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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 13, 2026 has been entered.
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.
Claim 25 is 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.
The original disclosure does not provide support for the content of polyamine compound being from 8.0 to 200% by mass relative to the total weight of the urea resin composition. The original disclosure does provide support for the recited lower limit of 8.0% but the highest upper limit disclosed is 40.0% by mass (see Page 27, Lines 1 – 5 of the instant specification).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 25 does not include all limitations of Claim 9, upon which it ultimately depends. Claim 9 requires the content of the polyamine compound is 2.0 to 40.0% by mass relative to the total weight of the urea resin composition. On the other hand, Claim 25 sets forth a broader range for this content of 8.0% to 200% by mass. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 10, 14, 16, and 22 – 24 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). In Example 1, the urea resin composition comprises methylene diisocyanate as a polyisocyanate compound; a polyether diamine with a molecular weight of 2,000 as a polyamine compound; a quaternary ammonium carboxylate as a trimerization catalyst; a foaming agent; a silicone foaming agent/stabilizer; and a flame retardant. No polyol compounds are included in the urea resin composition (see machine translation of the table).
Using the amounts of ingredients reported in the table, the urea resin composition can be calculated to comprise roughly 25% by mass of said polyamine compound. Further relative to content of said polyamine compound, the urea resin composition can be calculated to comprise roughly 2 weight percent trimerization catalyst and 30 weight percent flame retardant.
Regarding Claim 10. Kim teaches a polyurea resin foam obtained by foaming and curing the urea resin composition according to Claim 9 (Page 1, Paragraphs 1 – 4; Example 1 in Table).
Regarding Claim 16. Kim teaches the polyurea foam of Claim 10. As detailed in the rejection of independent Claim 9, Kim provides a quaternary ammonium carboxylate which functions as a trimerization catalyst in polyurea compositions. Trimerization results in the formation of isocyanurate groups, which results in a polyurea foam having an isocyanurate structure.
Kushner does not expressly quantify the isocyanurate ratio 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, 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 polyurethane foam having 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.
Regarding Claim 22. Kim teaches the urea resin composition according to Claim 9. Using the amounts of ingredients reported in the table for Example 1, the urea resin composition can be calculated to comprise, relative to content of the polyamine compound, roughly 32 weight percent foaming agent and 6 weight percent surfactant/foam stabilizer.
Regarding Claim 23. Kim teaches the urea resin composition according to Claim 22 wherein the isocyanate content of the polyisocyanate compound used in Example 1 is 31% (see machine translation of table).
Regarding Claim 24. Kim teaches the urea resin composition according to Claim 22 wherein the polyamine compound is a diamine, i.e. a compound having two active nitrogen atoms, and a molecular weight of 2000 g/mol (see machine translation of table). Using these values, the polyether diamine having a molecular weight of 2000 g/mol can be calculated to have an amine value of roughly 140 mgKOH/g.
Claims 11, 19, and 26 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 composition for producing a polyurea resin foam (Page 1, Paragraphs 1 – 4). In Example 1, the urea resin composition comprises methylene diisocyanate as a polyisocyanate compound; a polyether diamine with a molecular weight of 2,000 as a polyamine compound; a quaternary ammonium carboxylate as a trimerization catalyst; a foaming agent; a silicone foaming agent/stabilizer; and a flame retardant. No polyol compounds are included in the urea resin composition (see machine translation of the table).
Using the amounts of ingredients reported in the table, the urea resin composition can be calculated to comprise, relative to content of said polyamine compound, roughly 2 weight percent trimerization catalyst; 32 weight percent foaming agent; 6 weight percent foam stabilizer; and 30 weight percent flame retardant.
Regarding Claim 26. Kim teaches the composition for producing the polyurea foam according to Claim 11 wherein the polyamine compound is a diamine, i.e. a compound having two active nitrogen atoms, and a molecular weight of 2000 g/mol (see machine translation of table). Using these values, the polyether diamine having a molecular weight of 2000 g/mol can be calculated to have an amine value of roughly 140 mgKOH/g.
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 30 weight percent flame retardant relative to the weight of the polyamine compound corresponding to the 2000 molecular weight polyether diamine.
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 include red phosphorus as a flame retardant in the urea resin composition of Example 1 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 the blowing agent (see Example 1 of the machine translation of the table). 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, as the blowing agent in Example 1 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.
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 30 weight percent flame retardant relative to the weight of the polyamine compound corresponding to the 2000 molecular weight polyether diamine.
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]. 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 include red phosphorus as a flame retardant in the urea resin composition of Example 1 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 the blowing agent (see Example 1 of the machine translation of the table). 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, as the blowing agent in Example 1 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 15 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 6,020,392 to Kushner et al. (hereinafter Kushner).
Regarding Claim 15. Kim teaches the urea resin composition of Claim 9 but is silent with respect to the specific structure of the polyether diamine used in Example 1. However, Kushner teaches the concept of providing poly(tetramethylene oxide)-di-p-aminobenzoate as a polyether diamine in the preparation of a polyurea foam (Column 6, Lines 38 – 40). Kim and Kushner are analogous art as they are from the same field of endeavor, namely 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 poly(tetramethylene oxide)-di-p-aminobenzoate as the polyether diamine in Example 1 of Kim. The motivation would have been that Kushner teaches this polyamine provides advantages, such as the production of polyurea foam products having retention of storage modulus over broad temperature ranges (Column 6, Lines 33 – 42).
Claim 20 is 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 6,020,392 to Kushner et al. (hereinafter Kushner).
Regarding Claim 20. Kim teaches the composition of Claim 11 but is silent with respect to the specific structure of the polyether diamine used in Example 1. However, Kushner teaches the concept of providing poly(tetramethylene oxide)-di-p-aminobenzoate as a polyether diamine in the preparation of a polyurea foam (Column 6, Lines 38 – 40). Kim and Kushner are analogous art as they are from the same field of endeavor, namely 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 poly(tetramethylene oxide)-di-p-aminobenzoate as the polyether diamine in Example 1 of Kim. The motivation would have been that Kushner teaches this polyamine provides advantages, such as the production of polyurea foam products having retention of storage modulus over broad temperature ranges (Column 6, Lines 33 – 42).
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 Example 1 of Kim with an isocyanate index as high as 200. The motivation would have been that increasing the isocyanate index of the composition would provide a foam product with increased rigid and mechanical strength.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over KR100646038 to Kim in view of US 4,980,388 to Herrington et al., as applied to Claim 21 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 25. Kim teaches the urea resin composition of Claim 21. Using the amounts of ingredients reported in the table, the urea resin composition of Example 1 of Kim can be calculated to comprise roughly 25% by mass of the polyamine compound corresponding to the 2000 molecular weight polyether diamine and roughly 30 weight percent flame retardant relative to the weight of said polyamine compound. Kim additionally sets forth in the table the isocyanate content of the polyisocyanate compound is 31% (see machine translated table).
The polyamine compound used in Example 1 is a diamine, i.e. a compound having two active nitrogen atoms, and a molecular weight of 2000 g/mol (see machine translation of table). Using these values, the polyether diamine having a molecular weight of 2000 g/mol can be calculated to have an amine value of roughly 140 mgKOH/g.
For the reasons detailed in the rejection of Claim 21 above, it is the Office’s position that, 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 to provide the urea resin composition of Example 1 of Kim with an isocyanate index as high as 200 in light of Herrington.
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]. 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 include red phosphorus as a flame retardant in the urea resin composition of Example 1 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.
Response to Arguments
Applicant's arguments filed March 13, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome all outstanding objections to the claims. Accordingly, all claim objections have been withdrawn.
Rejection under 35 U.S.C. 102/103
Applicant argues that none of the applied references teach or suggest the newly claimed amounts of components, including the claimed amount of polyamine compound (B). The Office agrees. Accordingly, the rejections of Claims 9, 10, 11 and 16 under 35 U.S.C. 102(a)(1) as being anticipated by US 5,157,059 to Bauer et al., as evidenced by US 2017/0240686 to Maier et al. have been withdrawn. The rejections of Claims 9 – 20 under 35 U.S.C. 103 as being unpatentable over US 6,020,392 to Kushner et al. (hereinafter Kushner) in view of US 2018/0334530 to Nefzger et al. (hereinafter Nefzger), as evidenced by US 2017/0240686 to Maier et al. (hereinafter Maier), have also been withdrawn.
However, the instant application is not in condition for allowance, as all claims are presently rejected under 35 U.S.C. 102(a)(1) or 103 in view of newly discovered KR100646038 to Kim.
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
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