DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant's election with traverse of Group I, Claim 15 in the reply filed on March 9, 2026 is acknowledged. The traversal is on the ground(s) that refrigerator of Group III recites urethane of Group I. This is not found persuasive because the inventions of Group I and Group III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product, i.e. a urethane having cells, i.e. a polyurethane foam, is deemed to be useful as construction panel, seat cushion, ceiling materials or cosmetic products (as in col. 1, lines 24-32, 65-67 of US 10,676,583), the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 9, 2026.
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.
3. Claims 15-20 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.
4. Claim 15, 17 refer multiple times to “closed cells” and “open cells”, but do not have prepositions “the” or “said” in front of those; therefore, it is not clear if said terms are the same or different from those previously cited.
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.
5. Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (US 2017/0166682) in view of Volkert et al (US 5,187,206).
6. Choi et al discloses a refrigerator comprising:
1) an inner case 111 constituting the storage compartments;
2) an outer case 112 and
3) a thermal insulation 250 filled between the inner case and the outer case ([0050], Figure 3, as also presented below),
Wherein the thermal insulation is formed from urethane, specifically polyurethane foam ([0007], [0009]).
7. Choi et al further explicitly teaches that the hard polyurethane foam provides the refrigerators with thermal insulation property; particularly hard polyurethane foam used for refrigerators is formed of closed cells and low thermal conductivity and low density of a foaming gas filled in the cells ([0006], [0092]).
The blowing agent used to make the foam includes cyclopentane ([0082], [0100]).
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Figure 3
8. It is noted that the structure of the refrigerator shown in Figure 3 of Choi et al is substantially the same as the structure of refrigerator claimed in instant invention as shown in Fig. 2 of instant specification.
9. As to instant claim 16, the exemplified polyurethane foam is having thermal conductivity of 19.51-19.63 mW/m.K (Table 1, Examples 1-3).
10. As to instant claim 19, the polyurethane foam is having density of 25-45 kg/m3 ([0020]).
11. Since Choi et al recites the closed cells being filled with gas, and the blowing agent used for making the foam includes cyclopentane, therefore, the closed cells will intrinsically and necessarily comprise, at least in a minor amount, cyclopentane as the gas filled in those closed cells as well (as to instant claims 15 and 18). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
12. Though Choi et al discloses the heat insulation polyurethane foam having closed cell structure, Choi et al does not explicitly recite the amount of the closed cells in said foam and other claimed properties of the foam.
13. However, Volkert et al discloses a rigid polyurethane foam having density of 0.025-0.24 g/cc, specifically cited as being used as insulation material of refrigeration, as intermediate layers for foam-filling refrigerator (col. 17, lines 47-62), wherein the specifically exemplified foam is having:
Pore diameter of 163 micron (as to instant claim 15);
Density of 35.8 g/L (as to instant claim 19);
The proportion of closed cells of 93% (as to instant claim 17) and
Thermal conductivity of 18.8 mW/mK (as to instant claim 16, col. 19, lines 36-40).
14. Since both Volkert et al and Choi et al are related to rigid polyurethane closed cell foams having low density and low thermal conductivity, used as insulating material in refrigerators, and thereby belong to the same field of endeavor, wherein Volkert et al discloses such foam having density and thermal conductivity as required by Choi et al , but further having pore diameter of 163 micron, proportion of closed cells of 93% and thermal conductivity of 18.8 mW/mK, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Choi et al and Volkert et al, and use, or obvious to try to use the rigid polyurethane foam of Volkert et al as the rigid polyurethane foam insulating material 250 in the refrigerator of Choi et al, since it would have been obvious to choose material based on its suitability, especially since Volkert et al explicitly teaches the use of said foam as foam insulation in refrigerators.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. Since the polyurethane foam of Choi et al in view of Volkert et al comprises as high as 93% of closed cells, i.e. more than 90% as claimed in instant claim 17, therefore, said foam will intrinsically and necessarily have about 7% of open cells (as to instant claim 17). Given the foam of Choi et al in view of Volkert et al comprises both closed cells and open cells, therefore, at least minor amount, or at least some of said open cells will intrinsically and necessarily be connected to outside air, and walls of the closed cells will intrinsically and necessarily be disposed between at least one of the closed cells and at least one of the open cells, and will at least partially connect said closed cells as well (as to instant claim 15). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
16. The ranges in the polyurethane foam of Choi et al in view of Volkert et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
17. Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (US 2017/0166682) in view of Volkert et al (US 5,187,206) and Perman et al (US 5,670,102).
18. The discussion with respect to Choi et al (US 2017/0166682) in view of Volkert et al (US 5,187,206) set forth in paragraphs 5-16 above, is incorporated here by reference.
19. Choi et al in view of Volkert et al do not recite the thickness of cell walls.
20. However, Perman et al discloses foamed articles, including polyurethane foams (col. 6, lines 25-27) comprising uniform predominately closed cells, but further open cells (col. 5, lines 35-37), having density of greater than 0.03 g/cc, cell sizes of 80-300 micron (col. 3, lines 5-7), with cell wall thicknesses of greater than 0.1 micron to less than 2 micron (Abstract, col. 2, lines 56-63).
21. Since Perman et al discloses polyurethane foams comprising uniform predominately closed cells, but further open cells, having density of greater than 0.03 g/cc and cell sizes of 80-300 micron, as required by Choi et al in view of Volkert et al, further having cell wall thicknesses of greater than 0.1 micron to less than 2 micron, and further Perman et al teaches that structure of the cells and density of the foam depend on the temperature of foaming, level of pressure drop and molecular weight of the starting polymer (col. 10, lines 8-15, 50-58; col. 11, lines 55-63), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Perman et al and Choi et al in view of Volkert et al, and to form, or obvious to try to form the polyurethane foam of Choi et al in view of Volkert et al according to the teachings of Perman et al, so to produce the polyurethane foam having a desired density, cell size and further cell wall thickness within the range of more than 0.1 micron to less than 2 micron, e.g. 0.35-0.5 micron as well, or alternatively, it would have been obvious to a one of ordinary skill in the art to include, or obvious to try to include at least partially and in a minor amount the closed cell polyurethane foam having density 0f 0.03 g/cc and cell wall thickness of 0.1-2 micron of Perman et al as the polyurethane foam of the insulation 250 in the refrigerator of Choi et al in view of Volkert et al, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
22. Claims 15-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 14-15 of a copending application 18/640,475 in view of Volkert et al (US 5,187,206) and Perman et al (US 5,670,102). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
23. The application 18/640,475 claims a refrigerator having enhanced insulation performance comprising:
a cabinet arranged on an outermost side of the refrigerator;
a cavity formed on an inner wall of the refrigerator; and
urethane arranged between the cabinet and the cavity, wherein thermal conductivity λurethane of the urethane is 17 to 18.5 mW/m·K and
wherein the urethane comprises:
a plurality of closed cells that contain internal gas generated from foaming;
a plurality of open cells linked to outside air; and
cell walls arranged between a closed cell among the plurality of closed cells and an open cell among the plurality of open cells or between the plurality of closed cells to connect the closed cell to the open cell or connect between the plurality of closed cells.
24. Though the application 18/640,475 does not explicitly claims the properties of the urethane,
1) Volkert et al discloses a rigid polyurethane foam having density of 0.025-0.24 g/cc, specifically cited as being used as insulation material of refrigerator, as intermediate layers for foam-filling refrigerator (col. 17, lines 47-62), wherein the specifically exemplified foam is having:
Pore diameter of 163 micron (as to instant claim 15);
Density of 35.8 g/L (as to instant claim 19);
The proportion of closed cells of 93% (as to instant claim 17; col. 19, lines 36-40).
2) Perman et al discloses foamed articles, including polyurethane foams (col. 6, lines 25-27) comprising uniform predominately closed cells, but further open cells (col. 5, lines 35-37), having density of greater than 0.03 g/cc, cell sizes of 80-300 micron (col. 3, lines 5-7), with cell wall thicknesses of greater than 0.1 micron to less than 2 micron (Abstract, col. 2, lines 56-63).
25. Since both Volkert et al and the application 18/640,475 are related to polyurethane foams having low thermal conductivity, used as insulating material in refrigerators, and thereby belong to the same field of endeavor, wherein Volkert et al discloses such foam having thermal conductivity as required by the application 18/640,475, but further having density of 35.8 g/L, pore diameter of 163 micron, proportion of closed cells of 93%, and Perman et al discloses polyurethane foams comprising uniform predominately closed cells, but further open cells, having density of greater than 0.03 g/cc and cell sizes of 80-300 micron, and cell wall thickness of greater than 0.1 micron to less than 2 micron, and further Perman et al teaches that structure of the cells and density depend on the temperature of foaming, level of pressure drop and molecular weight of the starting polymer (col. 10, lines 8-15, 50-58; col. 11, lines 55-63),
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Volkert et al, Perman et al and the application 18/640,475, and use, or obvious to try to use, at least partially the rigid polyurethane foam of Volkert et al as the polyurethane foam insulating material in the refrigerator of the application 18/640,475, since it would have been obvious to choose material based on its suitability, and further
to form the polyurethane foam of the application 18/640,475 according to the teachings of Perman et al, so to produce the polyurethane foam having a desired density, cell size and further cell wall thickness within the range of more than 0.1 micron to less than 2 micron, e.g. 0.35-0.5 micron as well, thereby arriving at the present invention.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
26. Claims 15-20 are directed to an invention not patentably distinct from claims 14-15 of a copending application 18/640,475 in view of Volkert et al (US 5,187,206) and Perman et al (US 5,670,102).
Specifically, see the discussion in paragraphs 22-25 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The application 18/640,475, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
27. Claims 15-20 are rejected under 35 U.S.C. 103(a) as being obvious over US 2024/0263062 (application 18/640,475) in view of Volkert et al (US 5,187,206) and Perman et al (US 5,670,102).
Specifically, see the discussion set forth in paragraphs 22-25 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764