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
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, 2, 4 – 11, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0230879 to Watanabe et al. (hereinafter Watanabe) in view of US 9,968,919 to Burdeniuc et al. (hereinafter Burdeniuc).
Regarding Claims 1, 2, 4 – 6, and 9. Watanabe teaches a polyurethane elastomer foam prepared by reaction of an isocyanate-terminated prepolymer with a foaming agent comprising a mixture of water [0006], i.e. an elastomeric polyurethane-polyurea comprising water blown foam.
In Example 1, the foam is molded at a molding/apparent density of 0.5 g/cm3 (500 kg/m3) [0024]. The obtained foam is reported to have a tensile strength of 5.5 MPa (5500 KPa) (Table 1). The tensile strength over apparent density ratio of the foam of Example 1 can thus be calculated to be roughly 11 kPa∙m3/kg.
The foam of Example 1 is formed from a reaction mixture comprising isocyanate, 1,4-butanediol, and water. 1,4-butanediol (BDO) is a urethane-forming isocyanate-reactive species having two hydroxy functional groups and a molecular weight of 45 g/mol. BDO thus will react with the isocyanate to provide urethane hard-block species formed from D equivalents thereof. Water will also react with the isocyanate to provide urea hard-block species formed from C equivalents thereof.
Watanabe does not expressly teach the reaction mixture of Example 1 further comprises isocyanate-reactive compounds having amine functional groups with a molecular weight of less than 500 g/mol which form urea-hard block species. However, Watanabe does teach a catalyst under the tradename DABCO® is provided as an amine-based catalyst (see Table on Page 3) and further teaches in the general disclosure that the amine compound can be allowed to take part in the reaction as a catalyst [0016]. Secondary reference Burdeniuc teaches the use of DABCO® NE1060 (dimethylaminopropyl urea) specifically as a reactive amine catalyst for use in the preparation of polyurethane foams (Column 6, Lines 30 – 42). Dimethylaminopropyl urea corresponds to a urea-forming isocyanate-reactive compound having amine functional groups and a molecular weight of 145.2 g/mol. Dimethylaminopropyl urea thus will react with the isocyanate to provide urea hard-block species formed from E equivalents thereof. Watanabe and Burdeniuc 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 provide DABCO® NE1060 as the DABCO® catalyst in Example 1 of Watanabe. 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, Burdeniuc shows that DABCO® NE1060 is known in the art as a suitable DABCO® catalyst for the preparation of polyurethane foams. Moreover, Burdeniuc teaches the use of this catalyst is particularly desirable as it reduces emissions associated with conventional polyurethane foams (Column 6, Lines 30 – 42).
Using the values reported in the Table on Page 3 of Watanabe, proportions of urethane prepolymer and foaming agent of 100:26.3 reported in [0026], and known molecular weights of BDO, water, and dimethylaminopropyl urea: the foam of Example 1 of Watanabe - when modified with Burdeniuc in the manner proposed - can be calculated to have urethane hard-block species formed from roughly 0.016 equivalents BDO (D = 0.016 equivalents); urea hard-block species formed from isocyanate-reactive amine functional groups with a molecular weight of less than 500 g/mol formed from roughly 0.002 equivalents DABCO® NE 1060 (E = 0.002 equivalents); and urea hard-block species formed from 0.039 equivalents water (C = 0.039 equivalents). The instantly claimed ratio of (D+E)/C can thus further be calculated to correspond to roughly 0.5.
Regarding Claims 7 and 8. Watanabe teaches the elastomeric polyurethane-polyurea comprising water blown foam of Claim 1. As detailed in the rejection of Claim 1 under 35 U.S.C. 102(a)(1), the foam of Example 1 of Watanabe, when modified with Burdeniuc in the manner proposed, can be calculated to have a ratio of (D+E)/C of roughly 0.5.
The Office recognizes the ratio of (D+E)/C in this example of Watanabe is outside the instantly claimed ranges of 0.7 to 0.9 and 0.55 to 1.2. However, in the general disclosure, Watanabe teaches an amount of low molecular weight glycol as high as 3.0 parts by weight may preferably be used relative to 100 parts by weight of the prepolymer [0014]. Before the effective filing date of the instantly claimed invention to increase the amount of low molecular weight glycol in Example 1 from roughly 0.9 parts by weight relative to 100 parts by weight the isocyanate prepolymer to an amount as high as 3.0 parts by weight. This would provide roughly 0.052 equivalents BDO and a ratio of (D+E)/C of greater than 0.5 and up to 1.4. The motivation would have been that increasing the low molecular weight glycol content will increase the hard segment content of the foam product [0014], which will provide a product of increased hardness and strength.
Regarding Claim 10. Watanabe teaches the elastomeric polyurethane-polyurea comprising water blown foam of Claim 1 but does not expressly teach it has thermoplastic properties. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Watanabe teach 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. an elastomeric polyurethane-polyurea comprising water blown foam having thermoplastic properties, 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 11. Watanabe teaches a gasket comprising the elastomeric polyurethane-polyurea comprising water blown foam of Claim 1 [0044].
Regarding Claim 16. Watanabe teaches the elastomeric polyurethane-polyurea comprising water blown foam of Claim 1 is prepared by reaction of an isocyanate compound (TODI); an isocyanate-reactive compound having a molecular weight of 2,000 g/mol; 1,4-butanediol (BDO), corresponding to a urethane-forming isocyanate-reactive species having two hydroxy functional groups and a molecular weight of 45 g/mol; and water [0025]. It is the Office’s position that it would have been obvious to provide DABCO® NE1060 (dimethylaminopropyl urea) specifically as a reactive amine catalyst in Example 1 of Watanabe, in light of Burdeniuc, for the reasons detailed in the rejection of Claim 1. Dimethylaminopropyl urea corresponds to a urea-forming isocyanate-reactive species having amine functional groups and a molecular weight of 145.2 g/mol.
Watanabe teaches the isocyanate-reactive compound having a molecular weight of 2,000 g/mol is an ethylene adipate-based polyester polyol in Example 1 [0025], rather than a polyether-based polyol having a polyether backbone that is at least 50 weight percent based on a butylene oxide polyol as is instantly claimed. However, in the general disclosure, Watanabe teaches polytetramethylene glycol, corresponding to a polyether-based polyol having a polyether backbone that is based on a butylene oxide polyol, is suitably used as an alternative high molecular weight polyol [0015]. 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 substitute a polytetramethylene glycol polyol for the ethylene adipate-based polyester polyol in Example 1 of Watanabe. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Watanabe teaches both polytetramethylene glycol and ethylene adipate-based polyester polyols are suitably used as high molecular weight polyol in the disclosed foams [0015], thus providing obviousness of substituting one for the other in such compositions.
Regarding Claim 17. Watanabe teaches the elastomeric polyurethane-polyurea comprising water blown foam of Claim 1 comprising 10 parts by weight of a DABCO® catalyst and 150 parts by weight 1,4-butanediol [0025], corresponding to the urethane forming isocyanate-reactive compound. It is the Office’s position that it would have been obvious to provide DABCO® NE1060, a urea-forming isocyanate-reactive species, as the DABCO® catalyst in Example 1 of Watanabe, in light of Burdeniuc, for the reasons detailed in the rejection of Claim 1. Using these values, the urea forming isocyanate-reactive compounds can be calculated to correspond to roughly 6 weight percent calculated on a total amount of the urethane forming and urea forming isocyanate-reactive compounds.
Claims 12 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0230879 to Watanabe et al. (hereinafter Watanabe) in view of US 9,968,919 to Burdeniuc et al. (hereinafter Burdeniuc), as applied to Claim 1 above, and further in view of WO 2012/065291 to Kamm et al. (hereinafter Kamm).
Regarding Claims 12 – 15. Watanabe teaches the elastomeric polyurethane-polyurea comprising water blown foam of Claim 1 but does not expressly it is further used in a process in which it is recycled and/or remelted. However, Kamm teaches the concept of producing composite materials made from thermoplastic polyurethane and a crosslinked polyurethane (see 5th full paragraph of Page 2), wherein the crosslinked polyurethane may be obtained from waste polyurethane foam (see 3rd paragraph of Page 6). In the process, the thermoplastic polyurethane and crosslinked polyurethane are mixed in an extruder such that they are melted. The mixture may be degassed prior to molding (see 3rd paragraph of Page 7). In embodiments in which the mixture is degassed prior to molding, the obtained molding will correspond to a non-foamed thermoplastic material. In embodiments in which the mixture is not degassed prior to molding, the gas will continue to be dispersed then and thus effectively functions as a blowing agent; the obtained molding will then correspond to a foamed recycled thermoplastic. Watanabe and Kamm 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 use the polyurethane foam of Watanabe as the crosslinked polyurethane in the recycling process taught by Kamm. The motivation would have been that Kamm discloses the polyurethane industry has an interest in avoiding, or recycling production waste and further that recycling waste can save raw materials and reduce costs (see 2nd and 3rd paragraphs of Page 1 of Kamm).
The references are silent with respect to the apparent density of the thermally recycled foam relative to the elastomeric polyurethane-polyurea comprising water blowing foam before extruding. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Watanabe, when modified with Kamm 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. thermally recycled foam having an apparent density at least 1.5 time the apparent density of the elastomeric polyurethane-polyurea comprising water blowing foam before extruding - 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.
Response to Arguments
Applicant's arguments filed December 17, 2025 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims overcome all outstanding objections thereto. Accordingly, all claim objections have been withdrawn.
35 U.S.C. 112(b)
The Office agrees that the amendments to the claims overcome all outstanding rejections under 35 U.S.C. 112(b). Accordingly, all rejections under 35 U.S.C. 112(b) have been withdrawn.
35 U.S.C. 112(d)
The Office agrees that the amendments to the claims overcome all outstanding rejections under 35 U.S.C. 112(d). Accordingly, all rejections under 35 U.S.C. 112(d) have been withdrawn.
35 U.S.C. 102
Applicant argues that Watanabe does not disclose urea hard-block species formed from E equivalents urea forming reactive compounds, which are now required by independent Claim 1. The Office agrees that Watanabe no longer anticipates the instant claims in light of this amendment to Claim 1. However, it is the Office’s position that Watanabe is suitably combined with newly discovered Burdeniuc to render obvious the instantly claimed invention. As detailed in the new grounds of rejection under 35 U.S.C. 103, Burdeniuc teaches the concept of providing urea forming isocyanate-reactive compounds, e.g. DABCO® NE1060/dimethylaminopropyl urea, in the preparation of polyurethane foams.
Applicant additionally argues that Watanabe does not anticipate the claimed ranges of 0.5 to 1.4 or 0.7 to 0.9 for the ratio of (D+E)/C. However, as detailed in the new grounds of rejection of Claim 1 under 35 U.S.C. 103, the proposed combination of Watanabe with Burdeniuc can be calculated to result in a ratio of (D+E)/C of roughly 0.5. It is further the Office’s position that it would have been obvious to increase the amount of low molecular weight glycol in Example 1 of Watanabe from roughly 0.9 parts by weight relative to 100 parts by weight the isocyanate prepolymer to an amount as high as 3.0 parts by weight, thereby obtaining a ratio of (D+E)/C of greater than 0.5 and up to 1.3 for the reasons detailed in the subsequent Response to Arguments section.
35 U.S.C. 103
Applicant argues that Watanabe does not teach or suggest the claimed ranges of 0.5 to 1.4 or 0.55 to 1.2 for the ratio of (D+E)/C. However, as detailed in the new grounds of rejection of Claim 1 under 35 U.S.C. 103, the proposed combination of Watanabe with Burdeniuc can be calculated to result in a ratio of (D+E)/C of roughly 0.5. Though applicant argues that Watanabe uses a 1:1 weight ratio of low molecular weight glycol to the amount of water in the examples, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123) Watanabe teaches in the general disclosure that preferred amounts of low molecular weight glycol and water are both anywhere from 0.2 to 3.0 parts by weight [0014] and places no limitation that they must be used in identical amounts. Thus, it remains the Office’s position that there is a reasonable expectation of success in using any amount of low molecular weight glycol and water in the disclosed and preferred ranges.
Applicant’s arguments that Kamm does not remedy the deficiencies of Watanabe is not persuasive, as the alleged deficiencies have been addressed above.
Additionally, applicant’s arguments that the applied references do not teach the subject matter of new Claims 16 and 17 is not persuasive. It is the Office’s position that Watanabe in view of Burdeniuc is suitably relied upon to teach this subject matter for the reasons set forth in the corresponding 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
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764