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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 18, 2025 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: line 3 of the claim should be amended to recite “an isocyanate component comprising
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 17 and 19 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Upon further review of the claims, it is noted that there is a lack of antecedent basis for “the” wt.% recited in the last line of Claim 1. It is unclear to which of the previously recited wt.% ranges “the” wt.% refers. As Claims 2 – 17 and 19 – 20 all depend directly or indirectly on Claim 1, they also inherit this deficiency. For the purposes of examination, the aforementioned phrase in Claim 1 will be interpreted as setting forth “each” wt.%.
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.
Claims 1 – 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,506,813 to Parfondry et al. (hereinafter Parfondry) in view of US 2006/0160913 to Sasaki et al. (hereinafter Sasaki), as evidenced by US 2016/0069378 to Zook et al. (hereinafter Zook) and CA 1,308,514 to Gansen et al. (hereinafter Gansen).
Regarding Claims 1, 5, 7, 8, and 19. Parfondry et al. teaches a reactive composition for producing a polyurethane foam (Column 6, Line 66 – Column 7, Line 21). In Example 7, the reaction composition comprises an isocyanate component comprising isocyanate B which comprises methylene diphenyl diisocyanate (MDI) and a polyol blend/isocyanate-reactive component (Column 8, Lines 16 – 20 and 25 – 27; as well Example 7 shown in the last table in Column 8). Using the amounts provided in the last table in Column 8, the isocyanate-reactive components can be calculated as containing:
38 weight percent Polyol C, wherein Polyol C is a triethanolamine/propylene oxide (PO) polyether polyol having a functionality of 3 and a hydroxyl value of 350 mgKOH/g (Column 8, Lines 9 – 10). Per the instant specification, polyols prepared by reacting an amine-containing starter molecule, e.g. triethanolamine, with an alkylene oxide, e.g. propylene oxide, correspond to autocatalytic polyols (see [0073] – [0075] of the PG-PUB of the instant application);
58 weight percent Polyol A, wherein Polyol A is a polyol having a functionality of 3 and a hydroxyl value of 42 mgKOH/g (Column 8, Lines 3 – 4);
0.3 weight percent D33 LV from Air Products (Column 8, Line 20), wherein Zook provides evidence that D33 LV from Air Products is 33% triethylenediamine and 67% dipropylene glycol. The 0.3 weight percent D 33 LV used in Example 7 of Parfondry thus provides roughly 0.2 weight percent crosslinker (dipropylene glycol) and 0.1 weight percent amine catalyst (triethylenediamine);
0.7 weight percent B4113 surfactant (Column 8, Line 21). Gansen provides evidence that B4113 is a commercial polyether siloxane (Page 16, Lines 10 – 11); and
2 weight percent water (see last table in Column 8).
Parfondry does expressly teach the reactive composition further comprises one of the claimed species of crosslinker in the claimed amount. However, Parfondry does envision the use of crosslinking agents in the disclosed reactive compositions (Column 5, Lines 43 – 46). Secondary reference Sasaki teaches the concept of using a crosslinking agent, such as trimethylolpropane or pentaerythritol, in an amount of preferably 0.5 to 10 parts by mass of the polyol [0042]. Parfondry and Sasaki are analogous art as they are from the same field of endeavor, namely polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art provide a crosslinker, such as trimethylolpropane or pentaerythritol, in the amount taught by Sasaki in the isocyanate-reactive component of Parfondry. The motivation would have been that the use of crosslinking agents provide advantages such as increasing the strength of the final product, while Sasaki provides disclosure of species, as well as amounts thereof, which are suitably used in the preparation of polyurethane foams [0042].
Parfondry does not expressly characterize the foam produced in Example 7 as “semi-rigid”. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Parfondry, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a “semi-rigid” polyurethane foam, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 2 and 3. Parfondry et al. teaches the reactive composition of Claim 1 wherein the isocyanate reactive component is provided in an amount of 103 parts by weight and the isocyanate component is provided in an amount of 103 parts by weight (see Example 7 in last table in Column 8), corresponding to a weight ratio of roughly 1:1.
Regarding Claim 4. Parfondry et al. teaches the reactive composition of Claim 1 wherein the isocyanate reactive component and the isocyanate component are provided at an isocyanate index of 80 (see Example 7 in last table in Column 8).
Regarding Claim 6. Parfondry teaches the reactive composition of Claim 1 wherein the starter molecule used to prepare Polyol C is triethanolamine, instead of ethanolamine as claimed. However, in the disclosure, Parfondry teaches both triethanolamine and ethanolamine are suitably used as initiators for preparing the amine-initiated polyol b3 (Column 4, Line 56 – Column 5, Line 6). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art substitute ethanolamine for the triethanolamine used to prepare Polyol C in Example 7 of Parfondry. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Parfondry teaches both triethanolamine and ethanolamine are suitably used as initiators for preparing the amine-initiated polyol b3, thus providing evidence of obviousness in substituting one for the other.
Regarding Claims 9 and 10. Parfondry teaches the reactive composition of Claim 1 but does not expressly teach the reaction composition of Example 7 further comprises an additive. However, in the disclosure, Parfondry teaches additives, such as flame proofing agents, may be included in the disclosed reactive compositions (Column 5, Lines 43 – 51). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art include an additive, such as a flame proofing agent, in Example 7 of Parfondry. The motivation would have been that inclusion of a flame proofing agent would be expected to improve the flame resistance of the foam product.
Claims 11 – 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,506,813 to Parfondry et al. (hereinafter Parfondry) in view of US 2006/0160913 to Sasaki et al. (hereinafter Sasaki), as evidenced by US 2016/0069378 to Zook et al. (hereinafter Zook) and CA 1,308,514 to Gansen et al. (hereinafter Gansen) - as applied to Claim 1 above - and further in view of US 2008/0125507 to Jenny et al. (hereinafter Jenny)
Regarding Claims 11 – 13 and 20. Parfondry teaches a process for preparing a polyurethane foam comprising mixing the reactive composition of Claim 1 and curing (see Column 8 and specifically Example 7). Parfondry does not teach a heating step and thus it would be reasonably expected that the foam is prepared at room temperature, i.e. less than 80°C.
Parfondry does not teach the foam obtained has a density of less than 40 kg/m3. However, Jenny teaches the concept of preparing a polyurethane foam which has a density of preferably less than 2.3 pcf (36 kg/m3) [0070]. Parfondry and Jenny are analogous art as they are from the same field of endeavor, namely polyurethane foams prepared from amine-initiated polyether polyols in combination with lower hydroxyl number polyols. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to adjust the concentration of blowing agent (water) in Example 7 of Parfondry to prepare a foam with a density in the range taught by Jenny. The motivation would have been that doing so would result in a foam article which, when prepared to have the same dimensions as originally taught, would be lighter weight.
Parfondry is silent with respect to the tack free time of the reactive composition and does not expressly characterize the foam produced as semi-rigid. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Parfondry, when modified in the manner proposed above, teach a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. a reactive composition having a tack free time of less than 15 seconds and a foam product which is semi-rigid, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claims 14 – 17. Parfondry teaches the reactive composition of Claim 1 but does not teach it is used in a process for filling a cavity. However, Jenny teaches reactive composition may be used to fill a cavity by a process comprising injecting the reactive composition into a cavity and curing to provide a prepared foam which maintains surface contact with the surface which forms the cavity [0073]. The cavity may specifically be part of an automotive body structural component [0071]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the reaction composition of Example 7 of Parfondry in a method for filling a cavity as taught by Jenny. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Jenny shows that these types of reaction compositions are suitably used in the preparation of cavity-filling polyurethane foams.
Response to Arguments
Applicant's arguments filed September 18, 2025 have been fully considered but they are not persuasive because:
A) Applicant incorporates by reference all prior arguments from the replies and, in particular, the arguments filed in the reply of August 28, 2024. However, these arguments were not found persuasive for at least the reasons detailed on Pages 9 – 12 of the Office action mailed March 18, 2025.
B) Applicant additionally argues that the disclosures of the applied references do not teach or suggest a polyether polysiloxane and/or polyether siloxane. However, the outstanding and present rejections rely on Example 7 of Parfondry. In this example, B4113 is used as the surfactant. Newly applied evidentiary reference CA 1,308,514 to Gansen discloses that B4113 is a commercial polyether siloxane (Page 16, Lines 10 – 11).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764