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
Claims 1, 3, and 11 are objected to because of the following informalities:
the recitation in Claim 1 of “the values of p1 and p2 combined being greater than or equal to 2” appears redundant, as p1 and p2 each have a minimum value of 1 and thus their sum is necessarily greater than or equal to 2; and
it is suggested Claims 3 and 11 be amended to recite “R-3 is
Claim Rejections - 35 USC § 103
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 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.
Claims 1 and 3 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,957,121 to Schiller et al. (hereinafter Schiller).
Regarding Claims 1, 3, and 11. Schiller teaches a polyol component/isocyanate-reactive composition comprising a polyol/isocyanate-reactive and a polyether siloxane (Column 7, Lines 21 – 42). The polyether siloxane has the following formula:
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50
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wherein R1 and R2 may both be methyl; m is 1 to 40 when R1 and R2- represents -CH3; and n+m+2= is more preferably 20 to 40. n may consequently be 0. R is in each occurrence is –(CH2)x-O-(CH2-CR’R”-O)y-R”’, in which R’ and R” each represent -H, -CH3, -CH2CH3, or phenyl; x is 2 to 10; and y is 1 to 50. R” may represent an acyl radical which is preferably formed from acetic acid (Column 4, Lines 23 – 49 and Column 5, Lines 58 – 51), corresponding to an acetyl group. Schiller requires the alkylene oxide units (CH2-CR’R”-O) be at least 65 mole percent ethylene oxide; embodiments in which all units correspond to ethylene oxide (i.e. R’ and R” both correspond to hydrogen) are thus readily envisioned from the reference (Column 5, Lines 59 – 63).
In such embodiments, the polyether siloxane of Schiller corresponds to the instantly claimed at least one T-shaped siloxane material in which R1 and R2 are both hydrogen; p1 is 2 to 10; p2 and p3 are integers whose sum totals 1 to 50; R3 is an acetyl group; and R4 is a methyl (C1 alkyl) group.
The Office recognizes that the sum of p1 and p2 in the above described embodiment of Schiller is 1 to 50, while the instant claims require p1 be 1 – 6 and p2 be 1 – 12 and thereby a sum total of p1 and p2 of 2 – 18. The range taught by Schiller is not then identical to the instantly claimed range. However, the prior art and instantly claimed ranges do overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 4. Schiller teaches the isocyanate-reactive composition of Claim 1. Shiller is silent regarding the molecular weight of the at least one T-shaped siloxane material. However, Schiller teaches at least one T-shaped siloxane material having the instantly claimed structure with an overlapping values of p1 and p2. The molecular weight of the at least one T-shaped siloxane material of Schiller would thus be reasonably expected to overlap with the instantly claimed range of 350 g/mol to 2,500 g/mol. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 5. Schiller teaches the isocyanate-reactive composition of Claim 1 wherein the at least one T-shaped siloxane material is provided in an amount of more preferably 1 to 3 parts per 100 parts by mass of the polyol/isocyanate-reactive compound (Column 7, Lines 43 – 48).
Regarding Claim 6. Schiller teaches the isocyanate-reactive composition of Claim 1 may further comprises an amine catalyst; water, i.e. a chemical blowing agent; and a flame retardant (Table 1 in Column 9).
Regarding Claim 7. Schiller teaches a composition for the formation of a polyurethane or polyisocyanurate foam comprising the isocyanate-reactive composition of Claim 1 and a polyisocyanate (Column 7, Lines 21 – 61).
Regarding Claim 8. Schiller teaches a method for preparing a polyurethane or polyisocyanurate foam with the foam-forming composition of Claim 8 in which the isocyanate-reactive composition is mixed with a polyisocyanate (Column 7, Lines 21 – 61). The isocyanate index provided is preferably in the range of 80 to 350 (Column 8, Lines 6 – 10).
Regarding Claims 9 and 10. Schiller teaches a polyurethane or polyisocyanurate foam prepared from the isocyanate-reactive composition of Claim 1 and at least one polyisocyanate (Column 7, Lines 21 – 61). The foam has a density in the range of 5 to 200 kg/m3 (Column 9, Lines 17 – 21).
Schiller is silent regarding the thermal conductivity and open cell content of the foam. 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 product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a foam having a thermal conductivity and open cell content in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. 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 in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. .
Regarding Claim 12. Schiller teaches the isocyanate-reactive composition of Claim 3 wherein the at least one T-shaped siloxane material is provided in an amount of more preferably 1 to 3 parts per 100 parts by mass of the polyol/isocyanate-reactive compound (Column 7, Lines 43 – 48).
Response to Arguments
Applicant’s arguments, see page 5, filed September 5, 2025, with respect to the rejection(s) of the instant claims in view of US 6,294,107 to Peters have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is
made in view of US 8,957,121 to Schiller et al.
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.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764