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 § 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 1, 4, 5, 7 – 14, and 16 – 20 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. The metes and bound of Claims 1 and 14 are not clearly defined by the use of parentheses (ASTM D3574, Test H). It is unclear whether the limitations enclosed therein are required or optional. As all other pending claims ultimately depend on Claim 1 or Claim 14, they incorporate their subject matter and are also therefore rejected under this stature. For the purposes of examination, the limitations enclosed in parentheses in Claims 1 and 14 will be interpreted as being required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 5, 8, and 10 – 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,338,407 to Chandalia et al. (hereinafter Chandalia), as evidenced by US 2022/0396650 to Hashimoto et al. (hereinafter Hashimoto).
Regarding Claims 1, 4, 8, 10, and 11. Chandalia teaches a method of producing a flexible polyurethane foam (Column 7, Lines 26 – 37).
In Examples 18 – 23, a polyol composition (“Product of Example 2”) is provided (see Tables I and II). The polyol composition is 1,900 grams of a polyether polyol initiated with a glycerin (Column 7, Line 65 – Column 8, Line 10), i.e. a first polyol. Glycerin is an initiator having three hydroxyl groups and therefore the polyether prepared therefrom would be expected to have a functionality of 3. The polyol composition further comprises 100 grams AEROSIL® R-972, which is a commercially available fumed silica (Column 7, Line 64 – Column 8, Line 7). Using the amounts of ingredients of first polyol and fumed silica, the fumed silica can be calculated to be present in an amount of 5 weight percent of the polyol composition. Hashimoto provides evidence that AEROSIL® R-972 has a BET specific surface area of 110 m2/g and is surface-treated with dimethylsilyl groups [0151]. The polyol composition also further comprises water and a tertiary amine catalyst (Table III), i.e. a catalyst consisting of a tertiary amine catalyst.
The polyol composition is combined with toluene diisocyanate, i.e. a polyisocyanate having a functionality of 2; water; and a tertiary amine catalyst (Table I), thereby forming a prepolymer composition. The toluene diisocyanate used in Examples 18 – 23 is a mixture of the 2,4- and 2,6- isomers of toluene diisocyanate (see first footnote of Table I). A foam is subsequently formed (Column 8, Lines 58 – 69), i.e. the prepolymer composition is allowed to polymerize to form a foam. Chandalia teaches the foams are substantially open-celled (Column 7, Lines 26 – 29).
Chandalia is silent with respect to the density and resilience of the foam obtained in Examples 18 – 23, though Chandalia does teach the density of the inventive foams generally ranges from about 1.0 to about 5.0 pcf and describes the foams as high resilience (Column 7, Lines 26 – 26). Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Chandalia 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 foam having density and resiliency values in the instantly claimed ranges, 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 5. Chandalia teaches the method of Claim 1 wherein a second polyol is provided having a molecular weight of 4,600 g/mol (“Polyol” in Part “B”) (Table I and second footnote).
Regarding Claim 12. Chandalia teaches the method of Claim 1 but is silent with respect to the compression force deflection at 50% of the foam as measured by ASTM D3574. However, Chandalia 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 foam having a compression force deflection at 50% as measured by ASTM D3574 that is improved by at least 30% with respect to a flexible polyurethane foam produced by the same method but in which fumed silica is replaced with an equal part by mass of the first polyol - 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 13. Chandalia teaches a flexible polyurethane foam produced by the method of producing of Claim 1 (Column 7, Lines 26 – 37).
Claims 14 and 16 – 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,338,407 to Chandalia et al. (hereinafter Chandalia), as evidenced by US 2022/0396650 to Hashimoto et al. (hereinafter Hashimoto).
Regarding Claims 14, 16, 18, and 19. Chandalia teaches a flexible polyurethane foam (Column 7, Lines 26 – 37).
In Examples 18 – 23, the polyurethane foam is formed from a B-side comprising
a polyol composition (“Product of Example 2”) (see Tables I and II). Said polyol composition is prepared from 1,900 grams of a polyether polyol and 100 grams AEROSIL® R-972, which is a commercially available fumed silica (Column 7, Line 64 – Column 8, Line 7). Using the amounts of ingredients of first polyol and fumed silica, the fumed silica can be calculated to be present in an amount of 5 weight percent of the polyol composition. The polyurethane foam, which comprises additional ingredients aside from said polyol composition, will therefore comprise less than 5 weight percent fumed silica. Hashimoto provides evidence that AEROSIL® R-972 has a BET specific surface area of 110 m2/g and is surface-treated with dimethylsilyl groups [0151].
Chandalia is silent with respect to the density and resilience of the foam obtained in Examples 18 – 23, though Chandalia does teach the density of the inventive foams generally ranges from about 1.0 to about 5.0 pcf and describes the foams as high resilience (Column 7, Lines 26 – 26). Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Chandalia 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 density and resilience 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.
Regarding Claim 17. Chandalia teaches the flexible polyurethane foam of Claim 14 of Examples 18 – 23 is prepared in a mold (Column 8, Lines 58 – 66), i.e. it corresponds to a molded foam.
Regarding Claim 20. Chandalia teaches the flexible polyurethane foam of Claim 14 but is silent with respect to the compression force deflection at 50% of the foam as measured by ASTM D3574. However, Chandalia 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 compression force deflection at 50% as measured by ASTM D3574 that is improved by at least 30% with respect to a flexible polyurethane foam produced by the same method but in which the fumed silica is replaced with an equal part by mass of the first polyol - 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.
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 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable US 4,338,407 to Chandalia et al. (hereinafter Chandalia), as evidenced by US 2022/0396650 to Hashimoto et al. (hereinafter Hashimoto) – as applied to Claim 1 above – and further in view of US 2012/0302652 to Meyer et al. (hereinafter Meyer).
Regarding Claims 7 and 9. Chandalia teaches the method of Claim 1 wherein the prepolymer composition may be charged into a mold (Column 8, Lines 58 – 66) but does not specify whether it is an open or closed mold. However, Meyer teaches the preparation of high resilience foams in open or closed molds [0040]. Chandalia and Meyer are analogous art as they are from the same field of endeavor, namely high resilience 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 prepare the foam of Chandalia in either an open or closed mold, as taught by Meyer. 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, Meyer shows that both open and closed cell molds are known in the art to be suitably used in methods of preparing high resilience polyurethane foams [0040].
Response to Arguments
Applicant's arguments filed November 25, 2025 have been fully considered. The Office responds as follows:
Claim Objections
Applicant’s arguments with respect to the objection to Claims 1 and 5 are persuasive. The corresponding objection has been withdrawn. With respect to Claims 12 and 20, the Office agrees the amendments to the claims filed November 25, 2025 are sufficient to overcome the outstanding objection to these claims. This objection has also been consequently been withdrawn.
Rejections Under 35 U.S.C. 112
The Office has withdrawn the outstanding rejections under 35 U.S.C. 112(b) and (d) in light of the amendments to the claims. However, the amendments to independent Claims 1 and 14 does raise a new issue under 35 U.S.C. 112(b), which is detailed in the new grounds of rejection above.
Rejections Under 35 U.S.C. 102
Applicant argues that the examples of Chandalia all use blends of tertiary amine and metallic (tin) catalysts and further include lower order amine chain extenders such as triethylene diamine. It is then applicant’s position that the tin catalyst of Chandalia is excluded by claims. Applicant’s argument is not found persuasive, as the claims presently do not exclude language which excludes catalysts other than tertiary amine catalysts from the claims.
When the phrase "consisting of" appears in a clause of the body of a claim, rather than immediately following the preamble, there is an "exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements." Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359, 119 USPQ2d 1773, 1781 (Fed. Cir. 2016) However, the "consisting of" phrase limits only the element set forth in that clause; other elements are not excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986). (MPEP 2111.02(II)) Thus, in the instant case, the phrase “a catalyst consisting of a tertiary amine catalyst” does require this recited catalyst to only correspond to a tertiary amine catalyst. However, it does not exclude the presence of other elements, e.g. other unrecited catalysts, from the claims as a whole.
The Office also further notes that Chandalia teaches in the general disclosure that the organometallic salt catalyst is used in a proportion of about 0 to 0.5 parts per 100 parts by weight the polyether polyol (Column 6, Lines 23 – 30). The reference thus also appears to envision embodiments in which no (0 parts by weight) organometallic salt catalyst is provided. In such embodiments, the only catalyst used would correspond to a tertiary amine catalyst.
Applicant additionally argues that it is unclear whether the compositions of Chandalia would have the same properties as the polyurethane foams prepared in the instant claims, as Chandalia uses a tin catalyst. However, with respect to Claim 1, Chandalia teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. With respect to Claim 14, Chandalia teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. As detailed above, there is presently no requirement that tin catalysts be excluded from the claims. Therefore, the claimed effects and physical properties, i.e. a foam having density and resiliency values in the instantly claimed ranges, 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 or 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 using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Rejections Under 35 U.S.C. 103
Applicant argues that Meyer does not remedy the deficiencies of Chandalia is not persuasive, as the alleged deficiencies of Chandalia have been addressed in the previous section.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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