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 27 is objected to because of the following informalities: the recitation in the claim that “the content of the polyamine compound (B) ranges from 2.0% to 40.0% by mass relative to a total weight of the urea resin composition” appears redundant, as an identical limitation is already set forth in independent Claim 10.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10 and 27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 now sets forth an isocyanurate ratio formula based on variables P1 – P4, wherein each of these variables is “derived from” various chemical groups in the polyurea foam. However, the originally filed specification set forth P1 – P4 correspond to peak areas “derived from” the chemical groups in the polyurea (see [0020] – [0024] of the PG-PUB of the instant application). Accordingly, the recitation variables that P1 – P4 are simply “derived from” various chemical groups in the polyurea constitutes new matter. As Claim 27 depends on Claim 10, it incorporates the subject matter thereof and is also therefore rejected under this statute.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9, 14, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR100646038 to Kim. For the purposes of examination, citations for Kim are taken from a machine translation of the specification obtained from the European Patent Office website in April 2026, as well as a machine translation of the table in the specification obtained from Google translate in April 2026.
Regarding Claims 9 and 14. Kim teaches a urea resin composition (Page 1, Paragraph 1). The urea resin composition comprises a prepolymer solution corresponding to methylene diisocyanate, i.e. a polyisocyanate compound. The urea resin composition also further comprises a resin solution comprising a polyether triamine compound, i.e. a polyamine compound (B); a quaternary ammonium carboxylate catalyst, i.e. a trimerization catalyst; a silicone foaming agent/stabilizer; and a flame retardant. No polyol compounds are required to be present in said urea resin composition (see last paragraph of Page 2).
Relative to the total weight of the resin solution, Kim teaches the polyether triamine compound/polyamine compound (B) is provided in an amount of 10 – 12 weight percent; the quaternary ammonium carboxylate/trimerization catalyst is provided in an amount of 0.5 – 1.5 weight percent; and the flame retardant is provided in an amount of 13 – 17 weight percent. Kim further teaches the prepolymer and resin solutions are mixed in a 1:1 ratio (see again last paragraph of Page 2). Using these values, the urea resin composition may be calculated to comprise roughly 6.5 to 8.5 weight percent polyamine compound (B), relative to the total weight of the urea resin composition. Additionally, the urea resin composition may be calculated to comprise roughly 2.5 to 15 weight percent trimerization catalyst and 65 – 170 weight percent flame retardant, relative to the content of polyamine compound (B).
Regarding Claim 23. Kim teaches the urea resin composition of Claim 9 wherein a value of the isocyanate content in polyisocyanate compound is 28 – 34 % (see first two lines of last paragraph on Page 2).
Claims 10 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR100646038 to Kim. For the purposes of examination, citations for Kim are taken from a machine translation of the specification obtained from the European Patent Office website in April 2026, as well as a machine translation of the table in the specification obtained from Google translate in April 2026.
Regarding Claim 10. Kim teaches a polyurea foam obtained by foaming and curing a urea resin composition (see first and last paragraphs of Page 1). The urea resin composition comprises a prepolymer solution corresponding to methylene diisocyanate, i.e. a polyisocyanate compound. The urea resin composition also further comprises a resin solution comprising a polyether triamine compound, i.e. a polyamine compound (B); a quaternary ammonium carboxylate catalyst, i.e. a trimerization catalyst; a silicone foaming agent/stabilizer; and a flame retardant (see last paragraph of Page 2).
Relative to the total weight of the resin solution, Kim teaches the polyether triamine compound/polyamine compound (B) is provided in an amount of 10 – 12 weight percent; the quaternary ammonium carboxylate/trimerization catalyst is provided in an amount of 0.5 – 1.5 weight percent; and the flame retardant is provided in an amount of 13 – 17 weight percent. Kim further teaches the prepolymer and resin solutions are mixed in a 1:1 ratio (see again last paragraph of Page 2). Using these values, the urea resin composition may be calculated to comprise roughly 6.5 to 8.5 weight percent polyamine compound (B), relative to the total weight of the urea resin composition. Additionally, the urea resin composition may be calculated to comprise roughly 2.5 to 15 weight percent trimerization catalyst and 65 – 170 weight percent flame retardant, relative to the content of polyamine compound (B).
Kim does not expressly teach the foam comprises an isocyanurate structure or quantify its isocyanurate ratio. However, Kim teaches 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 polyurea foam having an isocyanurate structure and an isocyanurate ratio in the instantly claimed range, 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.
Claims 11 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR100646038 to Kim. For the purposes of examination, citations for Kim are taken from a machine translation of the specification obtained from the European Patent Office website in April 2026, as well as a machine translation of the table in the specification obtained from Google translate in April 2026.
Regarding Claims 11 and 19. Kim teaches a urea resin composition for producing a polyurea foam (Page 1, Paragraph 1). The urea resin composition comprises a prepolymer solution corresponding to methylene diisocyanate, i.e. a polyisocyanate compound. The urea resin composition also further comprises a resin solution comprising a polyether triamine compound, i.e. a polyamine compound (B); a quaternary ammonium carboxylate catalyst, i.e. a trimerization catalyst; a silicone foaming agent/stabilizer; and a flame retardant. No polyol compounds are required to be present in said urea resin composition (see last paragraph of Page 2).
Relative to the total weight of the resin solution, Kim teaches the polyether triamine compound/polyamine compound (B) is provided in an amount of 10 – 12 weight percent; the quaternary ammonium carboxylate/trimerization catalyst is provided in an amount of 0.5 – 1.5 weight percent; and the flame retardant is provided in an amount of 13 – 17 weight percent. Kim further teaches the prepolymer and resin solutions are mixed in a 1:1 ratio (see again last paragraph of Page 2). Using these values, the urea resin composition may be calculated to comprise roughly 6.5 to 8.5 weight percent polyamine compound (B), relative to the total weight of the urea resin composition. Additionally, the urea resin composition may be calculated to comprise roughly 2.5 to 15 weight percent trimerization catalyst and 65 – 170 weight percent flame retardant, relative to the content of polyamine compound (B).
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 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over KR100646038 to Kim, as applied to Claim 9 above, and further in view of US 2018/0334530 to Nefzger et al. (hereinafter Nefzger). For the purposes of examination, citations for Kim are taken from a machine translation of the specification obtained from the European Patent Office website in April 2026, as well as a machine translation of the table in the specification obtained from Google translate in April 2026.
Regarding Claim 12. Kim teaches the urea resin composition of Claim 9. As detailed in the rejection of Claim 9, the urea resin composition comprises roughly 65 – 170 weight percent flame retardant, relative to the content of polyamine compound (B).
Kim is silent regarding the specific flame retardant that is used. However, Nefzger teaches the concept of including red phosphorus as a flame retardant in polyisocyanate-based foams [0056]. Kim and Nefzger are analogous art as they are from the same field of endeavor, namely polyisocyanate-based foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide red phosphorus as at least part, e.g. 25 to 40%, of the flame retardant in the urea resin composition of Kim. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Nefzger shows that red phosphorus is known in the art to be a suitable flame retardant for polyisocyanate-based foams.
Regarding Claim 13. Kim teaches the urea resin composition of Claim 9 in which water, rather than a hydrofluoorolefin, is provided as a blowing agent component (see last paragraph of Page 2). However, Nefzger teaches the concept of selecting a hydrofluoroolefin, such as trans-1-chloro-3,3,3-trifluoropropene, as the blowing agent in the preparation of isocyanate-based foams [0050]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a hydrofluoroolefin, such as trans-1-chloro-3,3,3-trifluoropropene, in place of water in the urea composition of Kim. The motivation would have been that hydrofluoroolefins, including trans-1-chloro-3,3,3-trifluoropropene, have many desirable properties as blowing agents, including the manufacture of products with improved dimensional stability and insulation properties.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over KR100646038 to Kim, as applied to Claim 9 above, and further in view of US 4,980,388 to Herrington et al. (hereinafter Herrington).
Regarding Claim 21. Kim teaches the urea resin composition of Claim 9 but is silent with respect to the isocyanate index of the urea resin composition of Example 1. However, Herrington teaches the concept of providing a urea resin composition with an isocyanate index as high as 200 (Column 4, Lines 33 – 34). Kim and Herrington are analogous art as they are from the same field of endeavor, namely urea resin compositions for polyurea foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the urea resin composition of Kim with an isocyanate index as high as 200. The motivation would have been that an isocyanate index as high as 200 would provide a foam product with increased rigid and mechanical strength.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over KR100646038 to Kim, as applied to Claim 11 above, and further in view of US 2018/0334530 to Nefzger et al. (hereinafter Nefzger). For the purposes of examination, citations for Kim are taken from a machine translation of the specification obtained from the European Patent Office website in April 2026, as well as a machine translation of the table in the specification obtained from Google translate in April 2026.
Regarding Claim 17. Kim teaches the composition for producing the polyurea foam of Claim 11. As detailed in the rejection of Claim 11, the urea resin composition comprises roughly 65 – 170 weight percent flame retardant, relative to the content of polyamine compound (B).
Kim is silent regarding the specific flame retardant that is used. However, Nefzger teaches the concept of including red phosphorus as a flame retardant in polyisocyanate-based foams [0056]. Kim and Nefzger are analogous art as they are from the same field of endeavor, namely polyisocyanate-based foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide red phosphorus as at least part, e.g. 25 to 40%, of the flame retardant in the urea resin composition of Kim. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Nefzger shows that red phosphorus is known in the art to be a suitable flame retardant for polyisocyanate-based foams.
Regarding Claim 18. Kim teaches the composition for producing the polyurea foam of Claim 11 in which water, rather than a hydrofluoorolefin, is provided as a blowing agent component (see last paragraph of Page 2). However, Nefzger teaches the concept of selecting a hydrofluoroolefin, such as trans-1-chloro-3,3,3-trifluoropropene, as the blowing agent in the preparation of isocyanate-based foams [0050]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a hydrofluoroolefin, such as trans-1-chloro-3,3,3-trifluoropropene, in place of water in the urea composition of Kim. The motivation would have been that hydrofluoroolefins, including trans-1-chloro-3,3,3-trifluoropropene, have many desirable properties as blowing agents, including the manufacture of products with improved dimensional stability and insulation properties.
Allowable Subject Matter
Claims 15, 20, 22, 24, and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
With respect to Claims 15 and 20, the prior art does not teach or suggest a urea resin composition or composition for producing a polyurea foam comprising all of the instantly claimed ingredients in the instantly claimed amounts, including a polyamine compound which is selected from the instantly claimed species. KR100646038 to Kim corresponds to the closest prior art, teaching a urea resin composition for producing a polyurea foam. To satisfy the amounts of ingredients required by the independent Claims 9 and 11, the polyethertriamine of Kim must correspond to instantly claimed polyamine compound (B). However, all of the species set forth in Claims 15 and 20 correspond to diamine, rather than triamine, compounds. It would then be improper to substitute any of these compounds for the polyethertriamine compound required to be present in the composition of Kim to arrive at the instantly claimed invention.
With respect to Claim 22, the prior art does not teach or suggest a urea resin composition comprising all of the instantly claimed ingredients in the instantly claimed amounts, including a content of foaming stabilizer in the claimed range of 0.1 to 20 mass% relative to polyamine compound (B). KR100646038 to Kim again corresponds to the closest prior art. The disclosed polyethertriamine must correspond to the instantly claimed polyamine compound (B) to satisfy the amounts of ingredients required by independent Claim 9. However, Kim teaches the polyethertriamine is provided in an amount of 10 to 12 weight percent and silicone foaming stabilizer in an amount of 3 to 4 weight percent, corresponding to an amount of foaming stabilizer of 25 to 40 weight percent relative to polyamine compound (B) (see last paragraph of Page 2 of the machine translation). Kim further provides a strong teaching away from amounts of silicone foaming agent outside the aforementioned range, indicating amounts below this range result in severe cell opening (see second paragraph of Page 3 of the machine translation). It would consequently be improper to modify Kim to lower the content of silicone foam stabilizer and arrive at the instantly claimed invention.
With respect to Claims 24 and 26, the prior art does not teach or suggest a urea resin composition or composition for producing a polyurea foam comprising all of the instantly claimed ingredients in the instantly claimed amounts, in which the polyamine compound has an amine value in the range of 50 to 1000 mgKOH/g. KR100646038 to Kim again corresponds to the closest prior art. The disclosed polyethertriamine must correspond to the instantly claimed polyamine compound (B) to satisfy the amounts of ingredients required by independent Claim 9. However, the polyethertriamine is required to have a molecular weight of 5000 (see last paragraph of Page 2 of the machine translation). The amine value of the polyether triamine can then be calculated to be roughly 34 mgKOH/g, which is outside the instantly claimed range. As a polyethertriamine having a molecular weight of 5000 is a required feature of the composition of Kim, it would be improper to modify this disclosure to provide a polyamine compound with an amine value in the instantly claimed range.
Response to Arguments
Applicant's arguments filed July 26, 2026 have been fully considered. The Office responds as follows:
Rejection under 35 U.S.C. 112
The Office agrees that cancellation of Claim 25 overcomes the outstanding rejections of the claim under 35 U.S.C. 112(a) and (b). Accordingly, these rejections have been withdrawn.
Rejection under 35 U.S.C. 102 and 103
Re: Claim 9
Applicant argues that the recitation of a content of trimerization catalyst of 5 to 30 mass% and a content of flame retardant of 50 to 200% relative to polyamine compound (B) overcomes the outstanding rejections in view of Kim. However, in light of these amendments, the outstanding rejections have been modified. The present rejection does not rely upon the polyetherdiamine to teach instantly claimed polyamine compound (B). Instead, the polyethertriamine compound of Kim is now relied upon the meet the claim limitation of instantly claimed polyamine compound (B). As detailed in the modified rejection of Claim 9 under 35 U.S.C. 102, Kim teaches the polyether triamine compound/polyamine compound (B) is provided in an amount of 10 – 12 weight percent; the quaternary ammonium carboxylate/trimerization catalyst is provided in an amount of 0.5 – 1.5 weight percent; and the flame retardant is provided in an amount of 13 – 17 weight percent. Kim further teaches the prepolymer and resin solutions are mixed in a 1:1 ratio (see again last paragraph of Page 2). Using these values, the urea resin composition may be calculated to comprise roughly 6.5 to 8.5 weight percent polyamine compound (B), relative to the total weight of the urea resin composition. The urea resin composition may further be calculated to comprise roughly 2.5 to 15 weight percent trimerization catalyst and 65 – 170 weight percent flame retardant, relative to the content of polyamine compound (B). It is therefore the Office’s position that Kim is still suitably relied upon to anticipate Claim 9 as amended.
Re: Claim 10
Applicant argues that the fact that Kim discloses similar ingredients and a similar preparation process does not establish that the resulting polyurea foam necessarily possesses an isocyanurate ratio of 25 to 50%. However, as detailed in the rejection of Claim 10 above, Kim teaches 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 polyurea foam having an isocyanurate structure and an isocyanurate ratio in the instantly claimed range, 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).
"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) Thus, in the instant case, the burden now shifts to applicant to provide evidence that the polyurea foam of Kim does not necessarily have the claimed isocyanurate ratio.
Dependent Claims
Applicant argues that the dependent claims are allowable for at least their dependence on the independent claims. However, the independent claims were not found to be allowable for the reasons detailed in the corresponding rejections under 35 U.S.C. 102 and further discussed in Response to Arguments section above.
Applicant further argues that the dependent claims are also allowable for the additional features they recite. The Office agrees that Claims 15, 20, 22, 24, and 26 recite additional features which correspond to allowable subject matter for the reasons detailed in the preceding Allowable Subject Matter section. However, all other dependent claims were found to be anticipated or rendered obvious for the reasons detailed in the corresponding rejections under 35 U.S.C. 102 and 103 above.
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
