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 .
Election/Restrictions
Newly submitted claims 50-54 are directed to an invention that lacks unity with the invention originally claimed for the following reasons:
The groups lack unity of invention because even though the inventions of these groups require the technical feature of the perfluoropolyether of the instant concern, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of CN-1053800. The special technical feature of the claims, the perfluoropolyether of the instant concern are either anticipated or obvious over CN-1053800{see Examples and Claims, as well as the entire document} and does not make a contribution over the prior art. As such, unity of invention is lacking and restriction is appropriate.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 50-54 are withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 35-49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicoletti et al.(2004/0157946).
Nicoletti et al. discloses polyurethane foam forming composition that include isocyanate, polyol, catalysts, blowing agent and stabilizers to the degree as required by the claims as well as perfluoropolyethers falling in overlap with those as defined by applicants’ claims {see abstract, paras [0016]-[0072], [0080], [0081], [0087]-[0091] and the Examples}. Though it is to be noted that Nicoletti et al. does disclose specifics regarding formation of thermoset polyurethane foams as well as rigid polyurethane foams {see paras [0003]-[0013]}, these capabilities are not required to be fulfilled in order to meet that requirements of applicants’ claims in that the claims are directed towards compositions/mixtures for the production of rigid polyurethane foams as opposed to formed rigid polyurethane foam products themselves. Regarding claims 31 and 32, hydrocarbons as defined by the claims are disclosed by Nicoletti et al.{paras [0039]-[0072] and [0076]}.
Nicoletti et al. does differ from applicants’ claims in that the overlap of its disclosed selections of perfluoropolyethers and those of the instant claims is not complete. However, overlap is evident {paras [0014] and [0034]-[0072]} for purposes of providing maintained thermal conductivity effects in formed products. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any of the perfluoropolyethers of Nicoletti et al. in forming the urethane foam forming compositions of Nicoletti et al. for the purpose of providing maintained thermal conductivity effects in formed products in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claims 44, 45 and 47, though combinations of perfluoropolyethers as claimed are not specified by Nicoletti et al., it has long been held that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). {Note: MPEP 2144.06 [R-6]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any combination of the perfluoropolyethers provided for by Nicoletti et al. in forming the urethane foam forming compositions of Nicoletti et al. for the purpose of providing maintained thermal conductivity effects in formed products in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claims 48 and 49, difference may be found in overlap between ranges of values of the claims and disclosures and ranges of values of Nicoletti et al. However, overlap is evident {para [0077]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the perfluoropolyethers of Nicoletti et al. in any amount in forming the urethane foam forming compositions of Nicoletti et al. for the purpose of providing maintained thermal conductivity effects in formed products in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Moreover, operations beyond the general guidance provided for by Nicoletti et al. for purposes of achieving greater or lesser foaming and other thermal conductivity enhancing effects would have been obvious as well with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejection as now set forth above is maintained.
Rejections under 35USC112 and 102 are withdrawn in light of applicants’ amendments. Rejection under 35USC103 is replaced with the above rejection under 35USC103.
As to applicants’ arguments to the degree that they apply to the rejection as applied to the current claims, the totality of the fully considered teachings and fair suggestions of the cited prior art can not be ignored. Overlap between the selections of Nicoletti et al. and the instant claims remain evident, and obviousness to operate within those selections of Nicoletti et al. in order to arrive at the invention of the instant claims remains sufficiently evident in fact.
Further, applicants’ arguments and/or the current evidence of record does not demonstrate unexpected results for the combinations of their claims shown to be commensurate in scope with the scope of combinations now claimed in order to overcome the rejection as set forth above.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. 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.
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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