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 § 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 fireproofing 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 must necessarily have the same effects as the instantly claimed method of suppressing a toxic fume.
Response to Arguments
Applicant’s arguments filed July 1, 2026 have been fully considered but they are not persuasive.
Applicant argues that Samura fails to disclose a method of “suppressing a toxic fume”. However, as detailed in the Office action, 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 must necessarily have the same effects as the instantly claimed method of suppressing a toxic fume.
In response to applicant’s argument that Samura considers aliphatic and aromatic isocyanates to be completely interchangeable, it has been held that prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. (MPEP 2143(I)) Additionally, when a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex part A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (MPEP 2131) In the instant case, Samura’s disclosure of aliphatic diisocyanate anticipates the instantly claimed subject matter and there is no requirement that Samura express a preference for, or exclusively, teach aliphatic diisocyanates for this disclosure to be considered anticipatory.
Applicant additionally argues that the instantly claimed invention is directed to a different technical problem than Samura, namely the suppression of toxic combustion products/fumes. Applicant notes that Samura does not perform any chemical characterization of the combustion gases, identify toxic species, or provide any evidence regarding the toxicity of the fumes generated. The Office respectfully submits that Samura teaches an identical process to that instantly claimed and thus the suppression of toxic combustion must inherently be achieved by the prior art process, as detailed in the outstanding and present rejection. It has been held that there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed Cir. 2003) (MPEP 2112). Thus, while the suppression of toxic fume is reasonably expected to correspond to an inherent feature of Samura, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention.
Applicant argues that the present application demonstrates the presence of toxic olefinic compounds in aromatic polyurethane foams and their absence in aliphatic polyurethane foams. However, Samura also teaches embodiments in which aliphatic isocyanates are provided, thereby forming aliphatic polyurethane foams. Embodiments of Samura in which an aliphatic polyisocyanate is provided would also be reasonably expected to have an absence of toxic olefinic compounds.
In response to applicant’s argument that Samura only utilizes aromatic polyisocyanates in its examples, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123) The Office respectfully submits that the rejection under 35 U.S.C. 103 in view of Samura properly relies upon embodiments detailed in the general disclosure in which aliphatic diisocyanates are provided, rather than the inventive examples of the reference.
Applicant also argues that Samura discloses a broad genus of polyurethane formulations encompassing numerous polyols, polyisocyanate, molecular weights, hydroxyl numbers, NCO contents, and optional additives. However, the Office respectfully submits that the instant claims also place no limitation on these particular features. If such features are critical to achieving the claimed effect of suppressing toxic fumes, they should be included in the instant claims. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Finally, applicant argues that Samura provides no direction or motivation to combine the parameters of an aliphatic diisocyanate and no fire retardant. The Office respectfully disagrees. Samura expressly teaches the isocyanate may be 1,6-hexamethylene diisocyanate or isophorone diisocyanate (Column 3, Lines 9 – 15), and thus the use of either is readily envisaged from the reference disclosure. When a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex part A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) Additionally, Samura expressly sets forth fireproofing additives/flame retardants as optional (Column 3, Lines 42 – 43), which results in two possible embodiments: 1) in which no flame retardant is included; and 2) in which a flame retardant is included. An embodiment in which an aliphatic diisocyanate and no flame retardant is included would then be readily envisioned from the reference disclosure. Per the above discussion, the suppression of toxic fume would flow naturally from such an embodiment.
For these reasons, the Office maintains the outstanding rejection of the pending claims under 35 U.S.C. 103.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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