DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
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 – 7 and 9 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2630197 to Reese et al. (Reese) in view of US 2010/0036010 to Morley et al. (hereinafter Morley). For the purposes of examination, citations for Reese are taken from a machine translation of the document obtained from the European Patent Office.
Regarding Claims 1, 7, and 11. Reese teaches a method of producing a polyurethane comprising combining ingredients to form a curable reaction mixture and curing the curable reaction mixture to produce a polyurethane. The ingredients include:
a polyisocyanate [0001];
b) compounds having groups reactive towards isocyanates [0001], wherein such compounds are preferably exclusively polyether polyols [0010]. Reese teaches the polyether polyols have functionalities particularly preferably in the range of 2.6 to 3.4, as well as number average molecular weights in the particular range of 1,000 to 4,000 g/mol [0013]. Using these values, the preferred hydroxyl values for the polyether polyols in Reese can be calculated to be in the range of 36 to 190 mgKOH/g. Reese further teaches the polyether polyols may be prepared with a mixture of preferably propylene oxide and ethylene oxide [0011], such that a random copolymer is prepared; and
a chelating agent [0001], wherein preferred chelating agents include ethylenediaminetetraacetic acid and nitriloacetic acid [0024]. Both of these compounds are set forth in instant Claim 7 as chelating agents having molecular weights of at most 3,000 g/mol and at least two carboxylic acid groups and/or carboxylate groups, in which the carboxylate groups are associated with a monovalent anion and the carbonyl carbon atom of each of the aforementioned groups are not bonded directly to the carbonyl atom of another carboxylic acid or carboxylate group.
The chelating agent in Reese is present in an amount of 0.0001 to 0.1 weight percent, based on the total weight of components b) to f) [0025]. Reese thus does not expressly teach the amount of chelating agent relative to b) the above described polyether polyols alone. However, Reese does teach that component c) is provided in an amount of 0.5 to 40 weight percent [0017]; component d) is provided in an amount of more than 10 weight percent [0022]; and component e) is provided in an amount of 0.002 to 5 weight percent [0023]. Thus, using these amounts of components c) – f), the chelating agent can be calculated to be provided in an amount of roughly up to 0.04 weight percent of relative to 100 parts by weight of the polyether polyols b). While this range is not identical to the instantly claimed range, it does 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)
Reese teaches the polyether polyols may be prepared with multimetal cyanide compounds, i.e. DMC catalysts [0011], but does not expressly teach zinc hexacyanocobaltate as a suitable species thereof. However, Morley teaches the concept of providing zinc hexacyanocobaltate as the DMC catalyst for the preparation of polyether polyols. Morley further teaches residues of this DMC catalyst may be left in the polyether product, rather than removed [0026]. Reese and Morley are analogous art as they are from the same field of endeavor, namely polyurethanes. 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 zinc hexacyanocobaltate as the DMC catalyst in Reese. 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, Morley shows that zinc hexacyanocobaltate is known in the art as a suitable DMC catalyst for the preparation of polyether polyols and further that residues thereof are not required to be removed prior to the use of such polyether polyols in the preparation of polyurethane foams [0026].
Regarding Claims 2 and 3. Reese teaches the method of Claim 1 wherein water is further combined with the ingredients detailed in the rejection of Claim 1 to obtain a polyurethane foam [0001].
Reese does not expressly teach the method, when modified in the manner proposed, provides a flexible polyurethane foam having an airflow in the instantly claimed range. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Reese, when modified with Morley in the manner proposed, teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. a flexible polyurethane foam having an airflow of at least 0.8 L/s as measured according to ASTM D3574 Test G, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. 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 using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claim 4. Reese teaches the method of Claim 1 wherein the ingredients which a combined together may further include foam stabilizer/surfactants [0028], as well as urethane catalysts which accelerate the reaction between the NCO groups of the diisocyanate and the hydroxyl groups of the polyalcohols [0023]/.
Regarding Claims 5 and 6. Reese teaches the method of Claim 1 wherein the chelating agents include ethylenediaminetetraacetic acid and nitriloacetic acid [0024]. Ethylenediaminetetraacetic acid contains two N-CH2-C(O)OH units in which the nitrogens are amino nitrogens. Nitriloacetic acid contains one N-CH2-C(O)OH unit in which the nitrogen is an amino nitrogen. Each of ethylenediaminetetraacetic acid and nitriloacetic acid also include the first recited structure in instant Claim 6.
Regarding Claim 9. Reese teaches the method of Claim 1 wherein the polyether polyols may be prepared with a mixture of preferably propylene oxide and ethylene oxide [0011], such that a random copolymer is prepared.
Reese does not expressly teach an embodiment in which the random copolymer has an oxyethylene content in the claimed range, as well as zinc hexacyanocobaltate catalyst complex residues resulting from the preparation thereof. However, Morley teaches the concept of providing a random copolymer containing 40 to 60 weight percent ethylene oxide [0024]. As detailed in the rejection of Claim 1, Morley teaches the concept of providing zinc hexacyanocobaltate as the DMC catalyst for the preparation of polyether polyols. Morley further teaches residues of this DMC catalyst may be left in the polyether product [0026]. 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 a provide a random copolymer having an oxyethylene content in the range of 40 to 60 weight percent and comprising zinc hexacyanocobaltate residues, as taught by Morley, as the polyether polyol in the method of Reese. The motivation would have been that it has been held that Morley details this to be a suitable ethylene oxide content for DMC-catalyzed random copolymers of ethylene oxide and propylene oxide for use in polyurethane foams ([0024] and [0026]).
Regarding Claim 10. Reese teaches a polyurethane made according to the method of Claim 1 [0001].
Regarding Claim 12. Reese teaches the method of Claim 1 wherein the a mixture of polyether polyols may be provided [0014]. Each polyether polyol is preferably prepared with a mixture of propylene oxide and ethylene oxide [0011], such that random copolymers are prepared. Said polyols also then correspond to polymers of propylene oxide.
Reese teaches ethylene oxide contents of 10 to 50% may be provided [0011]. Though Reese does not expressly teach providing one polyether polyol with a higher ethylene oxide content, it is the Office’s position that a person of ordinary skill in the art would have readily envisioned providing one polyether polyol with a higher ethylene oxide content than the other. The motivation would have been that providing one polyether polyol with a higher ethylene oxide content than the other may provide advantages, such as controlling the reactivity of the polyol component and adjusting properties, e.g. hydrophilicity and softness, of the final polyurethane product.
Regarding Claim 13. Reese teaches the method of Claim 1 wherein the chelating agents may be ethylenediaminetetraacetic acid and nitriloacetic acid [0024]. Both of these chelating agents are set forth as suitable chelating agents in [0031] of the PG-PUB of the instant application.
While Reese does not expressly set forth the chelating agents reduced cobalt extractables from the polyurethane, “[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Ethylenediaminetetraacetic acid and nitriloacetic acid, as disclosed by Reese, must then be reasonably expected to have the effect of reducing cobalt extractables from the polyurethane.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2630197 to Reese et al. (Reese) in view of US 2010/0036010 to Morley et al. (hereinafter Morley), as applied to Claim 1 above, and further in view of US 5,124,369 to Vandichel et al. (hereinafter Vandichel).
Regarding Claim 8. Reese teaches the method of Claim 1 but does not expressly teach the chelating agent used therein corresponds to one of the instantly claimed species. However, Vandichel teaches the combining a polyacrylic acid salt with the other ingredients used to prepare a polyurethane foam (Column 2, Lines 36 – 55). The polyacrylic acid salt used in the inventive examples is sodium polyacrylate having a molecular weight of 2,000 g/mol (Column 7, Line 23 and Formulation F shown in the table in Column 7). Reese and Vandichel are analogous art as they are from the same field of endeavor, namely polyurethanes. 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 polyacrylic acid salt as taught by Vandichel as a further additive in the method of Reese. The motivation would have been Vandichel teaches this additive provides high quality flexible polyurethane foams in which the use of halogenated hydrocarbons may be reduced or eliminated (Column 2, Lines 33 – 55).
Response to Arguments
Applicant's arguments filed October 10, 2025 have been fully considered. The Office responds as follows:
A. Rejections Under 35 U.S.C. 112
The Office agrees that the amendments to the claims overcome all outstanding rejections under 35 U.S.C. 112(b). Accordingly, the rejections under 35 U.S.C. 112(b) have been withdrawn.
B. Rejections Under 35 U.S.C. 103
i) Applicant argues that the instant claims require a range of 0.02 to 1 parts by weight chelating agent per 100 parts by weight polyether polyol and, at best, any overlap of ranges between the Reese reference and the instant claims is partial and theoretical. However, it has been held that, in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01). While it is noted that Reese does not expressly quantify the amount of chelating agent relative to 100 parts by weight polyether polyol, a range of roughly up to 0.04 weight percent of relative to 100 parts by weight of the polyether polyols b) is implicitly disclosed by the reference.
Specifically, the chelating agent in Reese is taught to be present in an amount of 0.0001 to 0.1 weight percent, based on the total weight of components b) to f) [0025]. Reese further teaches that component c) is provided in an amount of 0.5 to 40 weight percent [0017]; component d) is provided in an amount of more than 10 weight percent [0022]; and component e) is provided in an amount of 0.002 to 5 weight percent [0023]. Thus, using these amounts of components c) – f), the chelating agent can be calculated to be provided in an amount of roughly up to 0.04 weight percent of relative to 100 parts by weight of the polyether polyols b).
ii) Applicant argues that the claimed range for the amount of chelating agent is critical for achieving a surprising reduction in cobalt extractables, as demonstrated by the Examples of the instant application. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The Office respectfully submits that the data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instantly claimed data only tests N-(hydroxyethyl)ethylenediamine (HEEDTA) and ethylenediamine tetraacetic acid tetrasodium salt as chelating agents. The data does not test enough species of chelating agents to conclude that the alleged unexpected results would be achieved with any chelating agent having a number average molecular weight of at most 3,000 g/mol and at least two carboxylic acid or carboxylate groups in which no carbonyl carbon atom therein is bond to another carbonyl carbon atom.
Moreover, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). The Office respectfully submits that the data does not compare a sufficient number of tests inside and outside the claimed range of 0.02 to 0.1 parts by weight per 100 parts by weight polyether polyol. For example, no data is provided right below the lower limit of 0.02 parts by weight, as well as at and just above the upper limit parts of 0.1 parts by weight. Additionally, it is noted that the alleged unexpected results do not appear to be achieved when HEEDTA is provided at the claimed lower limit of 0.02 parts by weight per 100 parts by weight polyether polyol; this amount of HEEDTA provides a higher level of cobalt extractables than several of the comparative examples (see Table 2).
iii) In response to applicant's argument that the applied references fail to recognized or suggest the criticality or unexpected effect associated with the specifically claimed amount of chelating agent for achieving the desired amount of cobalt extractables, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As detailed in i), Reese implicitly teaches an amount of chelating agent which overlaps with the instantly claimed range. The beneficial effects observed by applicant would thus be expected to also be observed, when the chelating agent in Reese is provided in an amount in the disclosed range which overlaps with the instantly claimed range.
iv) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally, while applicant argues that there is not teaching or motivation to select a hexacyanocobaltate catalyst produced polyol with a specific chelating agent for the purpose for reducing cobalt extractable in polyurethane, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (MPEP 2144) While the Office acknowledges that the references do not teach the specific advantage of cobalt reduction observed by applicant, the Office has provided a different motivation to modify Reese in light of Morley which nonetheless arrives at the instantly claimed invention (see Page 6 of the Non-Final Rejection).
v) Applicant argues that the application demonstrates long-felt need for polyurethanes with reduced cobalt extractables. However, the application does not provide any objective evidence in support of this position. “Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)” (MPEP 716.01(c)).
C. New Claims
Applicant argues that Claims 11 – 13 further specify the use of the chelating agent in a manner is distinct from the cited references. However, it is the Office’s position that Reese, when combined Morley, is properly relied upon to teach the newly presented subject matter for the reasons set forth in the new grounds of rejection under 35 U.S.C. 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