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 .
DETAILED ACTION
Allowability of claim 10 is withdrawn due to new ground of rejection.
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 1-8, 11, 14, 15, 18 and 20 are rejected under 35 U.S.C. 103 as being
unpatentable over WO 2017/136878 A1 (Aug. 17, 2017) in view of Albertelli et al. (US 4,595,710).
WO teaches a foam obtained from a composition comprising expanded
polystyrene particles (i.e., additive), phenolic resin, thermoplastic microspheres and
catalyst in examples 1-3.
WO teaches a method in Figure1 in which the flowing steps are disclosed.
1. Blend expanded polystyrene particles, phenolic resin and thermoplastic
microsphere,
2. Fill mold and compress.
3. Cure
4. Demold and dry.
5. Cutting.
The foamed block and pieces of the block after cutting would meet the recited cuboid of claim 1 absent a specific structure.
The instant invention further recites cutting panels before drying the panel and a top-skin comprising a glass reinforced phenolic top-skin over WO.
It would be expected to be easier to cut non-dried panels than the dried panel
since non-dried panels would be softer.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention to cut the syntactic foam panel of the syntactic foam panel taught
by the examples 1-3 of WO before drying since it would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer.
The instant invention further recites a top-skin comprising a glass reinforced phenolic top-skin over WO.
Utilization of the top-skin layer on the foam is known in the art.
Albertelli et al. teach a phenolic. syntactic foam in abstract and examples. Albertelli et al. teach utilization of glass fiber reinforced phenolic resole bonded on to the foamed product in line 62 of col. 12 to line 8 of col. 12. Albertelli et al. further teach that a laminate layer would provide a waterproof membrane in lines 10-15 of col. 12.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention to cut the syntactic foam panel of the syntactic foam panel taught
by the examples WO before drying since it would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer and further provide a top-skin laminate comprising the glass fiber reinforced phenolic resole taught by Albertelli et al. since Albertelli et al. teach an advantage (i.e., waterproof membrane) of such laminate absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claim 2, WO teaches adding the catalyst a mixture comprising the polystyrene particles and phenolic resin in [00118]. Further mixing of a mixture comprising the catalyst in order to obtain a homogeneous composition would have been
obvious.
Regarding claim 3, it would be obvious to obtain panels having the same dimension after cutting in order to produce mass panels having the same dimensions.
Regarding claim 4, utilization of multiple molds in order to produce mass panels would have been obvious to one skilled in the art and a molding industry.
Regarding claim 5, WO teaches post-curing at 80oC in [0066] to remove moisture and residual formaldehyde.
Regarding claim 6, WO teaches a density of up to 50 kg/m3 in [0077]
Regarding claim 7, WO teaches the syntactic foam panel in the examples 1-3obtained from the same components used in the instant claim 1 and having the instantly recited density in claim 6. Thus, the syntactic foam panel taught by the examples 1-3 of WO would be expected to meet claim 7.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from the examples 1-3 of WO. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968).
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.01.
Regarding the recited sealant of claim 8, utilization of the sealant on the foam panel taught by WO in order to provide at least a smooth surface would be expected to be exercised by one skilled in the art since the surface would be expected to have protruded microspheres as well as broken microspheres having void.
Regarding claim 11, WO teaches phenolic resin in the examples 1-3.
Regarding claim 14, WO teaches other fillers such as glass fiber in [0045].
Regarding claim 15, WO teaches utilization of expanded polystyrene in the examples 1-3 which would meet the recited polymeric foam.
Regarding claim 18, the recited cut panels of 4 to 8 pieces would be dependent on a size of an initial mold and a desired size of a final panel which would have been obvious.
Regarding claim 20, the foamed block and pieces of the block after cutting taught by WO would meet claim 20.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/136878 A1 (Aug. 17, 2017) in view of Albertelli et al. (US 4,595,710) as applied to claims 1-8, 11, 14, 15, 18 and 20 above, and further in view of Machine translated JP 2004521975 A (July 22, 2004).
Regarding claims 12 and 13, JP teaches a polymer composite foam in abstract and utilization phenol- or furfuryl alcohol- based resin in [0022].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known furfuryl alcohol- based resin used for obtaining the polymer composite foam taught by JP in WO since JP teaches and equates phenol- or furfuryl alcohol- based resin absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 1-8, 11, 14, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Orpin (US 2004/0102534 A1) in view of GB 1,414,506 (Nov. 19, 1975) and Albertelli et al. (US 4,595,710).
Orpin teaches a composition comprising phenolic resin, wet microsphere, glass fibers (i.e., additive) and catalyst and curing in a mold thereof in example 5. The example 5 further teaches that the syntactic foam panel is released and dried/post- cured in a recirculating oven at 80oC yielding a density of about 50 kg/m3. The panel would be obtained by a cuboid shaped mold inherently as evidenced by a coffin mold taught in [0119].
The instant invention further recites cutting panels before drying the panels and a top-skin layer over Orpin.
GB teaches cutting of cured panels in example 9. Thus, it would have been obvious to cut the syntactic foam panel taught by the example 5 with the disclosure of GB in order to obtain a desired size.
Regarding the recited drying panels after the cutting of cured panels of claim 1, it would be expected to be easier to cut non-dried panels than the dried panel since non- dried panels would be softer.
Utilization of the top-skin layer on the foam is known in the art.
Albertelli et al. teach a phenolic. syntactic foam in abstract and examples. Albertelli et al. teach utilization of glass fiber reinforced phenolic resole bonded on to the foamed product in line 62 of col. 12 to line 8 of col. 12. Albertelli et al. further teach that a laminate layer would provide a waterproof membrane in lines 10-15 of col. 12.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention to cut the syntactic foam panel of the syntactic foam panel taught by the example 5 of Orpin with the disclosure of GB before drying since it would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer and further provide a top-skin laminate comprising the glass fiber reinforced phenolic resole taught by Albertelli et al. since Albertelli et al. teach an advantage (i.e., waterproof membrane) of such laminate absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claim 2, the example 5 of Orpin teaches further mixing of a composition after blending the catalyst.
Regarding claim 3, it would be obvious to obtain panels after cutting in order to produce mass panels having same dimensions.
Regarding claim 4, utilization of multiple molds in order to produce mass panels would have been obvious to one skilled in the art and a molding industry.
Regarding claim 5, the example 5 of Orpin teaches drying/post-curing in a recirculating oven at 80oC.
Regarding claim 6, the example 5 of Orpin teaches a density of about 50 kg/m3. Orpin further teaches various values of density by utilizing different amounts of the microsphere in the example 4 and 5.
Regarding claim 7, Orpin teaches the syntactic foam panel in the example 5 obtained from the same components sued in the instant claim 1 and having the instantly recited density in claim 6. Thus, the syntactic foam panel taught by the example 5 would be expected to meet claim 7. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from the example 5 of Orpin. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968).
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Regarding the recited sealant of claim 8, utilization of the sealant on the foam panel taught by Orpin in order to provide at least a smooth surface would be expected to be exercised by one skilled in the art since the surface would be expected to have protruded microspheres and glass fibers as well as broken microspheres having void.
Regarding claim 11, Orpin teaches phenolic resin in the example 5.
Regarding claim 14, Orpin teaches glass fiber in the example 5.
Regarding claim 16, Orpin teaches dry unexpanded Expancel grade 551DU and wet expanded Expancel grade 551WE in [0043]. Thus, utilization of a mixture of 551DU and 551WE would have been obvious to one skilled in the art. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding claim 17, when patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result.
It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Orpin further teaches different temperatures for the expansion of the 551 grade and thus utilization of different amounts of 551DU and 551E in order to adjust a density of a final foam would have been obvious.
Regarding claim 18, the recited cut panels of 4 to 8 pieces would be dependent on a size of an initial mold and desired size of a final panel which would have been obvious.
Regarding claim 20, the syntactic foam panel taught by Orpin and pieces of the block after cutting thereof would meet claim 20.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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