DETAILED ACTION
Claim Rejections - 35 USC § 102
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 1-6, 8-9, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al. (US 2006/0134398).
Nakamura et al. teach a polyurethane foam produced from a composition comprising a polyisocyanate and two kinds of polyols and a blowing agent (abstract). The foams also including surfactants, catalysts, and crosslinking agents (¶57 and ¶64), as well as components which are the same as the cell opener described in the instant specification and will therefore perform the function of cell opener in instant claim 2 (see ¶39 of the instant specification and ¶59 of Nakamura et al.). With regards to instant claim 4, examples of polyols including polytetramethylene glycol and polycaprolactone (¶60), as well as polyethylene glycol (¶63). These also meet instant claim 5.
Nakamura et al. teach an example in which the polyol component includes polyol component A comprising 45 pbw polyether polyol having an OH value of 35 mgKOH/g and 45 pbw polyether polyol having an OH value of 45 mgKOH/g (¶72). In polyol component A the ratio of polyol component A:polyisocyanate A is 100:43, which results in the amount of each polyol (45 pbw) in 143 parts total composition, being about 31wt%, which meets the range of claim 3. See ¶67-68 for blowing agents. Because the polyether polyol OH value of 35 mgKOH/g and the polyether polyol OH value of 45 mgKOH/g have different OH values (35 mg KOH/g vs 45 mg KOH/g), the polyols have different compositions and will necessarily have different melting points.
With regards to instant claim, “for a vehicle seat” is an intended use of the foam of instant claim 6. Instant claims 8-9 recite properties of the foam of instant claim 6. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Embodiments of the foams of Nakamura comprise identical amounts of identical materials as recited in the instant claims. These embodiments are structurally the same as that of the instant claims, and will therefore have the same properties as the foams of the instant claims (including the properties of instant claims 8-9) and be able to perform the intended function of a vehicle seat.
Nakamura et al. teaches that the polyurethane foams are used in saddles (seats) of bicycles for comfort (¶4). A bicycle is a type of vehicle and Nakamura et al. teaches the use of the polyurethane foams for a saddle (seat) of a bicycle (vehicle). See ¶49.
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, 4-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. (US 2018/0057630).
Lim et al. teach a polyurethane foam formed from a composition comprising polyol, a chain extender, a crosslinking agent, a blowing agent, a catalyst, a cell opener, and a surfactant, which is mixed with an isocyanate to form a polyurethane. See ¶55, ¶75, ¶78. Examples of chain extender include polyethylene glycol, polytrimethylene glycol, and polytetramethylene glycol, and mixtures including these. See ¶58. This meets instant claims 1 (regarding different melting points) and instant claims 4-5.
Lim et al. teaches that mixtures of chain extenders, including polyethylene glycol, polytrimethylene glycol, and polytetramethylene glycol, can be used to produce the polyurethane foam composition of the disclosed invention. While Lim et al. does not expressly disclose the specific amounts to use in a mixture, it would have been obvious to one of ordinary skill in the art to use a 50/50 mixture of two chain extenders, or equal parts with two or more in a mixture of chain extenders, because when a mixture is disclosed with no specific amounts, a 1:1 ratio is the most obvious ratio of components to utilize. This meets instant claim 1.
Lim et al. teaches polyurethane foams formed from the disclosed composition. The recitation in claim 6 of “for a vehicle seat” is a future intended use of the polyurethane foam of instant claim 6. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Regarding instant claims 8-9, the compositions of Lim et al. can include identical materials as recited in instant claims 1-2 and 4-5, and the compositions of Lim are used to produce polyurethane foams. Evidence is therefore provided that the polyurethane foams of Lim, which are produced from compositions comprising identical components as recited in the instant claims, are the same as the polyurethane foams of the instant claims, and will therefore necessarily have the same properties as the foams of the instant claims, including the properties recited in instant claims 8-9. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary.
Allowable Subject Matter
Claims 7 and 10-12 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 primary reason for allowance of claims 7 and 10-12 is the recitation of a carbon nanotube coating being coated on at least a surface of a polyurethane foam.
The closest prior art is the following: (1) KR 2015-0039418; (2) KR 2012-0045775; (3) KR 2016-0108747; and (4) KR 2015-00296309A. Because KR 2015-0039418, KR 2012-0045775, KR 2015-00296309A, and KR 2016-0108747 are not in English, the translations are cited below and are attached.
KR 2015-0039418 (abstract) teaches a polyurethane composite with evenly distributed carbon nanotubes.
KR 2015-0039418 fails to teach a polyurethane foam including a carbon nanotube coating layer coated on at least one surface of the polyurethane foam. KR 2015-0039418 fails to teach a method of coating a layer containing 1 to 5wt% of carbon nanotubes on at least a surface of the polyurethane foam. The carbon nanotubes are distributed evenly throughout the foams of KR 2015-0039418.
KR 2012-0045775 teaches a thin film comprising carbon nanotube polymer composite coating film for increasing biocompatibility and controlling mechanical strength (¶1).
KR 2012-0045775 fails to teach coating a polyurethane foam with the carbon nanotube coating. The coatings of KR 2012-0045775 are used as a covering material for a bioinsertible medical device, which are not related to polyurethane foams.
KR 2016-0108747 teaches a polyurethane foam for automobile interior with electromagnetic wave blocking function and a method of production thereof (see page 1, first paragraph of the attached translation). The polyurethane foams is formed from a composition comprising an isocyanate, a foaming agent, polyester polyols, crosslinking agents, catalysts, and an electromagnetic wave blocking material. See page 3, sixth paragraph of the attached translation. An example of electromagnetic wave blocking material is carbon nanotubes. See page 4, eighth paragraph of the attached translation.
KR 2016-0108747 fails to teach coating a polyurethane foam with a carbon nanotube coating on at least one surface of the polyurethane foam. The electromagnetic wave block material is mixed with the other components of the foam and is not coated onto a surface of the polyurethane foam.
KR 2015-0029309 teaches a polyurethane foam seat for automobile insulation (see page 1, paragraph 1 of the attached translation). A carbon nanotube is added to the a polyurethane foam sheet for automobile (page 1, paragraph 1 of the attached translation). The carbon nanotubes are stirred into a composition comprising an isocyanate, a polyol, and filler.
KR 2015-0029309 fails to teach that the polyurethane foam is coated with a carbon nanotube coating. Rather, the carbon nanotubes are distributed in the polyurethane foam and not coated as a coating on to the carbon nanotube foam.
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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/K. BOYLE/Primary Examiner, Art Unit 1766
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