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 Group I claims 1-10 in the reply filed on 11/28/2025 is acknowledged.
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 1-10 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 recites the limitation “foaming the thermoplastic material by steps including extruding.” It is unclear what “steps” applicant is referring to. Are the steps i-iv? For purposes of compact prosecution, Examiner is interpreting the steps to refer to the bullets found within part (a). Claims 2-10 are also found indefinite for directly/indirectly including all the limitations of claim 1.
Claim 4 recites the limitation “wherein the amount of (i)-(iv) in the blowing agent is not less than 97% by weight”. It is unclear if the claim limitation is referring to the combined weight of HCFO-1233zd(E), HFC-134a, and isobutane or the each component. Clarification is required. For purposes of compact prosecution, Examiner is interpreting the limitation as the combined weight of HCFO-1233zd(E), HFC-134a, and isobutane is not less than 97% by weight.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2020/0262995 A1) in view of Williams (US2012/0043492 A1).
Regarding claim 1, Chen discloses a method for forming extruded polystyrene foam comprising:
(a) providing a thermoplastic polystyrene melt comprising thermoplastic polystyrene and a blowing agent comprising: i. from about 10% by weight to about 30% by weight of HCFO-1233zd(E) ([0014] discloses the HCFO is from about 2-90% w%. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality);
ii. from about 35% by weight to about 75% by weight of HFC-134a; (Chen discloses the use of HFC-134a [0011] but does not explicitly disclose the % weight. One ordinary skill in the art would look to conventional art to determine the % weight of HFC-134a. Analogous art Williams discloses the HFC-134a [0054] is contained in an amount of 25-75% by weight [0071]. This overlaps with applicant’s range. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated from about 35% by weight to about 75% by weight of HFC-134a as taught by Williams into the method taught by Chen for the benefit of having a blowing agent that is effective and less toxic to the environment [0013, 0015]);
iii. from about 10% to about 35% by weight of isobutane (Chen does not explicitly disclose the weight of isobutane. However, one ordinary skill in the art would look to conventional art to determine the % weight of isobutane. Analogous art Williams discloses the isobutane [0068] is contained in an amount of 25-75% by weight [0071]. This overlaps with applicant’s range. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated from about 10% by weight to about 35% by weight of HFC-134a as taught by Williams into the method taught by Chen for the benefit of having a blowing agent that is effective and less toxic to the environment [0013, 0015];)
and iv. optionally a fourth component comprising up to about 20% by weight of dimethyl ether and/or carbon dioxide and/or water and/or ethanol or a combination of two or more of these ((this step is optional so not required);
wherein the amount of components (i) - (iv) in the blowing agent is not less than about 95% by weight of all the blowing agent components in the formulation ([0014]);
and Chen teaches (b) foaming the thermoplastic material by steps including extruding said thermoplastic polystyrene melt to produce extruded polystyrene foam [0010, 0020].
Regarding claim 2, Chen teaches wherein said blowing agent comprises:(i) from about 10% by weight to about 30% by weight of HCFO- 1233zd(E) ([0014] discloses the HCFO is from about 2-90% w%. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality);
(ii) from about 55% by weight to about 75% by weight of HFC-134a ; (Chen discloses the use of HFC-134a [0011] but does not explicitly disclose the % weight. One ordinary skill in the art would look to conventional art to determine the % weight of HFC-134a. Analogous art Williams discloses the HFC-134a [0054] is contained in an amount of 25-75% by weight [0071]. This overlaps with applicant’s range. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated from about 55% by weight to about 75% by weight of HFC-134a as taught by Williams into the method taught by Chen for the benefit of having a blowing agent that is effective and less toxic to the environment [0013, 0015])
(iii) from about 20% to about 35% by weight of isobutane (Chen does not explicitly disclose the weight of isobutane. However, one ordinary skill in the art would look to conventional art to determine the % weight of isobutane. Analogous art Williams discloses the isobutane [0068] is contained in an amount of 25-75% by weight [0071]. This overlaps with applicant’s range. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated from about 20% by weight to about 35% by weight of HFC-134a as taught by Williams into the method taught by Chen for the benefit of having a blowing agent that is effective and less toxic to the environment [0013, 0015]);
and (iv) optionally a fourth component comprising up to about 20% by weight of dimethyl ether and/or carbon dioxide (this step is not required since it is optional).
Regarding claim 3, Chen discloses wherein the extruded polystyrene foam has a density of about 40 kg/m3 or less (20 kg/m3 [0013]) but does not explicitly disclose and an aged thermal conductivity of 30 mW/mK or less. However, However, the combination of Chen and Williams’ composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Additionally, since Chen and William both do not recite the aged thermal conductivity, one ordinary skill in the art would understand that the aged thermal conductivity is therefore 0 mW/mK which falls within Applicant’s range of 30 mW/mK or less.
Regarding claim 4, Chen teaches wherein the amount of (i)-(iv) in the blowing agent is not less than about 97% by weight [0014].
Regarding claim 5, Chen teaches wherein said blowing agent consisting essentially of:
i. from about 10% by weight to about 30% by weight of HCFO-1233zd(E) ([0014] discloses the HCFO is from about 2-90% w%. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality);
ii. from about 35% by weight to about 65% by weight of HFC-134a (Chen discloses the use of HFC-134a [0011] but does not explicitly disclose the % weight. One ordinary skill in the art would look to conventional art to determine the % weight of HFC-134a. Analogous art Williams discloses the HFC-134a [0054] is contained in an amount of 25-75% by weight [0071]. This overlaps with applicant’s range. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated from about 35% by weight to about 65% by weight of HFC-134a as taught by Williams into the method taught by Chen for the benefit of having a blowing agent that is effective and less toxic to the environment [0013, 0015];
and iii. from about 10% to about 30% by weight of isobutane (Chen does not explicitly disclose the weight of isobutane. However, one ordinary skill in the art would look to conventional art to determine the % weight of isobutane. Analogous art Williams discloses the isobutane [0068] is contained in an amount of 25-75% by weight [0071]. This overlaps with applicant’s range. MPEP 2144.05 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated from about 10% by weight to about 30% by weight of HFC-134a as taught by Williams into the method taught by Chen for the benefit of having a blowing agent that is effective and less toxic to the environment [0013, 0015];)
Regarding claim 6, Chen discloses wherein the extruded polystyrene foam has a density of about 37 kg/m3 or less (20 kg/m3 [0013]) but does not explicitly disclose and an aged thermal conductivity of 30 mW/mK or less. However, However, the combination of Chen and Williams’ composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Additionally, since Chen and William both do not recite the aged thermal conductivity, one ordinary skill in the art would understand that the aged thermal conductivity is therefore 0 mW/mK which falls within Applicant’s range of 29.5 mW/mK or less.
Regarding claim 7, Chen discloses wherein the extruded polystyrene foam has a density of about 36 kg/m3 or less (20 kg/m3 [0013]) but does not explicitly disclose and an aged thermal conductivity of 30 mW/mK or less. However, However, the combination of Chen and Williams’ composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Additionally, since Chen and William both do not recite the aged thermal conductivity, one ordinary skill in the art would understand that the aged thermal conductivity is therefore 0 mW/mK which falls within Applicant’s range of 30 mW/mK or less.
Regarding claim 8, Chen discloses wherein the extruded polystyrene foam has a density of about 36 kg/m3 or less (20 kg/m3 [0013]) but does not explicitly disclose and an aged thermal conductivity of 29.5 mW/mK or less. However, However, the combination of Chen and Williams’ composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Additionally, since Chen and William both do not recite the aged thermal conductivity, one ordinary skill in the art would understand that the aged thermal conductivity is therefore 0 mW/mK which falls within Applicant’s range of 29.5 mW/mK or less.
Regarding claim 9, Chen discloses wherein the extruded polystyrene foam has a density of about 36 kg/m3 or less (20 kg/m3 [0013]) but does not explicitly disclose and an aged thermal conductivity of 29 mW/mK or less. However, However, the combination of Chen and Williams’ composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Additionally, since Chen and William both do not recite the aged thermal conductivity, one ordinary skill in the art would understand that the aged thermal conductivity is therefore 0 mW/mK which falls within Applicant’s range of 29 mW/mK or less.
Regarding claim 10, Chen discloses wherein the extruded polystyrene foam has a density of about 35 kg/m3 or less (20 kg/m3 [0013]) but does not explicitly disclose and an aged thermal conductivity of 30 mW/mK or less. However, However, the combination of Chen and Williams’ composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Additionally, since Chen and William both do not recite the aged thermal conductivity, one ordinary skill in the art would understand that the aged thermal conductivity is therefore 0 mW/mK which falls within Applicant’s range of 30 mW/mK or less.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Eoghan (IE20150390 A1) discloses the thermal conductivity of polymer core is 23 mW/mK (pg. 5 paragraph 1).
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754