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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 11, 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 12 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 appear to provide support for the combination of limitations now set forth in Claim 12. Specifically, Claim 12 now sets forth a suction pressure of 60 to 95 kPa. Claim 12 also continues to depend on Claim 1, which now requires the filler be provided in an amount of 12 to 18 parts by weight per 100 parts by weight of the polyol mixture. The Office does acknowledge that the instant specification provides support for the aforementioned limitations individually. However, while the inventive examples and comparative examples show there to be a correlation between filler amount and suction pressure, there is no general teaching that the entire claimed range of suction pressures is provided (60 to 95 kPa) specifically when the compositions comprises an amount of filler in the claimed range of 12 to 18 parts by weight per 100 parts by weight of the polyol mixture.
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 – 12 and 15 – 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], wherein the polyurethane foam of Claim 14 has a density in the range of 0.2 to 0.5 g/cm3 [0080].
While this range is not identical to the 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) Moreover, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide the polyurethane foam with a density at the lower end of the claimed range. The motivation would have been a lower density would be correlated with lighter weight articles.
Seo also does not expressly teach the polyurethane foam may be sucked at a suction pressure of 60 to 95 kPa. However, Seo, 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, including amounts of filler in the instantly claimed range of 12 to 18 parts by weight. 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 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 but are not persuasive.
Claim Rejections – 35 U.S.C. 103
Applicant argues that a comparison between Examples 1 and Examples 2 and 3 show that there is an approximately 30% reduction in suction pressure, providing evidence of criticality of the claimed range. However, 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 cited data does not establish criticality of the claimed range of 12 to 18 parts by weight filler based on 100 parts by weight of the polyol mixture. The proffered data only provides one data point in the claimed range (15 parts by weight filler in Example 1) and only one two data points outside the claimed range (20 and 30 parts by weight in Examples 2 and 3 and Comparative Example 1). This does not constitute a showing of a sufficient number of tests both inside and outside the claimed range, such that it can be determined that the alleged unexpected results occur over this entire claimed range.
Additionally, 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 Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) The Office also respectfully submits that the data provided is not commensurate in scope with the instant claims. For example, instant Claim 1 sets forth “a filler” which corresponds to a large genus of species, whereas the cited data only tests only one species of filler (calcium carbonate). It cannot then be inferred that the beneficial results observed with calcium carbonate would be necessarily obtained when any filler is used in an amount of 12 to 18 parts by weight based on 100 parts by weight of the polyol mixture, as set forth in instant Claim 1.
Applicant additionally argues that neither Seo or Su recognizes the technical problem of simultaneously achieved high suction pressure and low density. However, 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).
Claim 12
Applicant argues that Example 2 and 3 use an amount of filler which is in Su’s disclosed range (20 pphp) and this amount provides suction pressures of only 53 and 58 kPa, which fall outside the claimed range of 60 to 95 kPa. However, the subject matter of Claim 12 raises a new matter issue as detailed in the new grounds of rejection under 35 U.S.C. 112(a) set forth in this Office action.
Additionally, 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). Su is not limited to amounts of filler of 20 pphp but instead discloses a range for the amounts of filler of from 0 to 20 pphp [0083]. The claimed amounts of filler of 12 to 18 pphp then lie directly within the claimed range. Thus, when amounts of filler of 12 to 18 pphp are provided as is readily envisioned within the range disclosed by Su, a suction pressure in the claimed range would be reasonably expected to be achieved.
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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