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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on April 21, 2026 has been entered.
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 – 5, 7 – 8, 10, 12, 13, 15, 16, and 18 – 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2007/144272 to Bauer et al. (hereinafter Bauer). For the purposes of examination, citations for Bauer are taken from a machine translation of the document obtained from the European Patent Office website in May 2026.
Regarding Claims 1 – 5, 7 – 8, 10, 16, 18, and 20. Bauer teaches a reactive foam formulation for forming a polyurethane soft foam in which water is provided as a blowing agent (1st paragraph of 1st page of machine translation; last paragraph of 5th page of machine translation).
In Example 1, said reactive foam formulation comprises:
an isocyanate composition comprising LUPRANAT® T80 A (Table 1). LUPRANAT® T80 A is a mixture of the 2,4- and 2,6-toluene diisocyanate (TDI) isomers (last page of machine translation), corresponding to a commercially available aromatic isocyanate compound mixture having a number average isocyanate functionality of roughly 2 and an isocyanate content of 48.2%;
Polyol 3 which is described as a polypropylene glycol having a hydroxyl value of 55 mgKOH/g (last page of machine translation and Table 1). Glycols correspond to polyols having a hydroxyl/isocyanate-reactive functionality of 2. Using its expected functionality and reported hydroxyl value, Polyol 3 can be calculated to have a molecular weight of roughly 2,040 g/mol. Polyol 3 thus corresponds to an isocyanate-reactive compound having a molecular weight of greater than 500 g/mol and a functionality in the range of 1.8 to 2.5;
water;
Monool and Polyol 4 (Table 1). Monools correspond to compounds having a hydroxyl functionality of 1. The Monool used in Example 1 is further reported to have a hydroxyl value of 150 mgKOH/g. Polyol 4 is described as a trifunctional polyol, i.e. a polyol having a functionality of 3, and is reported to have a hydroxyl value of 150 mgKOH/g (last page of machine translation). Using the aforementioned functionalities and hydroxyl values, Monool and Polyol 4 may be calculated to have molecular weights of 374 g/mol and 420 g/mol respectively. Monool and Polyol 4 thus correspond to low molecular weight compounds containing hydroxyl groups and having a molecular weight of less than 500 g/mol and a functionality in the range of 1 to 8;
KOSMOS® and DABCO® compounds as catalyst compounds; and
TEGOSTAB® B8038 as a silicone foam stabilizer/further additive (last page of machine translation and Table 1)
Bauer does not teach low molecular weight urea forming compounds containing amine functional groups and having a molecular weight of less than 500 g/mol and a functionality in the range of 1 to 8 are present in the reactive foam formulation of Example 1. However, such compounds are set forth as optional in instant Claim 1 and therefore are not required to be present to meet the instant claim.
Using the values reported in Table 1 and information provided in the last paragraph of the machine translation, the reactive foam formulation may be calculated to comprise roughly 41.2 parts by weight TDI. This value may, in turn, be used to calculate the various equivalent values and relationships thereof set forth in Claim 1. Specifically, based on 100 grams of the reactive foam formulation of Example 1 of Bauer, C corresponds to 0.06; D corresponds to 0.005; E is 0, and therefore D+E is also 0.0047; and (D+E)/C is 0.8.
Bauer further teaches the isocyanate index provided is 105 in Example 1 (Table 1).
Bauer does not expressly teach the reactive foam formulation forms a polyurethane-polyurea comprising water blown foam. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Bauer 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-polyurea comprising water blown foam, 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 12. Bauer teaches the reactive foam formulation of Claim 1. Using the amounts of ingredients reported in Table 1, its hardblock content can be calculated to be roughly 31 weight percent, when calculated according to the definition of “hardblock” provided in the instant specification.
Regarding Claim 13. Bauer teaches the reactive foam formulation of Claim 1. A composition and its properties are inseparable. Therefore, the water in the reactive foam formulation is reasonably expected to form urea hardblock units. As Bauer does not provide other low molecular weight urea forming compounds, 100% of the theoretical equivalents in said urea hardblock will originate from water.
Regarding Claim 15. Bauer teaches the reactive foam formulation of Claim 1 comprising Polyol 3 which is described as a polypropylene glycol, i.e. a polyether polyol having a hydroxyl value of 55 mgKOH/g (last page of machine translation and Table 1). As detailed in the rejection of Claim 1, glycols correspond to polyols having a hydroxyl/isocyanate-reactive functionality of 2. Using its expected functionality and reported hydroxyl value, Polyol 3 can be calculated to have a molecular weight of roughly 2,040 g/mol.
Regarding Claim 19. Bauer teaches a process for making a polyurethane soft foam in which water is provided as a blowing agent, i.e. a water blown polyurethane comprising foam, which comprises reacting the reactive formulation according to Claim 1 (1st paragraph of 1st page of machine translation; last paragraph of 5th page of machine translation; last page of machine translation; and Table 1)
Bauer does not expressly teach the process produces a polyurethane-polyurea comprising water blown foam. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Bauer 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 polyurethane-polyurea comprising water blown foam, 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.
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2007/144272 to Bauer et al. (hereinafter Bauer), as applied to Claim 1 above. For the purposes of examination, citations for Bauer are taken from a machine translation of the document obtained from the European Patent Office website in May 2026.
Regarding Claim 9. Bauer teaches the reactive foam formulation of Claim 1 wherein the isocyanate composition comprises LUPRANAT® T80 A (Table 1), which has an isocyanate content of 48.2% which is outside the instantly claimed range. However, Bauer teaches in the general disclosure that MDI prepolymers having an isocyanate content in the range of 20 to 35 weight precent are also suitable used as the isocyanate component (5th page of the machine translation). 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 an MDI prepolymer having an isocyanate content in the range of 20 to 35 weight precent for the LUPRANAT® T80 A isocyanate used in Example 1 of Bauer. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06). Bauer teaches both MDI prepolymers having an isocyanate content in the range of 20 to 35 weight and TDI isocyanates are suitably used as isocyanates, thus providing obviousness of substituting one for the other in the disclosed reactive foam formulations.
Allowable Subject Matter
Claims 14 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or suggest a reactive foam formulation comprising all of the instantly claimed ingredients in the instantly claimed amounts.
Example 1 of WO 2007/144272 to Bauer et al. corresponds to the closest prior art for both Claims 14 and 17. However, with specific respect to Claim 14, Bauer’s reactive formulation differs from the instantly claimed reactive formulation in that the isocyanate-reactive compound having a molecular weight of greater than 500 g/mol is a polypropylene glycol polyol, i.e. it comprises a polyether backbone that is 0 weight percent based on a butylene oxide polyol. On the other hand, instant Claim 14 requires the isocyanate-reactive compound having a molecular weight of greater than 500 g/mol be based upon a polyether backbone that is at least 50 weight percent based on a butylene oxide polyol. With specific respect to Claim 17, Bauer’s reactive formulation differs from the instantly claimed reactive formulation in that the low molecular weight urethane foam compounds are a monool and Polyol 4 (Table 1). Polyol 4 is described as a trifunctional polyol, i.e. a polyol having a functionality of 3, and is reported to have a hydroxyl value of 150 mgKOH/g (last page of machine translation). Neither the monool nor Polyol 4 correspond to any of the instantly claimed compounds set forth.
Additionally, there is no teaching in the general disclosure of Bauer or in another prior art reference which would guide a person of ordinary skill in the art to substitute the compounds originally used in Example 1 of Bauer with the instantly claimed polyether having a backbone based on at least 50 weight percent of a butylene oxide polyol or with one of low molecular weight urethane foam compounds set forth in instant Claim 17.
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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