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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 3, 2025 has been entered.
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, 2, and 8 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.
There is a lack of antecedent basis for “the isocyanate-reactive material” set forth in (i) and “isocyanate-reactive material” set forth in (ii) of Claims 1 and 2. It is unknown to which of the initially recited “at least one isocyanate-reactive material” the aforementioned phrases refer. As Claim 8 depends on Claim 1, it also inherits this deficiency. For the purposes of examination, Claims 1 and 2 will be interpreted as setting forth the at least one isocyanate-reactive material in (i) and (ii).
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 the EPOMIN® polyethyleneimines have molecular weights of at least 300 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].
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 the EPOMIN® polyethyleneimines have molecular weights of at least 300 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].
Response to Arguments
Applicant's arguments filed September 29, 2025 have been fully considered. The Office responds as follows:
Claim Objections
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 grounds of rejection above.
No Teaching or Suggestion of the Claimed Combination
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the rejections under 35 U.S.C. 103 are based upon a combination of Zhang with Tateishi. Zhang is relied upon teach the concept of producing a polyurethane foam in which curing occurs in the presence of a polyethyleneimine. It is the Office’s position that would have been obvious to use one of the instantly claimed β-diketone compounds in the process of Zhang in light of the teachings of Tateishi, for the reasons detailed in the corresponding rejections of Claims 1 and 2 under 35 U.S.C. 103 above.
Synergistic and Unexpected Results
Applicant additionally argues that the instant specification provides evidence of unexpected results achieved by the instantly claimed invention, namely a synergistic reduction in multiple aldehyde emissions arising from the combination of specific β-diketone compounds with a polyethyleneimine.
However, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) The Office respectfully submits 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 at least 300 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.
Commensurability of Evidence
Applicant argues that the claims have been amended such that the evidence of unexpected results is now commensurate in scope with the claimed subject matter. The Office notes that the claims have been amended to set forth a range of amounts for both the at least one β-diketone compound and at least one water-soluble, amino-functional polymer. However, the inventive examples only test one amount of the at least one β-diketone compound (0.108 weight percent based on the weight of the at least one isocyanate-reactive material) and one amount of the at least one water-soluble, amino-functional polymer (0.054 weight percent based on the weight of the at least one isocyanate-reactive material). These single amounts of are not representative over the entire claimed ranges for the at least one β-diketone compound (0.01 to 5 parts by weight based on 100 parts by weight of the at least one isocyanate-reactive material) and the at least one water-soluble, amino-functional polymer (0.01 to 2 parts by weight based on 100 parts by weight of the at least one isocyanate-reactive material). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
The Office has also pointed to additional reasons why the data provided in the instant specification is not commensurate in scope with the instant claims. These reasons are detailed in the previous sub-section of this Response to Arguments section.
Motivation to Combine
In response to applicant's argument that there is no articulated motivation in the prior art to combine the specifically claimed β-diketone compound(s) with polyethyleneimine to synergistically reduce aldehyde emissions, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Zhang already teaches the use of polyethyleneimine in the preparation of a polyurethane foam. Tateishi teaches providing acetoacetoxyethyl methacrylate in polyurethane foam compositions ([0008] and [0013]). As detailed in the prior and present Office action, it then the Office’s position that 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 synergistic reduction in aldehyde emissions arising from the concomitant use of the specifically claimed β-diketone compound(s) with polyethyleneimine would then flow naturally from the combination of Zhang with Tateishi.
Double Patenting
In light of the amendments to the instant claims, the obviousness-type double patenting rejection over U.S. Patent No. 12,344,723 has been withdrawn.
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