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 § 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 1-2, 5, 7-16 and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 2012/0029145 A1) in view of Dubey (US 2016/0053078 A1) and Lakrout (US Patent No. 9,944,063 B1).
Regarding claims 1 and 2, Brown teaches a polyurethane (polymer) composite material (Abstract), comprising a product of a reaction mixture between two or more polyols and an isocyanate, which may contain high levels of particulate material (Abstract), which may be shaped and formed into solid articles ([0044]), and which therefore meets the claimed limitation of “shapeable.”
Brown teaches that the composite may contain an inorganic filler such as fly ash ([0045]) which reads on the claimed “functional filler” because the instant specification states that fly ash is a suitable functional filler (see instant Specification at [0005]). Brown teaches that the inventive composition may contain between 40 and 85% inorganic filler ([0045]), which falls within the claimed range of “greater than or equal to 40% by weight,” establishing a prima facie case of obviousness.
Brown is silent with regard to the viscoelasticity of the composition. Nevertheless, Brown teaches a polyurethane composite material which contains all of the same components, in the required amounts, produced by the same kind of chemical reaction (polyol + isocyanate). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed viscoelasticity will therefore necessarily be present in Brown as applied above.
Brown differs from claims 1 and 2 because it is silent with regard to the claimed flexural strengths of “50 psi to 500 psi” or “100 psi to 500 psi.” Brown also teaches compositions comprising densities as low as 20 lb/ft3 ([0206]).
Furthermore, and within the same field of endeavor, Dubey teaches a polyurethane composite containing fly ash (Abstract), and teaches inventive examples wherein the flexural strengths of the compositions include 125, 226, and 141 psi, with the flexural strength being controlled by the density of the composition (p. 7, Table 10), all of which fall within the claimed range of “100 to 500 psi,” establishing prima facie cases of obviousness.
Finally, also within the same field of endeavor, Lakrout teaches foamed polyurethane building materials (Abstract) with density ranges similar to those of Brown (c.f. col. 15, lines 54-end), and a suitable range of flexural strengths ranging from 100 to 700 psi (cols. 15-16, bridging paragraph). Lakrout additionally correlates flexural strength and density, specifying a ratio of flexural strength to density ranging from 10:1 to 100:1 (col. 16, lines 5-9).
It therefore would have been obvious to use the example formulations of Dubey as a guideline when forming compositions at the lower end of the density range taught by Brown, as these values establish a suitable range for similar foamed polyurethane compositions with similar end uses. Furthermore, the teachings of Lakrout confirm that the relationship of flexural strength and density enables the formation of similar compositions with the claimed range of flexural strength.
Regarding claim 5, Brown teaches all of the limitations of claim 1 as described above. Brown further teaches that the use of fly ash is particularly desirable as the inorganic particulate filler because it includes carbon ([0171]); therefore, the fly ash taught by Brown reads on the claimed “wherein the functional filler comprises calcium, silicon, aluminum, magnesium, carbon, or a mixture thereof. Brown further teaches that the inorganic particulate fillers in the composition may range from 5 to 200 microns in size ([0169]), which falls within the claimed range of “0.1 µm to 800 µm,” establishing a prima facie case of obviousness.
Regarding claim 7, Brown teaches the incorporation of fly ash ([0045]).
Regarding claim 8, Brown teaches that the inventive composition may contain between 40 and 85% inorganic filler ([0045]), which encompasses the claimed range of “40% to 60% by weight,” establishing a prima facie case of obviousness.
Regarding claim 9, Brown teaches the incorporation of a surfactant ([0170]).
Regarding claim 10, Brown is silent with regard to the reshape-ability of the composition. Nevertheless, Brown teaches a polyurethane composite material which contains all of the same components, in the required amounts, produced by the same kind of chemical reaction (polyol + isocyanate). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed reshape-ability will therefore necessarily be present in Brown as applied above.
Regarding claim 11, Brown teaches example compositions containing a 1:1 mass ratio of polyol and isocyanate (15 wt% of each of polyol and isocyanate in the composition, [0174]), which falls within the claimed range of “less than 1:5,” establishing a prima facie case of obviousness.
Regarding claim 12, Brown teaches that the polyols within the inventive formulation have average functionalities ranging from about 2 to about 7 ([0160]), which overlaps the claimed range of “1.5 to 5.5,” establishing a prima facie case of obviousness.
Regarding claim 13, Brown teaches that the ratio of isocyanate groups to polyol groups in the inventive composition ranges from 0.8:1 to about 1.1:1 ([0144]). Using the definition of “isocyanate index” as supplied in the instant Specification at [0020] wherein the “isocyanate index” is obtained by multiplying the amount if isocyanate groups relative to isocyanate-reactive groups by 100, Brown teaches an isocyanate index ranging from 80 to about 110, which falls within the claimed range of “50 to 150,” establishing a prima facie case of obviousness.
Regarding claim 14, Brown teaches building products formed from the inventive composition ([0386])
Regarding claim 15, Brown teaches that the inventive composition may be used to form tiles such as roof tiles ([0386]), backing materials such as carpet backing ([0386]), and generic boards ([0196]). Brown further teaches that the inventive composition may be used for the formation of building products ([0386]). As described above, the inventive composition taught by Brown is substantially identical to the claimed composite and therefore the products of Brown read on the claimed “tile backer board.”
Regarding claim 16, Brown teaches a shapeable composite (Abstract, [0004]), teaches that the composition is formed from a polyol and an isocyanate (Abstract), teaches the incorporation of a functional filler in amounts ranging between 40 and 85% inorganic filler ([0045]), which falls within the claimed range of “greater than or equal to 40% by weight,” establishing a prima facie case of obviousness, teaches that the functional filler may be fly ash as an inorganic filler ([0045]), and teaches, in some alternate embodiments, average particle sizes ranging from below 325 mesh (About 45 microns) to 0.0625 inches (about 1588 microns) in size ([0169]), which comprises all of the particles, and thereby reads on the claimed “at least 15% by weight of the functional filler” and encompasses the claimed range of “500 µm to 800µm,” establishing a prima facie case of obviousness.
Brown further teaches that the composition may be a foam ([0043]). Brown is silent with regard to the viscoelasticity and shape-retention characteristics of the composition. Nevertheless, Brown teaches a polyurethane composite material which contains all of the same components, in the required amounts, produced by the same kind of chemical reaction (polyol + isocyanate). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscoelasticity and shape-retention characteristics will therefore necessarily be present in Brown as applied above.
Regarding claim 18, Brown teaches the incorporation of fly ash ([0045]).
Regarding claim 19, Brown teaches that the composition has flexural strengths ranging from 1600 to 2000 psi ([106]), which overlaps the claimed range of “at least 50 psi,” establishing a prima facie case of obviousness.
Regarding claim 20, Brown teaches the mixing of polyol and isocyanate and functional filler ([0049]), and foaming the mixture ([0051]). Brown teaches the incorporation of a functional filler in amounts ranging between 40 and 85% inorganic filler ([0045]), which overlaps the claimed range of “greater than or equal to 40% by weight,” establishing a prima facie case of obviousness. Brown is silent with regard to the viscoelasticity of the composition. Nevertheless, Brown teaches a polyurethane composite material which contains all of the same components, in the required amounts, produced by the same kind of chemical reaction (polyol + isocyanate). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscoelasticity will therefore necessarily be present in Brown as applied above.
Furthermore, as described in the rejection of claim 1, above, Brown as modified by Dubey teaches a composition wherein it would have been obvious to one having ordinary skill in the art to perform routine experimentation on the formulation taught by Brown, using the many methods of modifying the strength of the composition as described above, to form a polyurethane foam composition with the claimed flexural strength.
Regarding claims 21 and 22, Brown teaches the formation of molded products by pressing the foamed polyurethane composition into a mold formed from pressurized belts ([0385]), wherein the belts may be heated ([0089]). The molded material is subsequently removed from the mold belts ([0074]), which reads on “removing the force.” Brown is silent with regard to the limitation requiring “wherein the shapeable composite retains the curved shape for at least 30 minutes after the force is removed,” however as described above, Brown as modified by Dubey results in a composition which is structurally and compositionally identical to the claimed composition, and which is produced by a process which meets all of the claimed process limitations. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed shape retention characteristic will therefore necessarily be present in the formulation of Brown as modified by Dubey, and as applied above.
Regarding claim 23, Brown teaches the incorporation of fly ash ([0045]).
Regarding claim 24, Brown as modified is silent with regard to the claimed elastic modulus. However, as described in the rejection of claims 1 and 20, above, Brown in view of Dubey teaches a composition which is substantially identical to the claimed composition, possessing all of the claimed components in all of the claimed amounts, and possessing a flexural strength which would have been obvious to optimize towards. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed flexural strength will therefore necessarily be present in Brown as modified by Dubey, and as applied to claim 20, above.
Response to Arguments
Applicant's arguments filed July 29, 2025 have been fully considered but they are not persuasive.
Applicant argues that neither Dubey nor Brown would have provided motivation to decrease the flexural strength of Brown’s material to reach the claimed composition. However, as described above, one having ordinary skill in the art would have had the motivation to utilize a foamed material, as contemplated by both Brown and Dubey, and would have been motivated to utilize the flexural strength as taught by Dubey because Dubey recognizes said strengths as suitable for said foams. Furthermore, as described above, the flexural strengths taught by Brown are optional and are not required for the inventive composition, and the strengths are specifically contemplated as being related to the density of said materials (i.e., Brown specifies 1750-1850 psi flexural strength at 30-50 pcf density).
Applicant argues that Brown teaches away from a drop in flexural strength, but Brown only teaches that “some embodiments” may utilize shaped dies as opposed to squeezing the extrudate. This practice is not mandatory within Brown.
Applicant provides specific examples of flexural strengths taught by Dubey which fall above the range described in the rejections above, however patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). The mere recitation of examples which fall above the claimed range does not rebut the teachings of Dubey which do fall within the claimed range.
Applicant’s final arguments are directed towards alleged deficiencies in the teachings of Brown which may separate the amended claims from the prior art, including the aspects of particle size, flexural strength, heating the composition under force and the removal thereof, and the formation of a molded belt.
However, as described above, Brown teaches an alternative embodiment which contemplates fly ash particulates ranging from about 45 to about 1588 microns in size, which overlaps the amended range of particle sizes, establishing a prima facie case of obviousness.
Furthermore, as described above, it would have been obvious to one having ordinary skill in the art at the time of filing to form a foamed product of the formulation of Brown, similar to that of Dubey, and it would have been obvious to optimize the flexural strength thereof to reach the values taught by Dubey.
As described above, Brown in view of Dubey teaches all of the process limitations relating to the production of the claimed composition, including the application of force, shaping of the composition, applying of heat, and force removal. Furthermore, the shape retention characteristic is governed by the materials properties of the composition, which will be inherently present in the composition of the prior art because it meets all the compositional and preparation process limitations thereof.
Finally, while the Examiner acknowledges and recognizes the validity of the Applicant’s remarks concerning the use of belts as a molding surface as opposed to a molded product, Brown as modified by Dubey nevertheless teaches every limitation required by the as-amended claim set, as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. 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, Robert Jones can be reached at 571-270-7733. 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.
/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762