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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/21/2026. In particular, claims 1 and 18 have been amended to recite the HFO-1336mzz “comprises E-1,1,1,4,4,4-hexafluoro-2-butene (E-HFO-1336mzz) and the blowing agent comprises less than 50% of the E-HFO-1366mzz” and to remove “wherein the thermoplastic foam is essentially free of structural defects.” Claims 12 and 2 are amended to recite “at least 60%” of the HFO-1336mzz comprises E-HFO-1336-mzz. Claims 14 and 30 are amended to recite that the blowing agent comprises up to 3 phr 1,1-difluorothane (HFO-152a). The dependency of claims 25-33 has been changed from 17 to 18. New claim 34 is added.
It is noted that the newly introduced limitations were not present at the time of the preceding action. For this reason, it is proper to make the present action FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 18 are amended to recite “…the blowing agent comprises less than about 50% by weight of the E-HFO-1336mzz.” This is not present in the instant specification, nor is the concept of having this amount of E-HFO-1336mzz. Applicant has not cited to where this limitation is supported in the instant specification. The fact that examples have specific amounts of E-HFO-1336mzz is not support for a range of “less than 50% by weight of the E-HFO-1336mzz” in terms of the total blowing agent. Therefore, this limitation constitutes new matter, and claims 1 and 18 and all claims dependent thereon, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
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 1-9, 11-25, and 27-34 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (CA 3071717) and further in view of Robin et al. (US 2018/0264303).
Han et al. teach polymeric foams (abstract) including thermoplastic polymer foams such as polystyrene (abstract), polyethylene, or polypropylene foams (¶43-44) produced from a composition comprising an infrared attenuating agent (see abstract and entire reference) and a blowing agent. The foams are extruded foams producing by extruding molten polymer (polystyrene in examples) with a blowing agent under elevated temperature and pressure into ambient conditions to foam the polymer into a closed-cell foam. See ¶52. The polymer composition, containing the infrared attenuating agent, polymer and optional additives are melt-mixed at a temperature of, for example about 160ºC to 250ºC. Examples of optional additives include flame retardants and nucleating agents (see ¶51). A blowing agent is added and the mixture is cooled to a die melt temperature. The die melt temperature of Han et al. is from about 100ºC to about 140ºC (¶56). This meets instant claims 2-6, 8, and 19-24. The pressure of the extrusion is preferably from about 50 bars to about 80 bars, which is from about 725 psi to about 1160 psi. This meets instant claim 9. The examples of the foams produced in Han et al. have cell diameters falling in the range of instant claims 7, 25, and 34, and amounts of closed-cells which meet instant claims 1 and 18. See Table 3 on page 22 of Han et al. The total amount of blowing agent used in the Examples of Han et al. meets instant claims 16 and 32. See Table 3 on page 22 of Han et al. Examples of the foams of Han have densities which meet instant claim 34. See Table 3 on page 22 of Han.
Examples of foaming agent include hydrofluoroolefins, methyl formate, and mixtures thereof (¶58). It would have been obvious to one of ordinary skill in the art to use a combination of HFO, with HFO-1336mzz being an expressly named HFO (see ¶59) and methyl formate, because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Han et al. do not expressly teach that the blowing agent comprises the E stereoisomer, in the amounts of instant claims 11-12 and 27-28, or the methyl formate in amounts which meet instant claims 1, 13, 17-18, 29, or 33, or the amount of HFC-152a recited in instant claims 14-15 and 30-31.
However, Robin et al. teaches a mixture comprising trans-1,1,1-4,4,4-hexafluoro-2-butene (E-1336-mzz) and at least one additional compound including methyl formate. See abstract. The mixture is used as a blowing agent (abstract) in thermoplastic foams such as polystyrene, polyethylene, or polypropylene (see ¶67). HFC blowing agents, including HFC-152a, are optional and thus it would have been obvious to one of ordinary skill in the art to including them in amounts of 0wt% (because they are optional). This meets instant claims 14-15 and 30-31. The thermoplastic foams are produced from compositions comprising the disclosed blowing agent and the thermoplastic polymer, wherein the compositions is extrudable (¶67). The composition is extruded to produce the disclosed foam. See ¶71-73. The foams disclosed in Robin et al. are closed cell foams (¶81). The amount of E-HFO-1336mzz used in the compositions of Robin is from about 1wt% to about 99wt% (¶9). This overlaps the range of amended instant claims 1 and 18. The foams of Robin have an integral skin (¶81). Given this teaching, one of ordinary skill in the art would at once envisage either a smooth skin or a textured skin, as these are the two embodiments of integral foams. This meets the “smooth skin” of instant claim 34.
The mixtures disclosed in Robin et al. comprise trans-1336-mzz with a second compound, comprise 10 to 90wt% methyl formate when combined with methyl formate (see Table 1, page 3 of Robin). The total amount of foaming agent ranges from about 1 to about 99wt% when used in foam compositions. See ¶25. The amount of E-1336mzz and the amount of methyl formate used in the blowing agent composition used to produce foam compositions described in ¶24-25 of Robin overlaps the amounts recited in instant claims 1, 13, 17-18, 29, and 33. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Robin et al., to use amounts of E-HFO-1336mzz and methyl formate which meet the instant claims limitations because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
The compositions of Robin et al. comprising the thermoplastic polymer (including polystyrene, polyethylene, or polypropylene) with the blowing agent comprising trans-1,1,1-4,4,4-hexafluoro-2-butene (E-1336mzz) and a second compound including methyl formate further comprises nucleating agents or flame retardants. See ¶24 and ¶26. In Examples of the mixtures of Robin et al., the HFO-1336mzz is essentially entirely E-HFO-1336mzz which meets instant claims 11-12 and 27-28.
It will be further made of note that the data of the instant specification does not establish criticality or unexpected results of the claimed amounts of methyl formate and E-1336mzz. There is not a sufficient number of tests inside and outside the claimed ranges, and the data is not commensurate in scope with the claimed invention. The instant claims are not limited to the amounts or materials used in the Inventive Examples of the instant specification. The data does not show that any allegedly surprising or unexpected results occur over the entire claimed amounts of methyl formate and E-1336mzz, nor is there any indication that the same allegedly unexpected results cannot be achieved with co-blowing agents other than methyl formate (such as carbon dioxide) or with HFOs other than E-1336mzz. The claims also recite polyethylene or polypropylene as the thermoplastic polymer, and there is no indication that these polymers produce the same results as when polystyrene is utilized. Thus, the claims are properly rejected over Robin et al., which discloses overlapping amounts of methyl formate and E-1336mzz, as there is no evidence of criticality or unexpected results shown in the data of the instant specification.
Both Han et al. and Robin relate to the field of thermoplastic polymer foams comprising blowing agents which have thermal insulation properties (see entire Han et al. reference and ¶83 of Robin et al.). The compositions of Robin, which are used as blowing agents in polystyrene, polyethylene, and/or polypropylene foams (¶67), have an ozone depletion of not greater than about 0.5 and a global warming potential which is preferably not greater than about 50 (¶10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the blowing agent of Robin et al., embodiments of which meet the amounts of E-1336mzz and methyl formate (see discussion above) and HFC-152a of the instant claims, in order to provide a blowing agent composition which is environmentally acceptable and does not contribute to the depletion of the earth’s ozone layer.
Claims 10 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (CA 3071717) in view of Robin et al. (US 2018/0264303) and further in view of Nishikawa (US 5,997,781).
The discussion with respect to Han et al. and Robin et al. above is hereby incorporated by reference.
Han et al. in view of Robin et al. does not explicitly recite the claimed melt flow rate of polymer used to produce the disclosed foams.
However, Nishikawa teaches an expanded thermoplastic product (abstract, col. 1, ln. 8-18) which includes thermoplastic polymers such as polystyrene and polypropylene (col. 8, ln. 33-55), which have a melt flow index in the range of 0.05-60 g/10min, preferably 0.2-20 g/10min (col. 8, ln. 56-67). Nishikawa teaches the expanded thermoplastic product can be melt mixed in an extruder (col. 11, ln. 5-9).
All of Han, Robin, and Nishikawa relate to the field of heat insulating materials (col. 2, ln. 3 of Nishikawa), including foams (see ¶ 2-3 of Han et al.; entire Robin reference; and the discussion of expanded products with small average cells throughout Nishikawa such as, for example, as col. 4, lines 7-13 of Nishikawa). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use polymers having the melt flow rates taught by Nishikawa in the inventions of Han and/or Robin in order to provide adequate resin viscosity, so that no excessive load is applied and processing is facilitated (col. 9, ln. 1-10). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use polymers having the melt flow rates taught by Nishikawa in the inventions of Han and/or Robin because a low melt flow index makes it possible to shorten a cooling time due to its fast cooling and hardening, leading to an improvement in productivity (col. 9, ln. 11-18 of Nishikawa).
Response to Arguments
Applicant's arguments filed 9/21/2026 have been fully considered but they are not persuasive.
It is noted that Applicants have not cited to where the limitation in amended claims 1 and 18 reciting “the blowing agent comprises less than about 50% by weight of the E-HFO-1336mzz” is supported in the instant specification. This limitation is new matter for the reason provided in the rejection above.
It appears Applicants are attempting to argue unexpected results. If this is the case, the Applicant’s arguments are not persuasive. As required by MPEP 716.02(d), evidence of unexpected results must be commensurate in scope with the claimed invention. Applicant’s experimental data is not commensurate in scope with the claimed invention.
First, the instant claims state that the blowing agent comprises less than 50% by weight of E-HFO-1336mzz. The data does not show a range of greater than 0 to 50% of E-HFO-1336mzz which is necessary to show unexpected results. Applicants must establish that the alleged unexpected or surprising results occur over the entire claimed range. The single example with 5.1 parts by weight methyl formate and 3.2 parts by weight E-HFO-1336mzz is not sufficient to show that the alleged unexpected results (1) occur over the entire claimed range of amount of methyl formate, which is from 0.73 to 15.37 parts by weight. The range includes amounts which are 5 times less and 5 times more than the single inventive example shown in the Applicant’s data. There is no evidence which demonstrates the same alleged improvements or criticality occur over the entire claimed range of methyl formate. The same is true of (2) the amount of E-HFO-1336mzz. The data only shows 3.2 parts by weight, when the range is from 2.0 to 7.0 parts by weight. Are the same results achieved with double the amount of HFO-1366mzz? There is no data showing one way or the other. This is another reason why the data is not commensurate in scope with the claimed invention and does not show evidence of unexpected results. Finally, the claims recite that the polymer is selected from the group consisting of a polystyrene homopolymer, a polystyrene copolymer, a styrene-acrylonitrile copolymer, a polyethylene, a polypropylene, and blends thereof. The inventive examples show use of only polystyrene. There is no evidence demonstrating the same alleged unexpected results occur with the other types of polymer present in the claims. Inventive Example 3 includes HFC-152a, which is not present in instant claims 1 or 18, which is further evidence that the data is not commensurate in scope with the claimed invention. Because the data is not commensurate in scope with the claimed invention, the requirements of MPEP 716.02 are not met, and unexpected results/criticality are not shown by Applicant’s data.
It will be further made of note that the data of the instant specification does not establish criticality or unexpected results of the claimed amounts of methyl formate and E-1336mzz. There is not a sufficient number of tests inside and outside the claimed ranges, and the data is not commensurate in scope with the claimed invention. The instant claims are not limited to the amounts or materials used in the Inventive Examples of the instant specification. The data does not show that any allegedly surprising or unexpected results occur over the entire claimed amounts of methyl formate and E-1336mzz, nor is there any indication that the same allegedly unexpected results cannot be achieved with co-blowing agents other than methyl formate (such as carbon dioxide) or with HFOs other than E-1336mzz. The claims also recite polyethylene or polypropylene as the thermoplastic polymer, and there is no indication that these polymers produce the same results as when polystyrene is utilized. Thus, the claims are properly rejected over Robin et al., which discloses overlapping amounts of methyl formate and E-1336mzz, as there is no evidence of criticality or unexpected results shown in the data of the instant specification. This was discussed in the previous office action.
For the reasons provided above, the amendments do not overcome the previously applied prior art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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