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 .
Election/Restrictions
Applicant’s election without traverse of a hydrocarbon comprising isopentane and n-pentane in the reply filed on May 18, 2026 is acknowledged.
Claims 9, 11, and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (a hydrocarbon comprising cyclopentane and isopentane and a hydrocarbon consisting of n-pentane), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 18, 2026.
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 1 – 5, 8, 10, 13 – 17, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive).
Regarding Claims 1, 4, 5, 8, 10, 13, 16, and 17. Kaplan teaches a polyurethane-modified polyisocyanurate (PU-PIR) foam-forming composition ([0002] and [0007]). The foam-forming composition may specifically comprise:
a modified polymeric MDI [0056], i.e. an organic polyisocyanate;
STEPANPOL® PS-2352 ([0053] and [0056]), which corresponds to a commercially available isocyanate-reactive composition which is a polyester polyol having a hydroxyl functionality of 2;
a blowing agent composition comprising:
24 parts by weight of a 75%/25% isopentane/n-pentane mixture ([0056] and Table 1), i.e. a hydrocarbon; and
0.3 parts by weight of water [0056];
a trimerization catalyst composition comprising:
NIAX® K-ZERO G [0056]. Momentive provides evidence that NIAX® K-ZERO G is a potassium octoate catalyst with good trimerization efficiency in a solvent that is not isocyanate-reactive (see first eight lines of Page 1), i.e. NIAX® K-ZERO G corresponds to an alkali metal carboxylate trimerization catalyst and solvent that is not isocyanate-reactive; and
TEGOSTAB® B84506 as a surfactant [0056].
Using the amounts of all ingredients disclosed in [0056], the blowing agent composition can be calculated to comprise about 7 weight percent of the aforementioned hydrocarbon and 0.09 weight percent water.
Kaplan does not expressly teach the blowing agent composition is present in an amount sufficient to produce a polyisocyanurate foam having a density of less than 1.8 pcf. However, a composition and its properties are inseparable (see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01(II)). As Kaplan teaches a blowing agent composition comprising all of the instantly claimed ingredients in the instantly claimed amounts, this blowing agent composition is necessarily provided in an amount sufficient to produce a polyisocyanurate foam with a density in the claimed range of less than 1.8 pcf.
Regarding Claims 2 and 3. Kaplan teaches the polyisocyanurate foam-forming composition of Claim 1. Momentive provides evidence that the trimerization catalyst composition used by Kaplan, NIAX® K-ZERO G, comprises 3.5 weight percent water (see last line of Page 1).
Regarding Claims 14 and 15. Kaplan teaches the polyisocyanurate foam-forming composition of Claim 1, wherein the blowing agent composition may comprise 24 parts by weight of a 75%/25% isopentane/n-pentane mixture ([0056] and Table 1), i.e. a hydrocarbon; and 0.3 parts by weight of water [0056]. Using these values, the weight ratio of hydrocarbon to water can be calculated to be roughly 80:1.
Regarding Claim 22. Kaplan teaches the polyisocyanurate foam-forming composition of Claim 1 wherein the foam prepared with the n-pentane/isopentane mixture has an R-value measured at 40°F of 7.19 and an R-value measured at 75°F of 6.68 (Table 1), corresponding an R-value measured at 40°F that is higher than the R-value measured at 75°F.
Claims 24 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive).
Regarding Claim 24. Kaplan teaches a polyurethane-modified polyisocyanurate (PU-PIR) ([0002] and [0007]). The foam is the reaction product of a reaction mixture which may specifically comprise a modified polymeric MDI [0056], i.e. an organic polyisocyanate; and an isocyanate-reactive composition. The isocyanate-reactive composition comprises:
STEPANPOL® PS-2352 ([0053] and [0056]), which corresponds to a commercially available isocyanate-reactive composition which is a polyester polyol having a hydroxyl functionality of 2;
a blowing agent composition comprising:
24 parts by weight of a 75%/25% isopentane/n-pentane mixture ([0056] and Table 1), i.e. a hydrocarbon; and
0.3 parts by weight of water [0056];
a trimerization catalyst composition comprising:
NIAX® K-ZERO G [0056]. Momentive provides evidence that NIAX® K-ZERO G is a potassium octoate catalyst with good trimerization efficiency in a solvent that is not isocyanate-reactive (see first eight lines of Page 1), i.e. NIAX® K-ZERO G corresponds to an alkali metal carboxylate trimerization catalyst and solvent that is not isocyanate-reactive; and
TEGOSTAB® B84506 as a surfactant [0056].
Using the amounts of all ingredients disclosed in [0056], the blowing agent composition can be calculated to comprise about 7 weight percent of the aforementioned hydrocarbon and 0.09 weight percent water.
Kaplan is silent regarding the density of the foam produced from the reaction mixture. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kaplan teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process, including the claimed amounts of blowing agent. Therefore, the claimed effects and physical properties, i.e. a polyisocyanurate foam having a density of less than 1.8 pcf, 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 25. Kaplan teaches the polyisocyanurate foam of Claim 24 wherein the polyisocyanurate foam prepared with the n-pentane/isopentane mixture has an R-value measured at 40°F of 7.19 and an R-value measured at 75°F of 6.68 (Table 1), corresponding an R-value measured at 40°F that is higher than the R-value measured at 75°F.
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive).
Regarding Claim 27. Kaplan teaches a method of making polyurethane-modified polyisocyanurate (PU-PIR) ([0002] and [0007]). The method comprises reacting a modified polymeric MDI [0056], i.e. an organic polyisocyanate; and an isocyanate-reactive composition. The isocyanate-reactive composition comprises:
STEPANPOL® PS-2352 ([0053] and [0056]), which corresponds to a commercially available isocyanate-reactive composition which is a polyester polyol having a hydroxyl functionality of 2;
a blowing agent composition comprising:
24 parts by weight of a 75%/25% isopentane/n-pentane mixture ([0056] and Table 1), i.e. a hydrocarbon; and
0.3 parts by weight of water [0056];
a trimerization catalyst composition comprising:
NIAX® K-ZERO G [0056]. Momentive provides evidence that NIAX® K-ZERO G is a potassium octoate catalyst with good trimerization efficiency in a solvent that is not isocyanate-reactive (see first eight lines of Page 1), i.e. NIAX® K-ZERO G corresponds to an alkali metal carboxylate trimerization catalyst and solvent that is not isocyanate-reactive; and
TEGOSTAB® B84506 as a surfactant [0056].
Using the amounts of all ingredients disclosed in [0056], the blowing agent composition can be calculated to comprise about 7 weight percent of the aforementioned hydrocarbon and 0.09 weight percent water.
Kaplan is silent regarding the density of the foam produced from the reaction mixture. However, the reference(s) teach a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts, including the claimed amounts of blowing agent. Therefore, the claimed effects and physical properties, i.e. a polyisocyanurate foam having a density of less than 1.8 pcf, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. 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 using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Claim Rejections - 35 USC § 102/103
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.
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 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive), as applied to Claim 1 above, or in the alternative, under 35 U.S.C. 103 as obvious over US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive), as applied to Claim 1 above, and further in view of US 2007/0021851 to Eilbracht et al. (hereinafter Eilbracht).
Regarding Claims 6 and 7. Kaplan teaches the polyisocyanurate foam-forming composition of Claim 1 wherein the trimerization catalyst composition used by Kaplan in the relied-upon inventive examples is NIAX® K-ZERO G. Momentive provides evidence that NIAX® K-ZERO G is a potassium octoate catalyst with good trimerization efficiency in a solvent that is not isocyanate-reactive (see first eight lines of Page 1).
The references do not expressly disclose this solvent corresponds to an aprotic solvent or specifically one of the instantly claimed species of aprotic solvent. However, NIAX® K-ZERO G is the same trimerization catalyst used in the inventive examples of the instant specification. It would consequently be the Office’s position that it would be reasonably expected that the solvent in the NIAX® K-ZERO G used in Kaplan corresponds to one of the instantly claimed species of aprotic solvents.
Alternatively, while the references do not expressly disclose this solvent corresponds to an aprotic solvent or one specifically one of the instantly claimed species of aprotic solvent, Eilbracht teaches the concept of using aprotic solvents, e.g. a dialkylsulfoxide corresponding to dimethyl sulfoxide, in trimerization catalyst compositions for polyisocyanurate foam production [0012]. Kaplan and Eilbracht are analogous art as they are from the same field of endeavor, namely polyisocyanurate 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 provide an aprotic solvent such as dimethylsulfoxide, as the solvent for potassium octoate in Kaplan. The motivation would have been that Eilbracht teaches the use of this solvent avoids unproductive consumption of isocyanates and thus provides cost savings during the production of polyisocyanurate foams [0011].
Claim Rejections - 35 USC § 103
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 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 18 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive), as applied to Claim 1 above.
Regarding Claim 18. Kaplan teaches the polyisocyanurate foam-forming composition of Claim 1, wherein the trimerization catalyst composition is comprised of 0.28 parts by weight POLYCAT® 5, 3.6 parts by weight NIAX® K-ZERO G, and 0.45 parts by weight POLYCAT® 46. Using the amounts of all ingredients disclosed in [0056], this trimerization catalyst composition can be calculated to be provided in an amount of roughly 1.4 weight percent based on the total weight of the polyisocyanurate foam-forming composition.
Although this amount is not identical to the instantly claimed range of 1.5 to 3.0% by weight for the trimerization catalyst composition, it is the Office’s position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. Applicant is additionally advised that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claims 19 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive), as applied to Claim 1 above, and further in view of US 2020/0062918 to Combs (hereinafter Combs).
Regarding Claims 19 – 21. Kaplan teaches the polyisocyanurate foam-forming composition of Claim 1 but is silent with respect to particularly claimed features of the surfactant used. However, Combs teaches the concept of providing a surfactant comprising a non-reactive silicone surface-active agent with (i) a Relative Hydrocarbon Solubility of at least 1.20; or (i) a Surfactant Water Solubility of less than 2%, a Surfactant Turbidity greater than 100, and a Relative Hydrocarbon Solubility of at least 1.05 and less than 1.20 in an polyisocyanurate foam-forming composition [0050]. Kaplan and Combs are analogous art as they are from the same field of endeavor, namely polyisocyanurate 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 provide a non-reactive silicone surface-active agent having the features taught by Combs in the foam-forming composition of Kaplan. The motivation would have been that Combs teaches the use of these surfactants can provide good low temperature thermal insulation performance in the foams in which they are included.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive).
Regarding Claim 23. Kaplan teaches a polyurethane-modified polyisocyanurate (PU-PIR) foam-forming composition ([0002] and [0007]). The foam-forming composition may specifically comprise:
a modified polymeric MDI [0056], i.e. an organic polyisocyanate;
STEPANPOL® PS-2352 ([0053] and [0056]), which corresponds to a commercially available isocyanate-reactive composition which is a polyester polyol having a hydroxyl functionality of 2;
a blowing agent composition comprising:
24 parts by weight of a 75%/25% isopentane/n-pentane mixture ([0056] and Table 1), i.e. a hydrocarbon; and
0.3 parts by weight of water [0056];
a trimerization catalyst composition comprising:
NIAX® K-ZERO G [0056]. Momentive provides evidence that NIAX® K-ZERO G is a potassium octoate catalyst with good trimerization efficiency in a solvent that is not isocyanate-reactive (see first eight lines of Page 1), i.e. NIAX® K-ZERO G corresponds to an alkali metal carboxylate trimerization catalyst and solvent that is not isocyanate-reactive; and
TEGOSTAB® B84506 as a surfactant [0056].
Using the amounts of all ingredients disclosed in [0056], the blowing agent composition can be calculated to comprise about 7 weight percent of the aforementioned hydrocarbon and 0.09 weight percent water. The weight ratio of hydrocarbon to water in the blowing agent composition can be calculated to be roughly 80:1.
Kaplan does not expressly teach the blowing agent composition is present in an amount sufficient to produce a polyisocyanurate foam having a density of less than 1.8 pcf. However, a composition and its properties are inseparable (see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01(II)). As Kaplan teaches a blowing agent composition comprising all of the instantly claimed ingredients in the instantly claimed amounts, this blowing agent composition is necessarily provided in an amount sufficient to produce a polyisocyanurate foam with a density in the claimed range of less than 1.8 pcf.
Kaplan further teaches the trimerization catalyst composition is comprised of 0.28 parts by weight POLYCAT® 5, 3.6 parts by weight NIAX® K-ZERO G, and 0.45 parts by weight POLYCAT® 46. Using the amounts of all ingredients disclosed in [0056], this trimerization catalyst composition can be calculated to be provided in an amount of roughly 1.4 weight percent based on the total weight of the polyisocyanurate foam-forming composition.
Although this amount is not identical to the instantly claimed range of 1.5 to 3.0% by weight for the trimerization catalyst composition, it is the Office’s position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. Applicant is additionally advised that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0024744 to Kaplan et al. (hereinafter Kaplan), as evidenced by the Technical Data Sheet for Niax* catalyst K-ZERO G to Momentive Performance Materials Inc. (hereinafter Momentive), as applied to Claim 24 above, and further in view of US 2020/0062918 to Combs (hereinafter Combs).
Regarding Claim 26. Kaplan teaches the polyisocyanurate composition of Claim 24 and further teaches such materials may be used to insulate roofs [0002], though Kaplan is silent regarding the particular configuration thereof. However, Kaplan teaches the concept of providing a polyisocyanurate foam in an insulated roof assembly comprising a deck and insulation panels attached to the deck, wherein the insulation panels comprise said polyisocyanurate foam [0052]. 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 polyisocyanurate foam of Kaplan in an insulated roof assembly as taught by Combs. 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, Combs shows this to be a suitable configuration for providing polyisocyanurate foams in roof insulation applications [0052].
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to isocyanate-based foams which may be prepared with blowing agent mixtures comprising a combination of n-pentane and iso-pentane.
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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