DETAILED ACTION
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, Claims 1 – 9 and 15 – 20, drawn to a process for producing a rigid PU or PIR foam;
Group II, Claims 10 and 12, drawn to a composition comprising an isocyanate-reactive mixture and method for improving the storage stability of an isocyanate-reactive mixture;
Group III, Claim 11, drawn to an emulsifier-containing formulation; and
Group IV, Claims 13 and 14, drawn to rigid PU or PIR foams.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I – IV lack unity of invention. The inventions of these groups require the technical feature of an emulsifier comprising at least one alkoxylated aromatic alcohol derived from a parent aromatic alcohol having 6 to 40 carbon atoms and at least one OH function, wherein at most 1/5 of the carbon atoms of the parent aromatic alcohol are not aromatic. However, this technical feature is not a special technical feature as it does not make a contribution over the prior art. US 2018/0171062 teaches ethoxylated aromatic alcohols derived from parent aromatic alcohols having 6 to 40 carbon atoms, at least one OH function, in which at most 1/5 of the carbon atoms of the parent aromatic alcohol are not aromatic, namely isopropylidenediphenol [0025] – [0028].
During telephone conversations with Dr. Richard Chinn and Dr. Jaskiranjit Kang on July 31, 2026, a provisional election was made with traverse to prosecute the invention of Group I, Claims 1 – 9 and 15 – 20 . Affirmation of this election must be made by applicant in replying to this Office action. Claims 10 – 14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite rigid polyurethane (PU) or polyisocyanurate (PIR) in the preamble, as this is the first time these abbreviations appear in the claims.
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 – 9 and 15 – 20 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 sets forth “at least one isocyanate…wherein one or more organic polyisocyanates having two or more isocyanate functions are used as isocyanates”. It is unclear if “isocyanates” appearing at the end of this phrase is the same or different component as the “at least one isocyanate” recited at the beginning of the phrase. For the purposes of further examination, Claim 1 will be interpreted as setting forth “at least one isocyanate…wherein one or more organic polyisocyanates having two or more isocyanate functions are provided as the at least one polyisocyanate”.
The instant specification sets forth “[p]aren’t aromatic alcohol” means that “the latter after alkoxylation leads to the alkoxylated aromatic alcohol.” However, Claim 1 sets forth at least one alkoxylated aromatic alcohol. It is then unclear if the subsequently recited “a” parent aromatic alcohol refers to one or all of the aromatic alcohols on which the at least one alkoxylated aromatic alcohol is based. For the purposes of further examination, Claim 1 will be interpreted as requiring all parent alcohols used in the preparation of said at least one alkoxylated aromatic alcohol have the claimed features.
There is a lack of antecedent basis for “the” aromatic alcohol set forth in Claim 2. It is unclear which of the previously recited aromatic alcohols are being referred to by this phase. For the purposes of further examination, Claim 2 will be interpreted as setting forth the at least one alkoxylated aromatic alcohol is an ethoxylated aromatic alcohol.
Claim 4 is indefinite, as the claim does not set forth any steps involved in the method/process. It is consequently unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced (see MPEP 2173.05(q)). For the purposes of further examination, Claim 4 will be interpreted as setting forth at least two alkoxylated aromatic alcohols are provided in said process.
The scope of Claim 20 is indefinite, as it sets forth the calculated HLB value is greater than 14. It is then unclear whether or not the upper limit set forth in Claim 6, upon which Claim 20 depends, is incorporated. For the purposes of examination, Claim 20 will be interpreted as setting forth the calculated HLB value is greater than 14 and less than or equal to 20.
All other claims not expressly discussed ultimately depend on Claim 1 and thereby are rejected under this statute, as they incorporate the indefinite subject matter of Claim 1.
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 – 4, 6, 8, 9, and 15 – 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0171062 to Nefzger et al. (hereinafter Nefzger).
Regarding Claims 1 and 2. Nefzger teaches a process for producing a process a polyurethane-polyisocyanurate rigid foam [0052]. The process comprises:
reacting/contacting at least one polyisocyanate with an isocyanate-reactive mixture comprising f) at least one compound with at least two groups reactive with isocyanates, which preferably correspond to polyether or polyester polyols; a propellant, wherein water is a preferred propellant; and a bisphenol A (BPA) resin ethoxylate ([0052] – [0058], [0061], [0068] and [0132]).
The BPA resin ethoxylate comprises alkoxylated, specifically ethoxylated, aromatic alcohols including 4,4’-isopropylidenediphenol (bisphenol A) [0025] – [0028]. Bisphenol A corresponds to a parent alcohol having 15 carbon atoms, two OH functions, and having two aromatic units bearing an OH function. 1/5 of its carbon atoms corresponding to non-aromatic carbon atoms.
Nefzger does not expressly describe the BPA resin ethoxylate as an emulsifier. However, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. As Nefzger teaches a BPA resin ethoxylate having an identical chemical composition to the claimed at least one emulsifier, the BPA resin ethoxylate of Nefzger must also necessarily correspond to an emulsifier.
Regarding Claims 3 and 15 – 18. Nefzger teaches the process for producing a process of Claim 1 wherein the at least one alkoxylated aromatic alcohol is based on a
bisphenol A (BPA) resin ([0025] – [0028]). Bisphenol A is set forth as a linked aromatic system having one or more OH functions (iii) in Claim 17. Additionally, limitations directed to components (i), (ii), and (iv) do not further limit embodiments in which only component (iii) is provided.
Regarding Claim 4. Nefzger teaches the process of Claim 1 wherein the BPA resin ethoxylate may further comprise an ethoxylate of phenol [0025] – [0028], i.e. the BPA resin ethoxylate may comprises at least two alkoxylated aromatic alcohols corresponding to an alkoxylated BPA and an alkoxylated phenol.
Regarding Claim 6. Nefzger teaches the process of Claim 1. In Example A1.2, the BPA resin is provided in an amount of 811.1 grams and ethylene oxide is provided in an amount of 800.1 grams. Using these amounts and the equation for hydrophilic-lipophilic balance provided in the instant specification, the HLB values of the alkoxylated aromatic alcohol in Example A1.2 can be calculated to be roughly 10.
Regarding Claim 8. Nefzger teaches the process of Claim 1 wherein the isocyanate-reactive mixture further comprises flame retardants [0080].
Regarding Claim 9. Nefzger teaches the process of Claim 1 wherein the isocyanate-reactive mixture further comprises catalysts [0079].
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 5, 7, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0171062 to Nefzger et al. (hereinafter Nefzger), as applied to Claim 1 above.
Regarding Claim 5. Nefzger teaches the process of Claim 1, wherein at least 1.5 moles of ethylene oxide are preferably provided per phenolic hydroxy group [0037]. As BPA has two phenolic hydroxy groups, this will result in the provision of at least 3 alkoxy groups per molecule of BPA. While this quantity is not identical to the instantly claimed range of 4 to 100 groups per molecule, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 7. Nefzger teaches the process of Claim 1 wherein all ingredients other than the isocyanate may be combined to form an isocyanate-reactive mixture ([0131] – [0132]). Relative to the weight of the total reaction mixture, the propellant, e.g. water, is provided in an amount of 0.7 – 15 weight percent [0078]; the BPA resin ethoxylate/emulsifier is provided in an amount of 19 to 29 weight percent [0076]; and the isocyanate is provided in an amount of 56 to 74 weight percent. The BPA resin ethoxylate comprises 10 to 60 weight percent of ethoxylated bisphenol A [0024], corresponding to the instantly claimed at least one aromatic alcohol. Using these values, water can be calculated to be provided in an amount of roughly 1.6 to 58 weight percent of the isocyanate-reactive mixture, while the ethoxylated bisphenol A, corresponding to the instantly claimed at least one aromatic alcohol, can be calculated to be provided in an amount of 4.3 to 40 weight percent of the isocyanate-reactive mixture.
Additionally, Nefzger does not teach any nonylphenol ethoxylate is provided, i.e. nonylphenol ethoxylate is present in an amount of 0% by mass of the isocyanate-reactive mixture.
While the calculated amount of water is not identical to the instantly claimed range of 2 to 30% by mass of the isocyanate-reactive mixture, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 19. Nefzger teaches the process of Claim 1 but does not expressly teach the at least two alkoxylated aromatic alcohols comprise ethoxylated phenol(s) and ethoxylated naphthol(s) [0072]. However, Nefzger does teach the concept of providing foam stabilizers which are alkoxylation products of ethylene oxide and initiators such as bisphenol A, i.e. a phenol, and naphthol [0072]. 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 both BPA and naphthol as initiators in the preparation of an ethoxylated foam stabilizer in Nefzger. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining various BPA and naphthol would have been obvious given their disclosed and shared use as initiators in the preparation of an ethoxylated foam stabilizer in Nefzger [0072].
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0171062 to Nefzger et al. (hereinafter Nefzger), as applied to Claim 1 above, and further in view of US 2002/0016377 to Sato et al. (hereinafter Sato).
Regarding Claims 6 and 20. Nefzger teaches the process of Claim 1. Nefzger does teach the concept of providing foam stabilizers which are alkoxylation products of ethylene oxide and initiators such as bisphenol A, i.e. a phenol, and naphthol [0072] but is silent regarding the HLB value of such compounds. However, Sato teaches the concept of providing non-silicone foam stabilizers with HLB values as high as 20 [0012]. Nefzger and Sato are analogous art as they are from the same field of endeavor, namely processes of producing polyurethane 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 the foam stabilizer of Nefzger with a HLB value as high as 20, as taught by Sato. The motivation would have been that Sato teaches that the closer to 20 the HLB value is, the higher the hydrophilicity of the foam stabilizer and the greater the size of the cells of the foam [0042]. Larger cell size is, in turn, correlated with lower density foam products which can be desirable to produce articles that are lighter in weight.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. US 3,970,618 teaches ethoxylated phenol as an emulsifier for polyurethane foams.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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