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 22 is objected to because of the following informalities: it is suggested Claim 22 be amended to recite “comprises, based on 100 parts by weight of the at least one polyether polyol set forth in b1) and the at least one polyether polyol set forth in b2), no more than 20 parts of b4)” and the subsequent recitation of “in an amount in the range of…and the at least one polyether polyol set forth in b2)” be deleted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16, 18 – 20, and 22 – 29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention because:
Claims 16 and 23 sets forth further polyether polyols having an ethylene oxide proportion based on the content of alkylene oxide. However, there is a lack of antecedent basis for the alkylene oxide recited in each instance. Additionally, ethylene oxide would presumably react to form a polyether polyol and therefore the polyether polyol would comprise units derived therefrom, rather than this monomer itself. For the purposes of examination, the claims will be interpreted as further setting forth each polyether polyol is prepared with an alkylene oxide mixture comprising the claimed percentage of ethylene oxide.
Claims 18 and 19 sets forth “filler according to (b3)”. There is a lack of antecedent basis for this phrase. For the purposes of further examination, the aforementioned claims will be interpreted as referring to the optionally derivatized filler according to b3).
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 16, 18 – 20, and 22 – 27 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/002013 to Otero Martinez et al. (hereinafter Otero Martinez) in view of US 2015/0076400 to Hager et al. (hereinafter Hager). For the purposes of examination, citations for Otero Martinez are taken from an English language equivalent of the document, US 2015/0076400.
Regarding Claims 16, 18, and 24. Otero Martinez teaches a process for producing a polyurethane foam comprising reacting:
at least one polyisocyanate based on diphenylmethane diisocyanate (MDI) [0080] – [0081]. The isocyanate components comprise most preferably from 1 to 10% of 2,4’-MDI [0098];
a polyol mixture b) [0082] comprising:
b1) 75 to 94 weight percent of at least one polyether polyol having a hydroxyl value in the range of 10 to 60 mgKOH/g, an OH functionality of at least 2, and ethylene oxide in a proportion of 50 to 100% by weight based on the content of alkylene oxide [0018];
b2) 3 to 20 weight percent of at least one polyol having a hydroxyl value of 10 to 100 mgKOH/g, an OH functionality of at least 2, an ethylene oxide proportion based on the alkylene oxide content of from 2 to 30 weight percent, and a proportion of primary OH groups of 40 to 100%, based on the total OH groups of the at least one polyether polyol;
and optionally b3) 0 to 30 parts by weight fillers which may be present as a constituent of the at least one polyether polyol set forth in b1) or b2);
and a blowing agent composition comprising water [0085], wherein water is preferably used as the sole blowing agent.
With respect to the amounts of b1) of 75 to 84 weight percent and b2) of 3 to 20 weight percent, the Office recognizes that the ranges disclosed by Otero Martinez are not identical to the instantly claimed ranges for b1) of 60 to 82 weight percent and b2) of 18 to 40 weight percent. However, they do overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Otero Martinez does not provide a general teaching with respect to the quantity of water/blowing agent relative to the total weight of all isocyanate-reactive components. However, Hager also teaches a process for producing a polyurethane foam in which water is provided as the blowing agent in an amount of up to 10 weight percent of isocyanate-reactive component B) [0068]. The blowing agent composition consisting of water can thus be calculated to be provided in a weight-based ratio of the blowing agent composition to the total weight of all isocyanate-reactive components used in the reaction in a range of up to 1:10. Otero Martinez and Hager are analogous art as they are from the same field of endeavor, namely process for producing flexible polyurethane foams having improved air permeability. 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 water in the process of Otero Martinez such that the weight-based ratio of the blowing agent composition to the total weight of all isocyanate-reactive components used in the reaction in a range of up to 1:10, as suggested by Hager. The motivation would have been that Hager teaches this to be a suitable quantity of water for the preparation of flexible polyurethane foams having improved air permeability [0068].
The references do not expressly teach the density according to DIN EN ISO 845 and compression hardness in accordance with DIN EN ISO 3386-1 of the foam arising from their combination. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Otero Martinez, when modified with Hager in the manner proposed above, 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 foam having a density according to DIN EN ISO 845 and a compression hardness in accordance with DIN EN ISO 3386-1 in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 19. Otero Martinez teaches the process of Claim 16 wherein
the at least one polyether polyol corresponding to the at least one polyether polyol set forth in b1) of Claim 16 has a functionality of particularly preferably from 2.2 to 4 [0037].
Regarding Claim 20. Otero Martinez teaches the process of Claim 16 wherein
the at least one polyether polyol corresponding to the at least one polyether polyol set forth in b2) of Claim 16 has a content of primary hydroxyl groups of preferably 50 to 90% [0048].
Regarding Claim 22. Otero Martinez teaches the process of Claim 16 wherein the polyol mixture preferably comprises no (0 parts by weight) further polyether polyols other the polyether polyols set forth in b1) – b3), none of which correspond to a polyether polyol having the features of instantly claimed polyether polyol b4).
Regarding Claim 23. Otero Martinez teaches the process of Claim 16 wherein the polyol mixture further comprises a polyether polyol having a hydroxyl value of 10 to 100 mgKOH/g, a functionality of at least 2, an ethylene oxide proportion of 0 to 30% by weight, and a proportion of primary hydroxyl groups of 0 to 30% based on a total number of OH groups [0020].
Otero Martinez teaches this polyether polyol is provided in an amount of 3 to 20 weight percent [0020]. While this range is not identical to the claimed range of not more than 5 parts by weight, 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)
Regarding Claim 25. Otero Martinez teaches the process of Claim 16 wherein foaming may be performed in an open mold [0138], corresponding to free-rise foaming.
Regarding Claim 26. Otero Martinez teaches a polyurethane foam formed by the process of Claim 16 [0080] – [0086].
Regarding Claim 27. Otero Martinez teaches the polyurethane foam of Claim 26 but is silent regarding the claimed properties. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Otero Martinez, when modified in the manner proposed, 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 foam having one or more property values in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claims 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/002013 to Otero Martinez et al. (hereinafter Otero Martinez) in view of US 2015/0076400 to Hager et al. (hereinafter Hager), as applied to Claims 16 and 26 above, and further in view of US 2012/0161353 to Hannig et al. (hereinafter Hannig).
Regarding Claims 28 and 29. Otero Martinez teaches the polyurethane foam of Claim 26 but does not expressly teach a method in which it is utilized as a sound absorption material. However, Hannig discloses method in which polyurethane foams are used in sound absorption applications [0003]. Otero Martinez and Hannig are analogous art as they are from the same field of endeavor, namely flexible polyurethane 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 polyurethane foam of Otero Martinez in a method in which it is utilized as sound absorption. 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, Hannig shows that polyurethane foams are known in the art to be suitably used in methods as sound absorption material [0003].
Response to Arguments
Applicant's arguments filed October 13, 2025 have been fully considered but they are not persuasive because:
A) Applicant argues that amendments have been made to obviate the specified grounds of rejection under 35 U.S.C. 112(b). However, the Office respectfully submits that two outstanding grounds for rejection remain which have not been addressed by the present amendments: 1) the recitations with respect to ethylene oxide proportion in the polyether polyols in Claims 16 and 23; and 2) the “filler according to (b3)” set forth in Claims 18 and 19. As all other pending claims ultimately depend on Claim 16 and thereby incorporate its subject matter, they are also remain rejected under 35 U.S.C. 112(b).
B) Applicant argues that the specifically claimed weight-based ratio of blowing agent composition to all isocyanate-reactive compounds in the range of 1:14 to 1:6 provides an unexpected and significantly higher compression hardness at 40% compression for foams having densities less than or equal to 25 kg/m3.
In response, the Office notes that the evidence provided must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). (MPEP 716.02(e)) However, only comparative examples C3 and C6 correspond to the closest prior art, as they are the only examples which utilize a polyol mixture comprising both polyether polyols required by Otero Martinez in amounts in their respective required ranges. However, these examples both use a weight-based ratio of a blowing agent composition relative to a total weight of all isocyanate-reactive compounds in the instantly claimed range of 1:14 to 1:6. Specifically, using the amounts disclosed in Tables 3 and 6, comparative examples C3 and C6 can be calculated to utilize a weight-based ratio of a blowing agent composition relative to a total weight of all isocyanate-reactive compounds in the instantly claimed range of roughly 1:11. It is indicated in Tables 4 and 6 that the compression hardness of the foam prepared in either example cannot be determined. This, in turn, is evidence that the instantly claimed unexpected compression hardness cannot be attributed to having a weight-based ratio of a blowing agent composition relative to a total weight of all isocyanate-reactive compounds in the instantly claimed range.
C) Applicant additionally argues that foams prepared with polyisocyanate compositions containing more than 50 weight percent 4,4’-MDI and less than 10% by weight of 2,4’-MDI produced unexpectedly low air flow air resistance values and high air permeability. The Office respectfully submits that independent Claim 16 sets forth the polyisocyanate composition comprises more than 50 weight percent 4,4’-MDI and/or less than 10% by weight of 2,4’-MDI. Thus, the claims do not require both the claimed amount of 4,4’-MDI and the claimed amount of 2,4’-MDI be satisfied.
Nonetheless, Otero Martinez does teach a preferred component a) comprises from 68 to 90% by weight 4,4’-MDI and more preferably from 1 to 10% by weight 2,4’-MDI [0098]. Beneficial results arising from the use of the instantly claimed amounts of 4,4’- and/or 2,4’-MDI cannot be considered unexpected, as the use of such quantities is already envisioned and preferred by the prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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