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 .
Claim Objections
Claims 22, 23, and 25 are objected to because of the following informalities:
commas in place of spaces should be inserted in the numbers “100 000” and “25 000” in Claims 22 and 23; and
Claim 25 should be amended to recite “at least one Si-containing foam stabilizer is further present”.
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, 19, 22, 23, and 34 – 36 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 because:
Claim 18 sets forth the at least one acrylate and/or methacrylate copolymer comprises at least one comonomer. However, the comonomer presumably reacts to form said copolymer(s). Accordingly, Claim 18 will be interpreted as setting forth the at least one acrylate and/or methacrylate copolymer is prepared by polymerizing at least one comonomer of each of the instantly claimed formulas.
As Claim 19 depends on Claim 18, it incorporates the subject matter thereof and is consequently also rejected under this statute.
The use of parentheses in Claim 22 renders the claim indefinite because it is unclear whether the limitations enclosed in parentheses are required or optional. For the purposes of further examination, these limitations will be interpreted as being required.
As Claim 23 depends on Claim 22, it incorporates the subject matter thereof and is consequently also rejected under this statute.
There is a lack of antecedent basis for “the” residual monomer content set forth in Claim 34. The claims do not set forth a residual monomer content prior to this recitation. For the purposes of further examination, Claim 34 will be interpreted as setting forth said at least one acrylate and/or methacrylate copolymer has a residual monomer content in the instantly claimed range.
Claim 35 sets forth a process for producing phenolic foam yet sets forth no steps in said process. It is unclear, then, what process is intended to be encompassed by this claim. For the purposes of examination, Claim 35 will be interpreted as setting forth a process for producing phenolic foam comprising preparing a reaction mixture from the composition of Claim 17.
Claim 36 depends on itself. For the purposes of further examination, Claim 36 will be interpreted as depending on Claim 35.
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 17 – 27, 30, and 32 – 36 are rejected under 35 U.S.C. 103 as being unpatentable over CN103756292 to Yang et al. (hereinafter Yang) in view of CA 3 128 314 to Wagner et al. (hereinafter Wagner). For the purposes of examination, citations for Yang are taken from a machine translation of this document obtained from the European Patent Office website in August 2026.
Regarding Claims 17 – 23, 25, 26, and 34. Yang teaches a composition for producing a phenolic foam [0014] – [0021] comprising a phenolic resin [0017]; a foaming/blowing agent [0020]; a catalyst [0021]; and a foaming stabilizer [0016].
Yang does not expressly teach the foam stabilizer is at least one acrylate and/or methacrylate copolymer or that the blowing agent is a hydrocarbon having 3, 4, or 5 carbon atoms. However, Wagner teaches providing an acrylate and/or methacrylate copolymer as a foam stabilizer, in conjunction with a hydrocarbon having 3, 4, or 5 carbon atoms. The acrylate and/or methacrylate copolymer may be prepared by polymerizing at least one comonomer of a formula H2C=CR1-COOR2 and a formula of H2C=CR1-COOR3, wherein R1 is H or CH3; R2 is preferably methyl, ethyl, n-butyl, iso-butyl, t-butyl, 2-ethylhexyl, iso-decyl, cyclohexyl, benzyl, phenyl, isobornyl, or allyl; R3 is a polyether radical corresponding to instantly claimed formula (1) in which x is 3 to 500; R4 corresponds to one of the instantly claimed species or may be absent; R5 particularly preferably corresponds to hydrogen, methyl, ethyl, or styryl; and R6 is particularly preferably -H, methyl, or n-butyl (Page 3, Line 2 – Page 4, Line 18). The acrylate and/or methacrylate copolymer has a molecular weight of particularly preferably 1,000 to 20,000 (Page 4, Lines 19 – 23) and a residual monomer content of less than 1 weight percent (Page 6, Lines 1 – 2). The hydrocarbon having 3, 4, or 5 carbon atoms may preferably be cyclo-, iso-, or n-pentane (Page 6, Lines 13 – 15). Wagner further teaches the acrylate and/or methacrylate copolymer may be provided in conjunction with a foam stabilizer which is not acrylate and/or methacrylate copolymer and may or may not contain silicon (Page 11, Lines 25 – 39), wherein silicon-containing foam stabilizers are provided in an amount of preferably less than 10% by weight based on the total amount of foam stabilizers provided (Claim 6). Yang and Wagner are analogous art as they are from the same field of endeavor, namely polymeric 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 an acrylate and/or methacrylate copolymer as a foam stabilizer. The motivation would have been that Wagner teaches the use of this combination of blowing agent and foam stabilizer provides foams with good insulation properties, a high mechanical strength, and a high compressive strength (Column 3, Lines 11 – 17).
Regarding Claims 24 and 27. Yang teaches the composition of Claim 17 comprising 10 to 30 parts by weight of the phenolic resin [0017]; and 1 – 4 parts by weight of the foaming stabilizer [0016], corresponding to roughly 3 to 40 parts by weight of the foaming stabilizer per 100 parts by weight of the phenolic resin.
While this range is not identical to the instantly claimed range of 0.1 to 15 parts by weight of the foaming stabilizer per 100 parts by weight of the phenolic resin, 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 30. Yang teaches the composition of Claim 17 comprising ammonium polyphosphate as an acid source [0032], corresponding to an inorganic acid catalyst.
Regarding Claim 32 and 33. Yang teaches the composition of Claim 17 comprising 10 to 30 parts by weight of the phenolic resin [0017]; and 3 to 6 parts by weight of the foaming catalyst [0021], corresponding to roughly 10 to 60 parts by weight of the foaming catalyst per 100 parts by weight of the phenolic resin.
While this range is not identical to the instantly claimed ranges of 1 to 30 and 3 to 20 parts by weight of catalyst per 100 parts by weight of the phenolic resin, 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 35. Yang teaches a process for producing phenolic foam comprising preparing a reaction mixture from the composition of Claim 17
Regarding Claim 36. Yang teaches a phenolic foam prepared by the process of Claim 17.
Claims 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over CN103756292 to Yang et al. (hereinafter Yang) in view of CA 3 128 314 to Wagner et al. (hereinafter Wagner), as applied to Claim 17 above, and further in view of US 6,420,443 to Clark et al. (hereinafter Clark).
Regarding Claims 28 and 29. Yang teaches the composition of Claim 17 comprising 80 to 100 parts by weight polyol [0015] and 10 to 30 parts by weight of the phenolic resin [0017].
Yang does not expressly teach the composition further comprises castor oil. However, Clark teaches a polymeric foam in which alkoxylated castor oil is provided in an amount of preferably from 1.0 to 2.5 parts by weight per 100 parts by wight polyol (Column 6, Lines 38 – 56; Column 7, Lines 24 – 28). Yang and Clark are analogous art as they are from the same field of endeavor, namely polymeric 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 alkoxylated castor oil in the amount taught by Clark in the composition of Yang. Using the aforementioned amounts of polyol and phenolic resin taught by Yang, the alkoxylated castor oil would then be provided in amount of roughly 3 to 31 parts by weigtht per 100 parts by weight of the total phenolic resin in Yang. The motivation would have been that Clark teaches alkoxylated castor oil in this amount greatly enhances the stability of the foam formulations in which it is included (Column 3, Lines 11 – 12).
Claims 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over CN103756292 to Yang et al. (hereinafter Yang) in view of CA 3 128 314 to Wagner et al. (hereinafter Wagner), as applied to Claim 17 above, and further in view of US 5,118,722 to Wollmann et al. (hereinafter Wollmann).
Regarding Claims 30 and 31. Yang teaches the composition of Claim 17 wherein dibutyltin dilaurate is provided as a catalyst rather than one of the species set forth in instant Claim 31. However, Wollmann teaches a polymeric foam in which dibutyltin dilaurate and toluene sulfonic acid are both described as suitable catalysts (Column 2, Lines 62 – 69). Yang and Wollmann are analogous art as they are from the same field of endeavor, namely polymeric 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 substitute toluene sulfonic acid for dibutyltin dilaurate in the composition of Yang. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Wollmann teaches toluene sulfonic acid and dibutyltin dilaurate as known catalysts for polyurethane foam compositions (Column 2, Lines 62 – 69), thus providing obviousness of substituting one for the other in such compositions.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2025/0361373 also pertains to foam stabilizers for phenolic foams; and
US 4,481,307 teaches the concept of using the same cell stabilizers in both phenolic and urethane 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
Prosecution Insights