DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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 42 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.
"compliant" is indefinite as it is unclear how to determine what would make the material "compliant" and what this means.
"tough" is indefinite as it is a relative term of degree where the disclosure fails to provide a standard or baseline that allows one of ordinary skill in the art to ascertain the scope of the invention.
"tacky" is indefinite as it is unclear what makes a material "tacky" and how this would be determined.
Claim Rejections - 35 USC § 102
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.
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.
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.
Claim(s) 39, 41, and 42 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kelly (US Pub. No. 2002/0156141).
Claims 39 and 41: Kelly teaches a hydrophobic foam material (abstract) made of the reaction product of a hydrophobic polyol [0008, PO/EO polyether polyols are hydrophobic as they have a greater percentage of PO which controls the hydrophobicity, see 0027], a hydrophobic surfactant including polysiloxane-polyalkylene oxide [0036-0037], and an isocyanate including toluene diisocyanate (TDI) or MDI [0033]. Given that the hydrophobic surfactant is the same as claimed, it is inherent it is configured to “lower surface teansion…mining operation” as claimed. Kelly teaches that these three materials combined formed open cell foam structure [0032]. There is no coating.
Kelly does not teach the cellular density. However, the cellular density in foam materials is a result effective variable that varies based on the proportions and structure of the reaction materials. Kelly teaches that the foams have some air flow and density [0046]. This means that there is at least some number of pores per square inch. It was within the routine skill of one of ordinary skill in the art at the time of the invention to determine the optimal number of pores per inch. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Kelly does not teach explicitly that the solid-phase body has the intended use of “attracting a mineral particle of interest, including copper, from ore in an aqueous slurry in a mining operation to the collection surfaces”. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this case, the materials are the same and, therefore, will function the same the same materials must have the same properties. Further, the Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Claim 42: Claim 42 recites properties of the claimed material. Kelly does not state these specific terms. However, the materials claimed are the same and, therefore, the properties are inherently the same. Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 40 is rejected under 35 U.S.C. 103 as being unpatentable over Kelly (US Pub. No. 2002/0156141) as applied to claim 39 above, and further in view of CN108192054B.
Claims40: Kelly does not teach the use of phenolic resin in their foam.
‘054B teaches that phenolic resin polyol in polyurethane foam materials improves performance of the material, is light weight, allows for high strength, and can completely or partially replace polyether (polyester) polyol. The substitution or supplementation of phenolic resin polyol in place of the polyester polyol reduces the cost of the material (Description).
One of ordinary skill in the art at the time of the invention would have found it obvious to include phenolic resin polyol to adjust the strength and temperature stability of the foam and also reduce the cost of forming the polyurethane foam.
Response to Arguments
Applicant's arguments filed 7/7/2026 have been fully considered but they are moot over grounds of new rejection.
In the Remarks, Applicant describes the problem in the art that they are attempting to solve with the disclosed invention. Applicant argues that Kelly does not teach the intended use of the material, that being "for selective separation of a mineral particle of interest, including copper, from ore in an aqueous slurry in a mining operation."
According to MPEP 2144, IV., "It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)" And, further, that “it is not necessary in order to establish a prima facie case of obviousness . . . that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant.”
Applicant's arguments are also directed to the intended use of the claimed material. The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). And, regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.). It follows, therefore, that if Kelly teaches the same composition as claimed, it must function the same as Applicant claims. If this is not the case, then perhaps the function or properties of the material arise from limitations not yet claimed.
On Page 9 of the Remarks, Applicant argues in some way that because Kelly teaches that the foam "may be made from 100% graft polyol" that the disclosure of polyols in general should be ignored. However, Kelly teaches clearly that the polyether polyols are reaction material used to form the reaction product [0008]. It is unclear how Applicant can argue that Kelly does not teach the claimed hydrophobic polyol when Applicant admits that Kelly teaches "PO/PE polyether polyol".
The prior art is applied to the claims, as the claims are presented. "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). While claims are read in light of the specification, limitations from the specification are not read into the claims. There is no claim language currently presented that precludes Kelly's disclosure of PO/PE polyether polyol from being the claimed "polyether polyol". And, again, "if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.)". The material of Kelly appears to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed. “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.” See MPEP 2112, II.
With respect to claim 40, Applicant is again reminded that the prior art need not suggest the combination to achieve the same advantage or result discovered by applicant. While CN'054 does not use the term "tackifier", they teach the same claimed material. Compositions cannot be separated from their properties; the claimed function is inherent in the CN'054's disclosure. The rejection clearly articulates why one of ordinary skill in the art would add in a phenolic resin polyol. CN'054 also teaches that phenolic resin can be used to supplement or even partially replace a polyester polyol. As such, there was a clear expectation of success at the time of the invention for one of ordinary skill in the art to make the combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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