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 .
Notes on Presentation of Amendments
Future submissions of claim amendments should not include the text of cancelled claims.
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.
Claim 60 is 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.
Claims are confusing as to intent because the basis for the recited ranges of weight percent values can not be definitively determined. In that the claims do not establish a standard upon which the recited ranges of weight percentage values are based, the ranges of amounts and relevant proportions can not be definitively determined.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 22-24, 32-34, 59 and 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/132242 in view of WO 2016/176384.
WO 2009/132242 discloses thermoplastic polystyrene foams prepared using 1,2-dichloro-1,2-difluoroethene {i.e. 1,2-dichloro-1,2-difluoroethylene} as blowing agent, along with co-blowing agents as needed {see pages 4-7, page 10 line 21 et seq. and the claims}.
WO 2009/132242 differs from the instant claims in that the elected HFO-1336mzz co-blowing agent is not particularly disclosed as a co-blowing agent of their disclosure. However, WO 2016/176384 discloses HFO-1336mzz, along with other co-blowing agents in overlap with those provided for by WO 2009/132242, to be an effective (co-) blowing agent for use in the making of thermoplastic polystyrene foams {see paras [0002], [0026]-[0029], [0034], Examples and claims}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any of the functionally equivalent (co-) blowing agents of WO 2016/176384, including its disclosed HFO-1336mzz (co-) blowing agent, in the blowing agent blends and thermoplastic foam preparations of WO 2009/132242 for the purpose of forming acceptably developed foam products in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, it has long been held that it is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances. In re Ruff 118 USPQ 343; In re Jezel 158 USPQ 99; the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious. In re Font, 213 USPQ 532.
Regarding claims 24, 32 and 34, though WO 2009/132242 does not specify densities and pore sizes for preparations of their disclosure, WO 2016/176384 does disclose formation of products having densities and pore size values that fall in overlap and/or close approach with the ranges of values defined by these claims of applicants {see Tables 1 & 2 of }. Accordingly, it would have been obvious for one having ordinary skill in the art to have formed products provided for through the preparational operations provided for through the combination of WO 2009/132242 and WO 2016/176384 that have any density and pore sizes provided through their combination, including any range of values provided for through WO 2016/176384 and any values immediately beyond for the purpose of providing acceptably developed insulative, foam products in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Hereto, it applies that it has long been held that where the general conditions of the claims are disclosed in the prior art, discovering the optimal or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; In re Reese 129 USPQ 402 . Further, a prima facie case of obviousness has been held to exist where the proportions of a reference are close enough to those of the claims to lead to an expectation of the same properties. Titanium Metals v Banner 227 USPQ 773. (see also MPEP 2144.05 I) Similarly, it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272,205 USPQ 215 (CCPA 1980).
Regarding new claim 60, to the degree that its meaning as a limitation can be ascertained {see rejection above under 35USC112}, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized any of the co-blowing agents provided for by WO 2016/176384, including the elected HFO-1336mzz of the instant concern, in any amount in its combination with WO 2009/132242 for the purpose of providing its recognized foam forming effects in order to arrive at the products of applicants’ claim with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejection as set forth above is maintained.
Rejection based on the combined teachings is maintained to be proper for the reasons laid out above. It is not seen or agreed that WO 2009/132242 is restricted to co-blowing agent selections as enumerated by applicants’ assertions on reply. Further, In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Rejection is based on the combination of the above cited references. WO 2009/132242’s fully considered teachings and fair suggestions allow for utilization of co-blowing agents, and WO 2016/176384 is sufficient in its provisioning for the remedy of WO 2009/132242’s deficiency regarding specific co-blowing agent selection. The sufficiency of the combination has not been refuted in fact.
Applicants’ arguments and observations concerning aspects of and particulars of the holdings of the cases are insufficient in negating position of obviousness based on the substitution of functional equivalents as properly established in the rejection above in that the observations and arguments are not directed towards identifying patentable distinction for the elected invention over the fully considered teachings and fair suggestions offered through the combination of the above cited prior art in fact.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. 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.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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