`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`14/521,591
`
`10/23/2014
`
`F. Leo Hickey
`
`15102US04
`
`8491
`
`23446
`7590
`10/27/2016
`MCANDREWS HELD & MALLOY. LTD
`500 WEST MADISON STREET
`SUITE 3400
`CHICAGO,IL 60661
`
`DIAMOND, ALAN D
`
`3991
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/27/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`mbhmpto @ mcandrews-ip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/521,591 HICKEY, F. LEO
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`ALAN DIAMOND No 3991
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`1) Responsive to communication(s) filed on 08/10/2016.
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon___
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5) Claim(s) 1-10 and 13-20 is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-10 and 13-20 is/are rejected.
`8)L] Claim(s)___ is/are objectedto.
`
`9)L] Claim(s)
`are subjectto restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`or send an inquiry to PPHfeecback@uspte.dov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`
`11) The drawing(s) filed on
`is/are: a)[_] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)L] Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)LJ All
`b)[] Some** c)L] None ofthe:
`1.) Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
`
`
`
`Attachment(s)
`3) Xl Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`;
`;
`Oo Other:
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20161013
`
`

`

`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 2
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`DETAILED ACTION
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`Reissue Applications
`
`For reissue applications filed on or after September 16, 2012, all references to 35
`
`U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This is a
`
`continuation reissue application of Serial No. 11/796,695, filed April 27, 2007, now
`
`abandoned, whichis a reissue application of U.S. Patent 5,922,779 (hereafter "the '779
`
`patent”), which issued from U.S. application Serial No. 08/949,239 with claims 1-14 on
`
`July 13, 1999.
`
`The amendmentfiled August 10, 2016 amendsclaims 1, 10 and 14, cancels
`
`claims 11 and 12, and presents new claims 15-20.
`
`Related Applications and Proceedings
`
`U.S. Patent 6,359,022 (hereafter “the ‘022 patent) is a continuation-in-part of the
`
`‘779 patent. The ‘022 patent was subject to ex parte reexamination in the merged
`
`proceeding of Control Nos. 90/006,824 and 90/007,619, hereafter “the merged
`
`reexamination proceeding.” The resulting Ex Parte Reexamination Certificate cancelled
`
`all the issued claims, i.e., claims 1-16, of the ‘022 patent. Furthermore, during the
`
`merged reexamination proceeding, all proposed newly addedclaims, i.e., claims 17-89,
`
`were cancelled. Pending U.S. Application Serial No. 11/788,833 is a reissue application
`
`of the ‘022 patent.
`
`

`

`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 3
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`Specification
`
`The disclosure is objected to because of the following informalities:
`
`It is acknowledged that the amendmentto the specification filed 08/10/16 at col.
`
`1, line 4, between the title and the “Background of the Invention” corrects the continuity
`
`data of the prior amendmentfiled 10/23/14 by adding a sentencethat states Serial No.
`
`11/796,695 is "now abandoned”, rather than “now pending’ which is present in the
`
`sentence addedbysaid prior amendmentat the same location. The sentence added by
`
`said prior amendmentto the specification on 10/23/14 must now be deleted. It is
`
`suggested that Applicant state the following as an amendmentto the specification:
`
`“Please delete the paragraph inserted at col. 1, line 4, between the title and the
`
`“Background of the Invention”in the specification amendmentfiled 10/23/14.”
`
`Appropriate correction is required.
`
`Application Data Sheet (ADS)
`
`The Specialist acknowledgesthat the ADS filed 08/10/16 now cites parent
`
`reissue application Serial No. 11/796,695 in the “Domestic Benefit/National Stage
`
`Information”. However, the ADS filed on August 10, 2016 is objected to because the
`
`domestic benefit information does not properly identify the present application as both a
`
`continuation of U.S. Application No. 11/796,695 and a reissue application of the ‘779
`
`patent. See the Reissue Application Filing Guide at
`
`http://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf
`
`for more information and in particular see the screen shot on page 10 given the sample
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`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
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`Page 4
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`facts presented on page 9. The corrected ADS should comply with 37 CFR 1.76(c)(2),
`
`which requires that any changes to an ADS beidentified with markings (underline for
`
`addition, strike through for deletion). The markings must be maderelative to the original
`
`ADS filed 10/23/14. Applicant can also use a Corrected Web-based ADS. Seethe
`
`Quick Start Guide for Corrected Web-based ADS at
`
`https://www.uspto.gov/sites/default/files/documents/Corrected-WebADS-QSG. pdf.
`
`Applicant should additionally file, as a paper separate from its next response, a
`
`Requestfor Corrected Filing Receipt to ensure that these changes are acted upon and
`
`corrected by the appropriate official.
`
`Rejection Overcome
`
`The rejection of claims 1-10 and 13-20 under 35 USC 112, second paragraph,
`
`has been overcomeby Applicant's amendmentof the claims.
`
`Declarations in Applicant’s Responses
`
`Filed with Applicant’s response dated 08/10/16 are two Rule 1.131 Declarations,
`
`i.e., Exhibits AAA and BBB, which are the same two Rule 1.131 Declaration filed by
`
`Applicant and found unpersuasive by the Specialist and the Patent Trial and Appeal
`
`Board (hereafter “Board”) in the merged reexamination proceeding. Exhibits AAA and
`
`BBB are hereinafter referred to as the First 131 Declaration and the Second 131
`
`Declaration, respectively. These same two declarations are also present in Serial No.
`
`11/788,833.
`
`

`

`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 5
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`Also filed with Applicant’s response dated 08/10/16 is a Rule 1.132 Declaration
`
`by F. Leo Hickey (Exhibit DDD, hereafter “Hickey Declaration”). This same declaration
`
`wasfiled by Applicant and found unpersuasive by the Specialist and the Board in the
`
`merged reexamination proceeding. This declaration is also present in Serial No.
`
`11/788,833.
`
`Filed 07/02/15 are a Rule 1.132 Declaration by David Norberg (hereafter
`
`“Norberg II Declaration”’) and a Rule 1.132 Declaration by Angelo Gabbianelli
`
`(hereafter “Gabbianelli Declaration”). These two declarations werealsofiled in the
`
`11/788,833 reissue application. | 39, 50-57, 59 and 61 of the Norberg || Declaration
`
`cite to Exhibit AA. {| 50 of the Norberg II Declaration refers to “the spreadsheet
`
`attached as Exhibit AA". However, the Norberg II Declaration was found to be
`
`incomplete (see Office Action mailed 03/10/16, p. 41) since there were no exhibits or
`
`spreadsheets attached thereto. Likewise, ¥ 27 of the Gabbianelli Declaration cites to
`
`Exhibits 1, 2 and 3. However, the Gabbianelli Declaration was found to be incomplete
`
`(see Office Action mailed 03/10/16, p. 41) since there were no exhibits attached thereto.
`
`With respect to the missing exhibits of the Norberg II and Gabbianelli
`
`Declarations, Applicant states that "Exhibits AA for the Norberg [II] Declaration and
`
`Exhibits 1, 2, and 3 for the Gabbianelli Declarations [sic] are enclosed with this
`
`response." (See Remarksfiled 08/10/16, p. 30.) Exhibits AA, 1, 2 and 3 accompanythe
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`responsefiled 08/10/16.
`
`{| 63 of the Norberg || Declaration states the following (bold emphasis added):
`
`' This declaration is referred to as the “Norberg II Declaration” since there a "Norberg Declaration"
`present in the merged reexamination proceeding and reissue Serial No. 11/788,833.
`
`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
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`Page 6
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`63. Stepan Company's salesliterature states that STEPANPOI.® PS-
`2352 can be usedin alternative methods, such as for production of HCFC-141b
`blown and HCFC-141b/water-blown polyisocyanate board stock,rigid
`polyisocyanurate boardstock blown with HCFC-141b/water(with or without R-22
`- an HCFC, alternatively known as chlorodifluoromethane), or blown with
`hydrocarbons and modifier copolyol for polyurethane loams, or for production of
`HCFC-141b-blown and HCFC-141b/water-blown polyisocyanurate boardstock
`meeting the requirements for roofing and sheathing. (See Ex. 1.) These uses
`are still mentioned because MCFCsare not bannedin all countries or for all
`uses.
`
`“Ex. 1” cited in ¥ 63 of the Norberg || Declaration is understood as being the same as
`
`Gabbianelli Declaration’s Exhibit 1.
`
`q 35 of the Gabbianelli Declaration states "(See Ex. 1, 1A.)" The "1A" is taken as
`
`being the first page of Gabbianelli Declaration's Exhibit 1.
`
`Scope of Claims
`
`During patent examination, the pending claims must be “given their broadest
`
`reasonable interpretation consistent with the specification.” See, for example, MPEP
`
`2111. This reissue application contains claims 1-10 and 13-20 directed to a polyester
`
`polyol based resin blend, a polyurethane or polyisocyanurate foam, and a method for
`
`preparing a rigid closed cell polyisocyanate-based foam. Claim 1
`
`is representative:
`
`1. (Amended) A polyester polyol based resin blend comprising:
`
`(a) an aromatic polyester polyol formed by aninter-esterification reaction
`
`between
`
`(i) a phthalic acid based material;
`
`(ii) a hydroxylated material having a functionality of at least 2; and
`
`(iii) from about 1-35 [less than about 40] percent by weight, based on the total
`
`weight of the aromatic polyester polyol, of a hydrophobic material having:
`
`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
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`Page 7
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`(1) from one to six radicals, the radicals being selected from the group
`
`consisting of carboxylic acid groups, carboxylic acid ester groups, hydroxyl
`
`groups, and mixtures thereof;
`
`(2) hydrocarbon groups comprising a total of at least 4 carbon atoms for
`
`each radical present in the hydrophobic material; and
`
`(3) an average molecular weight of from about 100 to 1000,
`
`wherein the hydrophobic material is free of dimer acid; [and]
`
`(6) a nonionic surfactant; [and]
`
`(c) from 14 to about 35 parts per hundred parts ofall polyols of a [C4-C7] Cs linear
`
`or branched hydrocarbon blowing agent;_and
`
`(d) from 0.05 to 1 part of water per hundred parts of all polyols, excluding water
`
`found in the aromatic polyester polyol as a by-productof reaction.
`
`Each of independent claims 1, 15, 19 and 20 requires “from 0.05 to 1 part of
`
`water per hundred parts ofall polyols, excluding water found in the aromatic polyester
`
`polyol component as a by-productof reaction”. As noted in the claim construction
`
`section on pp. 16-24 of the Board Decision mailed 06/20/14 (hereafter “2014 Board
`
`Decision”) in said merged reexamination proceeding, herein incorporated by reference,
`
`the Board found that “water ... excluding water found in the polyol component [i.e., in
`
`the aromatic polyester polyol] as a byproduct of reaction’ is the additional amount of
`
`water existing separately in the polyol resin blend, regardless of the source of the water,
`
`but the recited water component does notinclude hydration water or reaction-generated
`
`water." Accordingly, the Board found that water “contained” in DABCO® K-15 catalyst,
`
`which is in examples of the ‘779 and ‘022 patent specifications and wasin the § 1.131
`
`inventor’s declarations before the Board (which are the same astheinstant First and
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`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 8
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`Second 131 Declarations), is not water included by the claims (see pp. 16-24 of the
`
`2014 Board Decision). The 2014 Board Decision is pertinent to the instant claims
`
`because claims 69-89 before the Board contained said requirement with respect to
`
`water and were found to be supported by the '779 patent(see p. 7 of the 2014 Board
`
`Decision).
`
`Indeed, consistent with the claim construction on pp. 16-24 of the 2014 Board
`
`Decision, the ‘779 patent teaches said DABCO® K-15 as “Dabco K-15 catalyst", not
`
`Dabco K-15 catalyst plus water (see col. 14, line 3; col. 16, lines 35-37; and Table 2-5).
`
`There is no mention in the ‘779 patent of Dabco K-15 inherently contributing any water
`
`to the composition. Further, the '779 patent discloses the optional presence of waterin
`
`the resin blend, the water taking two forms: reaction generated water that occurs in the
`
`polyol; and "water [that] may [optionally] be additionally introduced into the polyol resin
`
`blend ..." See '779 patent, col. 13, lines 33-38. None of the ‘779 patent’s examples
`
`have optionally added water (see Tables 2-5).
`
`Consistent with this interpretation is inventor Hickey’s 1989 paper,i.e.,
`
`"Flammability Test Performanceof Partially Water-Blown Polyisocyanurate Foam
`
`Insulation Board,” 32nd Annual Polyurethane Technical/Marketing Conference, October
`
`1-4, 1989, pp. 64-68, cited by the Board on p. 23 of the 2104 Decision. This 1989 paper
`
`is Exhibit P of the Hickey Declaration. As noted on pp. 23-24 of the 2014 Board
`
`Decision:
`
`The Examiner noted an example given in the [Hickey 1989] paper, which
`describes a composition including a CFC- 11 blowing agent and DABCO® K-15,
`but no water, and being described as "totally CFC-11 blown." /d. (emphasis
`added). The Examinercontrasted this description with another example from the
`
`

`

`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 9
`
`same paper, which describes a composition including a CFC-11 blowing agent,
`DABCO® K-15, and additional water, and being described as "co-blown,"or
`partially water blown, using a combination of CFC-11 and the added water. /a.
`Appellant states that the article has no bearing on the construction to be given to
`the present patent, which does notrefer to "totally CFC-11 blown" or "co-blown"
`compositions. Reply Brief filed August 6, 2013 at 6. Additionally, Appellant
`asserts that an argument based ona prior art document is not even a proper
`basis to counter a construction such as that used by the present Patent Owner
`based on the Specification and claims of the '022 Patent[and of the '779 patent].
`ld. To the contrary, the 1989 article is relevant becauseit raises questions as to
`the inventors’ attestations and constitutes some evidence on whether one skilled
`in the relevant art would have considered any water "contained" (App. Br. 19) in
`the DABCO® K-15 catalyst to be water described as part of the blowing agentin
`the '022 Patent [and ‘779 patent].
`In the 1989 article, Mr. Hickey had different
`descriptions for tests when additional water was addedto the polyol resin blend
`("co-blown") and when no additional water was added ("totally CFC-11 blown").
`See, e.g., Ex. P of Ex. C at 65 [i.e., p. 65 of Hickey’s 1989 article] (bottom of
`page). Now, Appellant argues that a formulation containing DABCO® K-15, but
`not additional water, inherently contains water and meets the claimed water
`limitation. Appellant's arguments are inconsistent with the normal usage of the
`terms used in the '022 Patent [and the ‘779 patent], as evidenced by the 1989
`publication, and therefore are relevant.
`
`With respect to nonionic surfactant component(b), the '779 patent defines what
`
`is meant by a "nonionic surfactant" as follows:
`
`By the term "nonionic surfactant” as used herein is meant a compound
`which contains one or more hydrophobic moieties and one or more hydrophilic
`moieties and which has no moieties which dissociate in aqueous solution or
`dispersion into cations and anions. (col. 9, lines 19-23)
`
`Claim Rejections - 35 USC §§ 102 and 103
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
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`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 10
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`(a) the invention was knownor used by others in this country, or patented or described in a
`printed publication in this or a foreign country, before the invention thereof by the applicant for
`a patent.
`
`(e) the invention was described in (1) an application for patent, published under section
`122(b), by another filed in the United States before the invention by the applicant for patent or
`(2) a patent granted on an application for patent by another filed in the United States before
`the invention by the applicant for patent, except that an international application filed under
`the treaty defined in section 351(a) shall have the effects for purposesof this subsection of an
`application filed in the United States onlyif the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of thistitle, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`1.
`
`Claims 1-9 and 13-20 are rejected under pre-AlA 35 U.S.C. 102(a) as being
`
`anticipated by Singh (WO 97/21764).
`
`The polyol resin blends in Singh’s Examples 1, 2 and 11-16 comprise Stepan
`
`PS-2352, which Applicant has previously admitted is a phthalic anhydride/diethylene
`
`glycol adductthatis inter-esterified with an amount in the range between 1 to about 40
`
`percent by weight of soybeanoil, based on the total weight of the aromatic polyester
`
`polyol (see the Request for Reexamination filed 10/20/03, p. 7, in reexamination control
`
`No. 90/006,824 for the ‘022 patent; see also, Examples 1 and 2 at page 14 and
`
`Examples 11-16 at page 21 of Singh). Applicant admits the following with respect to
`
`Stepan PS 2352 in J§ 10-15 of the Norberg || Declaration:
`
`10. STEPANPOL® PS-2352 is an aromatic polyester polyol resin sold by
`Stepan Company.
`
`

`

`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 11
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`11. STEPANPOL® PS-2352 contains a value between 70 and 100
`percent by weight of an aromatic polyester polyol reaction product formed by
`inter-esterification of: (i) a value between 20 and 55 percentby weightof a
`phthalic acid based material; (ii) a value between 30 and 60 percent by weight of
`a hydroxylated material having a functionality of at least 2; and(iii) a value
`between 1 and 35 percent by weight of a hydrophobic material.
`
`12. The hydrophobic material in STEPANPOL® PS-2352 has (1) a
`number between one and six radicals that are carboxylic acid groups, carboxylic
`acid ester groups, hydroxyl groups, or mixtures thereof; (2) hydrocarbon groups
`totaling at least 4 carbon atomsfor each radical present; and (3) an average
`molecular weight between 100 and 1000.
`
`13. Additionally, the hydrophobic material in STEPANPOL® PS-2352 is
`free of dimer acid.
`
`14. STEPANPOL® PS-2352 also contains a value between 0 and 30
`percentby weight of a polyetherpolyol.
`
`15. Stepanpol® PS-2352 also contains a nonionic surfactant. Additionally,
`customers uniformly formulate Stepanpol® PS-2352 with a nonionic silicone
`surfactant, as shown in Exh. AA. All of the formulations in Exh. AA contain a
`nonionic silicone surfactant.
`
`As noted in footnote 11 on page 19 of the Board Decision dated 12/18/2009 in the
`
`merged reexamination proceeding, “Stepanpol PS 2352" and "Stepan PS 2352" are
`
`interchangeable, indistinct terms.
`
`With respectto the instant non-ionic surfactant component(b), as noted above,
`
`Singh’s Stepan PS 2352 contains non-ionic surfactant. Singh’s Examples 1, 2 and 11-
`
`16 further contain Tegostab B8466, whichis a silicone surfactant (see also in Singh p.
`
`17, lines 3-4 and p. 11, line 16).
`
`It is the Specialist’s position that Tegostab B8466 is
`
`also anonionic surfactant.
`
`Indeed, many of the examplesin the ‘779 patent use
`
`silicone surfactant (see Tables 2-5 of the ‘779 patent).
`
`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 12
`
`With respectto the instant blowing agent component(c), Singh’s Examples 1, 2
`
`and 12-16 contain isopentane and/or n-pentane at a total concentration of (5.66/31.2) x
`
`100 = 18 parts per hundredparts of total polyol, i.e., per hundred parts of the Stepan PS
`
`2352. Singh’s Example 11 contains n-pentane at a total concentration of (5.82/31.2) x
`
`100 = 19 parts per hundredparts oftotal polyol, i.e., per hundred parts of the Stepan PS
`
`2352.
`
`With respect to instant component (d), i.e., water, Singh’s Examples 1, 2 and 11-
`
`16 contain 0.35% waiterlisted on a separate line of the formulations. This converts to
`
`(0.35/31.2) x 100 = 1.12 parts of water per hundred parts ofall polyol (php), i.e., per
`
`hundredparts of the Stepan PS 2352. The 1.12 php of water in Singh’s examples,
`
`when roundedto one significant figure, anticipates the upper limit of “1” php as here
`
`claimed.
`
`With respectto claim 2, Stepan PS 2352 was well-knownin the art to have a
`
`hydroxyl numberof around 235.
`
`With respect to claims 4, 5 and 15-18, it is noted that, in Singh’s Examples1, 2
`
`and 11-16, the percentage by weight of Stepan PS 2352 based on the combined weight
`
`of Stepan PS 2352 plus Tegostab B8466 nonionic silicone surfactant is 97%(as per
`
`claim 4 and component(a) in claim 15); and the percentage by weight of Tegostab
`
`B8466 nonionic silicone surfactant based on the weight of Stepan PS 2352 plus
`
`Tegostab B8466 is 3%(as per claim 5 and component (b) in claims 15-18). As noted
`
`above, Stepan PS 2352 also contains non-ionic surfactant. However, it is the
`
`Specialist’s position that the amount of nonionic surfactant in Stepan PS 2352 is such
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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
`
`Page 13
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`that the respective concentrations of aromatic polyester polyol and nonionic surfactant
`
`in claims 4, 5 and 15-18 arestill met. This is particularly so based onthe fact that the
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`Norberg Il and Gabbianelli Declarations assert Stepan PS 2352 for the proposition of
`
`commercial successof the claimed invention.
`
`With respect to claims 6 and 7, in Singh’s Examples 1, 2 and 12-16, the weight
`
`percentage of aromatic polyester polyol plus nonionic surfactant, i.e., the weight
`
`percentage of Stepan PS 2352 plus Tegostab B8466, based on the combined weightof
`
`Stepan PS 2352, Tegostab B8466 and the pentane blowing agent,is
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`(31.2+1)/(31.2+1+5.66) x 100 = 85%.
`
`In Singh’s Example 11, the weight percentage of
`
`Stepan PS 2352 plus Tegostab B8466, based on the combined weight of Stepan PS
`
`2352, Tegostab B8466 and the pentane blowing agent, is (31.24+1)/(31.2+14+5.82) x 100
`
`= 85%
`
`2.
`
`Claims 1-10 and 13-20 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Singh.
`
`Singh is relied upon for the reasons stated abovein Rejection No. 1. To the
`
`extent that the 1.12 php water in Singh’s Examples 1, 2 and 11-16 does not anticipate
`
`the claimed upperlimit of “1” php, then Singh renders obvious the claimed range of 0.05
`
`to 1 php.
`
`Singh’s Examples 1, 2 and 11-16 contain 1.12 php, i.e., 0.85%, water, which is
`
`listed on a separateline of the formulations. Singh is not limited to this amount and
`
`teachesthat the water content ranges from about 0.05 to about 2.0, preferably about
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`Page 14
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`0.35 to about 1.0 weight percent basedon the total weight of the reaction system (see
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`p. 10, lines 10-15).
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`Further, while Examples 1, 2 and 11-16 have a polyol concentration of 31.2 parts
`
`per 100 parts of reaction mixture, Singh is not limited to this amount and teaches a
`
`preferred range of about 25 parts to about 50 parts per 100 parts of reaction mixture,
`
`and a mostpreferred range of about 29 to about 33 parts per 100 parts of the reaction
`
`mixture (see page 9, lines 1-9). Thus, at a water concentration of 0.05 parts per 100
`
`parts of reaction mixture, and a concentration of 29, 31.2, and 33 parts of polyol per 100
`
`parts of reaction mixture, the concentration of water is 0.17 parts, 0.16 parts, and 0.15
`
`parts of water per 100 parts of polyol, respectively. Alternatively, when the
`
`concentration of water is 0.35 parts per 100 parts of reaction system (as in Examples 1,
`
`2 and 11-16), and the concentration of polyol is 50 parts per 100 parts of reaction
`
`mixture, the concentration of water is 0.7 parts per 100 parts of polyol.
`
`It would have been obvious to one of ordinary skill in the art at the time the
`
`invention was madeto have used a water concentration of, for example, 0.17, 0.16,
`
`0.15, or 0.7 parts of water per 100 parts of polyol because, as noted in the immediately
`
`preceding paragraph, such a water content is clearly within the scope of Singh’s
`
`disclosure, and the reasonable expectation of success in preparing Singh's foam.
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`Alternatively, it would have been obvious to one of ordinaryskill in the art at the
`
`time the invention was made to have prepared the formulations in Singh’s Examples, 1,
`
`2 and 11-16 such that the water concentration is lower than 0.35 weight percent, such
`
`as, for example 0.25, 0.1 or 0.05 weight percent, i.e., (0.25/31.2) x 100 = 0.80 php or
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`Page 15
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`(0.1/31.2) x 100 = 0.32 php, or (0.05/31.2) x 100 = 0.16 php of water because suchis
`
`clearly within the scope of Singh’s disclosure, and the reasonable expectation of
`
`success in preparing Singh's foam.
`
`With respectto claim 10, as noted above, said Stepan PS-2352 used by Singh
`
`as a polyester polyol is a phthalic anhydride/diethylene glycol adductthatis inter-
`
`esterified with an amountin the range between 1 to about 40 percent by weightof
`
`soybean oil, based on the total weight of the aromatic polyester polyol. Singh does not
`
`specifically teach the use oftriethylene glycol instead of diethylene glycol to form the
`
`polyester polyol.
`
`However, as an alternative to diethylene glycol, Singh teachesthat other
`
`polyhydric alcohols, such astriethylene glycol, can be used to form the polyester polyol
`
`(see page 7, line 13 through page 8, line 17; especially, p. 8, line 12).
`
`It would have
`
`been obvious to one of ordinary skill in the art at the time the invention was made to
`
`have prepared Singh’s Stepan PS-2352 polyester polyol using triethylene glycol instead
`
`of diethylene glycol because Singh specifically teaches the alternative use of diethylene
`
`glycol andtriethylene glycol for such a purpose, and thus, the reasonable expectation of
`
`successin obtaining a polyester polyol, a blend and the foam.
`
`As noted above with respect to claims 4, 5 and 15-18, in Singh’s Examples 1, 2
`
`and 11-16, the percentage by weight of Stepan PS 2352 based on the combined weight
`
`of Stepan PS 2352 plus Tegostab B8466 nonionic silicone surfactant is 97% (as per
`
`claim 4 and component(a) in claim 15); and the percentage by weight of Tegostab
`
`B8466 nonionic silicone surfactant based on the weight of Stepan PS 2352 plus
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`

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`Application/Control Number: 14/521 ,591
`Art Unit: 3991
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`Page 16
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`Tegostab B8466 is 3%(as per claim 5 and component (b) in claims 15-18). As also
`
`noted above, Stepan PS 2352 contains non-ionic surfactant. However,it is the
`
`Specialist’s position that the amount nonionic surfactant in Stepan PS 2352 is such that
`
`the respective concentrations of aromatic polyester polyol and nonionic surfactantin
`
`claims 4, 5 and 15-18 arestill met. This is particularly so based on the fact that the
`
`Norberg Il and Gabbianelli Declarations assert Stepan PS 2352 for the proposition of
`
`commercial successof the claimed invention. To the extent that the respective
`
`concentrations of aromatic polyester polyol and nonionic surfactantin claims 4, 5 and
`
`15-18 are not met, then it would have been obvious to one of ordinary skill in the art at
`
`the time the invention was made to have optimized the amounts of Singh’s polyester
`
`polyol and nonionic surfactants so as to producea rigid polyurethane foam (p. 1, lines
`
`5-9 of Singh), i.e. the same goal as the ‘779 patent (col. 1, lines 5-13 of the ‘779 patent).
`
`Indeed, as also noted above, while Singh’s Examples 1, 2 and 11-16 have a polyol
`
`concentration of 31.2 parts per 100 parts of reaction mixture, Singh is notlimited to this
`
`amount and teaches a preferred range of about 25 parts to about 50 parts per 100 parts
`
`of reaction mixture, and a mostpreferred range of about 29 to about 33 parts per 100
`
`parts of the reaction mixture (see page 9, lines 1-9).
`
`3.
`
`Claims 1-9 and 13-20 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Chittolini (U.S. Patent 5,859,078) in view of Fishback ‘742 (U.S
`
`Patent 5,837,742).
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`Application/Control Number: 14/521 ,591
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`Page 17
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`Chittolini is directed to a polyurethane or polyisocyanurate foam derived from a
`
`mixture comprising a crude isocyanate component and a polyol component, which
`
`contains an expanding agent consisting of a pentane and a compatibilizing agent (see
`
`col. 1, lines 4-8). Chittolini notes that C5 is particularly attractive as a product for
`
`replacing chlorofluorocarbons in the manufacture of expanded polyurethane, aboveall
`
`becauseofits cost which is about half that of known CFCs(seecol. 3, lines 9-11).
`
`Chittolini teaches that insolubility continues to be a serious obstacle to C5 industrial use,
`
`since the emulsions used at present, which result from the mixing of pentane with
`
`polyols and isocyanates, are difficult to control and have a high degreeofinstability,
`
`ten