DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1, 6, and 8 are objected to because of the following informalities: it is suggested the claims be amended to recite, for example, “(i) an acid-blocked pyrrolidine catalyst corresponding to a mixture of compounds represented by formula (1) and formula (2)”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/050970 to Li et al. (hereinafter Li) in view of US 5,328,938 to Wishneski et al. (hereinafter Wishneski).
Regarding Claims 1 and 3. Li teaches a polyurethane formulation comprising a catalyst system; an isocyanate, i.e. a compound containing an isocyanate functional group; a polyol, i.e. an active hydrogen-containing compound; and a hydrohaloolefin blowing agent [0003].
With respect to the instantly claimed acid-blocked pyrrolidine catalyst, Li teaches the catalyst system may comprise 1,4-di-(1-pyrrolidinyl)butane [0043]. Li further teaches the catalyst system can be partially blocked using a sufficient amount of organic acid [0043].
Li does not specify the particular species of organic acid which may be used to partially block the disclosed catalysts, e.g. 1,4-di-(1-pyrrolidinyl)butane. However, Wishneski also teaches the concept of blocking amine catalysts with organic acids, e.g. 2-ethylhexanoic acid (Column 5, Lines 31 – 33). 2-ethylhexanoic acid corresponds to a compound of instantly claimed formula (OH)n-R-(COOH)m, wherein n is 0, m is 1, and R is 2-ethylhexyl, i.e. an alkyl group. Li and Wishneski 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 to select 2-ethylhexanoic acid as the acid for partially blocking 1,4-di-(1-pyrrolidinyl)butane in Li. 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, Wishneski specifically teaches 2-ethylhexanoic acid is known in the art as a suitable acid for blocking tertiary amine catalysts used in the preparation of polyurethane foams (Column 5, Lines 31 – 33).
The proposed combination of Li and Wishneski would result in a catalyst composition comprising acid-blocked pyrrolidine catalysts of the instantly claimed formula in which x is 4, n is 0, m is 1, and R is 2-ethylhexyl, i.e. an alkyl group. As Li teaches the catalyst system is partially blocked [0043], the presence of species corresponding each of that of formula (1), formula (2), and unblocked 1,4-di-(1-pyrrolidinyl)butane in the catalyst composition would be readily envisioned from the reference. With respect to the claim limitation that the polyurethane foam formulation “consist essentially of” the claimed ingredients, it is the Office’s position that this claim limitation is still met by the proposed combination of Li and Wishneski, even if some 1,4-di-(1-pyrrolidinyl)butane which is not acid-blocked is present.
"[C]onsisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (MPEP 2111.03). The presence of 1,4-di-(1-pyrrolidinyl)butane would not appear to materially affect the basic and novel characteristics of the instantly claimed invention. The instant specification sets forth this tertiary amine catalyst may be combined with catalysts of Formula (1) and (2) in the disclosed polyurethane formulations (see [0030] of the PG-PUB of the instant application). Dependent Claim 4 also expressly sets forth the polyurethane foam formulation “consisting essentially” of the claimed ingredients may further comprise an amine catalyst containing at least one tertiary amine group which would encompass the use of 1,4-di-(1-pyrrolidinyl)butane, an amine catalyst containing two tertiary amine groups.
Regarding Claim 4. Li teaches the polyurethane formulation of Claim 1. . Li additionally requires the catalyst system comprises tertiary amine catalysts 2,2’-dimorpholinodiethylether and N,N-dimethylcyclohexylamine [0031]. Li also envisions the use of metal catalysts [0044], i.e. non-amine catalysts.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/050970 to Li et al. (hereinafter Li) in view of US 5,328,938 to Wishneski et al. (hereinafter Wishneski).
Regarding Claim 6. Li teaches a catalyst package comprising a catalyst system; and a hydrohaloolefin blowing agent [0003].
With respect to the instantly claimed acid-blocked pyrrolidine catalyst, Li teaches the catalyst system may comprise 1,4-di-(1-pyrrolidinyl)butane [0043]. Li further teaches the catalyst system can be partially blocked using a sufficient amount of organic acid [0043].
Li does not specify the particular species of organic acid which may be used to partially block the disclosed catalysts, e.g. 1,4-di-(1-pyrrolidinyl)butane. However, Wishneski also teaches the concept of blocking amine catalysts with organic acids, e.g. 2-ethylhexanoic acid (Column 5, Lines 31 – 33). 2-ethylhexanoic acid corresponds to a compound of instantly claimed formula (OH)n-R-(COOH)m, wherein n is 0, m is 1, and R is 2-ethylhexyl, i.e. an alkyl group. 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 select 2-ethylhexanoic acid as the acid for partially blocking 1,4-di-(1-pyrrolidinyl)butane in Li. 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, Wishneski specifically teaches 2-ethylhexanoic acid is known in the art as a suitable acid for blocking tertiary amine catalysts used in the preparation of polyurethane foams (Column 5, Lines 31 – 33).
The proposed combination of Li and Wishneski would result in a catalyst composition comprising acid-blocked pyrrolidine catalysts of the instantly claimed formula in which x is 4, n is 0, m is 1, and R is 2-ethylhexyl, i.e. an alkyl group. As Li teaches the catalyst system is partially blocked [0043], the presence of species corresponding each of that of formula (1), formula (2), and unblocked 1,4-di-(1-pyrrolidinyl)butane in the catalyst composition would be readily envisioned from the reference. With respect to the claim limitation that the polyurethane foam formulation “consist essentially of” the claimed ingredients, it is the Office’s position that this claim limitation is still met by the proposed combination of Li and Wishneski, even if some 1,4-di-(1-pyrrolidinyl)butane which is not acid-blocked is present.
"[C]onsisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (MPEP 2111.03). The presence of 1,4-di-(1-pyrrolidinyl)butane would not appear to materially affect the basic and novel characteristics of the instantly claimed invention. The instant specification sets forth this tertiary amine catalyst may be combined with catalysts of Formula (1) and (2) in the disclosed polyurethane formulations (see [0030] of the PG-PUB of the instant application). Dependent Claim 4 also expressly sets forth the polyurethane foam formulation “consisting essentially” of the claimed ingredients may further comprise an amine catalyst containing at least one tertiary amine group which would encompass the use of 1,4-di-(1-pyrrolidinyl)butane, an amine catalyst containing two tertiary amine groups.
Claims 8 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/050970 to Li et al. (hereinafter Li) in view of US 5,328,938 to Wishneski et al. (hereinafter Wishneski).
Regarding Claim 8. Li teaches a method for producing a polyurethane formulation comprising contacting an isocyanate, i.e. a compound containing an isocyanate functional group, with a polyol, i.e. an active hydrogen-containing compound, in the presence of a catalyst system and a hydrohaloolefin blowing agent [0003].
With respect to the instantly claimed acid-blocked pyrrolidine catalyst, Li teaches the catalyst system may comprise 1,4-di-(1-pyrrolidinyl)butane [0043]. Li further teaches the catalyst system can be partially blocked using a sufficient amount of organic acid [0043].
Li does not specify the particular species of organic acid which may be used to partially block the disclosed catalysts, e.g. 1,4-di-(1-pyrrolidinyl)butane. However, Wishneski also teaches the concept of blocking amine catalysts with organic acids, e.g. 2-ethylhexanoic acid (Column 5, Lines 31 – 33). 2-ethylhexanoic acid corresponds to a compound of instantly claimed formula (OH)n-R-(COOH)m, wherein n is 0, m is 1, and R is 2-ethylhexyl, i.e. an alkyl group. Li and Wishneski 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 to select 2-ethylhexanoic acid as the acid for partially blocking 1,4-di-(1-pyrrolidinyl)butane in Li. 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, Wishneski specifically teaches 2-ethylhexanoic acid is known in the art as a suitable acid for blocking tertiary amine catalysts used in the preparation of polyurethane foams (Column 5, Lines 31 – 33).
The proposed combination of Li and Wishneski would result in a catalyst composition comprising acid-blocked pyrrolidine catalysts of the instantly claimed formula in which x is 4, n is 0, m is 1, and R is 2-ethylhexyl, i.e. an alkyl group. As Li teaches the catalyst system is partially blocked [0043], the presence of species corresponding each of that of formula (1), formula (2), and unblocked 1,4-di-(1-pyrrolidinyl)butane in the catalyst composition would be readily envisioned from the reference. With respect to the claim limitation that the polyurethane foam formulation “consist essentially of” the claimed ingredients, it is the Office’s position that this claim limitation is still met by the proposed combination of Li and Wishneski, even if some 1,4-di-(1-pyrrolidinyl)butane which is not acid-blocked is present.
"[C]onsisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (MPEP 2111.03). The presence of 1,4-di-(1-pyrrolidinyl)butane would not appear to materially affect the basic and novel characteristics of the instantly claimed invention. The instant specification sets forth this tertiary amine catalyst may be combined with catalysts of Formula (1) and (2) in the disclosed polyurethane formulations (see [0030] of the PG-PUB of the instant application). Dependent Claim 4 also expressly sets forth the polyurethane foam formulation “consisting essentially” of the claimed ingredients may further comprise an amine catalyst containing at least one tertiary amine group which would encompass the use of 1,4-di-(1-pyrrolidinyl)butane, an amine catalyst containing two tertiary amine groups.
Regarding Claim 9. Li teaches a polyurethane material produced according to the method of Claim 8 [0003].
Regarding Claim 10. Li teaches the polyurethane material of Claim 9 may be a rigid foam [0070].
Regarding Claim 11. Li teaches an insulated wall prepared from a polyurethane material which is prepared by the method of Claim 8 [0070].
Response to Arguments
Applicant's arguments filed December 10, 2025 have been fully considered. The Office responds as follows:
A) The Office agrees that the present amendments to the claims overcome the outstanding rejection of Claim 11 under 35 U.S.C. 112(d). This rejection has consequently been withdrawn.
B) Applicant argues that Li focuses on non-acid-blocked catalyst systems and teaches that acid-blocking can reduce catalyst activity. This argument is not found persuasive, as Li expressly discloses its catalyst systems may be partially acid blocked using a sufficient amount of an organic acid [0043]. The express purpose for acid blocking the catalyst is that it “reduces the activity of some of the catalyst system until a sufficiently highly temperature is reached at which point reactivity of the catalysts is no longer reduced or such reduction is lessened” (see again [0043]). Thus, Li does not teach away from acid-blocked catalyst systems but rather teaches embodiments in which they are suitably provided.
C) In response to applicant's argument that that there is no teaching or suggestion that the catalysts of Wishneski would be stable with an HFO blowing agent, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. The test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The rejection under 35 U.S.C. 103 does not rely on Wishneski to teach the presently claimed catalysts alone. Rather, Li teaches a polyurethane foam formulation comprising HFO blowing agents and additionally tertiary amine catalysts of a specific structure, e.g. 1,4-di-(1-pyrrolidinyl)butane, which may be partially blocked with an organic acid. As Li does not specify nor limit the particular species of organic acid which may be used, Wishneski is relied upon to teach a suitable species of organic acid for blocking tertiary amine catalysts to be used in polyurethane foam formulations. The Office consequently maintains the position that there is a reasonable expectation of success in the proposed combination of references, as Li already envisions the use of acid-blocked amine catalysts in conjunction with HFO blowing agents and places no limitations on the species of acid which may be used.
D) Applicant argues that [0074] of the instant specification provides evidence of unexpected stability of the claimed catalyst system with halogenated olefin blowing agents.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP 716.02(d))
The Office respectfully submits that the relied upon data in the instant application is not commensurate in scope with the claims. A specific formulation is provided in which (i) the acid-blocked pyrrolidine catalyst is provided in an amount of 5 weight percent of the polyol resin blend and the acidic compound is formic or glutaric acid; (ii) the compound containing an isocyanate group is MDI and is provided in an amount of 50 parts by weight relative to 50 parts by weight of the polyol resin blend; (iii) the active hydrogen-containing compounds correspond to various TEROL® and JEFFOL® compounds which combine to form 63.5 weight percent of the polyol resin blend; (iv) the halogenated olefin compound is SOLSTICE® LBA in an amount of 11 weight percent of the polyol resin blend; and the remainder of the polyol blend is constituted by water, flame retardants, and a silicone surfactant. It cannot then be concluded from this data that the alleged unexpected results would be achieved in any composition according to the instant claims in which any amounts of (i) a mixture pyrrolidine catalysts blocked with any compound of formula (OH)n-R-(COOH)m; (ii) any compound(s) containing an isocyanate functional group; (iii) any active hydrogen-containing compound(s); and (iv) most especially any halogenated olefin compound may be provided.
The outstanding rejections under 35 U.S.C. 103 have consequently been maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764