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 .
Information Disclosure Statement
The information disclosure statement filed 1/23/2024 does not contain a legible copy of foreign reference EP 0757068. 37 CFR 1.98(a)(2) requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but foreign reference EP 0757068 has not been considered. The references which were cited and included a proper copy have been considered.
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 1-14 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, line 25, recites “…and optionally…” The claim is indefinite because it is unclear if the “and optionally” applies to all of components (b3), (b4), and (b5) or to any of those components individually. Claims 2-14 depend from claim 1 and do not clarify the issue. Therefore, claims 1-14 are indefinite.
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 1-3 and 5-15 are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 2018/0346636) in view of CN 110582523. Because CN 110582523 is not in English, citations are made to the attached translation.
Koch et al. teach a polyol component comprising 20 to 40wt% polyether ester polyols having a fatty acid and/or fatty acid ester content of 8 to 17wt% based on the polyether ester. The polyol further comprises catalysts and additives/auxiliaries. The polyol component is used to produce rigid polyurethane foams (¶1) by reacting with a polyisocyanate, a blowing agent, a catalyst. See Table 1 of Koch et al. and ¶70, and ¶56 of Koch et al. These meet (a), (d), and (e) of instant claim 1. The polyisocyanate used in the Examples has an isocyanate index which falls within the range of instant claim 9. The blowing agent used to produce the foams of Koch et al. include heptane, hexane, isobutane, isopentane, propane, or cyclopentane (¶74). This meets instant claim 10. Examples of Koch et al. include a polyether polyol prepared by alkoxylation of toylenediamine (polyol C; see ¶39 and Table 1). This meets b3) of instant claim 1 and meets instant claim 6. Examples include a polyether polyol corresponding to b4) of instant claims 1 and 7 (see Table 1, polyols D1, D2, and D3, ¶154-156). The amount of polyether polyol, which corresponds to b1) of the instant claims, meets the amount recited in claims 8 and 15.
The polyetherester polyol used in Examples of Koch et al. comprises a mixture of sucrose and glycerol totaling 27.7wt%. This meets b11 of instant claims 1-2 and 15. The polyetherester polyol used in Examples comprises 58.7wt% of propylene oxide. This meets b12) of instant claims 1 and 15. The polyetherester polyol of the Examples of Koch et al. comprises 13.5% of a fatty acid ester (biodiesel; see ¶10 and ¶147 of Koch et al.). This meets b13) of instant claims 1 and 15.
The amount of D, which corresponds to b4) of instant claims 1 and 7, overlaps the amount recited in instant claim 8. Koch et al. teaches that D is present in an amount of from 25 to 35wt% of the polyols. See ¶81. 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 Koch et al. to use an amount of D (which corresponds to b4) of the instant claims) which meets the instant claim limitations of instant claim 8 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 polyols of Koch et al. meet the limitation of instant claims 1 and 15 reciting “component (b) in addition to components (b1) to (b5) comprises les than 20% by weight, based on the total weight of component (b), of further compounds having at least two hydrogen atoms reactive towards isocyanate groups.” The polyols of Koch et al. meet at least b1) through b5) of instant claims 1 and 15.
Koch et al. do not expressly teach that the polyol includes at least 20% by weight a polyester polyol having an average functionality of ≥2.4 and an OH value of ≥280 mg KOH/g, which is b2) of the instant claims. While Koch et al. teaches tertiary amine catalysts, Koch et al. does not expressly teach that the catalyst comprises a mixture of tertiary amine and metal carboxylate or ammonium carboxylate. Koch et al. does not expressly recite that the compositions comprise a flame retardant which is a phosphorus-containing flame retardant having a phosphorus content of from 0.9 to 1.5% by weight. Koch et al. do not expressly teach a process for producing sandwich elements carried out on a double belt.
However, CN 110582523 teaches a polyurethane foam produced from a composition comprising a polyol component comprising a polyester polyol having a functionality which is preferably greater than 2.3 (¶52), which overlap the functionality of b2) of instant claims 1, 3, and 15. The polyester polyol having a functionality of greater than 2.3, disclosed inn CN ‘523, has an OH value of 150 to 600 mg KOH/g, which overlaps b2 ) of instant claims 1, 3, and 15. See ¶53. The polyester polyol (b3) of CN ‘523 which corresponds to b2) of the instantly claimed invention is present in the polyol component of CN’523 in an amount ranging from about 3.3 to about 80.6wt%. See ¶31 of the attached translation. The polyester polyol (b3) of CN ‘523 does not contain fatty acid moieties. This overlaps the amounts recited instant claims 1, 8, and 15. 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 CN ‘253 to use a polyester polyol having a functionality which meets the instant claims and OH value which meets the instant claims, in an amount which meets the instant claims, 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.
CN ‘253 teaches fatty acids and their derivatives in the alternative to dicarboxylic acids for producing b3) of the disclosed invention. It would have been obvious to one of ordinary skill in the art to use dicarboxylic acids and not fatty acids, given that fatty acids are disclosed in the alternative, and inn order to provide improved storage stability. See ¶44-¶47 of CN ‘253. This meets instant claim 5.
CN’ 253 teaches that the compositions disclosed therein comprise mixtures of tertiary amines and metal carboxylates (¶66) or ammonium carboxylates (¶68). This meets instant claim 11. CN ‘253 teaches that the compositions for producing the polyurethane foams comprise phosphorus-containing flame retardants (¶56-57), in a preferably amount of from 10 to 55wt% (¶59). In the Examples of CN ‘253, the flame retardant contains 9.5wt% phosphorus (¶98). This results in an amount of phosphorus in the polyurethane foam and composition of 0.95 to 5.225wt% phosphorus. This overlaps the range of instant claim 12. 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 CN ‘253 to use a phosphorus-containing flame retardant which provides a phosphorus content which meets instant claim 12 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.
Regarding instant claim 13, CN ‘253 teaches use of dual belts/twin belts (which are double belts) which provide a lower cover layer and upper cover layer and prepare sandwich elements. This meets instant claim 13. See ¶80.
Both Koch et al. and CN ‘253 relate to the field of rigid polyurethane foams comprising a mixture of polyols. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use an amount of polyester polyol having a functionality of greater than 2.3 and an OH number of 150 to 600 mg KOH/g as disclosed in CN ‘253, in the invention of Koch et al., in order to provide a higher crosslinking density in the polyurethane foams prepared therefrom, thereby giving the polyurethane foam improved mechanical properties.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use a combination of tertiary amine and metal carboxylate catalyst as disclosed in CN ‘253 in the invention of Koch et al. because use of metal carboxylates results in formation of isocyanurate groups, which result in greater cross-linking and higher flame retardancy in the resultant foams (¶66), while use of tertiary amines promotes the reaction of hydrogen atoms (¶63-64). Additionally, tertiary amines provide a catalyst for polyurethane formation while metal or ammonium carboxylates provide a catalyst for trimerization, and using both provides both catalysis for polyurethane formation and trimerization. See ¶68 of CN ‘253.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use a flame retardant including TCPP (tris(2-chloroisopropyl) phosphate) in an amount which provides a phosphorus content as disclosed in CN ‘253 in the invention of Koch et al. in order to provide flame retardance to the foams of Koch et al. (¶56-57). It would have been obvious to keep the phosphorus content low, such as the amount described in CN ‘253, in the invention of Koch, to provide sufficient flame retardance while avoiding excessive toxicity to the environment (see ¶9-10 of CN ‘253).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use a dual/twin belt (i.e. double belt) system as disclosed in CN ‘253 in the invention of Koch et al. in order to provide a process for producing sandwich elements, which can have lower and upper covers which are the same, different, flexible or rigid and made from various materials. See ¶80-81 of CN ‘253.
Claims 1-2, 4-10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 2018/0346636) and further in view of Nishimura (JPH08-176265). Because Nishimura is not in English, citations are made to the attached translation.
Koch et al. teach a polyol component comprising 20 to 40wt% polyether ester polyols having a fatty acid and/or fatty acid ester content of 8 to 17wt% based on the polyether ester. This meets (b12) of instant claims 1 and 15. The polyol further comprises catalysts and additives/auxiliaries. The polyol component is used to produce rigid polyurethane foams (¶1) by reacting with a polyisocyanate, a blowing agent, a catalyst. See Table 1 of Koch et al. and ¶70, and ¶56 of Koch et al. These meet (a), (d), and (e) of instant claim 1. The polyisocyanate used in the Examples has an isocyanate index which falls within the range of instant claim 9. The blowing agent used to produce the foams of Koch et al. include heptane, hexane, isobutane, isopentane, propane, or cyclopentane (¶74). This meets instant claim 10. Examples of Koch et al. include a polyether polyol prepared by alkoxylation of toylenediamine (polyol C; see ¶39 and Table 1) in amount which meets (b13) of instant claim 1 and meets instant claim 6. Examples include a polyether polyol corresponding to b4) of instant claims 1 and 7 (see Table 1, polyols D1, D2, and D3, ¶154-156). The amount of polyether polyol, which corresponds to b1) of the instant claims, meets the amount recited in claims 8 and 15.
The polyetherester polyol used in Examples of Koch et al. comprises a mixture of sucrose and glycerol totaling 27.7wt%. This meets b11 of instant claims 1-2 and 15. The polyetherester polyol used in Examples comprises 58.7wt% of propylene oxide. This meets b13) of instant claims 1 and 15. The polyetherester polyol of the Examples of Koch et al. comprises 13.5% of a fatty acid ester (biodiesel; see ¶10 and ¶147 of Koch et al.). This meets b12) of instant claims 1 and 15.
The amount of D, which corresponds to b4) of instant claims 1 and 7, overlaps the amount recited in instant claim 8. Koch et al. teaches that D is present in an amount of from 25 to 35wt% of the polyols. See ¶81. 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 Koch et al. to use an amount of D (which corresponds to b4) of the instant claims) which meets the instant claim limitations of instant claim 8 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 polyols of Koch et al. meet the limitation of instant claims 1 and 15 reciting “component (b) in addition to components (b1) to (b5) comprises less than 20% by weight, based on the total weight of component (b), of further compounds having at least two hydrogen atoms reactive towards isocyanate groups.” The polyols of Koch et al. meet at least b1) through b5) of instant claims 1 and 15.
Koch et al. do not expressly teach that the polyol includes at least 20% by weight a polyester polyol having an average functionality of ≥2.4 and an OH value of ≥280 mg KOH/g, which is b2) of the instant claims, wherein b2) includes at least one aliphatic polyester polyol (b2b) having a functionality of 2.8 to 3.4 and an OH value of 300 to 400 mg KOH/g.
However, Nishimura teaches rigid polyurethane foams (¶ 1) which include using an aliphatic polyester polyol having an average functional group number of 2.2-3.8 (¶9). Nishimura teaches the aliphatic polyester polyol has a hydroxy value of 200-600, preferably 300-500 (¶ 12) which overlap the functionality of b2) of instant claims 1 and 3 and which overlaps the OH value b2) of instant claims 1 and 3. Nishimura teaches the aliphatic polyester polyol is present in the polyol mixture in an amount of 5-70 wt% (¶ 10), which overlaps the amount of at least 20 wt% recited in instant claims 1, 8, and 15. 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 Nishimura to use an amount and type of aliphatic polyester polyol having a functionality and hydroxyl value which meet instant claims 1, 4-5, 8, and 15 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 polyester polyol (b3) of Nishimura does not contain fatty acid moieties. This meets instant claim 5.
Both Koch and Nishimura relate to the field of rigid polyurethane foams. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant inventio to use the aliphatic polyester polyols of Nishimura in the invention of Koch et al. because the aliphatic polyester polyol improves the dimensional stability and prevents shrinkage (¶ 15).
Claim 4 is are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 2018/0346636) in view of CN 110582523 and further in view of Nishimura (JPH08-176265). Because CN 110582523 and Nishimura are not in English, citations are made to the attached translations.
Koch et al. in view of CN ‘253 teach the rigid polyurethane foam and polyol composition as discussed in the rejection above, the rejection of which is incorporated herein by reference.
Koch et al. in view of CN ‘253 do not expressly teach that the polyol includes at least 20% by weight a polyester polyol having an average functionality of ≥2.4 and an OH value of ≥280 mg KOH/g, which is b2) of the instant claims, wherein b2) includes at least one aliphatic polyester polyol (b2b) having a functionality of 2.8 to 3.4 and an OH value of 300 to 400 mg KOH/g.
However, Nishimura teaches rigid polyurethane foams (¶ 1) which include using an aliphatic polyester polyol having an average functional group number of 2.2-3.8 (¶9). Nishimura teaches the aliphatic polyester polyol has a hydroxy value of 200-600, preferably 300-500 (¶ 12) which overlap the functionality of b2) of instant claims 1 and 3 and which overlaps the OH value b2) of instant claims 1 and 3. Nishimura teaches the aliphatic polyester polyol is present in the polyol mixture in an amount of 5-70 wt% (¶ 10), which overlaps the amount of at least 20 wt% recited in instant claims 1, 8, and 15. 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 Nishimura to use an amount and type of aliphatic polyester polyol having a functionality and hydroxyl value which meet instant claims 1, 4-5, 8, and 15 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.
All of Koch, CN ‘253, and Nishimura relate to the field of rigid polyurethane foams. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant inventio to use the aliphatic polyester polyols of Nishimura in the invention of Koch et al. (and/or CN ‘253) because the aliphatic polyester polyol improves the dimensional stability and prevents shrinkage (¶ 15).
Conclusion
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/K. BOYLE/Primary Examiner, Art Unit 1766
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