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 Objections
Claim 1 is objected to because of the following informalities: for consistency, Claim 1 should be amended to recite the aromatic polyisocyanate in the final line of the claim. Appropriate correction is required.
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.
Claim 2 is 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.
There is a lack of antecedent basis for “the polyisocyanate” set forth in the second to last paragraph of Claim 2. It is unknown to which of the initially recited “at least one organic polyisocyanate” the aforementioned phrases refer. For the purposes of examination, Claim 2 will be interpreted as setting forth the at least one organic polyisocyanate.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/148959 to Zhang et al. (hereinafter Zhang) in view of JPH0762051 to Tateishi et al. (hereinafter Tateishi), as evidenced by “Polyethylene: EPOMINTM” to Nippon Shokubai (hereinafter Nippon). For the purposes of examination, citations for Tateishi are taken from a machine translation of the document obtained from the European Patent Office website in April 2025.
Regarding Claim 1. Zhang teaches a process for producing a polyurethane foam comprising forming a reaction mixture that contains an aromatic polyisocyanate, at least one isocyanate-reactive material having an average functionality of at least 2 and an equivalent weight of at least 200 grams per isocyanate-isocyanate reactive group, at least one blowing agent, at least one surfactant, and at least one catalyst.
The reaction mixture may be cured in the presence of a polyethyleneimine (Page 11, Lines 29 – 30). The polyethyleneimine used in the inventive examples is EPOMIN® SP-600 (Page 20, Lines 8 – 9). In Example 3, this polyethyleneimine is provided in an amount of 0.3 grams relative to 136.02 grams Polyol-1 and 150.33 grams Polyol-2. This amount of PEI can then be calculated to correspond to roughly 0.1 parts by weight per 100 parts by weight of the at least one isocyanate-reactive material. Nippon provides evidence that this commercially available EPOMIN® has a molecular weight of 600 g/mol (see Table on Page 2). Polyethyleneimines are also set forth as water-soluble, amino-functional polymers in instant Claim 7. The polyethyleneimine of Zhang is therefore reasonably considered to correspond to a water-soluble, amino-functional polymer having a number average molecular weight of at least 300 and at least three secondary amino groups per molecule.
Zhang does not expressly teach the reaction mixture is cured in the presence of one or more of the claimed β-diketone compounds. However, Tateishi teaches providing acetoacetoxyethyl methacrylate as an ester compound in a polyurethane foam composition ([0008] and [0013]). Tateishi further teaches such ester compounds are provided in amount of 1 to 30 parts by weight relative to 100 parts by weight of the total amount of polyol/isocyanate-reactive materials [0004]. Zhang and Tateishi are analogous art as they are from the same field of endeavor, namely flexible polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to include acetoacetoxyethyl methacrylate as taught by Tateishi in the reaction mixture of Zhang. The motivation would have been that Tateishi teaches acetoacetoxyethyl methacrylate has the effect of lowering the hardness and recovery
rate of the foam products in which it is included [0008] – [0009].
The references do not expressly teach the order in which the aforementioned additives are mixed, e.g. compounds corresponding to instantly claimed components (i) and (ii). However, Zhang does teach “[t]he various ingredients may be introduced individually or in various subcombinations into a mix head or other mixing device introduced individually or in various subcombinations into a mix head or other mixing device” (Page 16, Line 29 – 31), which is identical language to that set forth in the instant specification (Page 17, Lines 19 – 20). Zhang further teaches the concept of combining all additives and ingredients used in the process with the polyol/isocyanate-reactive material prior to contacting/reacting with the polyisocyanate (Page 17, Lines 3 – 9). Moreover, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In Re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP 2144.04(IV)(C)) Thus, in light of the disclosure of Zhang and in light of In Re Burhans, it is the Office’s position that it would have been obvious to combine all additives, e.g. ingredients corresponding to instantly claimed components (i) and (ii), with the at least one isocyanate-reactive component prior to reaction with the aromatic polyisocyanate.
Regarding Claim 8. Zhang a polyurethane foam prepared by the process of Claim 1 (Page 3, Lines 1 – 20).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/148959 to Zhang et al. (hereinafter Zhang) in view of JPH0762051 to Tateishi et al. (hereinafter Tateishi), as evidenced by “Polyethylene: EPOMINTM” to Nippon Shokubai (hereinafter Nippon). For the purposes of examination, citations for Tateishi are taken from a machine translation of the document obtained from the European Patent Office website in April 2025.
Regarding Claim 2. Zhang teaches a process for reducing formaldehyde and acetaldehyde emissions from a polyurethane foam comprising mixing a polyethyleneimine with at least one isocyanate-reactive material having an average functionality of at least 2 and an equivalent weight of at least 200 grams per isocyanate-isocyanate reactive group to form a mixture (Page 4, Lines 3 – 6; Page 11, Lines 29 – 30; and Inventive Example 3). The polyethyleneimine used in the inventive examples is EPOMIN® SP-600 (Page 20, Lines 8 – 9). In Example 3, this polyethyleneimine is provided in an amount of 0.3 grams relative to 136.02 grams Polyol-1 and 150.33 grams Polyol-2. This amount of PEI can then be calculated to correspond to roughly 0.1 parts by weight per 100 parts by weight of the at least one isocyanate-reactive material. Nippon provides evidence that this commercially available EPOMIN® has a molecular weight of 600 g/mol (see Table on Page 2).
The resultant reaction mixture is cured in the presence of at least one blowing agent, at least one surfactant, and at least one catalyst to form a polyurethane foam (Page 4, Lines 4 – 9).
Zhang does not expressly teach further combining one or more of the claimed β-diketone compounds with the isocyanate-reactive material. However, Tateishi teaches providing acetoacetoxyethyl methacrylate as an ester compound in a polyurethane foam composition ([0008] and [0013]). Tateishi further teaches such ester compounds are provided in amount of 1 to 30 parts by weight relative to 100 parts by weight of the total amount of polyol/isocyanate-reactive materials [0004]. Before the effective filing date of the instantly claimed invention, it would have been obvious to combine acetoacetoxyethyl methacrylate as taught by Tateishi with the isocyanate-reactive material of Zhang. The motivation would have been that Tateishi teaches acetoacetoxyethyl methacrylate has the effect of lowering the hardness and recovery rate of the foam products in which it is included [0008] – [0009].
The references do not expressly teach the order in which the aforementioned additives are mixed, e.g. compounds corresponding to instantly claimed components (i) and (ii). However, Zhang does teach “[t]he various ingredients may be introduced individually or in various subcombinations into a mix head or other mixing device introduced individually or in various subcombinations into a mix head or other mixing device” (Page 16, Line 29 – 31), which is identical language to that set forth in the instant specification (Page 17, Lines 19 – 20). Zhang further teaches the concept of combining all additives and ingredients used in the process with the polyol/isocyanate-reactive material prior to contacting/reacting with the polyisocyanate (Page 17, Lines 3 – 9). Moreover, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In Re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP 2144.04(IV)(C)) Thus, in light of the disclosure of Zhang and in light of In Re Burhans, it is the Office’s position that it would have been obvious to combine all additives, e.g. ingredients corresponding to instantly claimed components (i) and (ii), with the at least one isocyanate-reactive component prior to reaction with the aromatic polyisocyanate.
Zhang teaches the process reduces emission of formaldehyde and acetaldehyde (Page 1, Lines 5 – 7) but is silent with respect to reduction in emissions of acrolein and propionaldehyde. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Zhang, when modified in the manner proposed, teaches
Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teach a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. reduction in emissions of acrolein and propionaldehyde, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. 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 using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Response to Arguments
Applicant's arguments filed May 4, 2026 have been fully considered. The Office responds as follows:
Rejections under 35 U.S.C. 112(b)
The Office agrees that the amendments to the claims overcome the outstanding rejection under 35 U.S.C. 112(b). However, the amendments to the claims do raise a new, separate issue under 35 U.S.C. 112(b) which is detailed in the corresponding new ground of rejection of Claim 2 above.
Rejections under 35 U.S.C. 103
A. Applicant argues that the applied prior art references do not teach combining the polyethyleneimine and acetoacetyl compound as a two component scavenger package. However, this limitation is not in the claims, nor does it appear to contain support in the original disclosure.
Applicant additionally argues that the applied references do not teach premixing both components together into an isocyanate-reactive material prior to reaction with isocyanate or specific reductions including acrolein and propionaldehyde. In response, the Office respectfully submits that such limitations would flow naturally from the proposed combination of Zhang and Tateishi for the reasons detailed in the modified grounds of rejection under 35 U.S.C. 103 above.
B. Applicant argues that neither Zhang or Tateishi disclose or suggest premixing the specifically claimed scavenger components. However, as detailed in the modified grounds of rejection of Claims 1 and 2 under 35 U.S.C. 103 above, Zhang does teach “[t]he various ingredients may be introduced individually or in various subcombinations into a mix head or other mixing device introduced individually or in various subcombinations into a mix head or other mixing device” (Page 16, Line 29 – 31), which is identical language to that set forth in the instant specification (Page 17, Lines 19 – 20). Zhang further teaches the concept of providing all additives and ingredients used in the process with the polyol/isocyanate-reactive material prior to contacting/reacting with the polyisocyanate (Page 17, Lines 3 – 9). Moreover, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In Re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP 2144.04(IV)(C)) Thus, in light of the disclosure of Zhang and in light of In Re Burhans, it is the Office’s position that it would have been obvious to combine all additives, e.g. ingredients corresponding to instantly claimed components (i) and (ii), with the at least one isocyanate-reactive component prior to reaction with the aromatic polyisocyanate.
C. Applicant argues that the prior art does not specifically teach or suggest a reduction of acrolein or propionaldehyde. Again, it is the Office’s position that a reduction of acrolein and propionaldehyde would flow naturally from the proposed combination of Zhang and Tateishi for the reasons detailed in the modified grounds of rejection under 35 U.S.C. 103 above.
D. Applicant argues that the scope of the claims is now fully commensurate in scope with the disclosed embodiments and supporting data. However, the Office respectfully maintains the position that the data provided in the examples of the instant specification is not commensurate in scope with the instant claims. The instant claims set forth genera of ingredients which are large in scope (e.g. “at least one isocyanate-reactive material having an average functionality of at least 2”, “a polyethyleneimine having a number average molecular weight of 300 to 1,200 and at least 3 primary and/or secondary amino groups per molecule”, etc.) and which may be provided in any amounts and under any processing conditions. The data exemplifies a limited number of species (e.g. one species of polyethyleimine) and amounts (e.g. 0.05% PEI based on polyol weight) of each genera of ingredients and under specific processing conditions (preparing the foam in a cup under ambient conditions). The scope of the data is then insufficient to conclude that any process encompassed by the instant claims necessarily achieves the results observed in the inventive examples.
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