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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 6/12/2026. In particular, claim 1 has been amended to recite “wherein the catalyst comprises salts of amino acid derivatives satisfying the formula:
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In which R1 and R2 are independently H, C to C18 alkyl, alkenyl, aryl, or alkylaryl, which may also be substituted, and M+ is Na+, K+, and wherein the total proportion by mass of salts of amino acid derivatives present, based on the resulting polyurethane foam, is from 0.01 to 10% by weight.” New claim 26, not previously presented and therefore not previously considered, is added.
It is noted that the newly introduced limitations were not present at the time of the preceding action. For this reason, it is proper to make the present action FINAL.
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, 16-18, and 23-26 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.
Claim 1 recites “A composition for production of rigid polyurethane foam, comprising at least one isocyanate component, a polyol component, optionally a foam stabilizer, and optionally a blowing agent, wherein the catalyst comprises salts of…:” There is insufficient antecedent basis for “the catalyst.” The claim does not previously recite that the composition comprises a catalyst. None of claims 16-18 or 23-26 correct this issue. Therefore, claims 1, 16-18, and 23-26 are indefinite.
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, 16-18, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Horn et al. (WO 99/40138). A translation of WO 99/40138 is cited below and is attached.
Horn et al. teach polyurethane bodies, including hard (i.e. rigid) polyurethane foams (page 1, lines 22-23 of attached translation) formed via reaction of polyisocyanates with polyols and a foaming agent (i.e. blowing agent) and catalysts (page 1, lines 13-18 of the attached translation). The compositions can further include foam stabilizers (page 14, line 612). The compositions further comprise, for example, carboxylic acids and/or their amides. An expressly named example of carboxylic acid disclosed in Horn et al. is hippuric acid (see page 7, line 15 of the second full paragraph). Horn et al. explicitly teaches that the disclosed acids can be used in the form of their salts (page 8, line 3 of the translation), including alkali metal salts of the disclosed acids (see page 8, lines 4-5 of the attached translation). Given this teaching, one of ordinary skill in the art would at once envisage the alkali metal salt of hippuric acid, which is explicitly stated at page 7, line 15 of the second full paragraph, wherein the cation is Li+, Na+, K+, Rb+, or Cs+, any of which is at once envisaged given the teaching of alkali metal salt, as these are the alkali metals. This meets instant claim 1. As this compound is identical to a compound described as a “catalyst” in the instantly claimed composition, used to produce an identical product (a polyurethane foam), the compound is necessarily capable of performing the intended use of “catalyst” and meets the compound having the structure recited in instant claim 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include the salt of hippuric acid, including the alkali metal salt of hippuric acid, given the teachings of Horn et al., because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123. The compounds including the alkali metal salts of hippuric acid disclosed in Horn et al. are described as catalysts.
It is noted that formula II of instant claim 1 is the salt of hippuric acid when R1, and each R2 are H. The salt of hippuric acid, which is obvious given the teachings of Horn et al., meets instant claims 1 and 16-17.
The acids of Horn et al. are used in amounts of from 1 to 10wt% based on components (b) through (e). See page 6, 7th full paragraph of the attached translation. An example of Horn contains 100 parts by weight of the component corresponding to “(b) through (e)” and 41.1 parts of the isocyanate component. This is a total of 141.1 parts by weight. Of this, 1 to 10wt% is the acid component, meaning that the acid (of which the ammonium or alkali metal salt of hippuric acid is an example) is present in an amount of from 0.7wt% to 7wt% of the foam. Additionally, 0.1 to 10wt% of the 100 parts of b) though e) used in the examples (which is the “polyol component”), is 0.1 to 10 pphr (parts per hundred polyol component). This falls within the range of instant claim 1 and overlaps the range of instant claim 18 and new claim 26. 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). It would have been obvious to one of ordinary skill in the art, based on the teachings of Horn et al. to use an amount of acid component (including alkali metal salt of hippuric acid) which meets the instant claim limitations of instant claims 6, 18, and 26 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Horn et al. teaches that water can be added as a blowing agent. See page 5, first full paragraph of the attached translation. This meets the blowing agent instant claims 1 and 24-25.
Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Horn et al. (WO 99/40138) and further in view of CN 102924686A. Citations are made to the attached translation of WO 99/40138 and/or the previously provided translation of CN 102924686A
Horn et al. is as discussed in the rejection above, the rejection of which is incorporated herein by reference. Horn et al. specifically teaches the addition of water and additional physical blowing agents. Horn et al. does not discuss the type of additional physical blowing agents. Horn et al. only states that the use of CFCs is excluded.
As evidenced by CN102924686, the common physical foaming agents, which are alternatives to CFCs, for use in polyurethane foams such as those disclosed in Horn et al., include hydrofluorocarbons and hydrocarbons such as cyclopentane, pentane, isopentane. See page 5, lines 7-14 of the translation of CN 102954686. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use hydrofluorocarbons and hydrocarbons such as cyclopentane, pentane, and isopentane, as the disclosed additional physical foaming agent to produce the foams disclosed in Horn et al., as these are the common physical foaming agents, used in conjunction with water, used to produce polyurethane foams.
Allowable Subject Matter
Claim 15 is allowed.
The closest prior art is that discussed above or discussed in previous office actions, i.e. (1) Horn et al. (WO 99/40138), (2) Bechara et al. (US 4,115,634), and (3) Rister (WO2017/160361A1), which are as previously made of record, the discussions of which are incorporated into this action by reference. None of Horn et al. (WO 99/40138), Bechara et al. (US 4,115,634), or Rister (WO2017/160361A1) disclosed an amino acid salt in which the cation is selected from the group consisting of tetraalkvlammonium, trialkylhydroxyalkylammonium, benzyltrialkxlammonium, tetramethylammonium, tetraethylammonium, tetrabutylammonium, tetrapropylammonium, dimethyldiallylammonium, trimethyl(2-hydroxypropyl)ammonium, triethvl(2- hydroxypropyl)ammonium, tripropyl(2-hydroxypropyl)ammonium, tributyl(2- hydroxypropyl)ammonium, dimethylbenzyl(2-hydroxvpropyl)ammonium, dimethylbenzyl(2-hydroxyethyl)ammonium, and combinations thereof.
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the limitation of excluding carbodiimide catalysts are not persuasive but are moot as this limitation has been removed from the instantly claimed invention.
Applicants asserts, on page 8, second full paragraph of the Remarks filed on 6/12/2026, “while citric and maleic acid are illustrated, hippuric acid is not.”
This is incorrect and not persuasive.
As stated on page 7, line 15 of the second full paragraph of the attached translation of WO 99/40138 specifically teaches hippuric acid. Page 8, line 3, expressly states that the acids, of which hippuric acid is a named example, is used in the form of its salt. Page 8, lines 4-5, specifically states that the salts include alkali metal salts. The alkali metals are Li+, Na+, K+, Rb+, or Cs+, any of which is at once envisaged given the teaching of alkali metal salts, of the named carboxylic acids. This includes the salt of hippuric acid wherein the cation is Na+ or K+. This compound has an identical structure as the instantly claimed “catalyst” and therefore can necessarily perform the intended function of “catalyst” as recited in the instant claims. The amount of the acid meets the amendment to instant claim 1. Thus, Horn et al. does, in fact, teach the alkali metal salts of hippuric acid.
Applicant asserts that the instantly claimed catalyst is critical and provides alleged unexpected results, but the Inventive data only shows the use of hippuric acid. The claims are not limited to hippuric acid. This means the data is not commensurate in scope with the claimed invention, as the catalyst is not limited to what is shown in the data. Applicants cannot argue that hippuric acid is critical, and then argue that catalysts outside hippuric acid which are included in the claimed formula also provide the same results as hippuric acid. Either the data can be extended to catalysts not shown in the data including those which meet instant claim 1 meaning the hippuric acid is not critical, (WO 99/40138), or it cannot, meaning unexpected results cannot be and are no shown. Both of those cannot be true at once.
The claimed catalyst allows for hundreds of species, possibly thousands with “which may also be substituted,” and the Inventive examples only showing hippuric acid cannot be and are not commensurate in scope with the claimed catalyst. MPEP 716.02(d) states:
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), II. further states:
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
The data must meet each of the criteria of MPEP 716.02, including MPEP 716.02(d). The data cited to by Applicants is not commensurate in scope with the claimed invention and does not compare a sufficient number of tests inside and outside the claimed range, which is necessarily to show unexpected results and criticality. Again, the catalyst is one having the formula:
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In which R1 and R2 are independently H, C to C18 alkyl, alkenyl, aryl, or alkylaryl, which may also be substituted, and M+ is Na+, K+, which contains hundreds if species, possibly thousands with substitutions, meaning the sole hippuric acid catalyst used in the Inventive Examples cannot be and is not commensurate with the claimed genus and is not sufficient to show that the allegedly unexpected results occur over the entire claimed genus of catalyst. All of the Inventive Examples utilize sodium Hippurate (A, B, and D) or potassium Hippurate. The claims are not limited to this compound. Again, with “optional substitutions” allows for hundreds of species.
The data also only shows use of 2 or 3 pphp. This is not sufficient to show that allegedly unexpected results occur over the entire claimed amount of 0.1 to 10wt% (claim 1), 0.1 to 5wt% (claim 18), or 0.1 to 3 pphp. What happens at 0.1wt% or 0.1 pphp? Are the same allegedly unexpected results achieved? There is not data to provide evidence is the same results are achieved. Why would use of only 3.3 wt% (when 3 pphp is used) or 5wt% (when 2 pphp is used) provide the same allegedly unexpected result?
Furthermore, the blowing agent and stabilizer of instant claim 1 are optional, meaning they are not even required for the instantly claimed invention, and all of the examples utilize both a stabilizer (Tegostab) and a blowing agent (water, n-pentane, and/or cyclopentane). This is another reason the data is not commensurate in scope with the claimed invention and therefore cannot and does not show unexpected results. The claimed invention does not require these components, let alone the extremely specific amount of extremely specific materials used as the blowing agent and stabilizer in the data of the instant invention.
Also, for formula 1, which includes Comparative 1 and Inventive Examples 1-4, Applicants appear to argue that a lower gel time is desirable, based on the Comparative Example having a gel time of 52 and the Inventive Examples being 46, 48, 48, and 47, for 1, 2, 3, and 4, respectively. However, the instant specification alleges that a gel time shortened by 15 seconds (Comparative Example 3 has a gel time of 49) is somehow undesirable. These are completely contradictory conclusions being drawn from two sets of the same data. Is the lower gel time desirable, as argued for Form No. 1, or is the higher gel time desirable, as argued for Form No. 2? Both cannot be true. If 49 is undesirable, as stated on page 20, lines 5-7 of the instant specification, then Inventive Examples 1-4 have undesirable gel times which are 46, 48, 48, and 47, for 1, 2, 3, and 4, respectively, all of which are lower then Comparative Example 3 at 49. The 46, 48, 48, and 47, for Inventive examples 1, 2, 3, and 4, respectively, would also therefore necessarily “intervene much more significantly into the rise profile of the foam.”
The explanation and data cited to by Applicant do not make sense. If a low gel time is derived, and a high indentation hardness over time is desired, the best results occur with an embodiment falling outside the scope of the claims. Comparative Example 3 has a gel time about the same as Inventive Examples 1-4, and better than Examples 5-10, with the highest indentation hardness over time.
No clear conclusions regarding the Inventive Examples can be drawn from the provided data. Is a low gel time desired, or a high one? If a low gel time is derived, the data clearly shows an embodiment outside the scope of the claims achieves a better gel time than embodiments with the claims (Comparative Example 3 versus Inventive Examples 5-8). If a high gel time is desired, Comparative Example 2, also outside the scope of the claims, achieves the best (highest) gel time. Is a high indentation over time desired, or is a low indentation over time desired? If a high indentation over time is desired, again, Comparative Example 3 would have the best results. If a low indentation over time is desired, Comparative Example 1 would show the best results. So, which is it? Applicants cannot merely point at data and conclude that the best results occur with embodiments inside the claims, when that is not what said data shows.
Also, which one is expected? Different results do not equate to unexpected results. What is expected, and why does the instantly claimed invention (including embodiments covering the entire genus of compositions) deviate from what is expected?
Applicant asserts that “As there is no disclosure or suggestion of the technical effect of curing time without negatively affecting gel time, the claimed invention is not rendered obvious by the prior art,” on page 9, second paragraph under the Table, of the Remarks filed on 6/12/2026.
This is incorrect and not persuasive.
Neither curing time nor gel time are recited in the instant claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is not a requirement that prior art disclose a technical effect when said technical effect is not recited in the claims. Each of the instantly claimed components is disclosed in Horn et al. alone, in a composition as recited in the instant claims. No persuasive evidence of unexpected results is presented by Applicants. Thus, the claims are properly rejected as obvious over Horn (and/or Horn in View of CN 102954686). The data is not commensurate with the claimed invention, nor is there any explanation as to what is expected and how the claimed invention deviates from what is expected, which is also required to persuasively show unexpected results. Whether low gel or high gel is desired, the best results occur outside the scope of the instant invention. Whether low indentation over time or high indentation over time is desired, the best results occur outside the claimed invention. For these reasons, the rejection is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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