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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 6, 2026 has been entered.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,026,829 to Samura et al. (hereinafter Samura).
Regarding Claims 1, 4, and 5. Samura teaches a method comprising:
a step in which a polyurethane foam undergoes flame contact (Column 3, Lines firefire64 – 66), i.e. a step of exposing a polyurethane foam to fire.
Samura further teaches the polyurethane foam has flame retardant properties (Column 3, Lines 65 – 67), corresponding to a step of retarding a flame in the polyurethane foam.
An isocyanate is included in the polyurethane foam by reacting with a polyetherpolyol (Column 1, Lines 57 – 68), i.e. at least one polyol compound. The isocyanate may be 1,6-hexamethylene diisocyanate or isophorone diisocyanate (Column 3, Lines 9 – 15), which are each set forth as one aliphatic diisocyanate compound in instant Claim 5.
Samura teaches fire proofing additives, i.e. flame retardants, are optional additives in the polyurethane foam (Column 3, Lines 42 – 43). Thus, embodiments in which the polyurethane foam has an absence of added flame retardants would be readily envisioned from the reference.
Samura does teach the inventive polyurethane foam has a reduced amount of smoke (Column 3, Lines 64 – 66), though the reference does not expressly teach inclusion of the aliphatic isocyanate component by reaction with the at least one polyol compound has the effects of suppressing a toxic fume. However, it has been held that, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) Moreover, products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. Samura’s foam is produced by an identical process to that claimed and thereby forms a polyurethane foam product which is identical in chemical composition to the claimed polyurethane foam. Thus, the method of Samura a must necessarily have the same effects as the instantly claimed method of suppressing a toxic fume.
Response to Arguments
Applicant’s arguments, see Pages 4 – 6, filed February 6, 2026, with respect to the rejection of the instant claims under 35 U.S.C. 102(a)(1) as being anticipated by JP 2001316445 to Katsumata have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection under 35 U.S.C. 102(a)(1) is made in view of US 4,026,829 to Samura et al.
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.
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
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