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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 18-24 are objected to because of the following informalities:
Claim 18 recites “formula (3) to contain different R6 radicals”. For the purpose of further examination this is interpreted to mean “formula (3) may contain different R6 radicals”.
Claims 19-24 are objected to due to their dependency on claim 18.
Appropriate correction is required.
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 18-25, 27, and 34 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 18 recites the limitation “and an amidoamine quat of formula (5) and cetylpyridinium chloride”. This limitation is indefinite as it is unclear if the presence of cetylpyridinium chloride is required or optional. The cetylpyridinium chloride could be interpreted as being part one of the alternatives of the Markush group, required when the amidoamine quat of formula (5) is selected, or as being required along with one of the surfactants of the Markush group. For the purpose of further examination cetylpyridinium chloride is interpreted to be a separate item of the Markush group.
Claim 18 further recites the limitation “and/or”. This limitation is indefinite as it is unclear how formulas (3), (4), and (5) are defined if their definitions are optional. For the purpose of further examinations, it is taken to mean that the definitions of formulas (3-5) are required to meet the claim.
Claim 25 recited the limitations “expandable graphite and antimony trioxide” and “and metal powders”. This limitation is indefinite as multiple uses of the term “and” makes it unclear which items are part of the Markush group. For the purpose of further examination “metal powders” is considered to be the end of the Markush group.
Claim 25 is further indefinite as the use of “(a), (b), and (c)” makes it unclear if one member of each subgroup is required or only one item from a, b, or c is required to meet the claim. For the purpose of further examination, it is taken to mean that the presence of any item from a, b, or c meets the limitations of the claim.
Claim 27 recites the limitation “the solid flame retardant”. This limitation is indefinite as it is unclear whether “the solid flame retardant” is referring to the “solid flame retardants” of claim 25 or the general grouping of (a) which already includes red phosphorus. For the purpose of further examination “the solid flame retardant” is considered to be referring to “solid flame retardants”.
Claim 34 recites the limitation “cyclo-, iso- and/or n-pentane; and hydrofluoroolefins and/or hydrohaloolefins”. This limitation is indefinite as multiple uses of the term “and” makes is unclear which items are part of the Markush group. For the purpose of further examination, it is taken to mean “the group consisting of cyclopentane, isopentane, n-pentane, hydrofluoroolefins, hydrohaloolefins, and mixtures thereof”.
Claims 19-24 are rejected due to their dependency on claim 18.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 17, 25-27, 33-36 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Park et al (WO 2019054795 A1, see machine translation for citations).
Regarding Claim 17: Park teaches a phenol foam composition comprising of a phenol resin (para 21), a quaternary ammonium salt type surfactant (para 27), an inorganic material/solid (para 41), and a blowing agent (para 52). Park further teaches the composition comprising of a curing agent comprising inorganic or organic acids (para 51), which the instant specification teaches reads on the claimed at least one catalyst (US 20240327587 A1, para 91).
Regarding Claims 25 and 26: Park teaches the solid comprising of calcium carbonate (para 41).
Regarding Claims 27: Park teaches the solid comprising of calcium carbonate therefor the presence of the solid flame retardants is optional.
Regarding Claims 33 to 34: Park teaches the blowing agent comprising of isopentane or cyclopentane (para 52).
Regarding Claim 35: Park teaches a method for manufacturing a phenolic foam (para 15).
Regarding Claim 36: Park teaches a phenolic foam (para 1).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019054795 A1) in view of Dahms (US 4216295 A).
Regarding Claims 18-19 and 23-24: Park teaches all of the limitations of claim 17, as seen above. However, Park is silent on a surfactant selected from the group consisting of formulas (1)-(5) and cetylpyridinium chloride.
Dahms teaches a foamable phenolic resole resin composition (abstract) comprising of a nonionic surfactant comprising of cetyl dimethyl benzyl ammonium chloride (col 6, lines 56-59).
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Cetyl dimethyl benzyl ammonium chloride reads on the alkyl quat of formula (3) wherein R5 is a linear alkyl radical with a chain length of 16, R6 is separately a benzyl radical and a methyl radical, d=1 and c=3. Dahms and Park are analogous art as they are directed towards the same field of endeavor, namely phenolic foams with quaternary ammonium compound surfactants. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the quaternary ammonium salt of Park with the cetyl dimethyl benzyl ammonium chloride of Dahms. Dahms discloses that the use of nonionic surfactants improves foam cell uniformity and size ( col 6, lines 27-28). One of ordinary skill in the art would be motivated to make the substitution to obtain a foam product with smaller and more uniform cells.
Regarding Claims 20-22: Modified Park teaches all of the limitations of claim 18, as seen above. Dahms teaches a quaternary ammonium compound reading on formula (3) of the claims therefore the presence of a compound of formulas (1), (2), and (5) is optional.
Claims 28, 29, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019054795 A1) in view of Mukaiyama (US 20190248976 A1).
Regarding Claims 28 and 29: Park teaches all of the limitations of claim 17, as seen above. However, Park is silent on the solid comprising of at least one plastic powder and the solid comprising of a powder with an average diameter less than 500 µm.
Mukaiyama teaches a phenolic resin foam (abstract) that comprising of organic fine powder comprising of polypropylene fine powder (para 127) with an average particle diameter of preferably 5 to 500 µm (para 128). Mukaiyama is analogous art as it is directed toward the same field of endeavor namely phenolic resin foams. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add the polypropylene fine powder of Mukaiyama to the phenol foam composition of Parks. Mukaiyama discloses that if the phenolic resin foam contains an organic fine powder having no reactivity with the acid curing catalyst, the initial thermal insulation performance tends to improve (para 127). One of ordinary skill in the art would be motivated to make the addition of the polypropylene fine powder to obtain a foam product with improved thermal insulation.
Regarding Claim 32: Park teaches all of the limitations of claim 17, as seen above. However, Park is silent on the phenol foam composition comprising of an alkoxylated castor oil or a polyether siloxane present in an amount of 0.5 to 10 parts by weight based on 100 parts by weight of the phenolic resin.
Mukaiyama teaches nonionic surfactants comprising of condensates of alkylene oxides and castor oil/alkoxylated castor oil, ethylene oxide graft polydimethylsiloxane or a mixture of the two (para 143). Mukaiyama further teaches the surfactant present in an amount of 0.3 to 10 parts by mass based on 100 parts by mass of the phenolic resin (para 143). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add the non-ionic surfactants of Mukaiyama to the phenol foam composition of Park. Park discloses that nonionic surfactants have excellent antifoaming performance (para 30) and suppress the increase in the size of foam cells during foaming and stabilize the formation of the foam cell (para 31). One of ordinary skill in the art would be motivated to add the nonionic surfactants of Mukaiyama to produce a phenolic foam with smaller cells and excellent physical properties.
Claims 30 and 31 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019054795 A1).
Regarding Claims 30 and 31: Park teaches the foam composition comprising of the phenol resin in an amount of 50 to 70 wt% of the total foam composition (para 24), the solid in an amount of 1 to 20 wt% of the total foam composition (para 43), and the surfactant in an amount of 1 to 10 wt% of the total foam composition (para 31). The calculated amount of the solid is about 2 to 40 parts by weight based on 100 parts by weight of phenol resins, overlapping the claimed range of 1 to 100 parts by weight. The calculated amount of surfactant is about 2 to 20 parts by weight based on 100 parts by weight of phenol resins, overlapping the claimed range of 0.1 to 20 parts by weight.
In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists ( MPEP § 2144.05 I). Before the effective filing date of the claimed invention one of ordinary skill in the art would have found it obvious to have the overlapping amounts of Park and would have been motivated to do so since Park teaches these are acceptable amounts to achieve the disclosed invention.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.B./Examiner, Art Unit 1767
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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