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 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20180103263 to Seo et al. (hereinafter Seo) in view of US 2018/0171064 to Su et al. (hereinafter Su). For the purposes of examination, citations for Seo are taken from a machine translation of the document obtained from the European Patent Office website in August 2025.
Regarding Claims 1 and 2. Seo teaches a polyurethane foam composition comprising:
a polyol mixture comprising a first polyol having a glass transition temperature of -50°C or lower; a second polyol containing at least three functional groups reactive with isocyanate groups and having a weight average molecular weight of 5,000 to 30,000 g/mol; and a third polyol having a heat release capacity of 500 J/g∙K or less;
an isocyanate-based curing agent [0007];
and a filler [0068].
Seo does not expressly quantify the amount of filler used in the composition or identify specific fillers which may be used. However, Su also teaches fillers may be provided in a polyurethane foam composition in an amount of 0 to 20 parts per hundred parts polyol (pphp). Calcium carbonate is disclosed as a suitable species of filler [0083]. Seo and Su are analogous art as they are from the same field of endeavor, namely 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 include up to 20 pphp calcium carbonate as a filler in the polyurethane foam composition of Seo. 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, Su shows that calcium carbonate in this amount is known in the art to be suitable for use as a filler in polyurethane foam compositions.
Regarding Claims 3 – 5. Seo teaches the polyurethane foam composition of Claim 1 wherein the second polyol is provided in an amount of 5 to 20 weight percent of the polyol mixture [0038]. The third polyol is provided in an amount of 20 to 50 weight percent of the polyol mixture [0038]. The remainder of the polyol mixture (30 to 75 weight percent) thus corresponds to the first polyol.
Regarding Claim 6. Seo teaches the polyurethane foam composition of Claim 1 wherein the second polyol is prepared from a second mixture comprising a polyether polyol, a polyfunctional isocyanate, and a chain extender having three or more functional groups which react with isocyanate ([0024] and [0033]).
Regarding Claim 7. Seo teaches the polyurethane foam composition of Claim 1
wherein a molar ratio of polyether polyol to the chain extender in the second mixture may be 1:0.1 to 1:0.4 [0032].
Regarding Claims 8 and 9. Seo teaches the polyurethane foam composition of Claim 1 wherein the third polyol is a polyol having a heat release capacity of 500 J/g∙K or less [0041].
Regarding Claims 10, 11, and 20. Seo teaches the polyurethane foam composition of Claim 1 may further comprise a solid or liquid non-halogenated phosphorus flame retardant [0054]. The fire retardant may be provided in an amount of 21 to 50 parts by weight based on 100 parts by weight of the total polyol [0057].
Regarding Claim 12. Seo teaches a polyurethane foam comprising a cured product of the polyurethane foam composition of Claim 1 [0073].
Regarding Claim 13. Seo teaches the polyurethane foam of Claim 12 but does not expressly teach it may be sucked at a suction pressure of 50 kPa or more. However, Seo, when modified by Su 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 polyurethane foam which may be sucked at a suction pressure of 50 kPa or more, 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 14. Seo teaches the polyurethane foam of Claim 14 has a density in the range of 0.2 to 0.5 g/cm3 [0080].
Regarding Claim 15. Seo teaches the polyurethane foam composition of Claim 1 wherein the first polyol prepared in Manufacturing Example 1 of Seo (see [0039]) is prepared by an identical method to that disclosed in Production of Example 1 of the instant specification. It would then be the Office’s position that the first polyol compound of Seo would also be reasonably expected to have hydroxyl groups bonded to both ends of its main chain, as well as a hydroxyl group included in its side chain.
Regarding Claim 16. Seo teaches the polyurethane foam composition of Claim 1 wherein each of the functional groups of the second polyol which are reactive with an isocyanate group may correspond to a hydroxyl group, amine group, thiol group, or carboxyl group [0021].
Regarding Claim 17. Seo teaches the polyurethane foam composition of Claim 6 wherein the polyether polyol of the second mixture may correspond to polyethylene glycol (PEG) [0025].
Regarding Claim 18. Seo teaches the polyurethane foam composition of Claim 6 wherein a molar ratio of the polyether polyol to the polyfunctional isocyanate in the second mixture may be in the range of 1:0.5 to 1:1 [0026].
Regarding Claim 19. Seo teaches the polyurethane foam composition of Claim 6 wherein the chain extender may be glycerol [0093], which corresponds to the second structure depicted in instant Claim 19.
Response to Arguments
Applicant's arguments filed November 18, 2025 have been fully considered. The Office responds as follows:
A) The amendments to the claims are sufficient to overcome the outstanding claim objections and rejections under 35 U.S.C. 112(b). Accordingly, all claim objections and rejections under 35 U.S.C. 112(b) have been withdrawn.
B) Applicant argues that Seo and Su are non-analogous art, as the problem addressed by the inventors of the pending claims is divergent to the problems addressed by the aforementioned references. Applicant further argues that the references are also not pertinent to each other because the particular problems they address are unrelated.
However, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. [emphasis added] See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Thus, it is not a requirement, that a prior art reference be reasonably pertinent to the particular problem with which the inventor was concerned, so long as the prior art reference is in the field of the inventor’s endeavor. The Office recognizes that Seo and Su do not necessarily focus of the same problem as the inventor of the instant application. Nonetheless, the Office maintains the position that Seo and Su are both analogous art and combinable, as they are both in the field of the inventor’s endeavor of polyurethane foams.
C) In response to applicant's argument that the purpose of including filler in Su is contrary to the purpose of the claimed invention, the Office respectfully submits that there is no requirement that the inventor(s) of the applied reference(s) and the inventors of the instant application share the same purpose/rationale for the selecting amounts of ingredients.
D) Applicant argues that Su teaches the amount of polyol can range from about 80 to about 100 pphp [0075] and thus the amount of filler is not relative to 100 parts by weight polyol, as in the instant claims. The Office respectfully disagrees. The section cited by applicant appear to pertain to the amount of polyether polyol in the polyol component, i.e. that the polyether polyol may constitute about 80 to about 100 pphp of the polyol component. Furthermore, Su expressly teaches in the premix includes 100 pphp of the polyol component in [0089].
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
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764