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 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 1-33 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.
Claim 1 recites “wherein the thermoplastic polymer foam is essentially free of structural defects.” The specification does not make clear what meets “essentially free of structural defects” and what does not. How many defects can be present in order to meet “essentially free of”? What constitutes a “defect”? Would an irregularly shaped pore be a “defect”? Therefore, claim 1, and all claims dependent thereon, (2-17 and 25-33) are indefinite. One of ordinary skill in the art would not know what falls within “essentially free of structural defects” and what does not, especially given the lack of explanation in the instant specification. Claim 18 recites the same limitation “said thermoplastic polymer foam is essentially free from defects” and is therefore also indefinite, as are claims 19-24 which depend from claim 18.
Claims 12 and 28 recite “wherein essentially all of the HFO-1336mzz is E-HFO-1336mzz.” The claim is indefinite because it is unclear what falls within the scope of “essentially all of” and what does not. It is 80wt%? 85wt%? 95wt? 99wt%? The specification does not make clear what meets “essentially all of” and what does not. Therefore, claim 28 is indefinite. One of ordinary skill in the art would not know what falls within “essentially all of” and what does not, especially given the lack of explanation in the instant specification.
Claims 14 and 30 recite “wherein the blowing agent is essentially free of 1,1-difluoroethane (HFC-152a).” The claim is indefinite because it is unclear what falls within the scope of “essentially free of” and what does not. It is less than 0.1wt%? Less than 2 ppm? Less than 4.0 phr as recited in instant claim 15? The specification does not make clear what meets “essentially free of” and what does not. Therefore, claims 14 and 30 are indefinite. One of ordinary skill in the art would not know what falls within “essentially all of” and what does not, especially given the lack of explanation in the instant specification. It is noted that the specification states that the blowing agent is essentially free of 1,1,-difluoroethane, or when present, the 1,1,-difluoroethane is present in amounts of about 1.0 phr to about 3.0 phr. Do these amounts meet ‘essentially free of,’ or are they alternative to the term “essentially free of”?
Claims 25-33 recite “The thermoplastic polymer foam of claim 17…” Claim 17 is not to a thermoplastic polymer foam but recites “The process of claim 1…” Claims 25-33 therefore lack proper antecedent basis. It appears these claims may have been intended to depend from claim 18, but this is not clear.
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 27-33 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 and 25 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 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).
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).
Conclusion
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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/K. BOYLE/Primary Examiner, Art Unit 1766
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