Claims 1, 3, 4, and 6-15 are pending in the application. Claims 2 and 5 have been cancelled. Claims 9-12 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1, 3, 4, 6-8, and 13-15 are rejected.
The rejections over Brookins in view of Zuckerman and Hartmann; and further in view of Aou have been maintained.
The provisional nonstatutory double patenting rejection over claims 1-10 of copending Application No. 17/908,035 in view of Aou and Hartmann has been maintained.
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, 3, 4, 6-8, and 13-15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of ceramic particles having a particle size of up to 50 µm, and the claim also recites the ceramic particles having a particle size of 500 nm to 5 µm, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1, 3, 6, 7, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0127509 to Brookins et al. (hereinafter “Brookins”) in view of US 2002/0193028 to Zuckerman et al. (hereinafter “Zuckerman”) and US 2008/0233368 to Hartmann et al. (hereinafter “Hartmann”).
As to claims 1, and 13, Brookins discloses an article comprising a polyurethane foam being treated with the coating composition to impart to the polyurethane foam beneficial thermal management properties (paragraphs 3, 12 and 66). The article is useful in the manufacture of a pillow, or a mattress (paragraph 3). That is to say, a flexible foam would be present in view of intended uses of mattresses and pillows.
Brookins further discloses a coating composition comprising microcapsulated phase change materials, thermally conductive additives, binder and water (abstract). The coating composition is an emulsion coating composition (paragraph 34). The binder is an acrylic resin with a solid weight of 4.5 to 11% by weight (paragraph 44). The binder is a polyurethane dispersion with an acrylic emulsion (paragraph 28). The binder reads on the claimed water-insoluble elastomeric polymer.
The coating composition comprises 10-60% by weight of microcapsulated phase change materials (mPCMs) and 1-25% by weight of thermally conductive additives (TCAs) (paragraphs 48 and 49). The coating composition comprises at least one mPCM and at least one TCA (paragraph 13). That is, the coating composition can contain two different types of mPCMs. The mPCMs have a melting point of 27 to 32oC within the claimed range (paragraph 16). The mPCMs have a mean particle size of 20 microns (paragraph 148). The TCAs comprise aluminum oxide, zinc oxide, or boron nitrile (BN) particles and each of which corresponding to the claimed ceramic particles (paragraph 21 and example 7). The TCA is a particulate material having an average particle size ranging from 1 to 10 µm (paragraph 115). Hence, the aluminum oxide, zinc oxide, or BN particles can have an average particle size ranging from 1 to 10 µm, overlapping the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the particle size of the BN particles will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such the particle size of the BN particles is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the BN particles having a particle size in the range instantly claimed, motivated by the desire to promote processing and handling of the material while enhancing the thermal conductivity properties of the article. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Brookins does not explicitly disclose (i) a thickness of the coating layer, and (ii) the mPCMs comprising a blend of a first mPCM having a low melting temperature and a second mPCM having a high melting temperature wherein both the first and second mPCMs have a melting temperature of 25 to 37oC.
Zuckerman, however, discloses a coating composition for fabrics comprising a polymer binder, a surfactant, a dispersant and mPCM particles (abstract). The coating material obtained from a coating composition has a basis weight of 1.25 to 2.5 oz/square yard (claim 6, paragraphs 49 and 53). In particular, the coating material has a basis weight of 2.5 oz/square yard or 85 g/m2 (paragraph 49). As shown in table V, the coating material has a basis weight of 7 g/m2 (paragraph 55) and a thickness of 0.02 mm (0.63-0.61) or 20 microns (table V). The thickness is directly proportional to the basis weight. As such, the coating material of 85 g/m2 should have a thickness of 240 microns within the claimed range.
85x0.02/7= 0.24 mm or 240 microns.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the coating material disclosed in Brookins having a thickness disclosed in Zuckerman motivated by the desire to provide effective absorbing or releasing heat to reduce or eliminate heat transfer at the temperature stabilizing range of the polyurethane foam.
Hartmann, however, discloses a coated article comprising a substrate and a coating layer disposed on the substrate wherein the coating layer comprising a polymer, and a blend of a first mPCM having a first melting temperature of 22 to 50oC, and a second mPCM having a first melting temperature of 25 to 45oC wherein the first and second mPCMs are dispersed within the polymer (abstract, and paragraph 6). The first and second melting temperatures are different (paragraph 36; and tables 1 and 2). The combination of the two mPCMs provides a staged temperature buffering effect as the skin temperature rises and then falls, thereby eliminating the physical discomforts of hot flashes (paragraph 19).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the mPCMs of Brookins comprising of a blend of a first mPCM having a first transition temperature of 22 to 50oC, and a second mPCM having a first transition temperature of 25 to 45oC disclosed in Hartmann motivated by the desire to provide a staged temperature buffering effect as the skin temperature rises and then falls, thereby eliminating the physical discomforts of hot flashes.
As to claim 3, Brookins discloses that the mPCM comprises a paraffin (paragraph 110).
As to claim 6, Brookins discloses that the coating composition comprises 10-60% by weight of mPCMs (paragraphs 48 and 49). This encompasses the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the content of the mPCM will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the content of the mPCM is critical or provides unexpected results. Alternatively, Brookins discloses that the coating composition comprises 42% by weight of mPCMs (paragraph 149) within the claimed range.
As to claim 7, Brookins discloses that the coating composition comprises 12 wt% or 18 wt% of BN particles (table 2).
As to claim 15, Brookins discloses that the coating composition comprises 10-60% by weight of microcapsulated phase change materials (mPCMs) and 1-25% by weight of thermally conductive additives (TCAs) (paragraphs 48 and 49). The coating composition comprises at least one mPCM and at least one TCA (paragraph 13). That is, the coating composition can contain two different types of mPCMs. The mPCMs have a melting point of 27 to 32oC within the claimed range (paragraph 16).
Brookins does not explicitly disclose the coating composition comprising the first mPCM in an amount of 34-35% by weight, and the second mPCM in an amount of 1-2 % by weight.
Hartmann, however, discloses a coated article comprising a substrate and a coating layer disposed on the substrate wherein the coating layer comprising a polymer, and a blend of a first mPCM having a first melting temperature of 28oC, and a second mPCM having a second melting temperature of 33oC with the ratio of the first mPCM to the second mPCM of 75:25, 50:50 and 100:1 (paragraph 68). The combination of the two mPCMs provides a staged temperature buffering effect as the skin temperature rises and then falls, thereby eliminating the physical discomforts of hot flashes (paragraph 19).
Given that the coating composition comprises 10-60% by weight of mPCM (Brookins, paragraphs 48 and 49) wherein the first mPCM is present in the range of 50-100% by weight, and the second mPCM is present in the range of up to 50% by weight, based on the 100% by weight of the blend of the first and second mPCMs (Hartmann, paragraph 68), the contents of the first and the second mPCMs in the coating composition, would overlap the claimed ranges.
The content of the first mPCM: 5 to 60% by weight
The content of the second mPCM: up to 30% by weight.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the mPCMs of Brookins comprising of a blend of a first mPCM and a second mPCM and their contents disclosed in Hartmann motivated by the desire to provide a staged temperature buffering effect as the skin temperature rises and then falls, thereby eliminating the physical discomforts of hot flashes.
Claims 4, 8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Brookins in view of Zuckerman and Hartmann as applied to claim 1 above, and further in view of WO 2017/210439 or US 20190211171 to Aou et al. (hereinafter “Aou”).
None of Brookins, Zuckerman and Hartmann disclose or suggest (i) the flexible polyurethane foam prior to coating having a density of 32 to 92 kg/m3, a recovery time of 1 to 10 seconds and a resiliency of less than 20%, (ii) the coating layer comprising a hydrophilic polymer that is liquid at 23oC, and has a weight average molecular weight of 350 to 8000 g/mol, wherein the hydrophilic polymer constitutes 0.1 to 15% of the total weight of the elastomer polymer, encapsulated PCM particles, ceramic particles and hydrophilic polymer, and (iii) the mPCM has a specific gravity of 0.9.
Aou, however, discloses a coated viscoelastic polyurethane foam comprising a viscoelastic polyurethane foam and a coating layer provided on the viscoelastic polyurethane foam wherein the coating layer is obtained from an aqueous polymer emulsion and an encapsulated PCM (abstract). The polyurethane foam has a density of 2.7 to 3.0 lb/ft3 or 43 to 48 kg/m3 (paragraph 104), a recovery time of 7 seconds and a resiliency of 6% (table 3). These are within the claimed ranges.
The coating layer further includes a polyethylene glycol having a molecular weight from 380 to 420 g/mol and being added in an amount of 1 to 10 wt% (paragraphs 72 and 153).
The encapsulated PCM is commercially available as MPCM 28D from Microtek Laboratories (paragraph 139). The MPCM 28D would inherently have a specific gravity of 0.9 as like material has like property.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a viscoelastic polyurethane foam disclosed in Aou for the flexible foam disclosed in Brookins motivated by the desire to improve cushioning properties while increasing water vapor permeability, ultimately offering enhanced comfort to the user.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a polyethylene glycol disclosed in Aou in the coating layer disclosed in Brookins motivated by the desire to help stabilize the dispersion of the mPCM particles in the coating emulsion.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the first mPCM having a diameter disclosed in Aou motivated by the desire to enhance thermal stability and handling of mPCMs.
Response to Arguments
Applicant alleges that the rejection over Brookins in view of Zuckerman and Hartmann has been overcome in view of unexpected results achieved, specially highlighting a very low microstructure roughness and substantially improved thermal conductivity. Among all the samples, the coating composition #4 demonstrates the lowest microstructure roughness of 17.61 and the highest thermal cooling of 12.60 (Applicant’s specification, table 2).
The examiner respectfully disagrees.
Applicant’s allegation is not commensurate in scope with the claim. There is no detailed information regarding the chemistry of the MPCMs 28D and 32D, boron nitrile and their specific contents in the claim to justify the unexpected results concerning microstructure roughness and thermal conductivity. Furthermore, it should be noted that the unexpected results are also influenced by the presence of the polyethylene glycol (PEG) and the surfactant. The claim does not address the contribution of the PEG and the surfactant, leaving their roles completely unacknowledged.
As there is a motivation to combine Brookins and Hartmann, a prima facie case of obviousness is said to exist. Accordingly, the rejection over Brookins in view of Zuckerman and Hartmann has been maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4, 6-8, and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17/908,035 (reference application) in view of Aou and Hartmann.
As to claims 1, 3, 4, 6-8, and 15, the reference application discloses that the sponge can be a polyurethane foam prepared using a method described in WO 2017/210439 (paragraph 20).
The claims of the reference application teach each and every limitation of the claims of the present invention except for (i) the sponge which is a flexible polyurethane foam, and (ii) the mPCMs comprising a blend of a first mPCM having a lower melting temperature and a second mPCM having a higher melting temperature wherein both the first and second mPCMs have a melting temperature of 25 to 38oC, and (iii) the coating composition comprising the first mPCM in an amount of 34-35% by weight, and the second mPCM in an amount of 1-2 % by weight.
Aou, however, discloses a coated viscoelastic polyurethane foam comprising a viscoelastic polyurethane foam and a coating layer provided on the viscoelastic polyurethane foam wherein the coating layer is obtained from an aqueous polymer emulsion and an encapsulated PCM (abstract). The polyurethane foam has a density of 2.7 to 3.0 lb/ft3 or 43 to 48 kg/m3 (paragraph 104), a recovery time of 7 seconds and a resiliency of 6% (table 3). These are within the claimed ranges.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a polyurethane foam disclosed in Aou for the sponge disclosed in the reference application because the polyurethane foam has desired properties including a density, a recovery time, and a resiliency, and all of which being suitable as the sponge.
Hartmann, however, discloses a coated article comprising a substrate and a coating layer disposed on the substrate wherein the coating layer comprising a polymer, and a blend of a first mPCM having a first melting temperature of 28oC, and a second mPCM having a second melting temperature of 33oC with the ratio of the first mPCM to the second mPCM of 75:25, 50:50 and 100:1 (paragraph 68). The combination of the two mPCMs provides a staged temperature buffering effect as the skin temperature rises and then falls, thereby eliminating the physical discomforts of hot flashes (paragraph 19).
Given that the coating composition comprises 10-70% by weight of mPCM (reference application) wherein the first mPCM is present in the range of 50-100% by weight and the second mPCM is present in the range of up to 50% by weight, based on the 100% by weight of the blend of the first and second mPCMs (Hartmann, paragraph 68), the contents of the first and the second mPCMs in the coating composition, would overlap the claimed ranges.
The content of the first mPCM: 5 to 70% by weight
The content of the second mPCM: up to 35% by weight.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the mPCMs of the reference application comprising of a blend of a first mPCM and a second mPCM and their contents disclosed in Hartmann motivated by the desire to provide a staged temperature buffering effect as the skin temperature rises and then falls, thereby eliminating the physical discomforts of hot flashes.
As to claims 13 and 14, it appears that the reference application and the claimed invention use the mPCM which is commercially available as MPCM 28D from Microtek Laboratories. Therefore, a particle size in the range of 17 to 20 microns and specific gravity of 0.9 would be present as like material has like property.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
The provisional nonstatutory double patenting rejection would not be withdrawn until submission of a terminal disclaimer because Applicant did not distinctly and specifically point out the supposed errors in the rejection.
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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788