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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 29, 2026 has been entered.
Response to Amendment
3. The amendment and the Declaration under 37 CFR 1.132 filed by Applicant on May 29, 2026 have been fully considered. No claims were amended. A new claim 29 has been added. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set for the below.
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.
4. Claims 1, 5, 18, 22-29 are rejected under 35 U.S.C. 103 as being unpatentable over Furlan et al (US 2005/0131090) in view of Baumann et al (US 5,310,766), Singh et al (US 2002/0013379) and C1012 Normal Paraffin, Sasol flyer, 2011, as evidenced by Hydrocarbons-Physical Data, the Engineering Toolbox flyer, Bodnar et al (US 5,143,945) and Slack (US 5,804,648).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
5. Furlan et al discloses a composition for making a rigid polyurethane foam comprising:
A) a polyisocyanate;
B) a polyol, including polyester polyols based on a reaction of phthalic acid/anhydride with ethylene glycol ([0029], also as to instant claim 29);
C) a urethane catalyst;
D) blowing agents including HFCs, HCFCs and water ([0033], [0034], [0044]) and
E) 0.5-3.5 pphr [0036]) of a silicone surfactant, specifically polyether-polysiloxane copolymer for stabilizing the cell formation (Abstract; [0015]; [0044]).
The isocyanate index (i.e. index of formulation) is 80-400 ([0044]).
Thus, Furlan et al teaches the use of both HFCs/HCFCs and water as blowing agents to form the rigid foam.
6. Furlan et al explicitly teaches the use of water as a blowing agent in amount of as high as 4 pphp ([0034]), 0-3 pbw (or 2 pbw) per 100 pbw of polyol as in [0044]-[0045].
Thus, Furlan et al teaches the use of both HFCs/HCFCs and as high as 4 pphp of water as blowing agents to form the rigid foam, and further a silicone surfactant in amount of 0.5-3.5 pphp for stabilizing the cell formation.
7. Further, based on the teachings of Furlan et al that polyester polyols based on the reaction of phthalic acid and ethylene glycol or butanediol are useful polyester polyols for making the rigid foams ([0029]), it would have been obvious to a one of ordinary skill in the art to choose and use the polyester polyol produced by the reaction of the phthalic acid/anhydride and ethylene glycol or butanediol, which is an aromatic polyester polyol, as the only polyol component B) in the composition of Furlan et al, or in amount of at least 70 pphp (“parts per hundred polyol”), that is based on the 100 parts by mass of the polyol component B), since it would be obvious to choose material based on its suitability (as to instant claims 1 and 29). 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
8. Though Furlan et al does not exemplify the use of the aromatic polyester polyol based on the reaction of the phthalic acid and ethylene glycol or butanediol, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
9. Furthermore, though Furlan et al does not explicitly teach the use of aromatic polyester polyols as the polyol component,
1) Singh et al discloses rigid polyurethane foams prepared from a composition containing a) an organic polyisocyanate, b) an aromatic polyester polyol, where the polycarboxylic acid used to prepare said polyester polyol is aromatic ([0035]), c) organo-phosphorus compounds, d) water and hydrofluorocarbons as blowing agents (Abstract, [0010]-[0016]) and e) siloxane-oxyalkylene copolymers as foam stabilizing agents ([0050]), wherein the specifically exemplified foams are based on commercial aromatic polyester polyol STEPANPOL PS-2352 used as the only polyol component (Table 1 of Singh et al), wherein Singh et al explicitly teaches that such rigid polyurethane foams are having long term dimensional stability and increased compressive strength (Table 1).
2) As evidenced by Slack, commercial aromatic polyester polyol STEPANPOL PS-2352 is based on a reaction of phthalic anhydride and ethylene glycol (col. 6, lines 32-35).
It is further noted that the commercial aromatic polyester polyol STEPANPOL PS-2352 is used in examples of instant invention (Table 6 of instant specification).
10. Since both Furlan et al and Singh et al are related to rigid polyurethane foams based on the use of aromatic polyester polyols as the isocyanate-reactive components, polyisocyanate, siloxane-polyoxyethylene copolymer as the foam stabilizing agent/surfactant, using both water and hydrofluorocarbons as the blowing agent, and thereby belong to the same field of endeavor, wherein Singh et al teaches the use of aromatic polyester polyol formed from aromatic carboxylic acid and specifically a commercial aromatic polyester polyol STEPANPOL PS-2352 based on the reaction of phthalic anhydride and ethylene glycol, as required by Furlan et al, as the only polyol, forming rigid polyurethane foams having long term dimensional stability and increased compressive strength, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Singh et al and Furlan et al, and to use, or obvious to try to use the aromatic phthalic acid/anhydride-based polyester polyol, specifically the commercial aromatic polyester polyol STEPANPOL PS-2352 as the only polyol to form the rigid polyurethane foam of Furlan et al, so to ensure said rigid polyurethane foam of Furlan et al is having long term dimensional stability and increased compressive strength, and 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
11. Furlan et al does not recite the composition further comprising a hydrocarbon having boiling point of more than 100⁰C.
12. However, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid or terephthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5), as stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Based on the teachings of Baumann et al that the solid polyester polyol includes polyester polyols based on aromatic dicarboxylic acids such as phthalic acid or terephthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5), it would have been obvious to a one of ordinary skill in the art to choose and use said polyester polyol based on aromatic dicarboxylic acid such as phthalic acid or terephthalic acid and ethylene glycol as the solid polyester polyol in the foam stabilizing composition of Baumann et al as well, 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).
In column 4, lines 40-45, Baumann et al teaches that even liquid polyalcohols used for making the polyurethane foam include polyesters (col. 4, line 44), i.e. polyester polyols. Even though polyether polyols are cited as being preferred (col. 4, lines 45-46), this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
13. The foam stabilizing composition of Baumann et al comprises 10-50%wt of said paraffinic hydrocarbon oils with 50-90%wt of the solid polyester polyol (col. 2, lines 34-42), and said foam stabilizing composition is used in the polyurethane foam composition in amount of up to 10 parts by weight per 100 parts of liquid polyalcohol (i.e. as low as close to zero parts by weight, pphp) or about 2-10 parts by weight based on 100 pbw of liquid polyalcohol (col. 2, lines 60-67).
Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 2 pphp, therefore, the amount of said hydrocarbon oil in the overall formulation will be 0.2 pphp. Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 0.5 pphp, therefore, the amount of said hydrocarbon oil in the overall formulation will be 0.05 pphp.
Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 1.5 pphp, therefore, the amount of said hydrocarbon oil in the overall formulation will be 0.15 pphp.
14. Thus, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with the aromatic polyester polyol, as the stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Baumann et al discloses the use of water as preferred (i.e. not explicitly required) blowing agent (col. 5, lines 42-44) and wherein water is used in amount of 1-10 parts per 100 pbw of polyol or 2 pbw per 100 pbw of polyol (col. 5, lines 57-60).
Thus, water in the foam of Baumann et al is used in about the same amount, i.e. 1-2 pbw per 100 pbw of polyol, as that of Furlan et al.
15. Further, Baumann et al discloses that low boiling alkanes can be also used as the blowing agents along with water (col. 5, line 66-col. 6, line 3). The foam of Baumann et al also comprises silicone surfactant to control growth and stabilization of the cells (col 7, lines 20-25). In column 7, lines 20-55, Baumann et al explicitly teaches the use or organo-silicone surfactant to help control the growth and retention of the cell structure until it is sufficiently cured not to be susceptible to collapse and stabilize the cells against collapse. Thus, Baumann et al explicitly teaches away from allowing the cells to collapse, i.e. teaches away from forming an open-cell foam; but rather shows preference for formation of non-collapsed closed cells.
16. Baumann et al explicitly teaches the advantages of using said stabilizing composition to improve dimensional stability of the foam, as cited in col. 3, lines 1-5 and presented below:
PNG
media_image1.png
88
471
media_image1.png
Greyscale
17. Thus:
1) both Baumann et al and Furlan et al are related to polyurethane foams comprising:
- the combination of low boiling alkanes and water as blowing agents, wherein water is used in the same amount of 1-2 pbw per 100 pbw of polyol;
- silicone surfactant to stabilize the cell formation and
- the use of aromatic polyester polyols;
2) Baumann et al explicitly teaches the foam composition for said foams further comprising high boiling point paraffinic hydrocarbons in combination with polyester polyol as a foam stabilizing composition; Baumann et al explicitly teaches that the foams comprising said foam stabilizing composition are having enhanced dimensional stability in comparison to similar foam prepared in the absence of said additive stabilizing composition (col. 3, lines 1-3). Tables 1-2 of Baumann et al clearly show that the foam compositions comprising said high boiling point paraffin oil in combination with polyester polyol as the foam stabilizer provide improved dimensional stability and, specifically, the presence of said high boiling point paraffin oil provides said dimensional stability (see col. 10, lines 5-8; the stabilizing composition comprising only polyester polyol and not paraffin oil, does not provide acceptable dimensional stability).
3) On the other hand, the foam of Furlan et al is rigid, and thereby would require dimensional stability.
18. Since i) paraffinic hydrocarbons having boiling point of 150⁰C or more in combination with solid polyester polyols are taught in the art as being used as stabilizing agents in polyurethane foam-forming compositions to improve dimensional stability of the produced foams, wherein the foam compositions comprise both water and low boiling point alkanes as blowing agents and silicone surfactant to stabilize cell formation, as shown by Baumann et al, and
ii) the foam composition of Furlan et al is used for making rigid foams, which foams would necessarily require dimensional stability, and at the same time the foam-forming composition of Furlan et al comprises the combination of water and low boiling point alkanes as the blowing agents and silicone surfactant to stabilize the cells, similarly to the foam-forming composition of Baumann et al, therefore,
it would have been obvious to a one of ordinary skill in the art to combine the teachings of Baumann et al and Furlan et al, and include, or obvious to try to include the foam stabilizing composition comprising the paraffinic hydrocarbon oils having boiling point at atmospheric pressure of above about 150⁰C and the aromatic polyester polyol of Baumann et al, into the composition of Furlan et al, in amount as taught by Baumann et al, such as providing 0.2 pphp, 0.05 pphp or 0.15 pphp of the hydrocarbon oil, to further, at least partially, improve dimensional stability of the produced rigid polyurethane foam of Furlan et al, and 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). 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:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(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
19. All ranges in the composition of Furlan et al in view of Singh et al and Baumann et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
20. Given the composition of Furlan et al in view of Singh et al and Baumann et al comprises 2 pphp of the polyether-polysiloxane copolymer ([0036] of Furlan et al) and 0.2 pphp of the hydrocarbon oil, therefore, the total amount of the hydrocarbon oil and the polyether-polysiloxane copolymer will be 2.2 pphp (as to instant claims 5, 18) and the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.2:2, i.e. 1:10 (as to instant claims 1, 22, 24-25).
Given the composition of Furlan et al in view of Singh et al and Baumann et al comprises 2 pphp of polyether-polysiloxane copolymer ([0036] of Furlan et al) and 0.05 pphp of the hydrocarbon oil, therefore, the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.05:2, i.e. 1:40 (as to instant claims 1, 22-25).
Given the composition of Furlan et al in view of Singh et al and Baumann et al comprises 3.5 pphp of the polyether-polysiloxane copolymer ([0036] of Furlan et al) and 0.15 pphp of the hydrocarbon oil, therefore, the total amount of the hydrocarbon oil and the polyether-polysiloxane copolymer will be 3.65 pphp (as to instant claim 5) and the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.15:3.5, i.e. 1:23.3 (as to instant claims 1, 22-25).
21. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of used components, i.e. the polyol, isocyanate, catalyst, blowing agent, and specifically hydrocarbon oil and polyether-polysiloxane copolymer, since those hydrocarbon oil and polyether-polysiloxane copolymer components are used to stabilize the foam and increase dimensional stability of the foam, so to produce a final composition and polyurethane foam having a desired combination of properties, depending on the specific end-use of the final product, and desired stability, 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).
22. Though Furlan et al in view of Singh et al and Baumann et al disclose the composition comprising hydrocarbon oils having boiling temperature of above 150⁰C, specifically paraffin oil (col. 3, lines 28-42 of Baumann et al), Furlan et al in view of Singh et al and Baumann et al do not recite said paraffin oil being dodecane.
23. However, C1012 Normal Paraffin, Sasol flyer recites the commercially available C1012 Normal paraffin mixture of C10-C12 carbon range, having low viscosity and low odor (see the flyer). As evidenced by Hydrocarbons-Physical Data, the Engineering Toolbox flyer, the C10-C12 paraffins are having boiling point of 174-216⁰C (see the Hydrocarbons-Physical Data, the Engineering Toolbox flyer).
As can be seen from the C1012 Normal Paraffin, Sasol flyer, the C1012 Normal paraffin mixture includes C12 n-paraffin, which is called “dodecane”.
24. It is noted that the commercial product C1012 Normal Paraffin mixture commercially available from Sasol is cited in Table 2 of instant specification (page 30/42 of instant specification and as presented below) as the component HC No.3 with name “dodecane” and is used in inventive examples of instant specification. Therefore, the commercial product C1012 Normal Paraffin mixture, Sasol as cited in C1012 Normal Paraffin, Sasol flyer, corresponds to the “dodecane” as claimed in instant claims 1, 27-24. Instant specification describes “dodecane” only as commercial product C1012 Normal Paraffin (Sasol); instant specification does not require the used “dodecane” being as a pure compound used alone.
PNG
media_image3.png
179
495
media_image3.png
Greyscale
25. Since the C1012 Normal Paraffin mixture commercially available from Sasol is a paraffin oil, having boiling point of more than 150⁰C, and is having low viscosity, all of which are required by Furlan et al in view of Singh et al and Baumann et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Furlan et al in view of Baumann et al, Singh et al and C1012 Normal Paraffin, Sasol flyer, and to use, or obvious to try to use C1012 Paraffin Mixture commercially available from Sasol as the low viscosity paraffin oil having boiling point of more than 150⁰C in the stabilizing composition used for making the polyurethane foam of Furlan et al in view of Singh et al and Baumann et al, since said C1012 Paraffin Mixture is having the properties as required by Furlan et al in view of Singh et al and Baumann et al and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 1, 27-28). 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
26. Since the foam of Furlan et al in view of Singh et al, Baumann et al and C1012 Normal Paraffin, Sasol flyer is rigid and is produced from substantially the same composition as claimed in instant invention, including the use of commercial aromatic polyester polyol STEPANPOL PS-2352, therefore, the rigid foam of Furlan et al in view of Singh et al, Baumann et al and C1012 Normal Paraffin, Sasol flyer will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, which are the same as those claimed in instant invention, or having ranges overlapping with those as claimed in instant invention as well (as to instant claims 1, 26), including closed cell content of more than 80% or more than 90%, especially since the foam of Furlan et al in view of Singh et al, Baumann et al and C1012 Normal Paraffin, Sasol flyer is rigid and, as evidenced by Bodnar et al, the term “rigid” in respect of the foam products means a cellular polyurethane-polyisocyanurate having a closed cell content of at least 85% (see col. 2, lines 50-52 of Bodnar et al), as also presented below:
PNG
media_image4.png
60
403
media_image4.png
Greyscale
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.
27. It is further noted that instant specification does not provide any evidence of criticality in using decene, dodecene, dodecane, tetradecane, tributene, tributane, tetrabutene, tetrabutane, oxo process oils or alkylbenzene having at least 10 carbon atoms in the hydrocarbon claimed composition, since all examples of instant invention are shown as comprising only said hydrocarbons. Further, the examples of instant specification do not recite the closed cell content of the polyurethane foams at all.
28. With respect to the Declaration under 37 CFR 1.132 filed by Applicant on May 29, 2026, it is noted that:
1) Baumann et al is a secondary reference which was applied for the teaching of the use of the combination of the paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Baumann et al clearly teaches the use of polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as part of said stabilizing composition. Furlan teaches the polyol component B) including polyester polyols based on a reaction of phthalic acid/anhydride with ethylene glycol ([0029]). Even though “the amount of polyester polyol is limited to a maximum 9 parts by weight” in Baumann et al, said amount is introduced into the foam composition of Furlan in addition to the aromatic polyester polyol component B) of Furlan. Given the polyester polyols based on the reaction of the phthalic acid and the ethylene glycol are the only polyols used as the component B) of Furlan and as the solid polyester polyol of the stabilizing composition of Baumann et al, therefore, said polyester polyols based on phthalic acid, i.e. aromatic polyester polyols, will be used in amount of 100%wt based on the overall polyol component, i.e. more than 70pphp of the overall polyol component in the composition of Furlan et al in view of Singh et al, Baumann et al and C1012 Normal Paraffin, Sasol flyer.
3) The evidence of record that Baumann et al discloses “an inseparable combination of hydrocarbon oil and a polyester polyol” is acknowledged. However, given the polyester polyol used in said combination includes aromatic polyester polyols (col. 3, line 68-col. 4, line 5 of Baumann et al) and the polyols as the component B) in the composition of Furlan et al are aromatic polyester polyols as well, therefore, addition of more aromatic polyester polyol in a minor amount as part of said combination to the composition of Furlan et al will just further increase the amount of said aromatic polyester polyol in the composition of Furlan et al as well, making that amount substantially close to 100 pphp.
29. Claims 1, 5, 18, 22-29 are rejected under 35 U.S.C. 103 as being unpatentable over Furlan et al (US 2005/0131090) in view of Baumann et al (US 5,310,766), Singh et al (US 2002/0013379) and PARAFOL Paraffins flyer, 2010, as evidenced by PARAFFINS flyer, Sasol, Bodnar et al (US 5,143,945) and Slack (US 5,804,648).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
30. Furlan et al discloses a composition for making a rigid polyurethane foam comprising:
A) a polyisocyanate;
B) a polyol, including polyester polyols based on a reaction of phthalic acid/anhydride with ethylene glycol ([0029], as to instant claim 29);
C) a urethane catalyst;
D) blowing agents including HFCs, HCFCs and water ([0033], [0034], [0044]) and
E) 0.5-3.5 pphr [0036]) of a silicone surfactant, specifically polyether-polysiloxane copolymer for stabilizing the cell formation (Abstract; [0015]; [0044]).
The isocyanate index (i.e. index of formulation) is 80-400 ([0044]).
Thus, Furlan et al teaches the use of both HFCs/HCFCs and water as blowing agents to form the rigid foam.
31. Furlan et al explicitly teaches the use of water as a blowing agent in amount of as high as 4 pphp ([0034]), 0-3 pbw (or 2 pbw) per 100 pbw of polyol as in [0044]-[0045].
Thus, Furlan et al teaches the use of both HFCs/HCFCs and as high as 4 pphp of water as blowing agents to form the rigid foam, and further a silicone surfactant in amount of 0.5-3.5 pphp for stabilizing the cell formation.
32. Further, based on the teachings of Furlan et al that polyester polyols based on the reaction of phthalic acid/anhydride and ethylene glycol or butanediol are useful polyester polyols for making the rigid foams ([0029]), it would have been obvious to a one of ordinary skill in the art to choose and use the polyester polyol produced by the reaction of the phthalic acid and ethylene glycol or butanediol, which is an aromatic polyester polyol, as the only polyol component B) in the composition of Furlan et al, or at least in amount of 70 pphp (“parts per hundred polyol”), that is based on the 100 parts by mass of the polyol component B), since it would be obvious to choose material based on its suitability (as to instant claims 1 and 29). 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
33. Though Furlan et al does not exemplify the use of the aromatic polyester polyol based on the reaction of the phthalic acid and ethylene glycol or butanediol, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
34. Furthermore, though Furlan et al does not explicitly teach the use of aromatic polyester polyols as the polyol component,
1) Singh et al discloses rigid polyurethane foams prepared from a composition containing a) an organic polyisocyanate, b) an aromatic polyester polyol, where the polycarboxylic acid used to prepare said polyester polyol is aromatic ([0035]), c) organo-phosphorus compounds, d) water and hydrofluorocarbons as blowing agents (Abstract, [0010]-[0016]) and e) siloxane-oxyalkylene copolymers as foam stabilizing agents ([0050]), wherein the specifically exemplified foams are based on commercial aromatic polyester polyol STEPANPOL PS-2352 used as the only polyol component (Table 1 of Singh et al), wherein Singh et al explicitly teaches that such rigid polyurethane foams are having long term dimensional stability and increased compressive strength (Table 1).
2) As evidenced by Slack, commercial aromatic polyester polyol STEPANPOL PS-2352 is based on a reaction of phthalic anhydride and ethylene glycol (col. 6, lines 32-35).
It is further noted that the commercial aromatic polyester polyol STEPANPOL PS-2352 is used in examples of instant invention (Table 6 of instant specification).
35. Since both Furlan et al and Singh et al are related to rigid polyurethane foams based on the use of aromatic polyester polyols as the isocyanate-reactive components, polyisocyanate, siloxane-polyoxyethylene copolymer as the foam stabilizing agent/surfactant, using both water and hydrofluorocarbons as the blowing agent, and thereby belong to the same field of endeavor, wherein Singh et al teaches the use of aromatic polyester polyol formed from aromatic carboxylic acid and specifically a commercial aromatic polyester polyol STEPANPOL PS-2352 based on the reaction of phthalic anhydride and ethylene glycol, as required by Furlan et al, as the only polyol, forming rigid polyurethane foams having long term dimensional stability and increased compressive strength, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Singh et al and Furlan et al, and to use, or obvious to try to use aromatic phthalic acid/anhydride-based polyester polyol, specifically the commercial aromatic polyester polyol STEPANPOL PS-2352 as the only polyol to form the rigid polyurethane foam of Furlan et al, so to ensure said rigid polyurethane foam of Furlan et al is having long term dimensional stability and increased compressive strength, and 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
36. Furlan et al does not recite the composition further comprising a hydrocarbon having boiling point of more than 100⁰C.
37. However, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5), as stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Based on the teachings of Baumann et al that the solid polyester polyol includes polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5), it would have been obvious to a one of ordinary skill in the art to choose and use the polyester polyol based on aromatic dicarboxylic acid such as phthalic acid and ethylene glycol as the solid polyester polyol in the foam stabilizing composition of Baumann et al as well, 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
In column 4, lines 40-45, Baumann et al teaches that even liquid polyalcohols used for making the polyurethane foam include polyesters (col. 4, line 44), i.e. polyester polyols. Even though polyether polyols are cited as being preferred (col. 4, lines 45-46), this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
38. The paraffinic hydrocarbons are used as a foam stabilizing composition comprising 10-50%wt of said hydrocarbon oil with 50-90%wt of the solid polyester polyol (col. 2, lines 34-42) and said foam stabilizing composition is used in polyurethane foam composition in amount of up to 10 parts by weight (i.e. as low as close to zero parts by weight, pphp) or about 2-10 parts by weight based on 100 pbw of liquid polyalcohol (col. 2, lines 60-67). Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 2 pphp, therefore, the amount of said hydrocarbon oil in the formulation will be 0.2 pphp. Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 0.5 pph, therefore, the amount of said hydrocarbon oil in the overall formulation will be 0.05 pphp.
Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 1.5 pphp, therefore, the amount of said hydrocarbon oil in the overall formulation will be 0.15 pphp.
39. Thus, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with aromatic polyester polyol, as the stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Baumann et al discloses the use of water as preferred (i.e. not explicitly required) blowing agent (col. 5, lines 42-44) and wherein water is used in amount of 1-10 parts per 100 pbw of polyol or 2 pbw per 100 pbw of polyol (col. 5, lines 57-60).
Thus, water in the foam of Baumann et al is used in about the same amount, i.e. 1-2 pbw per 100 pbw of polyol, as that of Furlan et al.
40. Further, Baumann et al discloses that low boiling alkanes can be also used as the blowing agents along with water (col. 5, line 66-col. 6, line 3). The foam of Baumann et al also comprises silicone surfactant to control growth and stabilization of the cells (col 7, lines 20-25). In column 7, lines 20-55, Baumann et al explicitly teaches the use or organo-silicone surfactant to help control the growth and retention of the cell structure until it is sufficiently cured not to be susceptible to collapse and stabilize the cells against collapse. Thus, Baumann et al explicitly teaches away from allowing the cells to collapse, i.e. teaches away from forming an open-cell foam; but rather shows preference for formation of non-collapsed closed cells.
41. Baumann et al explicitly teaches the advantages of using said stabilizing composition to improve dimensional stability of the foam, as cited in col. 3, lines 1-5 and presented below:
PNG
media_image1.png
88
471
media_image1.png
Greyscale
42. Thus:
1) both Baumann et al and Furlan et al are related to polyurethane foams comprising:
- the combination of low boiling alkanes and water as blowing agents, wherein water is used in the same amount of 1-2 pbw per 100 pbw of polyol;
- silicone surfactant to stabilize the cell formation and
- the use of aromatic polyester polyols;
2) Baumann et al explicitly teaches the composition for said foams further comprising high boiling point paraffinic hydrocarbons in combination with solid polyester polyol as a foam stabilizing composition; Baumann et al explicitly teaches that the foams comprising said foam stabilizing composition are having enhanced dimensional stability in comparison to similar foam prepared in the absence of said additive stabilizing composition (col. 3, lines 1-3). Tables 1-2 of Baumann et al clearly show that the foam compositions comprising said high boiling point paraffin oil in combination with polyester polyol as the foam stabilizer provide improved dimensional stability and, specifically, the presence of said high boiling point paraffin oil provides said dimensional stability (see col. 10, lines 5-8; the stabilizing composition comprising only polyester polyol and not paraffin oil, does not provide acceptable dimensional stability).
3) On the other hand, the foam of Furlan et al is rigid, and thereby would require dimensional stability.
43. Since i) paraffinic hydrocarbons having boiling point of 150⁰C or more in combination with polyester polyols are taught in the art as being used as the stabilizing agent composition in polyurethane foam-forming compositions to improve dimensional stability of the produced foams, wherein the foam compositions comprise both water and low boiling point alkanes as blowing agents and silicone surfactant to stabilize cell formation, as shown by Baumann et al, and
ii) the foam composition of Furlan et al is used for making rigid foams, which foams would necessarily require dimensional stability, and at the same time the foam-forming composition of Furlan et al comprises the combination of water and low boiling point alkanes as the blowing agents and silicone surfactant to stabilize the cells, similarly to the foam-forming composition of Baumann et al, therefore,
it would have been obvious to a one of ordinary skill in the art to combine the teachings of Baumann et al and Furlan et al, and include, or obvious to try to include the foam stabilizing composition comprising the paraffinic hydrocarbon oils having boiling point at atmospheric pressure of above about 150⁰C and the aromatic polyester polyol of Baumann et al, into the composition of Furlan et al, in amount as taught by Baumann et al, such as providing 0.2 pphp, 0.15 pphp or 0.05 pphp of the hydrocarbon oil, so to further, at least partially, improve dimensional stability of the produced rigid polyurethane foam of Furlan et al, and 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). 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:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(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
44. All ranges in the composition of Furlan et al in view of Singh et al and Baumann et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
45. Given the composition of Furlan et al in view of Singh et al and Baumann et al comprises 2 pphp of the polyether-polysiloxane copolymer ([0036] of Furlan et al) and 0.2 pphp of the hydrocarbon oil, therefore, the total amount of the hydrocarbon oil and the polyether-polysiloxane copolymer will be 2.2 pphp (as to instant claims 5, 18) and the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.2:2, i.e. 1:10 (as to instant claims 1, 22, 24-25).
Given the composition of Furlan et al in view of Singh et al and Baumann et al comprises 2 pphp of the polyether-polysiloxane copolymer ([0036] of Furlan et al) and 0.05 pphp of the hydrocarbon oil, therefore, the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.05:2, i.e. 1:40 (as to instant claims 1, 22-25).
Given the composition of Furlan et al in view of Singh et al and Baumann et al comprises 3.5 pphp of the polyether-polysiloxane copolymer ([0036] of Furlan et al) and 0.15 pphp of the hydrocarbon oil, therefore, the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.15:3.5, i.e. 1:23.3 (as to instant claims 1, 22-25).
46. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of used components, i.e. the polyol, isocyanate, catalyst, blowing agent, and specifically hydrocarbon oil and the polyether-polysiloxane copolymer, since those hydrocarbon oil and polyether-polysiloxane copolymer components are used to stabilize the foam and improve dimensional stability of the foam, so to produce a final composition and polyurethane foam having a desired combination of properties, depending on the specific end-use of the final product, and desired stability, 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).
47. Though Furlan et al in view of Singh et al and Baumann et al disclose the composition comprising hydrocarbon oils having boiling temperature of above 150⁰C, specifically paraffin oil (col. 3, lines 28-42 of Baumann et al), Furlan et al in view of Singh et al and Baumann et al do not recite said paraffin oil being tetradecane.
48. However, PARAFOL Single Cut Paraffins, Sasol flyer shows commercial liquid linear paraffins made from renewable resources, including commercial product PARAFOL 14-97, used as oils and solvents.
As evidenced by PARAFFINS, Sasol flyer, the commercial product PARAFOL 14 is
n-tetradecane having boiling point of about 253⁰C and at least 97% purity (see PARAFFINS, Sasol flyer).
49. It is noted that the commercial product PARAFOL 14-97 is cited in Table 2 of instant specification (page 30/42 of instant specification and as presented below) as the component HC No.4 with name “tetradecane” and is used in inventive examples of instant specification. Therefore, the commercial product PARAFOL 14-97, Sasol as cited in PARAFOL Single Cut Paraffins, Sasol flyer corresponds to the “tetradecane” as claimed in instant claims 1, 27-28).
PNG
media_image3.png
179
495
media_image3.png
Greyscale
50. Since the PARAFOL 14-97 commercially available from Sasol is a tetradecane paraffin oil, having boiling point of more than 150⁰C, and is liquid, all of which are required by Furlan et al in view of Singh et al and Baumann et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Furlan et al in view of Singh et al and Baumann et al and PARAFOL Single Cut Paraffins, Sasol flyer, and to use, or obvious to try to use PARAFOL 14-97 commercially available from Sasol as the liquid paraffin oil having boiling point of more than 150⁰C as part of the stabilizing composition added to the composition for making polyurethane foam of Furlan et al in view of Singh et al and Baumann et al, since said PARAFOL 14-97 is having the properties required by Furlan et al in view of Singh et al and Baumann et al and 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
51. Since the foam of Furlan et al in view of Singh et al, Baumann et al and PARAFOL Single Cut Paraffins, Sasol flyer is rigid and is produced from substantially the same composition as claimed in instant invention, therefore, the rigid foam of Furlan et al in view of Singh et al, Baumann et al and PARAFOL Single Cut Paraffins, Sasol flyer will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including closed cell content of at least 80% or 90%, which are the same as those claimed in instant invention, or having ranges overlapping with those as claimed in instant invention as well (as to instant claims 1, 26), especially since the foam of Furlan et al in view of Singh et al, Baumann et al and PARAFOL Single Cut Paraffins is rigid and, as evidenced by Bodnar et al, the term “rigid” in respect of the foam products means a cellular polyurethane-polyisocyanurate having a closed cell content of at least 85% (see col. 2, lines 50-52 of Bodnar et al), as also presented below:
PNG
media_image4.png
60
403
media_image4.png
Greyscale
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.
52. It is further noted that instant specification does not provide any evidence of criticality in using decene, dodecene, dodecane, tetradecane, tributene, tributane, tetrabutene, tetrabutane, oxo process oils or alkylbenzene having at least 10 carbon atoms in the hydrocarbon claimed composition, since all examples of instant invention are shown as comprising only said hydrocarbons. Further, the examples of instant specification do not recite the closed cell content of the polyurethane foams at all.
53. With respect to the Declaration under 37 CFR 1.132 filed by Applicant on May 29, 2026, it is noted that:
1) Baumann et al is a secondary reference which was applied for the teaching of the use of the combination of the paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Baumann et al clearly teaches the use of polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as part of said stabilizing composition. Furlan teaches the polyol component B) including polyester polyols based on a reaction of phthalic acid/anhydride with ethylene glycol ([0029]). Even though “the amount of polyester polyol is limited to a maximum 9 parts by weight” in Baumann et al, said amount is introduced into the foam composition of Furlan in addition to the aromatic polyester polyol component B) of Furlan. Given the polyester polyols based on the reaction of the phthalic acid and the ethylene glycol are the only polyols used as the component B) of Furlan and as the solid polyester polyol of the stabilizing composition of Baumann et al, therefore, said polyester polyols based on phthalic acid, i.e. aromatic polyester polyols, will be used in amount of 100%wt based on the overall polyol component, i.e. more than 70pphp of the overall polyol component in the composition of Furlan et al in view of Singh et al, Baumann et al and C1012 Normal Paraffin, Sasol flyer.
3) The evidence of record that Baumann et al discloses “an inseparable combination of hydrocarbon oil and a polyester polyol” is acknowledged. However, given the polyester polyol used in said combination includes aromatic polyester polyols (col. 3, line 68-col. 4, line 5 of Baumann et al) and the polyols as the component B) in the composition of Furlan et al are aromatic polyester polyols as well, therefore, addition of more aromatic polyester polyol in a minor amount as part of said combination to the composition of Furlan et al will just further increase the amount of said aromatic polyester polyol in the composition of Furlan et al as well, making that amount substantially close to 100 pphp.
54. Claims 1, 5, 18, 22-29 are rejected under 35 U.S.C. 103 as being unpatentable over Barber et al (US 2004/0162359) in view of Baumann et al (US 5,310,766) and C1012 Normal Paraffin, Sasol flyer, 2011, as evidenced by Hydrocarbons-Physical Data, the Engineering Toolbox flyer.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
55. Barber et al discloses rigid polyurethane foams made from a composition comprising:
A) at least 98%wt, or 100%wt, based on the total of polyol component, of an aromatic polyester polyol, which is based on aromatic acid (claim 15), preferably phthalic acid anhydride or terephthalic acid, and ethylene glycol or propylene glycol ([0043], [0050], [0051], as to instant claims 1, 29);
B) polyisocyanates;
C) blowing agent that includes 0.1-2%wt of water and hydrocarbons/hydrofluorocarbons (Abstract, [0061], [0062]), and
D) 0.05-1.5%wt of a surfactant that regulates the cell’s structure, specifically silicone-polyoxyalkylene surfactants ([0012], [0065]),
wherein the foam is specified as having a closed cell content of about 90% or more ([0016], as to instant claims 1, 26).
Based on the teachings of Barber et al, it would have been obvious to a one of ordinary skill in the art to choose and use the aromatic polyester polyol component A) produced by a reaction of terephthalic acid or phthalic acid with ethylene glycol or propylene glycol, as the component A) in the composition of Barber et al, 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).
The isocyanate index (i.e. index of formulation) is less than 3.5, preferably about 3.0 ([0025], [0034]), corresponding to about 300 as calculated in instant specification (page 24/38, lines 25-28 of instant specification).
It is noted that Barber et al discloses the water used in amount of 0.6%wt per 39.74%wt of polyol, i.e. 1.5 pph based on 100 pph of polyol (Example 1 of Barber et al).
56. Barber et al does not recite the composition further comprising a hydrocarbon having boiling point of more than 100⁰C.
57. However, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Based on the teachings of Baumann et al that the solid polyester polyol includes polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5), it would have been obvious to a one of ordinary skill in the art to choose and use the polyester polyol based on aromatic dicarboxylic acid such as phthalic acid and ethylene glycol as the solid polyester polyol in the foam stabilizing composition of Baumann et al as well, 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
In column 4, lines 40-45, Baumann et al teaches that even liquid polyalcohols used for making the polyurethane foam include polyesters (col. 4, line 44), i.e. polyester polyols. Even though polyether polyols are cited as being preferred (col. 4, lines 45-46), this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
58. The foam stabilizing composition comprises 10-50%wt of said hydrocarbon oil with 50-90%wt of the solid polyester polyol (col. 2, lines 34-42) and said foam stabilizing composition is used in polyurethane foam composition in amount of up to 10 parts by weight (i.e. as low as close to zero parts by weight) or about 2-10 parts by weight based on 100 pbw of liquid polyalcohol (col. 2, lines 60-67). Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 2 pphp, therefore, the amount of said hydrocarbon will be 0.2 pphp. Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 0.5 pph, therefore, the amount of said hydrocarbon oil will be 0.05 pphp.
59. Thus, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with aromatic polyester polyol, as the stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Baumann et al discloses the use of water as preferred (i.e. not explicitly required) blowing agent (col. 5, lines 42-44) and wherein water is used in amount of 1-10 parts per 100 pbw of polyol or 2 pbw per 100 pbw of polyol (col. 5, lines 57-60).
As cited above, Barber et al discloses the water used in amount of 0.6%wt per 39.74%wt of polyol, i.e. 1.5 pph based on 100 pph of polyol (Example 1 of Barber et al), i.e. water is used in about the same amounts in both Baumann et al and Barber et al.
60. Further, Baumann et al discloses that low boiling alkanes can be also used as the blowing agents along with water (col. 5, line 66-col. 6, line 3). The foam of Baumann et al also comprises silicone surfactant to control growth and stabilization of the cells (col 7, lines 20-25). In column 7, lines 20-55, Baumann et al explicitly teaches the use or organo-silicone surfactant to help control the growth and retention of the cell structure until it is sufficiently cured not to be susceptible to collapse and stabilize the cells against collapse. Thus, Baumann et al explicitly teaches away from allowing the cells to collapse, i.e. teaches away from forming an open-cell foam; but rather shows preference for formation of non-collapsed closed cells.
61. Baumann et al explicitly teaches the advantages of using said stabilizing composition to improve dimensional stability of the foam, as cited in col. 3, lines 1-5 and presented below:
PNG
media_image1.png
88
471
media_image1.png
Greyscale
62. Thus:
1) both Baumann et al and Barber et al are related to polyurethane foams comprising:
- the combination of low boiling alkanes and water as blowing agents;
- silicone surfactant to stabilize the cell formation;
- aromatic polyester polyols.
2) Baumann et al explicitly teaches the composition for said foams further comprising high boiling point paraffinic hydrocarbons in combination with polyester polyol as a foam stabilizing composition; Baumann et al explicitly teaches that the foams comprising said foam stabilizing composition are having enhanced dimensional stability in comparison to similar foam prepared in the absence of said additive stabilizing composition (col. 3, lines 1-3). Tables 1-2 of Baumann et al clearly show that the foam compositions comprising said high boiling point paraffin oil and the polyester polyol provide improved dimensional stability and, specifically, the presence of said high boiling point paraffin oil provides said dimensional stability (see col. 10, lines 5-8; the stabilizing composition comprising only polyester polyol and not paraffin oil, does not provide acceptable dimensional stability).
3) On the other hand, the foam of Barber et al is rigid, and requires dimensional stability ([0093]).
63. Since i) paraffinic hydrocarbon oils having boiling point of 150⁰C or more in combination with polyester polyols are taught in the art as being used as stabilizing agents in polyurethane foam-forming compositions to improve dimensional stability of the produced foams, wherein the foam compositions comprise both water and low boiling point alkanes as blowing agents and silicone surfactant to stabilize cell formation, as shown by Baumann et al, and
ii) the foam composition of Barber et al is used for making rigid foams, which foams would necessarily require dimensional stability, and at the same time the foam-forming composition of Barber et al comprises the combination of water and low boiling point alkanes as the blowing agents and silicone surfactant to stabilize the cells, similarly to the foam-forming composition of Baumann et al, therefore,
it would have been obvious to a one of ordinary skill in the art to combine the teachings of Baumann et al and Barber et al, and include, or obvious to try to include the stabilizing composition comprising said paraffinic hydrocarbon oils having boiling point at atmospheric pressure of above about 150⁰C and the polyester polyols of Baumann et al into the composition of Barber et al, in amount as taught by Baumann et al, such as providing 0.2 pphp or 0.05 pphp of the hydrocarbon oil, so to further, at least partially, improve dimensional stability of the produced rigid polyurethane foam of Barber et al, and 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). 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:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(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
64. All ranges in the composition of Barber et al in view of Baumann et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
65. Given the composition of Barber et al in view of Baumann et al comprises 0.87%wt of silicone surfactant DC-193 per 39.74%wt of polyol, i.e. 2.19 pphp of the polyether-polysiloxane copolymer (Example 1 of Table 1 of Barber et al) and 0.2 pphp of the hydrocarbon oil, therefore, the total amount of the hydrocarbon oil and the polyether-polysiloxane copolymer will be 2.39 pph (as to instant claims 5, 18) and the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.2:2.19, i.e. 1:11 (as to instant claims 1, 22, 24-25).
Given the composition of Barber et al in view of Baumann et al comprises 2.19 pphp of the polyether-polysiloxane copolymer (Example 1 of Table 1 of Barber et al) and 0.05 pphp of the hydrocarbon oil, therefore, the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.05:2.19, i.e. 1:44 (as to instant claims 1, 22-25).
66. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of used components, i.e. the polyol, isocyanate, catalyst, blowing agent, and specifically hydrocarbon oil and polyether-polysiloxane copolymer, since those hydrocarbon oil and polyether-polysiloxane copolymer are used to stabilize the foam and improve dimensional stability of the foam, so to produce a final composition and polyurethane foam having a desired combination of properties, depending on the specific end-use of the final product, and desired level stability, 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).
67. Though Barber et al in view of Baumann et al disclose the stabilizing composition comprising hydrocarbon oils having boiling temperature of above 150⁰C, specifically paraffin oil (col. 3, lines 28-42 of Baumann et al), Barber et al in view of Baumann et al do not recite said paraffin oil being dodecane.
68. However, C1012 Normal Paraffin, Sasol flyer recites the commercially available C1012 Normal paraffin mixture of C10-C12 carbon range, having low viscosity and low odor (see the flyer). As evidenced by Hydrocarbons-Physical Data, the Engineering Toolbox flyer, the C10-C12 paraffins are having boiling point of 174-216⁰C (see the Hydrocarbons-Physical Data, the Engineering Toolbox flyer).
As can be seen from the C1012 Normal Paraffin, Sasol flyer, the C1012 Normal paraffin mixture includes C12 n-paraffin, which is called “dodecane”.
69. It is noted that the commercial product C1012 Normal Paraffin mixture commercially available from Sasol is cited in Table 2 of instant specification (page 30/42 of instant specification and as presented below) as the component HC No.3 with name “dodecane” and is used in inventive examples of instant specification. Therefore, the commercial product C1012 Normal Paraffin mixture, Sasol as cited in C1012 Normal Paraffin, Sasol flyer, corresponds to the “dodecane” as claimed in instant claims 1, 27-28. Instant specification describes “dodecane” only as commercial product C1012 Normal Paraffin (Sasol); instant specification does not require the used “dodecane” being as a pure compound used alone.
PNG
media_image3.png
179
495
media_image3.png
Greyscale
70. Since the C1012 Normal Paraffin mixture commercially available from Sasol is a paraffin oil, having boiling point of more than 150⁰C, and is having low viscosity, all of which are required by Barber et al in view of Baumann et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Barber et al in view of Baumann et al and C1012 Normal Paraffin, Sasol flyer, and to use, or obvious to try to use C1012 Paraffin Mixture commercially available from Sasol as the low viscosity paraffin oil having boiling point of more than 150⁰C in the stabilizing composition added to the composition for making polyurethane foam of Barber et al in view of Baumann et al, since said C1012 Paraffin Mixture is having the properties as required by Barber et al in view of Baumann et al and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 1, 27-28). 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
71. Since the foam of Barber et al in view of Baumann et al and C1012 Normal Paraffin, Sasol flyer is rigid and is produced from substantially the same composition as claimed in instant invention, including the use of commercial aromatic polyester polyol STEPANPOL PS-2352, therefore, the rigid foam of Barber et al in view of Baumann et al and C1012 Normal Paraffin, Sasol flyer will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including closed cell content of at least 80% or more than 90%, which are the same as those claimed in instant invention, or having ranges overlapping with those as claimed in instant invention as well, especially since Barber et al discloses the rigid foam having a closed cell content of 90% or more ([0016], as to instant claims 1, 26). 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.
72. It is further noted that instant specification does not provide any evidence of criticality in using decene, dodecene, dodecane, tetradecane, tributene, tributane, tetrabutene, tetrabutane, oxo process oils or alkylbenzene having at least 10 carbon atoms in the hydrocarbon claimed composition, since all examples of instant invention are shown as comprising only said hydrocarbons. Further, the examples of instant specification do not recite the closed cell content of the polyurethane foams at all.
73. With respect to the Declaration under 37 CFR 1.132 filed by Applicant on May 29, 2026, it is noted that:
1) Baumann et al is a secondary reference which was applied for the teaching of the use of the combination of the paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Baumann et al clearly teaches the use of polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as part of said stabilizing composition. Barber et al discloses the use of at least 98%wt, or even 100%wt of aromatic polyester polyol as the polyol component.
Even though “the amount of polyester polyol is limited to a maximum 9 parts by weight” in Baumann et al, said amount is introduced into the foam composition of Barber et al in addition to the aromatic polyester polyol component A) of Barber et al. Given the aromatic polyester polyols are the only polyols used as the component A) of Barber et al and as the solid polyester polyol of the stabilizing composition of Baumann et al, therefore, said aromatic polyester polyols will be used in amount of 100%wt based on the overall polyol component, i.e. more than 70pphp of the overall polyol component in the composition of Barber et al in view of Baumann et al and C1012 Normal Paraffin, Sasol flyer.
74. Claims 1, 5, 18, 22-29 are rejected under 35 U.S.C. 103 as being unpatentable over Barber et al (US 2004/0162359) in view of Baumann et al (US 5,310,766)
and PARAFOL Paraffins flyer, 2010, as evidenced by PARAFFINS flyer, Sasol.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
75. Barber et al discloses rigid polyurethane foams made from a composition comprising:
A) at least 98%wt, or 100%wt, based on the total of polyol component, of an aromatic polyester polyol, which is based on aromatic acid (claim 15), preferably phthalic acid anhydride or terephthalic acid, and ethylene glycol or propylene glycol ([0043], [0050], [0051], as to instant claims 1, 29);
B) polyisocyanates;
C) blowing agent that includes 0.1-2%wt of water and hydrocarbons/hydrofluorocarbons (Abstract, [0061], [0062]), and
D) 0.05-1.5%wt of a surfactant that regulates the cell’s structure, specifically silicone-polyoxyalkylene surfactants ([0012], [0065]),
wherein the foam is specified as having a closed cell content of about 90% or more ([0016], as to instant claims 1, 26).
The isocyanate index (i.e. index of formulation) is less than 3.5, preferably about 3.0 ([0025], [0034]), corresponding to about 300 according to calculations provided in instant specification (p. 24/38, lines 25-28 of instant specification).
It is noted that Barber et al discloses the water used in amount of 0.6%wt per 39.74%wt of polyol, i.e. 1.5 pph based on 100 pph of polyol (Example 1 of Barber et al).
Based on the teachings of Barber et al, it would have been obvious to a one of ordinary skill in the art to choose and use the aromatic polyester polyol component A) produced by a reaction of terephthalic acid or phthalic acid with ethylene glycol or propylene glycol, as the component A) in the composition of Barber et al, 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).
76. Barber et al does not recite the composition further comprising a hydrocarbon having boiling point of more than 100⁰C.
77. However, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Based on the teachings of Baumann et al that the solid polyester polyol includes polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5), it would have been obvious to a one of ordinary skill in the art to choose and use the polyester polyol based on aromatic dicarboxylic acid such as phthalic acid and ethylene glycol as the solid polyester polyol in the foam stabilizing composition of Baumann et al as well, 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
In column 4, lines 40-45, Baumann et al teaches that even liquid polyalcohols used for making the polyurethane foam include polyesters (col. 4, line 44), i.e. polyester polyols. Even though polyether polyols are cited as being preferred (col. 4, lines 45-46), this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
78. The foam stabilizing composition comprises 10-50%wt of said hydrocarbon oils with 50-90%wt of the solid polyester polyol (col. 2, lines 34-42) and said foam stabilizing composition is used in polyurethane foam composition in amount of up to 10 parts by weight (i.e. as low as close to zero parts by weight) or about 2-10 parts by weight based on 100 pbw of liquid polyalcohol (col. 2, lines 60-67). Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 2 pphp, therefore, the amount of said hydrocarbon oil in the formulation will be 0.2 pphp. Given the foam stabilizing composition comprises 10%wt of the hydrocarbon oil and said stabilizing composition is used in the polyurethane -producing formulation in amount of 0.5 pph, therefore, the amount of said hydrocarbon oil in the formulation will be 0.05 pphp.
79. Thus, Baumann et al specifically teaches the use of paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with aromatic polyester polyol, as the stabilizing agent in polyurethane foams produced using both water, (per)fluorocarbons and hydrogen-containing chlorofluorocarbons (HFCs and HCFC) (col. 3, lines 15-47; col. 5, lines 43-45; col. 5, line 65-col. 6, line 10).
Baumann et al discloses the use of water as preferred (i.e. not explicitly required) blowing agent (col. 5, lines 42-44) and wherein water is used in amount of 1-10 parts per 100 pbw of polyol or 2 pbw per 100 pbw of polyol (col. 5, lines 57-60).
As cited above, Barber et al discloses the water used in amount of 0.6%wt per 39.74%wt of polyol, i.e. 1.5 pph based on 100 pph of polyol (Example 1 of Barber et al), i.e. water is used in about the same amounts in both Baumann et al and Barber et al.
80. Further, Baumann et al discloses that low boiling alkanes can be also used as the blowing agents along with water (col. 5, line 66-col. 6, line 3). The foam of Baumann et al also comprises silicone surfactant to control growth and stabilization of the cells (col 7, lines 20-25). In column 7, lines 20-55, Baumann et al explicitly teaches the use or organo-silicone surfactant to help control the growth and retention of the cell structure until it is sufficiently cured not to be susceptible to collapse and stabilize the cells against collapse. Thus, Baumann et al explicitly teaches away from allowing the cells to collapse, i.e. teaches away from forming an open-cell foam; but rather shows preference for formation of non-collapsed closed cells.
81. Baumann et al explicitly teaches the advantages of using said stabilizing composition to improve dimensional stability of the foam, as cited in col. 3, lines 1-5 and presented below:
PNG
media_image1.png
88
471
media_image1.png
Greyscale
82. Thus:
1) both Baumann et al and Barber et al are related to polyurethane foams comprising:
- the combination of low boiling alkanes and water as blowing agents;
- silicone surfactant to stabilize the cell formation;
- aromatic polyester polyols.
2) Baumann et al explicitly teaches the composition for said foams further comprising high boiling point paraffinic hydrocarbons in combination with polyester polyol as a foam stabilizing composition; Baumann et al explicitly teaches that the foams comprising said foam stabilizing composition are having enhanced dimensional stability in comparison to similar foam prepared in the absence of said additive stabilizing composition (col. 3, lines 1-3). Tables 1-2 of Baumann et al clearly show that the foam compositions comprising said high boiling point paraffin oil provide improved dimensional stability and, specifically, the presence of said high boiling point paraffin oil provides said dimensional stability (see col. 10, lines 5-8; the stabilizing composition comprising only polyester polyol and not paraffin oil, does not provide acceptable dimensional stability).
3) On the other hand, the foam of Barber et al is rigid, and requires dimensional stability ([0093]).
83. Since i) paraffinic hydrocarbons having boiling point of 150⁰C or more in combination with polyester polyols are taught in the art as being used as stabilizing agent composition in polyurethane foam-forming compositions to improve dimensional stability of the produced foams, wherein the foam compositions comprise both water and low boiling point alkanes as blowing agents and silicone surfactant to stabilize cell formation, as shown by Baumann et al, and
ii) the foam composition of Barber et al is used for making rigid foams, which foams would necessarily require dimensional stability, and at the same time the foam-forming composition of Barber et al comprises the combination of water and low boiling point alkanes as the blowing agents and silicone surfactant to stabilize the cells, similarly to the foam-forming composition of Baumann et al, therefore,
it would have been obvious to a one of ordinary skill in the art to combine the teachings of Baumann et al and Barber et al, and include, or obvious to try to include the stabilizing composition comprising said paraffinic hydrocarbon oils having boiling point at atmospheric pressure of above about 150⁰C and the polyester polyols of Baumann et al into the composition of Barber et al, in amount as taught by Baumann et al, such as providing 0.2 pphp or 0.05 pphp of the hydrocarbon oil, so to further, at least partially, improve dimensional stability of the produced rigid polyurethane foam of Barber et al, and 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). 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:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(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
84. All ranges in the composition of Barber et al in view of Baumann et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
85. Given the composition of Barber et al in view of Baumann et al comprises 0.87%wt of silicone surfactant DC-193 per 39.74%wt of polyol, i.e. 2.19 pphp of the polyether-polysiloxane copolymer (Example 1 of Table 1 of Barber et al) and 0.2 pphp of the hydrocarbon oil, therefore, the total amount of the hydrocarbon oil and the polyether-polysiloxane copolymer will be 2.39 pphp (as to instant claims 5, 18) and the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.2:2.19, i.e. 1:11 (as to instant claims 1, 22, 24-25).
Given the composition of Barber et al in view of Baumann et al comprises 2.19 pphp of the polyether-polysiloxane copolymer (Example 1 of Table 1 of Barber et al) and 0.05 pphp of the hydrocarbon oil, therefore, the weight ratio of the hydrocarbon oil to the polyether-polysiloxane copolymer will be 0.05:2.19, i.e. 1:44 (as to instant claims 1, 22-25).
86. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of used components, i.e. the polyol, isocyanate, catalyst, blowing agent, and specifically hydrocarbon oil and polyether-polysiloxane copolymer, since those hydrocarbon oil and polyether-polysiloxane copolymer are used to stabilize the foam and improve dimensional stability of the foam, so to produce a final composition and polyurethane foam having a desired combination of properties, depending on the specific end-use of the final product, and desired level of stability, 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).
87. Though Barber et al in view of Baumann et al disclose the stabilizing composition comprising hydrocarbon oils having boiling temperature of above 150⁰C, specifically paraffin oil (col. 3, lines 28-42 of Baumann et al), Barber et al in view of Baumann et al do not recite said paraffin oil being tetradecane.
88. However, PARAFOL Single Cut Paraffins, Sasol flyer shows commercial liquid linear paraffins made from renewable resources, including commercial product PARAFOL 14-97, used as oils and solvents.
As evidenced by PARAFFINS, Sasol flyer, the commercial product PARAFOL 14 is
n-tetradecane having boiling point of about 253⁰C and at least 97% purity (see PARAFFINS, Sasol flyer).
89. It is noted that the commercial product PARAFOL 14-97 is cited in Table 2 of instant specification (page 30/42 of instant specification and as presented below) as the component HC No.4 with name “tetradecane” and is used in inventive examples of instant specification. Therefore, the commercial product PARAFOL 14-97, Sasol as cited in PARAFOL Single Cut Paraffins, Sasol flyer corresponds to the “tetradecane” as claimed in instant claims 1, 27-28).
PNG
media_image3.png
179
495
media_image3.png
Greyscale
90. Since the PARAFOL 14-97 commercially available from Sasol is a tetradecane paraffin oil, having boiling point of more than 150⁰C, and is liquid, all of which are required by Barber et al in view of Baumann et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Barber et al in view of Baumann et al and PARAFOL Single Cut Paraffins, Sasol flyer, and to use, or obvious to try to use PARAFOL 14-97 commercially available from Sasol as the liquid paraffin oil having boiling point of more than 150⁰C in the stabilizing composition added to the composition for making polyurethane foam of Barber et al in view of Baumann et al, since said PARAFOL 14-97 is having the properties required by Barber et al in view of Baumann et al and 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
91. Since the foam of Barber et al in view of Baumann et al and PARAFOL Single Cut Paraffins, Sasol flyer is rigid and is produced from substantially the same composition as claimed in instant invention, therefore, the rigid foam of Barber et al in view of Baumann et al and PARAFOL Single Cut Paraffins, Sasol flyer will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including closed cell content, which are the same as those claimed in instant invention, or having ranges overlapping with those as claimed in instant invention as well, especially since Barber et al discloses the rigid foam having a closed cell content of 90% or more ([0016], as to instant claims 1, 26). 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.
92. It is further noted that instant specification does not provide any evidence of criticality in using decene, dodecene, dodecane, tetradecane, tributene, tributane, tetrabutene, tetrabutane, oxo process oils or alkylbenzene having at least 10 carbon atoms as hydrocarbons in the claimed composition, since all examples of instant invention are shown as comprising only said hydrocarbons.
93. With respect to the Declaration under 37 CFR 1.132 filed by Applicant on May 29, 2026, it is noted that:
1) Baumann et al is a secondary reference which was applied for the teaching of the use of the combination of the paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Baumann et al clearly teaches the use of polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as part of said stabilizing composition. Barber et al discloses the use of at least 98%wt, or even 100%wt of aromatic polyester polyol as the polyol component.
Even though “the amount of polyester polyol is limited to a maximum 9 parts by weight” in Baumann et al, said amount is introduced into the foam composition of Barber et al in addition to the aromatic polyester polyol component A) of Barber et al. Given the aromatic polyester polyols are the only polyols used as the component A) of Barber et al and as the solid polyester polyol of the stabilizing composition of Baumann et al, therefore, said aromatic polyester polyols will be used in amount of 100%wt based on the overall polyol component, i.e. more than 70pphp of the overall polyol component in the composition of Barber et al in view of Baumann et al and C1012 Normal Paraffin, Sasol flyer.
Response to Arguments
94. Applicant's arguments filed on May 29, 2026 have been fully considered, but they are moot in light of new grounds of rejections and discussion set forth above.
95. In addition, it is noted that the above rejections are based on combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
96. With respect to the Declaration under 37 CFR 1.132 filed by Applicant on May 29, 2026, it is noted that:
1) Baumann et al is a secondary reference which was applied for the teaching of the use of the combination of the paraffinic hydrocarbon oils having low aromatic content and boiling point at atmospheric pressure of above about 150⁰C in combination with solid polyester polyols including polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as stabilizing agent in polyurethane foams. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Baumann et al clearly teaches the use of polyester polyols based on aromatic dicarboxylic acids such as phthalic acid and ethylene glycol (col. 3, lines 68-col. 4, line 5) as part of said stabilizing composition. Furlan teaches the polyol component B) including polyester polyols based on a reaction of phthalic acid/anhydride with ethylene glycol ([0029]). Even though “the amount of polyester polyol is limited to a maximum 9 parts by weight” in Baumann et al, said amount is introduced into the foam composition of Furlan in addition to the aromatic polyester polyol component B) of Furlan. Given the polyester polyols based on the reaction of the phthalic acid and the ethylene glycol are the only polyols used as the component B) of Furlan and as the solid polyester polyol of the stabilizing composition of Baumann et al, therefore, said polyester polyols based on phthalic acid, i.e. aromatic polyester polyols, will be used in amount of 100%wt based on the overall polyol component, i.e. more than 70pphp of the overall polyol component in the composition of Furlan et al in view of Singh et al, Baumann et al and C1012 Normal Paraffin, Sasol flyer.
3) The evidence of record that Baumann et al discloses “an inseparable combination of hydrocarbon oil and a polyester polyol” is acknowledged. However, given the polyester polyol used in said combination includes aromatic polyester polyols (col. 3, line 68-col. 4, line 5 of Baumann et al) and the polyols as the component B) in the composition of Furlan et al are aromatic polyester polyols as well, therefore, addition of more aromatic polyester polyol in a minor amount as part of said combination to the composition of Furlan et al will just further increase the amount of said aromatic polyester polyol in the composition of Furlan et al as well, making that amount substantially close to 100 pphp.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. 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.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
Prosecution Insights