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 amendment and response filed on January 28, 2026 has been entered. Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-7 and 15-20) in the reply filed on January 28, 2026 is acknowledged. Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. As requested, the Examiner will consider rejoinder of the non-elected method claims once the pending article claims are deemed to be in condition for allowance.
Specification
The disclosure is objected to because of the following informalities: In paragraphs [0062] and [0063] and Table 8 (pg 23), the temperature scale should be changed from “°C” to “°F”.
Claim Objections
Claims 1 and 15 are objected to because of the following informalities.
In claim 1, line 4, the term “and” should be deleted.
In claim 15, line 5, the term “and” should be deleted.
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.
Claim 3 is 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.
The term “foam index” is not an art recognized term and the specification does not clearly define this index. Specifically, paragraph [0051] defines “an isocyanate index” of the foam being less than 260 with a specific formula. This paragraph additionally references a foam index without any specifics. Accordingly, this term is deemed to be indefinite.
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.
Claims 1-7 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nandi et al. (U.S. Patent No. 11,299,882).
Regarding claim 1, Nandi discloses a polyisocyanurate foam insulation product (claim 1) having a polyisocyanurate core comprising a blowing agent (claim 1), a polyester polyol component (claim 1), a multi-functional alcohol, i.e., triethanolamine (TEA), (claim 1), an isocyanate component (claim 1), and a fire retardant (claim 1). Nandi does not disclose (a) that the multi-functional alcohol is present in an amount greater than 20 parts per 100 parts of the polyester polyol, (b) that the fire retardant is present in an amount of less than or about 3.5 wt% of the polyisocyanurate core, or (c) that the insulation product exhibits a smoke development index (ASTM E84) of less than 450.
With respect to (a), Nandi discloses an Example of a composition that contains 20 parts triethanolamine (Table 9, Example 12). One skilled in the art would expect a composition that contains 20 parts TEA to be functionally equivalent to a composition that comprises “greater than 20 parts” at the lowest end of the claimed range. That is, 20 is deemed to be substantial identical to 20.0001, which reads on the “greater than 20” limitation in claim 1. Moreover, Nandi sets forth that the content of the TEA component is a result effective variable. Specifically, Nandi discloses as the content of the TEA component increases there is a shift in the peak R-value towards colder temperatures and increasing the amount of TEA component decreases the density of the insulation product (column 18, lines 23-38). Thus, it would have been obvious to one of ordinary skill in the art to have prepared the polyisocyanurate foam insulation product of Nandi wherein the TEA component is present in an amount greater than 20 parts, motivated by the desire to obtain an insulating product which exhibited a peak R-value at low temperatures and had a lower density.
With respect to (b), Nandi does not disclose any criticality for the amount of fire retardant used. Table 5 does disclose a range of 5-15 wt%, which is outside of the presently claimed range. However, one skilled in the art would recognize that the amount of fire retardant used would have been a result effective variable. That is, the amount of fire retardant used would correspond to the degree of fire retardant properties exhibited by the insultation product. As set forth in MPEP 2144.05, "where 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). Thus, it would have been obvious to the skilled artisan to have discovered a workable range of fire retardant for the insultation product of Nandi to be less than or equal to about 3.5 wt% through routine experimentation based on the desired fire retardant properties of the resulting insulation product.
With respect to (c), while Nandi is silent as to the ASTM E84 range or value of the insulation product, Nandi does disclose that the polyisocyanurate core passes the ASTM E84 test (col. 7, lines 55-59). Given the similarities in the composition used to prepare the core between the present invention and Nandi and the specific disclosure in Nandi that the core passed the ASTM E84 test, it is reasonable to conclude that Nandi discloses an insulation product that exhibits a smoke development index within the presently claimed range absent some showing on the record to the contrary. See MPEP 2112 which states “"the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Regarding claim 2, Nandi discloses the claimed NCO:OH ratio range (col 9, lines 5-10).
Regarding claim 3, Nandi discloses the claimed isocyanate index range (col 8, line 53+).
Regarding claim 4, Nandi discloses the use of facer materials on the core (col 10, lines 7-18).
Regarding claim 5, Nandi discloses the claimed R-value range (claim 5).
Regarding claim 6, Nandi discloses a polyester polyol having a hydroxyl number within the claimed range (claim 29).
Regarding claim 7, Nandi discloses the use of the TEA component within the presently claimed range (Table 9).
Regarding claims 15-18, Nandi discloses an insulation product useful as in a roofing or wall system wherein the polyisocyanurate material is in the form an insulation or cover board (col 14, line 49+).
Regarding claims 19 and 20, see rationale above for claims 5 and 4, respectively.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781