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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/25/2026 has been entered.
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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Information Disclosure Statement
The information disclosure statement filed 2/25/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The Examiner appreciates the submitted machine translations. However, 37 CFR 1.98(a) requires a legible copy of each cited foreign patent document (i.e. the original untranslated patent documents) in addition to a concise description of relevance and/or translation. See 37 CFR 1.98(a) and MPEP 609.04(a)(II).
The information disclosure statement filed 2/25/2026 also fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
Election/Restrictions
Applicant has amended the claims to exclude the previously elected species. Per the protocol of MPEP 803.02, examination of the claims was extended and, as a result, prior art that either anticipates and/or obviates alternative species was found. The prior art search was not extended unnecessarily to cover all nonelected species. Accordingly, prior art rejections pertaining to the newly found species are presented below with any claims not readable on the found species being withdrawn from further consideration.
Claim Objections
Claim 1 is objected to because of the following informalities: The “□” bullets should be removed. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites “wherein the at least one ethylenically unsaturated compound further comprises one or more isocyanate reactive groups”. All of the compounds within the relevant Markush listing of claim 1 contain isocyanate reactive groups (alcohols, carboxylic acids). Therefore, claim 6 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claim(s) 1, 5, 6, 11, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yasumatsu (JP2009-263647A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 5, 6, 11, and 12, Yasumatsu teaches reactive mixtures for preparing polyurethane/polyisocyanurate foam materials (Abstract; Examples). Examples are taught where reactive mixture comprises polyisocyanate, isocyanate-reactive polyols, and catalyst (¶ 54, Table 1). Yasumatsu teaches examples where compound b1 is used, which is a compound without isocyanate reactive group obtained by reacting pentaerythritol and acrylic acid (¶ 55, Table 1). Compound b1 is reported to have 9.9 mmol unsaturated functionalities per gram (¶ 55), which is equivalent to an eq. wt. of roughly 101 g/mol. The compound described by Yasumatsu is implied as being mostly pentaerythritol triacrylate (eq. wt. ~ 99.4; bp > 315°C).
Yasumatsu teaches an embodiment in Example 1 where 15 pbw of b1 and 1.0 pbw radical initiator d2 is used relative to 284.2 pbw of other materials, equivalent to roughly 5.3 wt% a1 and 0.4 wt% radical initiator. With respect to the particular peroxides used, Yasumatsu provides a preferred listing of six free radical initiator species, of which two (dibenzoyl peroxide and t-butylhydroperoxide) anticipate the claimed species. Given the limited number of preferred species, the position is taken that one of ordinary skill would at once envisage the use of either dibenzoyl peroxide or t-butylhydroperoxide as a radical initiator within the compositions of Yasumatsu. See MPEP 2131.02(III). Therefore, Yasumatsu anticipates the claims.
Claim(s) 1, 5, 6, 11, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reinheimer (US 2008/0125504 A1).
Regarding Claims 1 and 6, Reinheimer teaches reactive mixtures for making polyurethane foams comprising vinyl monomers of a hydroxyvinyl ester and branched at least trifunctional vinyl ester (Abstract; Examples). Reinheimer describes examples comprising polyisocyanate compound, polyol (isocyanate-reactive compound), catalysts for making polyurethanes, blowing agents, surfactant cell stabilizer, 1 wt% of benzoyl peroxide, hydroxypropyl methacrylate, and trimethylolpropane trimethacrylate (¶ 32-44).
The present claims list pentaerythritol triacrylate, hydroxyethyl acrylate, and hydroxyethyl methacrylate. Reinheimer teaches the hydroxyvinyl ester is preferably 2-hydroxyethyl (meth)acrylate and/or 2-hydroxypropyl (meth)acrylate and the trifunctional vinyl ester is preferably trimethylolpropane tri(meth)acrylate and/or vinyl functional urethane resin. For the former, the listed species corresponds to two (hydroxyethyl (meth)acrylate) out of the total four preferred species of Reinheimer. For the latter, the listed species corresponds to one (pentaerythritol triacrylate) out of three possible species.
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). In Kennametal, the challenged claim was to a cutting tool requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating. The reference described all the elements of the claimed coated cutting tool but did not explicitly disclose the specific combination of ruthenium binding agent with a PVD coating. However, the reference disclosed that ruthenium was one of five specified binding agents and PVD was one of three suitable coating techniques. The Federal Circuit stated that the reference’s "express ‘contemplat[ion]’ of PVD coatings provided sufficient evidence that a reasonable mind could find that a person of skill in the art… would immediately envisage applying a PVD coating. Thus, substantial evidence supports the Board's conclusion that [the reference] effectively teaches 15 combinations, of which one anticipates pending claim 1. Though it is true that there is no evidence in [the reference] of ‘actual performance’ of combining the ruthenium binder and PVD coatings, this is not required." Kennametal, 780 F.3d at 1383, 114 USPQ2d at 1255 (citations omitted). See MPEP 2131.02(III).
In the present case, Reinheimer’s disclosure presents 4 preferred hydroxyvinyl esters, of which 2 anticipate the present claims. Reinheimer’s disclosure also presents 3 preferred branched at least trifunctional vinyl ester, of which 1 anticipates the present claims. Given the circumstances and in light of the cited case law, it is concluded that one of ordinary skill would at once envisage the use of pentaerythritol triacrylate, hydroxyethyl acrylate, and/or hydroxyethyl methacrylate in the mixtures of Reinheimer.
Regarding Claim 5, pentaerythritol triacrylate has an equivalent weight of 298.3 / 3 = 99.4 g /mol. Hydroxyethyl acrylate also has an equivalent weight of 116.1 g/mol.
Regarding Claim 11, the cited compounds are seen to have boiling points within the claimed range. For instance, hydroxyethyl methacrylate has a boiling point of roughly 213 degrees C.
Regarding Claim 12, Reinheimer teaches examples where hydroxyvinyl ester is present at 3.0 wt% and branched at least trifunctional vinyl ester is present at 23 wt% (¶ 32-44).
Double Patenting
Claims 1, 5, 6, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,460,041 in view of Yasumatsu (JP2009-263647A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Specifically, the ‘041 patent claims methods of creating PIR/PUR material from the instantly claimed reactive mixtures (Claim 11). The particular ethylenically unsaturated compounds are described at claims 5, 7, and 16. While ‘041 is directed toward a method of using the instantly claimed reactive mixtures, the reactive mixtures would nonetheless be obvious in view of the copending claims.
While the identities of the peroxide materials are not indicated within the claims, Yasumatsu also pertains to the incorporation of unsaturated compounds into polyurethane foam compositions (Abstract). Yasumatsu teaches the inclusion of peroxide such as benzoyl peroxide procures good curing properties within the foaming compositions (¶ 47). Accordingly, it would have been obvious to one of ordinary skill in the art to further include the peroxides of Yasumatsu because doing so would further promote curing the ethylenically unsaturated compound containing foam formulations as taught by Yasumatsu. The remaining limitations of the dependent claims are found within the claims of the copending application.
Response to Arguments
Applicant's arguments filed 2/25/2026 have been fully considered but they are not persuasive.
Applicant argues Yasumatsu fails to describe the ethylenically unsaturated compounds now claimed. This is not found persuasive for reasons set forth above.
With respect to the double patenting rejection, Applicant alleges Yasumatsu is “teaching away” from the claimed ethylenically unsaturated compounds. This is not found persuasive as Yasumatsu is only being relied upon with respect to the use of specific peroxides and not to the use of any particular unsaturated compound. Moreover, Yasumatsu clearly indicates vinyl polymerizable compounds with active hydrogen can be used (¶ 10, 24-29). Therefore, Yasumatsu is not teaching away.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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