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 .
Examination Note
Examination was done on the amended set of claims submitted to the office on March 22, 2024 instead of the most recent set of claims from October 22, 2024 as these are a duplicate of the original unamended claims that were sent as part of a substitute specification.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 60-63, 67, and 70-71 objected to because of the following informalities:
Claim 60 recites “mW/m.k”. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. Further, the symbol used to represent Kelvin should be a capital “K”. For the purpose of further examination, it is taken to read as “mW/mK
Claims 61 and 67 recite “according to according to” they should read “according to”.
Claims 62 and 70-71 recites “W/m.K”. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For purpose of further examination, it is taken to read as “W/mK”.
Claim 62 recites “as measured according to as determined in accordance with” it should read “as measured according to”.
Claim 63 recites “kg CO2 eq./kg”. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For purpose of further examination, it is taken to read as “kg CO2 eq/kg”. Claim 63 further recites “equal or less than” it should read “equal to or less than”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 64 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 64 recites a limitation of “the components which form the foam body have renewable primary energy resources equal or less than 0.7 MJ/kg as determined in accordance with EN 16783:2017” while being dependent on claim 49 which recites the limitation “A foam product comprising an expanded foam body having cells defined therein and blowing agent held within the cells, wherein at least 5% by weight of the foam body is formed from at least one component from a renewable source”. According to Table 60 of the original specification, increased bio-carbon content correlates with increased renewable primary energy resources used as raw material. The specification fails to describe how one of ordinary skill in the art would be able to make a foam product that is at least 5% by weight of a component from a renewable source could have renewable primary energy resources equal to or less than 0.7 MJ/kg. Furthermore, the original specification does not provide examples or list of materials which are “renewable primary energy resources” and as such a person of ordinary skill in the art would not be able to understand the metes and bounds of what is and is not a material that capable of forming the instantly claimed product.
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 50-51, 60-61, 64 and 69 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 50 recites the term “comprises cardanol, rosin, or a polyol derived from: polyethylene terephthalate; polyurethane; and/or polyisocyanurate; or any combination thereof”. The limitation is indefinite as it is unclear if the term “derived from” applies to the cardanol, rosin and polyol or only the polyol. Further it is unclear if the term “or any combination thereof as plasticiser” is referencing the grouping of “cardanol, rosin, or a polyol” or the grouping of “polyethylene terephthalate; polyurethane; and/or polyisocyanurate”. The use of “and/or” makes it unclear if polyisocyanurate is a necessary limitation or an alternative limitation. For the purpose of further examination, the claim will be interpreted as “comprising a cardanol, a rosin, a polyol, or any combination thereof, wherein the polyol is derived from: polyethylene terephthalate, polyurethane, polyisocyanurate, or any combination thereof”.
Claim 51 recites the term “comprises at least one of phenolated lignin; sulphonated lignin; pyrolytic lignin; technical lignin originating from paper and / or pulp processes; soda lignin; organosolv lignin; and depolymerized lignin; Kraft lignin.” The limitation is indefinite as the use of the terms “at least one of” and “and” makes it is unclear whether the members of the group are alternatives of each other. Further the placement of the term “Kraft lignin” makes it unclear if part of the grouping. For purpose of further examination, the group will be considered alternates including kraft lignin.
Claim 53 recites the term “formed from a composition comprising methanol”. This limitation is indefinite as it is unclear if the term means that methanol is present in the composition or that methanol was used in the production on the composition.
Claim 53 recites “GWP-total of below -0.5”. The limitation is indefinite as the lack of units makes it unclear how the GWP-total is measured. For the purpose of further examination, the units for GWP-total have been interpreted as “kg CO2 eq/kg”.
Claim 60 recites the term “(based on the total weight of blowing agent)”. This limitation is indefinite as the uses of parenthesis makes it unclear if the language is necessary or optional to the claim.
Claim 61 recites the term “the weight of the at least one component from the renewable source comprises carbon”. It is unclear how the weight of a component can contain carbon.
Claim 64 recites the term “renewable primary energy resources”. The term is indefinite because the specification does not clearly define the term. There is no distinction made to whether this measurement is renewable primary energy ex. Raw materials (PERE), renewable primary energy used as raw materials (PERM), renewable primary energy total (PERT) or another parameter entirely.
Claim 69 recites the term “EPD rating”. The term is indefinite because the specification does not clearly define the term.
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.
(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.
Claims 49, 51-52, 56-57, 59, 63-64, 66, and 68-69 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al (WO 2018205020 A1).
Regarding Claims 49, 51-52, 56, 59, and 66: Xu teaches a polyurethane/phenolic foam (abstract) with a closed-cell structure (para 75) comprising bio-content in an amount of at least 50% (abstract) and a blowing agent (para 11). Xu further teaches a bio-based phenol formaldehyde resole (para60) comprising a sulfur containing kraft lignin (para 5) with a molecular weight of at least 10,000 g/mole (para 19) that is depolymerized to a molecular weight of 2000 g/mol (para 22) as a bio-phenol substitute present in an amount of at least 50% of the content of the phenol (para 60).
Regarding Claims 57: Xu teaches the all of the limitations of claim 56, as seen above. The instant claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Xu teaches a phenol, and there is no evidence that the phenol being produced by a bio-benzene made from tall oil would materially affect the structure of the final product.
Regarding Claim 63: Xu teaches all the limitations of claim 49, as seen above. The reference does not expressly teach a total Global Warming Potential of the foam of equal to or less than 1.7 kg CO2 eq/kg. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, by replacing 25% of the fossil phenol by bio-phenol, the total GWP of a phenolic insulation foam can be reduced below 1.7 kg CO.sub.2 eq/kg foam. At 50% replacement a GWP of approx. 1.5 kg CO.sub.2 eq/kg foam. A 100% replacement can lead to a total GWP of the foam below 1.0 kg CO.sub.2 eq/kg foam (para 199). Therefore, the claimed effects and physical properties, i.e. a total Global Warming Potential of the foam of equal to or less than 1.7 kg CO2 eq/kg, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 21112.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Regarding Claim 64: Xu teaches all the limitations of claim 49, as seen above. The reference does not expressly teach the components that form the foam body having renewable primary energy resources equal to or less than 0.7 MJ/kg. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the amount of renewable raw materials compared to non-renewable raw materials used in the foam affects the renewable primary energy resources (para 54). Further the specification discloses that the inclusion of bio-phenol affects the renewable primary energy resources (para 271). Therefore, the claimed effects and physical properties, i.e. renewable primary energy resources equal or less than 0.7 MJ/kg, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 21112.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Regarding Claims 68-69: Xu teaches all the limitations of claim 49, as seen above. The reference does not expressly teach a total Global Warming Potential for the Cradle-to-gate stages below 1.0 kg CO2 eq/kg or an EPD rating of 1.0 kg CO2 eq/kg for the life cycles A-D. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, Insulation foam with over 7% non-fossil content measured in accordance with EN16640:2017. This meets the thermal and mechanical performance of nearly full fossil phenolic insulation foams, even more important, a GWP for Cradle-to-Gate (A1-A3) below 2 kg CO.sub.2 eq/kg, 1 kg CO.sub.2 eq/kg, 0.5 kg CO.sub.2 eq/kg and even 0.3 kg CO.sub.2 eq/kg can be achieved. The bio-based content (possibly via bio-attribution), can be increased to up to respectively 30 to 70% (para 246-248). Therefore, the claimed effects and physical properties, i.e. a total Global Warming Potential for the Cradle-to-gate stages below 1.0 kg CO2 eq/kg and an EPD rating of 1.0 kg CO2 eq/kg for the life cycles A-D, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 21112.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claims 60 and 71 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cobb et al (US 20140093720 A1).
Regarding Claim 60: Cobb teaches a foam comprising a plurality of cells, a blowing agent disposed in at least a portion of the plurality of cells (abstract) and a bio-derived tannin (para 25) present in an amount of about less than 43% by weight (1:3:3 phenol: tannin: first monomer weight ratio) of the phenolic resole mixed-resin (para 14). Cobb further teaches at least one of the one or more blowing agents comprising of a blowing agent that has a gas phase thermal conductivity of less than or equal to 0.012W/mK or 12mW/mK at 25°C (para 29). This reads on the claimed limitation of the blowing agent comprising at least 70% of the blowing agent based on the total weight of blowing agent as the blowing agent with a gas phase thermal conductivity of less than or equal to 0.012W/mK can be the sole blowing agent present in the foam.
Regarding Claim 71: Cobb teaches all of the limitations of Claim 49, as seen above. The reference does not expressly teach an average thermal conductivity of the foam product over a 50-year life span of the product of 0.026 W/mK or less. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, when comp-A1 is compared to comp-B1, the thermal conductivity (lambda) values are below 0.021 W/mK after 4 weeks ageing at 110° C. (which is comparable to 50 weeks ageing at 70° C.) which simulates the average performance of 50 years in application for the foam product. This effect can be attributed to a large extent to the blowing agent. Based on these findings, at least 70% of the blowing agent should consist of a component with a thermal conductivity in the gas phase at 25° C. of 12 mW/mK or less. Preferable 11.8 mW/mK or less (para 295). Therefore, the claimed effects and physical properties, i.e. a total Global Warming Potential for the Cradle-to-gate stages below 1.0 kg CO2 eq/kg and an EPD rating of 1.0 kg CO2 eq/kg for the life cycles A-D, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 21112.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
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.
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.
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (WO 2018205020 A1) in view of Yue (CN 109438744 A, see machine translation for citations).
Regarding Claim 50: Xu teaches all the limitations of claim 49, as seen above. However, Xu is silent on the foam comprising a cardanol or rosin as a plasticizer.
Yue teaches a phenolic foam comprising cashew phenol/cardanol (para 8). Xu and Yue are analogous art as they are directed to the same field of endeavor, namely phenolic foams made from bio-phenol. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foam of Xu with the cardanol of Yue. Yue disclose that the cardanol can effectively improve the toughness of phenolic foam plastics, improve the toughness of the cell walls, reduce the density of the foam, slow down the opening of the foam, and improve the closed-cell rate of the foam (para 8). One of ordinary skill in the art would have been motivated to modify the foam with a cardanol to produce a more environmentally friendly foam with improved physical properties.
Claim 53 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (WO 2018205020 A1) in view of Kajaste et al (Methanol-Managing greenhouse gas emissions in the production chain by optimizing the resource base[J]. AIMS Energy, 2018, 6(6): 1074-1102.)
Regarding Claim 53: Xu teaches all the limitations of claim 49, as seen above. Xu further teaches the foam comprising of formalin (para 42) which contains methanol. However, Xu is silent on the methanol having a GWP-total of below -0.5.
Kajaste teaches a methanol with a GWP of -0.9143 kg CO2eq (Page 1092, Table 2F). Kajaste and Xu are analogous art as they are both directs towards solving the same problem namely reducing the reliance on fossil sources by using alternative biomass sources. It would have been obvious for one of ordinary skill in the art before the effective filing date of the instant application to modify the foam of Xu with the methanol of Kajaste. Kajaste discloses that cradle-to-gate environmental impact analysis covers greenhouse gas emissions shown as GWP100 impact and energy use (page 1085, lines 1-30. A lower GWP for methanol means that it contributes less to global warming. One of ordinary skill in the art would be motivated to substitute the methanol in the foam with methanol having a GWP-total of below -0.5 kg CO2eq to create a more environmentally friendly product that contributes less to global warming.
Claims 54 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (WO 2018205020 A1) in view of Lawson (US 20110028631 A1).
Regarding Claims 54-55: Xu teaches all the limitations of claim 49, as seen above and further teaches bio-based phenol formaldehyde resole (para 60). However, Xu is silent of the formaldehyde comprising of at least 10% by weight of a bio-formaldehyde.
Lawson teaches a renewable formaldehyde obtained from a renewable methanol sourced from the synthesis gas of biomass wherein the formaldehyde has a mean biobased content of 20 percent or more (para 64). Lawson and Xu are analogous art as they are directed towards the same field of endeavor, namely articles made from renewable polymer compositions. It would have been obvious for one of ordinary skill before the effective filling date of the instant application to substitute the formaldehyde of Xu with the renewable formaldehyde of Lawson. Lawson discloses that consumers find it desirable to use articles that have been made of environmentally sustainable, i.e., "green" or renewable, materials, and especially choose to buy such articles when the constituent polymer derives from a verifiably green source (para 4). One of ordinary skill would have been motivated to substitute the fossil source formaldehyde with a biomass source formaldehyde to produce a product more desirable for consumers.
Claims 61 and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Cobb et al (US 20140093720 A1).
Regarding Claims 61 and 67: Cobb teaches all the limitations of claim 60, as seen above. However, Cobb is silent on the foam body comprising a C14 carbon content of greater than 3%. The reference teaches a composition comprising carbon-12 that is structurally similar and has similar utilities to the claimed composition comprising an amount of carbon-14. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to produce the foam product with carbon-14 in an amount greater than 3%. One of ordinary skill in the art would recognize that the chemistry is substantially similar for all isotopes of carbon. They would be motivated to make the foam product with various isotopes and percentages thereof with the expectation that compounds similar in structure will have similar properties. See MPEP 2144.09 (I).
Claims 62 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (WO 2018205020 A1) in view of Vo (US 20180215890 A1).
Regarding Claims 62 and 70: Xu teaches all of the limitation of claim 49, as seen above. However, Xu is silent on an average thermal conductivity over a 25 year life span of 0.025 W/mK or less.
Vo teaches an extruded polymer foam comprising a fluorinated blowing agent having an average 25-year thermal conductivity of less than 0.025 W/mK (para 45). Xu and Vo are analogous art as they art directed towards the same field of endeavor namely polymer foams used from thermal insulation. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foam of Xu with the 25-year thermal conductivity of Vo. Vo discloses that with an ever increasing drive for energy efficiency, there is an ever increasing drive to increase the thermal insulating properties of insulating products (para 2). One of ordinary skill in the art would be motivated to modify the foam of Xu to have a 25-year thermal conductivity of less than 0.025 W/mK as it would produce a product that has increased energy efficiency for a long period of time.
Applicant is advised that should claim 62 be found allowable, claim 70 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 65 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (WO 2018205020 A1) in view of Bertucelli (US 20200298531).
Regarding Claim 65: Xu teaches all of the limitations of claim 49, as seen above. However, Xu is silent on a flame height of less than 100mm in a single flame source test.
Bertucelli teaches a polyurethane foam with a flame height of 8-9 cm/ 80-90mm in a single flame source test (Table 4). Xu and Bertucelli are analogous art as they are directed towards the same field of endeavor namely polymer foams that can have fire-resistant properties. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foam of Xu with the single flame source test flame height of Bertucelli. A polymer foam product having a low single flame height would indicate that the foam has excellent fire resistant properties. Xu discloses that Rigid closed cell phenolic foam shows low thermal conductivity and exceptional flame-retardant properties, including low flammability with no dripping during combustion, low smoke and toxicity. PF foams can be utilized as fire-resistant, thermal insulation materials in applications such as civil construction, military aircraft and marine vessels (para 11). One of ordinary skill in the art would be motivated to modify the foam to have a single flame source test flame height of less than 100 mm so that the product could be used in applications that need fire-resistant materials.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fontana et al. (WO 03018657) teaches a tall oil pitch modified phenol-formaldehyde resin.
Kunihiro et al. (KR 20110041522 A) teaches a polyurethane foam with a Carbon 14 percentage of greater than 10%.
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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/T.J.B./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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