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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 6, 9, 11, 12, 14, 15, 17, 18, 20 – 22, and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original specification does not disclose the use of a quaternary ammonium carboxylate trimerization catalyst which is provided such that a weight ratio of at least one organo-tin mercaptide catalyst to at least one quaternary ammonium carboxylate trimerization catalyst is approximately equal to or greater than 0.5 to less than 1.0 as now set forth in Claim 1 and such that a combined weight percent of the at least one organotin mercaptide catalyst and the at least one quaternary ammonium carboxylate trimerization catalyst is less than 3 weight percent based on the total weight of the B-sider reactant as now set forth in Claim 9. The original specification does not appear to teach a quaternary ammonium carboxylate trimerization catalyst is used and only teaches a weight ratio of the at least one organo-tin mercaptide catalyst to at least one catalyst containing potassium is approximately equal to or greater than 0.5 to less than 1.0 (see [0035] – [0036] of the PG-PUB of the instant application).
It is applicant’s position that the disclosure of DABCO® TMR-20 would be understood by one of ordinary skill in the art to be one exemplary type of quaternary ammonium carboxylate catalyst (see page 9 of the remarks filed April 3, 2026). The Office notes that DABCO® TMR-20 is described in the instant application as a proprietary K-carboxylate composition (see table appearing before [0035] of the PG-PUB of the instant application), rather than a quaternary ammonium carboxylate composition. Applicant cites Syzcher’s Handbook of Polyurethanes, 2nd Ed. (Routledge) (2012) and Evonik/Air Products manufacturer technical data sheets in support of the position that DABCO® TMR series are quaternary ammonium catalysts. However, such evidence has not been provided by applicant to the Office for consideration.
Moreover, the other references cited by applicant – EP 1852448B1 and US 2007/0259773 – do not appear to support the position that DABCO® TMR-20 and all DABCO® TMR catalysts are quaternary ammonium catalysts. Neither EP 1852448B1 and US 2007/0259773 discuss DABCO® TMR-20 specifically. However, they do identify DABCO® TMR-30 – i.e. another catalyst from the DABCO® TMR series – as 2,4,6-tris(dimethylaminomethyl)phenol (see, e.g. [0078] of US 2007/0259773). 2,4,6-tris(dimethylaminomethyl)phenol does not correspond to a quaternary ammonium carboxylate. It would consequently be improper to infer that the all DABCO® TMR catalysts, including DABCO® TMR-20, are quaternary ammonium carboxylates, as the references show that at least one species of the DABCO® TMR series is not a quaternary ammonium carboxylate.
Thus, the new claim limitations setting forth at least one quaternary ammonium carboxylate trimerization catalyst; a weight ratio of the at least one organo-tin mercaptide catalyst to at least one catalyst quaternary ammonium carboxylate trimerization catalyst that is approximately equal to or greater than 0.5 to less than 1.0; and a combined weight percent of the at least one organotin mercaptide catalyst and the at least one quaternary ammonium carboxylate trimerization catalyst is less than 3 weight percent based on the total weight of the B-side reactant in Claims 1 and 9 correspond to new matter. As Claims 2 – 6, 11, 12, 14, 15, 17, 18, 20 – 22, and 24 ultimately depend on Claim 1, they incorporate the subject matter and are also consequently rejected under this statute.
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 9, 11 ,12, 14, and 15 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.
In light of the amendment to Claim 1, there is now a lack of antecedent basis for
“the” B-side reactant set forth in Claims 9, 11 ,12, 14, and 15. Independent Claim 1 now sets forth at least one B-side reactant. It is then unclear to which of the at least one B-side reactant(s) is being referred to be the aforementioned phrases in the dependent claims. For the purposes of examination, the dependent claims will be interpreted as setting forth the at least one B-side reactant.
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 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, 5, 9, 11, 12, 14, 15, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/134087 to Yu et al. (hereinafter Yu) in view of US 2011/0196055 to Kramer et al. (hereinafter Kramer).
Regarding Claims 1, 11, 12, 14, and 15. Yu teaches a two component polyurethane foam formed by the reaction of an A-side reactant and a B-side reactant [0052].
In Formulation B of Example 2, the A-side reactant comprises LUPRANATE® M20 [0071], which is a commercially available polymeric methylene diphenyl diisocyanate.
The B-side reactant comprises TERATE® 420, VORANOL® 470X, and VORANOL® 360 as polyols; tri(chloroisopropyl)phosphate (TCPP) as a plasticizer; DC 193 as a surfactant; TOYOCAT® DM 70, JEFFCAT DMDEE, DABCO® T120, and DABCO® K15 as catalysts; water; and 1-chloro-3,3,3-trifluoropropene/1233zd as a hydrofluoroolefin propellant (Table 2).
Using the amounts of all ingredients listed in Table 2, water can be calculated to be provided in an amount of roughly 1.9 weight of the B-side.
The catalyst component in Formulation B of Example 2 comprises 1 part by weight DABCO® T120 and 1.5 parts by weight DABCO® K15 (Table 2). DABCO® T120 corresponds to dibutyltin dilaurylmercaptide [0061]. DABCO® K15 corresponds to a trimerization catalyst. Using the aforementioned values, the trimerization catalyst can be calculated to be provided in an amount of roughly 1.3 parts by weight and the ratio of the organotin mercaptide catalyst to the trimerization catalyst can be calculated to be roughly 0.76.
Yu teaches the HFO propellant is only included in the B-side reactant in Example 2, rather than both the A- and B-side reactants as is instantly claimed. However, that the HFO propellant is included in both the A-side and B-side reactants appears to be a product-by-process limitation that is not further limiting in as so far as the structure of the product is concerned. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113) In the instant case, the product of Yu appears to be substantially identical to that of the instant claims. Both products are obtained by reacting the A-side and B-side reactants in which an HFO propellant is present in at least one side. Reacting the A-side and B-side reactants necessarily involves combining these ingredients and thus the precursor mixture which forms the polyurethane foam composition will include an A-side reactant, B-side reactant, and HFO propellant, regardless of the side(s) in which it is initially included.
Additionally, the trimerization catalyst used in Formulation B of Example 2 of Yu is DABCO® K-15, which corresponds to an alkali metal carboxylic acid salt trimerization catalyst rather than a quaternary ammonium carboxylate trimerization catalyst as instantly claimed. However, in the general disclosure, Yu teaches both alkali metal carboxylic acid salts and quaternary ammonium carboxylates as suitable trimerization catalysts for use in the disclosed formulations [0055]. 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 substitute a quaternary ammonium carboxylate trimerization catalyst for the alkali metal carboxylic acid salt trimerization catalyst used in Formulation B of Example 2 of Yu. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Yu teaches both alkali metal carboxylic acid salts and quaternary ammonium carboxylates as suitable trimerization catalysts in the disclosed formulations [0055], thus providing obviousness of substituting one for the other in these formulations.
Yu also does not teach the B-side reactant further comprises glycerin. However, Kramer et al. teaches the concept of further including glycerin in the B-side reactant of a polyurethane foam composition in an amount of up to 8 weight percent relative to the polyol (Paragraph 0056). Kramer further teaches providing glycerin in an amount of roughly 2.5 or 3.5 weight percent of the B-side reactant in the inventive examples (see Tables 1, 3, and 5). Yu and Kramer are analogous art as they are from the same field of endeavor, namely two component 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 include glycerin in the B-side of Formulation B of Example 2 of Yu in an amount in the range taught by Kramer. The motivation would have been that Kramer teaches glycerin functions as a crosslinking agent in polyurethane foams, providing the product with a more rigid structure (Paragraph 0056).
Yu does not expressly characterize the polyurethane foam composition as a low-pressure and is silent with respect to the catalytic decay ratio, density after accelerated aging, R-values, closed cell contents, and dimensional stability values of the polyurethane foam formed by the composition of Example 23. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Yu, 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 low pressure polyurethane foam composition having property values in the instantly claimed ranges - 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 Claim 5. Yu teaches the two-component polyurethane foam composition of Claim 1 wherein VORANOL® 360 is provided (Table 2). The instant specification teaches VORANOL® 360 corresponds to a polyether polyol based on a mixture of sucrose and glycerin which has a functionality of roughly 4.5 and a hydroxyl number of about 360 mgKOH/g.
Regarding Claim 9. Yu teaches the two-component polyurethane foam composition of Claim 1. The catalyst component in Formulation B of Example 2 comprises 1 part by weight DABCO® T120 and 1.5 parts by weight DABCO® K15 trimerization catalyst (Table 2). DABCO® T120 corresponds to dibutyltin dilaurylmercaptide [0061]. It is further the Office’s position that it would have been obvious to substitute a quaternary ammonium carboxylate trimerization catalyst for DABCO® K15, for the reasons detailed in the rejection of Claim 1 above.
Using the aforementioned values and amounts of all ingredients listed in Table 2, the combined weight of the at least one organotin mercaptide catalyst and the at least trimerization catalyst can be calculated to be roughly 1.7 weight percent of the B-side reactant.
Regarding Claim 24. Yu teaches the two-component polyurethane foam composition of Claim 1. For the reasons detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to provide glycerin in said composition, in light of Kramer.
While the references do not expressly described glycerin as a fluoride ion scavenger, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Thus, glycerin must necessarily function as a fluoride ion scavenger in polyurethane foam compositions.
Claims 2 – 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/134087 to Yu et al. (hereinafter Yu) in view of US 2011/0196055 to Kramer et al. - as applied to Claim 1 above - and further in view of US 2016/0200890 to Taylor et al. (hereinafter Taylor).
Regarding Claims 2 – 4 and 6. Yu teaches the two-component polyurethane foam composition of Claim 1 in which the B-side reactant comprises TERATE® 4020 (Table 2), which is a terephthalic anhydride-based polyester polyol. Yu does not expressly teach two polyester polyols having the structures and features recited in the instant claims. However, secondary reference Taylor et al. teaches using a combination of polyester polyols in a HFO-blown two component polyurethane foam composition (Paragraph 0021). The polyester polyols may specifically be a combination of polyesters of commercially available polyester polyols PS 2352 and TB-350 (Paragraphs 0036 and 0064). As evidenced by the table spanning pages 3 – 4 of the PG-PUB of the instant application, PS 2352 corresponds to an aromatic phthalic anhydride polyester polyol of the first recited formula in Claim 2 in which n is 1 – 30, and o and p are each 1. This table further provides evidence that TB-350 corresponds to an aromatic terephthalic anhydride polyester polyol of the second recited formula in Claim 2 in which n is 1 – 25, and o and p are each 1. Yu and Taylor are analogous art as they are from the same field of endeavor, namely two-component polyurethane foam compositions based on hydrofluoroolefin blowing agents. 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 substitute the TERATE® 4020 polyester polyol in Formulation B of Example 2 of Yu with the polyester polyols taught by Taylor. The motivation would have been that Taylor teaches this combination of polyester polyols provided compositions with improved shelf life while using an HFO blowing agent and maintaining desirable closed cell content and R-values in the foams produced therefrom (Paragraph 0067).
Response to Arguments
Applicant’s arguments filed April 3, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections to the claims. Accordingly, all outstanding claim objections have been withdrawn.
Rejections under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the claims under 35 U.S.C. 112. Accordingly, all outstanding rejections under 35 U.S.C. 112 have been withdrawn.
Rejections under 35 U.S.C. 103
Applicant argues that the applied references do not teach at least the claimed B-side reactants, including the quaternary ammonium carboxylate trimerization catalyst now claimed. The Office respectfully submits that the limitations directed to the at least one quaternary ammonium carboxylate trimerization catalyst raise the issue of new matter, which is detailed in the new grounds of rejection of the claims under 35 U.S.C. 112(a) above. In addition, it is noted that Yu also teaches quaternary ammonium carboxylates as suitable trimerization catalysts in [0055]. It is consequently the Office’s position that it would have been obvious, before the effective filing date of the instantly claimed invention, to substitute a quaternary ammonium carboxylate trimerization catalyst for the alkali metal carboxylic acid salt trimerization catalyst used in Formulation B of Example 2 of Yu, as detailed in the new ground of rejection under 35 U.S.C. 103.
Applicant’s arguments that the other applied references do not remedy the deficiencies of Yu are not persuasive, as the alleged deficiencies of Yu are addressed in the preceding paragraph.
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
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.
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.
/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
Prosecution Insights