DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on January 22, 2026 has been fully considered. The amendment to instant claim 1 and addition of new claims 10-14 are acknowledged. Specifically, claim 1 has been amended to include limitations of claims 2-5, now cancelled. In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1, 8, 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Horn et al (US 5,110,834).
4. Horn et al discloses a composition for producing a polyurethane foam, comprising at least one polyisocyanate, at least one reactive compound, specifically polyether polyol or polyester polyol (col. 4, lines 40-47, Abstract; col. 25, lines 64-67) and further silica containing zeolite having SiO2: Al2O3 molar ratio of 30-40,000, or 30-20,000 (col. 10, lines 50-52). Specifically exemplified silica containing zeolite having molar ratio SiO2:Al2O3 of 527 and Na content of 0.03%wt (Example 14, as to instant claim 1, 8). The zeolite is present in amount of 1-50%wt (col. 13, lines 53-59).
The zeolites are having cavity diameters (i.e. pore size) of 0.3-0.7 nm (3-7A) (col. 9, lines 8-23).
5. All ranges in the composition of Horn et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Further, based on the teachings of Horn et al, it would have been obvious to a one of ordinary skill in the art to choose and use zeolites having silica: alumina molar ratio and Si/Al molar ratio in the ranges of 500-700 or 527, and Na content of 0.03%wt as the zeolite compound in the composition of Horn et al, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
6. The specific zeolites cited by Horn et al include ZSM-5, ZSM-11, ZSM-35, ZSM-23 and ZSM-38 (col. 11, lines 9-60).
It is noted that the same zeolites ZSM-5, ZSM-11, ZSM-35, ZSM-23 and ZSM-38 are cited in instant specification as being used in instant invention and are having a silica-to-alumina ratio greater than: 35, 75, 150, 300, 500, and even 600. (see p. 17, lines 16-25 of instant specification). Further, the zeolite exemplified in instant invention is ABSCENTS 3000 Conc., a hydrophobic zeolite with a silica-to-alumina ratio of 630, available from Honeywell (p. 17, lines 12-15 and Table 1 of instant specification).
7. Since the zeolites cited by Horn et al are the same zeolites that are disclosed in instant specification as being used in instant invention, therefore, the cited zeolites will intrinsically and necessarily have, or would be reasonably expected to have the properties, including Si/Al mola ratio and Na content, as those claimed in instant invention, as well (as to instant claims 1, 8). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. As to instant claims 1 and 10, the equivalence ratio between the NCO of the polyisocyanate and the total number of reactive hydrogen atoms of the reactive compound is 0.95 to 1.50 (col. 15, lines 35-41), i.e. the isocyanate index is 95-150 (as defined on page 6, line 31-page 7, line 5 of instant specification).
Further, the reactive compound such as polyether polyol includes a graft polyether-polyol based on styrene-acrylonitrile copolymers (col. 6, lines 26-35), corresponding to copolymer polyol of instant claims.
9. As to instant claim 11, the polyisocyanate comprises toluene diisocyanate (col. 3, lines 25-26; col. 4, lines 1-5).
10. Based on the teachings of Horn et al, it would have been obvious to a one of ordinary skill in the art to choose and use, at least partially, the graft polyether-polyol based on styrene-acrylonitrile copolymers as the reactive component; toluene diisocyanate as the polyisocyanate, to form the polyurethane foam, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
11. As to instant claim 12, the zeolite is premixed with polyol-based components to form Component A (col. 25, lines 50-55; col. 15, lines 61-65).
12. Claims 1, 8, 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Horn et al (US 5,110,834) in view of Gustafsson et al (US 5,436,282) and Trouilhet (US 5,750,611).
13. The discussion with respect to Horn et al (US 5,110,834) set forth in paragraphs 3-11 above, is incorporated here by reference.
14. Horn et al does not explicitly teach the zeolites having Si/Al molar ratio in the range of 500-700, a zeolite structure comprising multiple pentasil units connected by oxygen bridges and having the chemical formula of instant claim 14.
15. However,
1) Gustafsson et al teaches the use of zeolites having Si/Al molar ratio of 35 to infinity, preferably 200-500 and a pore diameter of at least 5.5A (col. 2, lines 35-42, as to instant claims 1), including commercial products ABSCENT (col. 2, lines 32-50; col. 3, lines 8-12; col. 5, lines 20-25) in plastic materials to remove odor-producing substances. These zeolites are crystalline siliceous molecular sieve material having 90 percent, preferably 95%, of tetrahedral oxide units as SiO2 tetrahedra, having pore sizes of at least 5.5A (col. 2, lines 33-48).
It is noted that zeolites used in instant invention are described in instant specification as follows (p. 17, lines 12-25 of instant specification):
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Further, on page 17, line 25 to page 18, line 5 instant specification recites:
Natural zeolites may crystallize in a variety of natural processes, while artificial zeolites may be crystallized, for example, from a silica- alumina gel in the presence of templates and alkalis. There are over 200 known types of zeolite crystal structures. An MFI crystal structure, which may also be referred to as a silicate-1 crystal structure, is a zeolite structure comprising multiple pentasil units connected by oxygen bridges which form pentasil chains, and having the chemical formula: NanAlnSi96-nO192 .16H20, wherein n is greater than zero and less than 27.
Thus, instant specification recites that zeolites having MFI crystal structure comprise multiple pentasil units connected by oxygen bridges and having the formula NanAlnSi96-nO192 .16H20. Further, in Chart 1 on page 18, instant specification recites the commercial zeolite ABSCENTS 3000 as having MFI structure, and thus also having multiple pentasil units connected by oxygen bridges and having the formula
NanAlnSi96-nO192 .16H20.
Thus, the zeolites disclosed by Gustafsson et al are having essentially the same structure and essentially the same Si/Al molar ratio as those disclosed in instant specification, including commercial products ABSCENT.
Gustafsson et al explicitly teaches that by adding said zeolites it is possible to completely eliminate the problem with undesired odor-producing substances in plastic materials such as polyolefins (col. 3, lines 8-12, 29-35).
2) Trouilhet teaches eliminating odors in plastic materials by using crystalline siliceous molecular sieve material having 90 percent, preferably 95%, of tetrahedral oxide units as SiO2 tetrahedra, having pore sizes of at least 5.5A, SiO2/Al2O3 molar ratio of 200-500, such as commercial products Abscents, and specifically Abscents 3000 (col. 2, lines 59-62, Table 1).
It is noted that zeolite Abscents 3000 is used in examples of instant invention and specified as having Si/Al molar ratio of 650 (Chart 1, Tables 1A, 1B of instant specification).
16. Since both Gustafsson et al and Trouilhet specifically teach the use of zeolites having Si/Al of more than 35, such as commercial products ABSCENTS and specifically ABSCENTS 3000 to reduce/eliminate odor in plastic materials, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Trouilhet , Gustafsson et al and Horn et al, and to include, or obvious to try to include the zeolite commercial products ABSCENTS and specifically ABSCENTS 3000 in amount of 1%wt as the zeolite component in the polyurethane-producing composition of Horn et al, so to reduce/eliminate odor in the composition and further polyurethane foam of Horn et al, as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
17. Since the zeolite used in the composition of Horn et al in view of Gustafsson et al and Trouilhet is the same commercial product ABSCENTS 3000 as that used in instant invention, therefore, said product ABSCENTS 3000 will intrinsically and necessarily have Na content of less than 2%wt, MFI structure, and thus also have multiple pentasil units connected by oxygen bridges and the formula NanAlnSi96-nO192 .16H20 as well (as to instant claims 8, 13-14). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
18. Claims 1, 8, 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Gilder et al (US 2010/0174006) in view of Gustafsson et al (US 5,436,282), Trouilhet (US 5,750,611) and VORANOL 3943A flyer, 2011.
19. Gilder et al discloses a formulation for making a polyurethane foam, comprising:
a) a polyol, specifically commercial products VORANOL ([0033], as to instant claim 10);
b) an isocyanate, specifically toluene diisocyanate ([0034], as to instant claim 11); and
c) 0.01-50 pph ([0031]) of a VOC reducing agent comprising zeolites to reduce and eliminate VOC content and emissions ([0028], [0028], [0021], Abstract, claim 2),
wherein the isocyanate index is 100-150 ([0043], [0035], as to instant claims 1 and 10).
20. Though Gilder et al discloses the use of commercial polyols VORANOL, Gilder et al does not explicitly recite the use of copolymer polyol.
21. However, VORANOL 3943A flyer shows the commercial product VORANOL 3943A as being a grafted polyether polyol containing copolymerized styrene and acrylonitrile copolymer, specifically cited as being used for making polyurethane foams (see the flyer).
22. Since VORANOL 3943A is a copolymer polyether polyol specifically cited as being used for making polyurethane foams and is commercially available, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of VORANOL 3943A flyer and Gilder et al, and to use or obvious to try to use, at least partially, the VORANOL 3943A polyether polyol copolymer as the polyol component a) in the composition of Gilder et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 10, 12). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
23. Gilder et al does not explicitly teach the zeolites used to reduce/eliminate VOC having Si/Al molar ratio of 500-700 and pore size of less than 10A.
24. However,
1) Gustafsson et al teaches eliminating odor-producing substances in plastic materials with zeolites having Si/Al molar ratio of 35 to infinity, preferably 200-500 and a pore diameter of at least 5.5A (col. 2, lines 35-42, as to instant claims 1-3, 5), including commercial products ABSCENT (col. 2, lines 32-50; col. 3, lines 8-12; col. 5, lines 20-25). These zeolites are crystalline siliceous molecular sieve material having 90 percent, preferably 95%, of tetrahedral oxide units as SiO2 tetrahedra, having pore sizes of at least 5.5A (col. 2, lines 33-48).
It is noted that zeolites used in instant invention are described in instant specification as follows (p. 17, lines 12-25 of instant specification):
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Further, on page 17, line 25 to page 18, line 5 instant specification recites:
Natural zeolites may crystallize in a variety of natural processes, while artificial zeolites may be crystallized, for example, from a silica- alumina gel in the presence of templates and alkalis. There are over 200 known types of zeolite crystal structures. An MFI crystal structure, which may also be referred to as a silicate-1 crystal structure, is a zeolite structure comprising multiple pentasil units connected by oxygen bridges which form pentasil chains, and having the chemical formula: NanAlnSi96-nO192 .16H20, wherein n is greater than zero and less than 27.
Thus, instant specification recites that zeolites having MFI crystal structure comprise multiple pentasil units connected by oxygen bridges and have the formula NanAlnSi96-nO192 .16H20. Further, in Chart 1 on page 18, instant specification recites the commercial zeolite ABSCENTS 3000 as having MFI structure, and thus also having multiple pentasil units connected by oxygen bridges and having the formula
NanAlnSi96-nO192 .16H20.
Thus, the zeolites disclosed by Gustafsson et al are having essentially the same structure and essentially the same Si/Al molar ratio as those disclosed in instant specification, including commercial products ABSCENT.
Gustafsson et al explicitly teaches that by adding said zeolites it is possible to completely eliminate the problem with undesired odor-producing substances in plastic materials such as polyolefins (col. 3, lines 8-12, 29-35).
2) Trouilhet teaches eliminating odors in plastic materials by using crystalline siliceous molecular sieve material having 90 percent, preferably 95%, of tetrahedral oxide units as SiO2 tetrahedra, having pore sizes of at least 5.5A, SiO2/Al2O3 molar ratio of 200-500, such as commercial products Abscents, and specifically Abscents 3000 (col. 2, lines 59-62, Table 1).
It is noted that zeolite Abscents 3000 is used in examples of instant invention and specified as having Si/Al molar ratio of 650 (Chart 1, Tables 1A, 1B of instant specification).
25. Since both Gustafsson et al and Trouilhet specifically teach the use of zeolites such as commercial products ABSCENTS and ABSCENTS 3000 to reduce/eliminate odor in plastic materials, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Trouilhet , Gustafsson et al and Gilder et al, and to include, or obvious to try to include zeolite commercial products ABSCENTS and specifically ABSCENTS 3000 as the zeolite component c) in the polyurethane-producing composition of Gilder et al, so to reduce/eliminate odor produced by VOC in the composition and further polyurethane foam of Gilder et al, as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
26. Since the zeolite used in the composition of Gilder et al in view of VORANOL 3943A flyer, Gustafsson et al and Trouilhet is the same commercial product ABSCENTS 3000 as that used in instant invention, therefore, said product ABSCENTS 3000 will intrinsically and necessarily have Na content of less than 2%wt, MFI structure, and thus also having multiple pentasil units connected by oxygen bridges and the formula NanAlnSi96-nO192 .16H20 as well (as to instant claims 8, 13-14). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
27. As to instant claim 12, Gilder et al teach the step of mixing the components for formation the foam ([0048]). Though Gilder et al does not explicitly recite the zeolite being premixed with the polyol component, it would have been obvious to a one of ordinary skill in the art to mix the zeolite and the polyol component first, before further combining with other components, since selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
28. Claims 1, 8, 10-14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,403,670 in view of Horn et al (US 5,110,834) and Trouilhet (US 5,750,611). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
29. US patent 12,403,670 claims a flexible polyurethane foam being the reaction production of an isocyanate component and an isocyanate-reactive component, the flexible polyurethane foam including a silica containing zeolite, the silica containing zeolite having an Si/Al molar ratio of greater than 500 and less than 700 and a grain size of from 250 nm to 2000 nm.
The silica containing zeolite is present in an amount ranging from 0.1 wt % to 20 wt % of the total isocyanate-reactive composition.
The silica zeolite additive has a pore size of less than 10 A.
The silica zeolite additive has an Na wt % of less than 2.
30. U.S. Patent No. 12,403,670 does not explicitly teach the isocyanate-reactive component being copolymer polyol, the isocyanate component being toluene diisocyanate and the zeolite having structure comprising multiple pentasil units connected by oxygen bridges and a chemical formula of instant claim 14.
31. However,
1) Horn et al discloses a composition for producing a polyurethane foam, comprising at least one polyisocyanate, at least one reactive compound, specifically polyether polyol or polyester polyol (col. 4, lines 40-47, Abstract; col. 25, lines 64-67) and further silica containing zeolite having SiO2: Al2O3 molar ratio of 30-40,000, or 30-20,000 (col. 10, lines 50-52). Specifically exemplified silica containing zeolite having molar ratio SiO2:Al2O3 of 527 and Na content of 0.03%wt (Example 14, as to instant claim 1, 8). The zeolite is present in amount of 1-50%wt (col. 13, lines 53-59).
The zeolites are having cavity diameters (i.e. pore size) of 0.3-0.7 nm (3-7A) (col. 9, lines 8-23).
Horn et al further discloses the equivalence ratio between the NCO of the polyisocyanate and the total number of reactive hydrogen atoms of the reactive compound is 0.95 to 1.50 (col. 15, lines 35-41), i.e. the isocyanate index is 95-150 (as defined on page 6, line 31-page 7, line 5 of instant specification).
Further, the reactive compound such as polyether polyol includes a graft polyether-polyol based on styrene-acrylonitrile copolymers (col. 6, lines 26-35), corresponding to copolymer polyol of instant claims.
As to instant claim 11, the polyisocyanate comprises toluene diisocyanate (col. 3, lines 25-26; col. 4, lines 1-5).
2) Trouilhet teaches eliminating odors in plastic materials by using crystalline siliceous molecular sieve material having 90 percent, preferably 95%, of tetrahedral oxide units as SiO2 tetrahedra, having pore sizes of at least 5.5A, SiO2/Al2O3 molar ratio of 200-500, such as commercial products Abscents, and specifically Abscents 3000 (col. 2, lines 59-62, Table 1).
It is noted that zeolite Abscents 3000 is used in examples of instant invention and specified as having Si/Al molar ratio of 650 (Chart 1, Tables 1A, 1B of instant specification).
3) It is noted that zeolites used in instant invention are described in instant specification as follows (p. 17, lines 12-25 of instant specification):
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Further, on page 17, line 25 to page 18, line 5 instant specification recites:
Natural zeolites may crystallize in a variety of natural processes, while artificial zeolites may be crystallized, for example, from a silica- alumina gel in the presence of templates and alkalis. There are over 200 known types of zeolite crystal structures. An MFI crystal structure, which may also be referred to as a silicate-1 crystal structure, is a zeolite structure comprising multiple pentasil units connected by oxygen bridges which form pentasil chains, and having the chemical formula: NanAlnSi96-nO192 .16H20, wherein n is greater than zero and less than 27.
Thus, instant specification recites that zeolites having MFI crystal structure comprise multiple pentasil units connected by oxygen bridges and having the formula NanAlnSi96-nO192 .16H20. Further, in Chart 1 on page 18, instant specification recites the commercial zeolite ABSCENTS 3000 as having MFI structure, and thus also having multiple pentasil units connected by oxygen bridges and having the formula
NanAlnSi96-nO192 .16H20.
32. Since Horn et al, Trouilhet and U.S. Patent No. 12,403,670 are related to polyurethane foams based of polyol, polyisocyanate and zeolite, and thereby belong to the same field of endeavor, wherein i) Horn et al discloses the use of graft polyether-polyol based on styrene-acrylonitrile copolymers as isocyanate-reactive compound; the toluene diisocyanate as the isocyanate component and ii) Trouilhet explicitly teaches the use of commercial zeolite Abscents 3000 as the zeolite having Si/Al molar ratio of 650, as required by U.S. Patent No. 12,403,670, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Horn et al, Trouilhet and U.S. Patent No. 12,403,670, and to use, or obvious to try to use, at least partially, graft polyether-polyol based on styrene-acrylonitrile copolymers as isocyanate-reactive compound; the toluene diisocyanate as the isocyanate component and the commercial zeolite Abscents 3000 as the zeolite having Si/Al molar ratio of 650 to form the polyurethane foam of U.S. Patent No. 12,403,670, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
33. Since the zeolite used in the composition of U.S. Patent No. 12,403,670 in view of Horn et al and Trouilhet is the same commercial product ABSCENTS 3000 as that used in instant invention, therefore, said product ABSCENTS 3000 will intrinsically and necessarily have Na content of less than 2%wt, MFI structure, and thus also having multiple pentasil units connected by oxygen bridges and having the formula NanAlnSi96-nO192 .16H20 as well (as to instant claims 8, 13-14). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
34. As to instant claim 12, though U.S. Patent No. 12,403,670 does not explicitly recite the zeolite being premixed with the polyol component, it would have been obvious to a one of ordinary skill in the art to mix the zeolite and the polyol component first, before further combining with other components, since selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
35. Thus, the limitation claims in instant invention are obvious variants of the limitations claimed in US 12,403,670 in view of Horn et al and Trouilhet.
36. Claims 1, 8, 10-14 are directed to an invention not patentably distinct from claims 1-15 of U.S. Patent No. 12,403,670 in view of Horn et al (US 5,110,834) and Trouilhet (US 5,750,611).
Specifically, see the discussion in paragraphs 28-35 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). Commonly assigned US 12,403,670, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Response to Arguments
37. Applicant's arguments filed on January 22, 2026 have been fully considered but are moot in light of new grounds of rejections and discussion set forth 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764