DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Claim 5 is objected to because of the following. Claim 5 recites a Markush-type listing of crosslinkers. When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper (see MPEP 2173.05(h)). Appropriate correction is required.
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.
3. Claims 1-6, 8-11, 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Figovsky et al (US 2015/0024138).
4. Figovsky et al discloses a foam composition comprising:
a) at least an amino-reactive component;
b) an amino-containing component;
c) a blowing agent, and
d) additives ([0022]),
wherein the components a), c) and) are contained in part A) of the composition and the amino-containing component b) is contained in part B) of the composition ([0022]-[0023]); and wherein
the component a) comprises an epoxy-functional compound and/or an acrylic functional compound ([0023]), and wherein the acrylic functional compound includes an acrylated epoxidized soybean oil (AESO) ([0057], as to instant claims 1-3);
the component b) comprises diamines including polyoxyethylene diamine ([0059]-[0062], as to instant claims 5-6);
the component c) includes hydrofluorocarbons and alkylhydrogensiloxane ([0066]), and specifically polymethylhydrogensiloxane (as to instant claims 1,8) and pentane ([0066], Table 1, as to instant claim 9);
the component d) comprises surfactants and other additives ([0067]-[0068], as to instant claim 11).
5. Based on the teachings of Figovsky et al, it would have been obvious to a one of ordinary skill in the art to choose and use i) the acrylated epoxidized soybean oil (AESO) as the component A), especially since said acrylated epoxidized soybean oil comprises both epoxy groups and acrylate groups as required by Figovsky et al; ii) polyoxyethylene diamine as the component B) and iii) the combination of polymethylhydrogensiloxane and pentane as the chemical and physical blowing agents as the component c), to form the foam of Figovsky et al as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
6. As to instant claim 4, the part A) and the part B) are mixed at a ratio of 2:1 to 6:1 ([0025]).
7. As to instant claim 10, 17, the blowing agents are added in amount of 1.3-14%vol ([0076]-[0082]).
8. As to instant claim 14, given the component a) comprises an acrylated epoxidized soybean oil (AESO), which is the same acrylate-functional plant-sourced organic resin as claimed and disclosed in instant invention, therefore, said an acrylated epoxidized soybean oil (AESO) will intrinsically and necessarily have a renewable carbon content of greater than 60%wt as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
9. As to instant claims 15-16, 18-20, a method for preparing the foam comprises:
1) combining the component a) with the blowing agent and additives of components c) and d) to form part A) ([0069], as to instant claims 15-16);
2) mixing the part A) with the component b), i.e. part B), in a chamber for a residence time of 0.5-15 min ([0070], [0075], as to instant claim 18),
3) curing and foaming the composition by applying the composition onto a vertical substrate ([0075]),
wherein the foam is formed at an outlet temperature of 33-49⁰C ([0079]-[0080], [0083], as to instant claim 20) and the foam is produced in no more than 60 seconds, or 30-40 seconds, to dry touch ([0073]), and further for 20-25 minutes for transportation ([0084], Table 2, as to instant claim 19).
10. Further, based on the teachings of Figovsky et al that temperature and time for curing/foaming should be controlled (see [0037], [0039]), and that the level of expansion depends on the amount and type of used blowing agents, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the amount and type of used blowing agents and the time and temperature of curing/foaming, so to produce the foam having a desired level of expansion, and thereby desired level of density, and further a desired level of crosslinking/curing, depending on the specific end-use of the foam, thereby arriving at the present invention. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
11. Claims 1-6, 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Figovsky et al (US 2015/0024138) in view of Mahon et al (US 2014/0171530) and Wool (US 2012/0295993).
12. The discussion with respect to Figovsky et al (US 2015/0024138) set forth in paragraphs 3-10 above, is incorporated here by reference.
13. Figovsky et al does not explicitly teach the use of the acrylated epoxidized soybean oil (AESO) as the resin for making the foams, and does not teach the composition further comprising a flame retardant and a solvent.
14. However,
1) Mahon et al discloses foams made of i) one or more sustainably produced reactants, specifically citing acrylated epoxidized triglyceride and acrylated epoxidized soybean oil as the polymerizable resins ([0014], [0002], [0016], [0017]); ii) amine-based curing accelerators ([0039], iii) surfactants ([0041]) and further iv) co-reactants acting as a solvent ([0023], as to instant claim 13) and flame retardants as additives ([0043], as to instant claim 12), and wherein the foams are produced by using carbon dioxide as a physical blowing agent ([0044]).
2) Wool disclosed a bio-based foam from natural oils including plant oils (Abstract, Title) comprising plant oil triglycerides in combination with acrylated epoxidized soybean oil ([0058], [0060], [0063], [0064]), and a surfactant, wherein Wool specifies that said natural bio-based sources components have a very high bio-based content and thus a very low carbon footprint as compared to their petroleum-based counterpart, and are also non-toxic and biodegradable ([0018]).
Wool further presents the structure of the acrylated epoxidized soybean oil (AESO) as having both a desired amount of epoxy groups and a desired amount of acrylate groups ([0060]), i.e. comprises epoxy groups in the structure as required by Figovsky et al:
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15. Since both Wool and Mahon et al teach the foams made from bio-based plant sources, which have a very low carbon footprint and are also non-toxic and biodegradable, wherein Mahon et al further teaches the compositions used for making said foams comprising flame retardant, solvents and carbon dioxide as the blowing agent, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Wool, Mahon et al and Figovsky et al, and to prepare, or obvious to try to prepare the foam of Figovsky et al using the bio-based plant sources and specifically acrylated epoxidized soybean oil, since the acrylated epoxidized soybean oil comprises epoxy groups as required by Figovsky et al and at the same time is non-toxic and biodegradable, and further to include, or obvious to try to include, at least in a minor amount a solvent and a flame retardant as additives of the component d) of Figovsky et al and carbon dioxide as an additional blowing agent in the composition of Figovsky et al, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Claims 1-11, 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Figovsky et al (US 2015/0024138) in view of Owusu-Adom et al (US 2014/0350196).
17. The discussion with respect to Figovsky et al (US 2015/0024138) set forth in paragraphs 3-10 above, is incorporated here by reference.
18. Figovsky et al does not explicitly teach the amine-containing curing agent component b) as being a plant-sourced.
19. However, Owusu-Adom et al teaches the use of plant-based amines such as dehydroabietylamine or difurylamines, as the curing agents along with bio-based epoxy compounds to provide renewable curable compositions ([0057]).
Since the amines such as dehydroabietylamine or difurylamines are plant-based, therefore, those amines will intrinsically and necessarily have a renewable carbon content of greater than 0%wt as well (as to instant claim 14). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. Since not only diamines like polyoxyalkylene diamines, but further plant-based amines such as dehydroabietylamine or difurylamines, can be used as the curing agents, as shown by Owusu-Adom et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Owusu-Adom et al and Figovsky et al, and to use, or obvious to try to use, at least partially the plant-based amino-curing agents as the component b) in the composition of Figovsky et al, so to produce the foam of Figovsky et al as renewable and at least partially biodegradable as well, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
21. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Figovsky et al (US 2015/0024138) in view of Mahon et al (US 2014/0171530) and Wool (US 2012/0295993), in further view of Owusu-Adom et al (US 2014/0350196).
22. The discussion with respect to Figovsky et al (US 2015/0024138) in view of Mahon et al (US 2014/0171530) and Wool (US 2012/0295993), set forth in paragraphs 11-15 above, is incorporated here by reference.
23. Figovsky et al does not explicitly teach the amine-containing curing agent component b) as being a plant-sourced.
24. However, Owusu-Adom et al teach the use of plant-based amines such as dehydroabietylamine or difurylamines, as the curing agents along with bio-based epoxy compounds to provide renewable curable compositions ([0057]).
Since the amines such as dehydroabietylamine or difurylamines are plant-based, therefore, those amines will intrinsically and necessarily have a renewable carbon content of greater than 0%wt as well (as to instant claim 14). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
25. Since not only diamines such as polyoxyalkylene diamines, but further plant-based amines such as dehydroabietylamine or difurylamines, can be used as the curing agents, as shown by Owusu-Adom et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Owusu-Adom et al and Figovsky et al in view of Mahon et al and Wool, and to use, or obvious to try to use the plant-based amino-curing agents as the component b) in the composition of Figovsky et al in view of Mahon et al and Wool, so to produce the foam of Figovsky in view of Mahon et al and Wool et al as renewable and at least partially biodegradable as well, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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