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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/8/2026 has been entered.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Na et al. (KR 2018-0009272) and further in view of Juhas (US 3,775,350). The discussion in paragraphs 11-19 of the Non-Final rejection mailed on 12/19/2025 is incorporated herein by reference.
The foaming agent is present in an amount of from 1 to 5 parts by weight per 100 parts by weight of polyol component (page 4, 4th full paragraph of the attached translation). Examples of polyols have three hydroxyl groups (page 4, second full paragraph of the attached translation). The second reactant, which includes the polyol and foaming agent, further includes a curing catalyst and a crosslinking agent (see page 4, 5th full paragraph of the attached translation). An expressly named example of catalyst is dimethyl cyclohexylamine (see the paragraph bridging pages 4-5 of the attached translation). The crosslinking agent is present in an amount of from 0.1 to 5 parts by weight per 100 parts by weight of the polyol component (page 5, second full paragraph of the attached translation). This overlaps the amount of crosslinking agent recited in instant claim 7. The blowing agent is present in an amount of from 1 to 5 parts by weight per 100 parts by weight of the polyol component (see page 4, 4th full paragraph of the attached translation). This falls within the amount of instant claim 7. Additionally, Na et al. teaches that the amount of blowing agent adjusts the density of the foam. Based on this teaching, and given that the amount of blowing agent in the polyurethane composition of Na et al. falls within the range of instant claim 7, the foams of Na et al. will necessarily have the same properties as the instantly claimed foam, including the same density, elongation, and the property recited in instant claim 5. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates contrary. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Na et al. (KR 2018-0009272) in view of Juhas (US 3,775,350) and further in view of JP 2006-017983. The discussion in paragraphs 20-23 of the Non-Final rejection mailed on 12/19/2025 is incorporated herein by reference.
Response to Arguments
Applicant's arguments filed 7/8/2026 have been fully considered but they are not persuasive.
As an initial matter, the Final Rejection mailed on 4/8/2026 requested that the Applicants explain the data and Tables of the instant specification. Particularly, the Final Rejection raise the questions: What specific materials are being used to produce the sound-absorbing materials of Table 4? What specific materials are being reacted to form any of the Examples in the Tables? How is the specific density being achieved? None of these questions are answered by the data or the Remarks of 7/8/2026.
The following questions were raised in the Final Rejection mailed on 4/8/2026: What specific polyol is reacted with what specific isocyanate? What blowing agent is used? In what amounts? The examples do not even state that the sound absorbing material is polyurethane.
With regards to Table 3 of the instant specification, why does the sound absorbing material (again, which is never even designated as polyurethane foam, let alone designating what amounts of what materials are being used to produce the examples) at 26 kg/m3 have an elongation of 110% and a tensile strength of 0.12 MPa, while the Examples in Table 1 at the same density (Examples 2 and 8, both 26 kg/m3) have elongations of 195% and 195%, and tensile strengths of 0.11 MPa and 0.13 MPa, for Examples 2 and 8, respectively? What caused the change? If the same materials are being used for those examples, how are the different properties being achieved?
Applicants have not answered any of the questions raised in the Final Rejection mailed on 4/8/2026 and repeated above. It is respectfully requested that Applicant answer the questions above.
Furthermore, it not clear how one of ordinary skill can establish that the claimed properties are not necessarily present in the prior art, with examples from the instant specification that do not indicate what is being made to use the sound absorbing material of said examples. It is again noted that the instant specification does not even indicate that the sound-absorbing material in the examples is polyurethane, let alone what materials are being used to make the sound-absorbing materials. Applicants cannot point to examples and state “the same density does not equate to the same elongation and tensile strength,” when there is absolutely nothing to support the contention that the examples are made using identical materials. The rejection is not based solely on Na having the same density. The rejection is based on the fact that Na discloses using identical materials as recited in the instant claims and has the same density required by the instant claims. The Examples cited to by Applicants are missing that first facet: are those examples having the same density, made from identical materials?
The rejection establishes that the prior art teaches the same amounts of the same components, to produce an identical product (polyurethane foam) and that the blowing agent determines the final density of the foam, meaning that since the same amount of blowing agent is used, the density of the disclosed prior art foams will meet the instantly claimed density. Applicants have provided no evidence which demonstrates the contrary.
The rejection establishes that the foams of Na (produced using identical amounts of the same components) have the same density and are used to produce the same type of product (sound-proofing materials and tires). Applicants have provided no evidence which demonstrates the contrary. The burden is shifted to Applicants to provide factually supported objective evidence showing that the claimed tensile strength and elongation are not present, and no such evidence has been provided by Applicants. As stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Stating that a property is not present, is not evidence that a property is not present. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The data cited to by Applicants, is not evidence that the foams of Na do not necessarily have the instantly claimed tensile strength and claimed elongation, because there is nothing suggesting that the sound-absorbing materials of the data of the instant specification which have the same density but different tensile strengths and different elongations, are made from identical materials, or that those examples in any way relate to the foams of Na. The data of the instant specification contains no information on what materials are used for any of the examples. These questions were raised in the Final Rejection and have not been addressed, let alone answered, by Applicants. There is nothing to suggest that the examples having the same density are made using the same materials, or that those examples comprise the same components as disclosed in Na.
Applicant has provided no persuasive, factually supported, objective evidence in support of the argument that the foams of Na do not necessarily have the properties of the instantly claimed foam. There is nothing linking the foams of the instant specification, which do not contain any data as to what is used to make those foams, with the foams of Na. Those foams having the same density (25 kg/m3), could be made from polystyrene and polyurethane, which are compared to one another. There is nothing demonstrating the contrary. What is in those foams? Why are their properties different?
For the reasons provided above, Applicant’s arguments filed on 7/8/2026 are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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