60 wt %, respectively.
Even so, Schafer teaches that the amount of binder based on foundry aggregate is up to about 10 wt % (col. 1, lines 59-62). Therefore, Schafer teaches that lower amounts of binder precursor are suitable.
Given that relatively lower amounts of binder are appropriate in the foundry core composition disclosed by Schafer, it would have been obvious to one of ordinary skill in the art to utilize the claimed amounts of binder precursor—absent a showing of unexpected or surprising results.
With respect to claim 16, Schafer discloses molding compositions for foundry core comprising a polyurethane resin, aggregate (sand), and iron oxide (abstract), wherein the examples include silica sand (col. 4, lines 12-14), two part polyurethane resin including polyisocyanate and a benzylic ether resin (i.e., polyol) (col. 4, lines 30-35), iron oxide pigment that is a mixture of 4 parts yellow iron oxide and 1 part red iron oxide pigment (col. 4, lines 25-28), and a curing catalyst that is liquid dimethylethylamine or 4-phenyl-propyl-pyridine (Table I).
In the examples of Table I, the iron oxide includes 80 wt % yellow iron oxide and 20 wt % red iron oxide.
However, Schafer discloses that any mix of natural and synthetic iron oxides can be used, such as those comprising yellow and red iron oxide (col. 3, lines 31-38).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize any relative amount of yellow and red iron oxides, including those within the scope of the instant claims, absent a showing of unexpected or surprising results.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schafer (US 4,124,556) in view of Henry (US 5,101,001).
The discussion with respect to Schafer in paragraph 7 above is incorporated here by reference.
Schafer discloses the addition of liquid curing catalysts such as dimethylethylamine and phenylpropylpyridine (Table I), however, it fails to disclose the amount of catalyst.
Henry discloses a polyurethane-forming foundry binder (abstract) prepared with a liquid amine catalyst such as phenylpropyl pyridine (like Schafer) (col. 7, line 9). Henry teaches that catalytic activity and effects vary widely and that concentrations therefore also vary widely but generally are in the concentration of 0.01-10 wt % based on the weight of phenolic resin (i.e., claimed first part polyol component) (col. 7, lines 12-20). Also, one of ordinary skill can determine a suitable amount based on routine experimentation based on expectations.
Given that both Schafer and Henry are drawn to polyurethane foundry compositions comprising amine catalysts and further given that Henry discloses a generally useful range for such catalysts, it would have been obvious to one of ordinary skill in the art to utilize a curing catalyst within the claimed range in the foundry composition of Schafer.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Schafer (US 4,124,556) in view of Attridge (US 2009/0314461).
The discussion with respect to Schafer in paragraph 7 above is incorporated here by reference.
Schafer teaches that the iron oxide (i.e., yellow iron oxide) has a particle size so that it is distributed evenly through the molding composition but fails to disclose that the particle size is between 25 and 75 microns.
Attridge discloses foundry mold compositions comprising an iron oxide that serves as an anti-veining agent (abstract), wherein the iron oxide has a particle size of less than about 75 microns (paragraph 0009). Attridge teaches that small particles enables rapid melting of the iron oxide but too fine may increase the amount of binder to achieve a strong core (paragraph 0020).
Given that both Schafer and Attridge are drawn to foundry mold compositions comprising iron oxide, it would have been obvious to one of ordinary skill in the art to utilize yellow iron oxide having an average granule size of between 25 and 75 microns as suggested by Attridge.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-6, and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. US 11,738,385 in view of Henry (US 5,101,001). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claims 1, 5, 10-13, 15, and 16, US ‘385 claims in claim 1 a “no bake” foundry mix composition comprising a polyurethane binder precursor provided in two parts (first part comprising polyol and a second part comprising a polyisocyanate), 4-8 wt % a liquid curing catalyst based on the liquid curing catalyst, foundry aggregate, and an anti-veining additive comprising 10-30 wt % yellow iron oxide, red iron oxide, black iron oxide, and wüstite.
US ‘385 fails to claim the specifics of the liquid curing catalyst.
Henry discloses a polyurethane-forming foundry binder (abstract) prepared with a liquid amine catalyst such as phenylpropyl pyridine (like Schafer) (col. 7, line 9).
Given that both the claims of US ‘385 and Henry are drawn to polyurethane foundry compositions comprising liquid curing catalysts and further given that Henry discloses a known and useful catalyst includes phenylpropyl pyridine, it would have been obvious to one of ordinary skill in the art to utilize a liquid curing catalyst comprising a pyridine component in the foundry mix claimed by US ‘385.
With respect to claim 4, see claim 2 of US ‘385.
With respect to claim 6, see claim 4 of US ‘385.
With respect to claims 9 and 14, see claim 3 of US ‘385.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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