Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-6, 8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Rider et al. (US 2022/0220249) taken in view of the evidence given by Monument Chemical and Creazzo et al. (US 2009/0224719).
Regarding claim 1, Rider et al. disclose a foam-forming composition, i.e. reaction mixture, comprising polyisocyanate and an isocyanate-reactive composition (see paragraph 0052). The polyisocyanate is present in amounts of 110-129 parts per 100 parts isocyanate-reactive composition (see Table 1).
The isocyanate-reactive composition comprising a polyol blend, i.e. polyol composition, that includes 50-98 wt.% saccharide-initiated polyether polyol having an OH number of 200-600 mg KOH/g and a functionality of 4-6, 1-20 wt.% alkanolamine-initiated polyether polyol, i.e. amine-initiated polyether alcohol, having OH number of 500-900 mg KOH/g and a functionality of 2.5-4 (see paragraphs 0009 and 0030) and 1-20 wt.% aliphatic triol initiated polyether polyol having an OH number of 100-500 mg KOH/g and functionality of greater than 2 to 4 (see paragraphs 0033 and 0035). Each functionality refers to an average hydroxyl functionality (see paragraph 0016). The saccharide of the saccharide-initiated polyether polyol is a sucrose (see paragraph 0018).Given that the aliphatic triol initiated polyether polyol is made by reacting trivalent alcohol such as glycerin with propylene oxide (see paragraph 0034) which is the same process used to make the propoxylated homopolymer triol of the present invention (see paragraph 0017 of the present specification), it is clear that the aliphatic triol initiated polyether polyol of Rider et al. meets the propoxylated homopolymer triol as claimed. Given that as evidenced by Monument Chemical (see page 4, formulas [1] and [2]), the number average molecular weight of a polyol can be calculated by the formula:
M
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=
56100
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H
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f
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o
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it is calculated that the sucrose-initiated polyether polyol has a number average molecular weight of 374 – 1683 ((56100/600)*4 - (56100/200)*6), the amine-initiated polyether alcohol has a number average molecular weight of 156 - 449 ((56100/900)*2.5 - (56100/500)*4), and the aliphatic triol initiated polyether polyol has a number average molecular weight of greater than 224 - 2244 ((56100/500)*2 - (56100/100)*4).
The isocyanate-reactive composition also includes a blowing agent (see paragraph 0039), surfactant (see paragraph 0046), and a catalyst (see paragraph 0047). The catalyst includes morpholine catalysts including n-ethylmorpholine and N-methylmorpholine (see paragraph 0048) which as evidenced by Creazzo et al. are blowing catalysts (see paragraph 0092).
In light of the overlap between the claimed polyol composition and the polyol composition disclosed by Rider et al. it would have been obvious to one of ordinary skill in the art to use a polyol composition that is both disclosed by Rider et al. and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Although there is no disclosure that the reactive mixture is “for a polyurethane wood substitute material”, the recitation in the claims that the reactive mixture is “for a polyurethane wood substitute material” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner' s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Rider et al. disclose reactive mixture as presently claimed, it is clear that the reactive mixture of Rider et al. would be capable of performing the intended use, i.e. for a polyurethane wood substitute material, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regrading claim 3, Rider et al. disclose that the blowing agent includes a physical blowing agent and a chemical blowing agent (see paragraph 0039).
Regarding claim 4, Rider et al. disclose the use of 10-30 wt.% physical blowing agent (see paragraphs 0039-0040) and 0.5-5 wt% chemical blowing agent (see paragraph 0043).
The only deficiency of Rider et al. is that Rider et al. disclose the use of 10.5 wt.% blowing agent, while the present claims require 10 wt.%
It is apparent, however, that the instantly claimed amount of blowing agent and that taught by Rider et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of blowing agent disclosed by Rider et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of blowing agent disclosed in the present claims is but an obvious variant of the amount disclosed in Rider et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 5, Rider et al. disclose the use of 0.2-5 wt.% surfactant (see paragraph 0046).
Regarding claim 6, Rider et al. disclose the use of 1-5 wt.% catalyst (see paragraph 0050).
Regrading claim 8, while there is no disclosure that the polyurethane foam is a polyurethane wood substitute material as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. polyurethane wood substitute material, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a foam identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 10-11, given that Rider et al. disclose reaction mixture comprising polyisocyanates such as polymeric diphenylmethane diisocyanate (see paragraphs 0053-0054) which are identical to those used in the present invention (see paragraph 0046 of the present specification) and isocyanate-reactive composition identical to that presently claimed, it is clear that the reaction mixture would necessarily inherently have the same cream time and gel time as presently claimed.
Regarding claim 12, Rider et al. disclose the use of 0.5-5 wt% chemical blowing agent (see paragraph 0043).
Regarding claim 13, Rider et al. disclose the use of 0.2-5 wt.% surfactant including organosilicon surfactant (see paragraph 0046) and 1-5 wt.% catalyst (see paragraph 0050).
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive. In light of applicant’s amendments, new grounds of rejection are set forth above.
Applicant argues that the claims have been amended to further clarify that the claims are directed toward a polyurethane substitute wood material which is a type of material that is not taught or suggested by the references.
However, with respect to claim 1, although there is no disclosure that the reactive mixture is “for a polyurethane wood substitute material” as presently claimed, the recitation in the claims that the reactive mixture is “for a polyurethane wood substitute material” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner' s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Rider et al. disclose reactive mixture as presently claimed, it is clear that the reactive mixture of Rider et al. would be capable of performing the intended use, i.e. for a polyurethane wood substitute material, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Further, with respect to claim 8, while there is no disclosure that the polyurethane foam is a polyurethane wood substitute material as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. polyurethane wood substitute material, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a foam identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Callie Shosho whose telephone number is (571)272-1123. The examiner can normally be reached Monday-Friday, 6:00 am - 5:00 pm.
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787