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 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0017679 to Glos et al. (hereinafter Glos).
Regarding Claim 1. Glos teaches a polyol/isocyanate-reactive composition for preparing a foam comprising a polyol; and polyalkylsiloxanes ([0127] and Table 1).
The polyol component may comprise both polyether and polyester polyols [0098]. The polyether polyols may be prepared by polymerization of alkylene oxides onto a starter molecule having preferably 2 to 8 hydroxyl groups. The preferred alkylene oxides used are ethylene oxide and propylene oxide [0099]. The obtained polyols have molecular weights in the range of 500 to 15,000 g/mol [0099]. The disclosed polyether polyols thus correspond to a polyether alcohol of general formula HO-Y-R3-(-[Y]j-H)I in which each Y is independently an oxyalkylene segment, specifically an oxyethylene segment of general formula (C-nH2nO)m in which n is 2 or an oxyethylene segment of general formula (C-nH2nO)m in which n is 3; i is 1 to 7, as it is based upon the number of hydroxy groups in the starter molecule; and j is 0 to 1. m would further be expected to fall within the instantly claimed range of from 1 to 50 such that a molecular weight for the polyether polyol in the range of 500 to 15,000 g/mol is provided. Said polyether polyols then correspond to instantly claimed polyether alcohol compound (C) which are different from the aforementioned polyester polyols, which correspond to instantly claimed polyol (A).
The polyalkylsiloxanes preferably conform to the following formula (1):
Ma-DbTcQ-d
wherein M corresponds to R11R12R13SiO1/2; D corresponds to R14R15SiO2/2-; T corresponds to R16SiO3/2-; Q corresponds to SiO4/2-; R11 – R16 correspond to identical or different C1-12 hydrocarbon radicals or H; a is 2 to 6; b is 0 to 8; c is 0 to 4; and d is 0 to 2 [0028] – [0029]. When expressed as a mole fraction with a sum total of 1, values a – d in Glos can be alternatively calculated to correspond to roughly 0.1≤a≤1; 0≤b≤0.8; 0≤c≤0.67; and 0≤d≤0.5.
The polyalkylsiloxanes of formula (1) of Glos thus correspond to a polysiloxane of the instantly claimed formula in which 0.1≤a≤1; 0≤b≤0.8; b’ is 0; 0≤c≤0.67; c’ is 0; 0≤d≤0.5; the ratio of a:d is therefore at least 1; each R1 is independently selected from C1-12 hydrocarbyl radicals or H; and each R2 corresponds to R1, i.e. a C1-12 hydrocarbyl radical or H. As R2 does not correspond to a polyether moiety of a general formula -Y-R3-([Y]j-Z)i-, Y, R3, j, Z, I, are absent are absent in this embodiment. Additionally, the proviso regarding X being a polyether moiety of the claimed general formula in an amount of 1 to 90 mol% of each R2 of formula -OX does not further limit embodiments in which R2 corresponds to R1. Further, as b’ and c’ are each zero, R’ is also absent.
The Office recognizes that the mole fractions of 0≤b≤0.8; 0≤c≤0.67; and 0≤d≤0.5 and the molar ratio of a:d of at least 1 are not identical to the claimed ranges of 0≤b≤0.2; 0<c<0.2; and 0<d<0.7 and molar ratio of a:d of 0.7 to 1.2. However, they do 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)
Regarding Claim 2. Glos teaches a composition for preparing a foam, said composition comprising the isocyanate-reactive composition of Claim 1; a polyisocyanate; an amine and/or metal catalyst; and water, optionally in conjunction an additional blowing agent ([0109]; [0127] and Table 1). The polyols and polyisocyanate react in the presence of said catalysts and blowing agent(s) [0090] – [0095].
Regarding Claim 3. Glos teaches the composition for preparing a foam of Claim 2 may further comprise a surfactant [0125]. While Glos does not expressly teach an aminosilicon compound is further provided, this component is set forth as optional in instant Claim 3 and is therefore not required to be present in the instantly claimed composition for preparing a foam.
Regarding Claim 4. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (i) the polyalkylsiloxanes of formula (1) of Glos correspond to a polysiloxane of the instantly claimed formula in which 0.1≤a≤1, as detailed in the rejection of Claim 1 above. The Office recognizes that this mole fraction is not identical to the instantly claimed range of 0.3 to 0.6. However, 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)
Regarding Claim 5. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (iii) each moiety corresponding to instantly claimed R1 in the polyalkylsiloxanes of formula (1) of Glos is independently selected from C1-12 hydrocarbyl radicals or H, as detailed in the rejection of Claim 1 above.
Regarding Claim 6. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (i) the polyether alcohol of Glos corresponds to a polyether alcohol of the instantly claimed formula in which i is from 1 to 7, as detailed in the rejection of Claim 1 above.
Regarding Claim 7. Glos teaches the isocyanate-reactive composition of Claim 1 wherein the polyether alcohol of Glos is prepared from alkoxylation with alkylene oxides of a starter molecule, which may be a di-, tri-, or tetra-hydric alcohol [0099]. Di-, tri-, and tetrahydric alcohols correspond to alcohol compounds having respectively two, three, and four hydroxyl groups [0099].
Regarding Claim 8. Glos teaches the isocyanate-reactive composition of Claim 1 wherein (ii) the polyether alcohol of Glos has a molecular weight of from 500 to 15,000 g/mol [0098] – [0099].
Regarding Claim 9. Glos teaches the isocyanate-reactive composition of Claim 1 but is silent regarding (iii) the viscosity thereof. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Glos 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 isocyanate-reactive composition having a viscosity in the instantly claimed range, 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 10. Glos teaches the isocyanate-reactive composition of Claim 1 may comprise a tin catalyst. However, Glos teaches iron, bismuth, and zinc catalysts are suitable alternatives thereto [0114]. Thus, embodiments in which no tin catalyst is provided and therefore (i) the isocyanate-reactive composition is free of tin are readily envisioned from the reference disclosure.
Regarding Claim 11. Glos teaches the isocyanate-reactive composition of Claim 1 wherein the polyol component may comprise both polyether and polyester polyols [0098], i.e. polyol (A) comprises a polyester polyol.
Regarding Claim 12. Glos teaches the composition for preparing a foam of Claim 2 wherein component (D) may comprises polyphenylpolymethylene polyisocyanate [0111], i.e. a polymeric MDI.
Regarding Claim 13. Glos teaches a foam comprising the reaction product of the composition for preparing a foam of Claim 2 ([0090] – [0095]; [0109]; [0127]; and Table 1).
Regarding Claim 14. Glos teaches the foam of Claim 13 having a density of especially preferably 30 to 150 kg/m3 [0122].
Regarding Claim 15. Glos teaches the foam of Claim 13 is suitably used in insulation panels [0021].
Regarding Claim 16. Glos teaches a method of preparing a foam comprising mixing and curing the composition of Claim 2 to provide a foam ([0090] – [0095]; [0109]; [0126] – [0127]; and Table 1).
Response to Arguments
Applicant's arguments filed May 6, 2026 have been fully considered. The Office responds as follows:
A) The Office agrees that the amendments to the claims overcome the outstanding claim objections and rejections under 35 U.S.C. 112(b). Accordingly, all outstanding claim objections and rejections under 35 U.S.C. 112(b) have been withdrawn.
B) With respect to the outstanding rejection of the claims under 35 U.S.C. 103 over US 2022/0017679 to Glos et al. (hereinafter Glos), applicant argues that the reference does not teach a polysiloxane comprising the claimed polyether moiety. However, the instant claims as amended still encompass embodiments in which the polysiloxane does not comprise the claimed polyether moiety. Claim 1 sets forth “each R2 is independently selected from R1 and -OX, where each X is a polyether moiety having the general formula -Y-R3(-[Y]j-Z)i in an amount of from 1 to 90 mol% of each R2 of formula -OX” [emphasis added]. Thus, R2 is still not required to correspond to a polyether moiety and the proviso added to Claim 1 only limits embodiments of the claims in which R2 is -OX. Glos is then still suitably applied to teach embodiments of the claims in which the moiety corresponding to R2 is instantly claimed R1, wherein R1 is a C1-30 hydrocarbyl group.
C) Applicant’s arguments with respect to the polyether-modified siloxanes of Formula 5 not corresponding to the polysiloxane of the instant claims is not persuasive, as the rejection in view of Glos does not rely upon this portion of the reference disclosure to teach the instantly claimed polysiloxanes.
D) In response to applicant’s argument that Glos does not teach the polyether alcohols of the instantly claimed structure HO-Y-R3-(-[Y]j-H)i, Glos expressly teaches polyether polyols may be prepared by polymerization of alkylene oxides onto a starter molecule having preferably 2 to 8 hydroxyl groups. The preferred alkylene oxides used are ethylene oxide and propylene oxide [0099]. The obtained polyols have molecular weights in the range of 500 to 15,000 g/mol [0099]. The disclosed polyether polyols thus correspond to a polyether alcohol of general formula HO-Y-R3-(-[Y]j-H)I in which each Y is independently an oxyalkylene segment, specifically an oxyethylene segment of general formula (C-nH2nO)m in which n is 2 or an oxyethylene segment of general formula (C-nH2nO)m in which n is 3; i is 1 to 7, as it is based upon the number of hydroxy groups in the starter molecule; and j is 0 to 1. m would further be expected to fall within the instantly claimed range of from 1 to 50 such that a molecular weight for the polyether polyol in the range of 500 to 15,000 g/mol is provided.
E) Applicant additionally argues that a person of ordinary skill in the art would not arrive at the claimed M:Q ratio and molar fraction of Q units. Applicant notes that the only feasible integer combination would be two M units and two Q units, with no D or T units. However, the Office respectfully submits that Glos does not require integer values be selected from a – d in its formula MaDbTcQd, as evidenced by [0030] – [0032] in which the sum of c+d is set forth to be <0.5 or <0.1 and c itself is set forth to be >0.5.
F) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the instant case, Glos implicitly teaches mole fractions b, c, and d and a molar ratio of a:d which overlap with the instantly claimed ranges. 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)
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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