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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 9 has been amended to recite the limitations of previously presented claim 10.
No new prior art is presented over previously rejected claims. For this reason, it is proper to make the present action FINAL.
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 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Motta et al. (US 2013/0331473) and further in view of Gama et al., “Sound absorption properties of polyurethane foams derived from crude glycerol and liquefied coffee grounds polyol,” Polymer Testing, 62 (2017) 13-22. Gama et al., “Sound absorption properties of polyurethane foams derived from crude glycerol and liquefied coffee grounds polyol,” Polymer Testing, 62 (2017) 13-22 was provided by Applicants with the IDS from 8/29/2023.
Motta et al. teach a polyurethane foam formed from a composition comprising one or more polyols (¶49). The examples include 100 parts by weight of a first polyol and a second polyol. See Table 1 and entire reference. The composition further comprises a catalyst, including a mixture of catalysts for gelling and blowing (¶50, ¶54 and ¶57), present in amount of from, preferably, 2.0 to 4.0 parts by weight per 100 parts by weight of the polyol component. See ¶63. This meets instant claim 9 and falls within the range of instant claim 12. The composition further comprises 5 parts by weight water as blowing agent which falls within the range of instant claim 12. See Table 1. The composition further comprises an isocyanate (abstract, ¶6 and Table 1); a surfactant (¶70); from about 1 to about 25 parts by weight of a chain extender per 100 parts by weight polyol (¶76); from about 0.1 to about 1 parts by weight crosslinking agent per 100 parts by weight polyol (¶74); and cell openers (¶73). The amount of surfactant used in Examples of Motta falls within the range of instant claim 12 (see Table 1, which uses 1.2 parts by weight surfactant per 100 parts by weight polyol). The amount of isocyanate used in the Examples of Motta et al. meets the amount recited in instant claim 11. See Table 1.
The amount of chain extender disclosed in Motta overlaps the amount of chain extender of instant claim 12. 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). It would have been obvious to one of ordinary skill in the art, based on the teachings of Motta et al., to use an amount of chain extender which meets the instant claim limitations of instant claim 12 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Motta et al. does not expressly recite that the polyurethane compositions disclosed therein comprise a bio-polyol produced by mixing coffee grounds with a polyol solvent mixture, the polyol solvent mixture comprising a polyol, glycerol, and an acid.
However, Gama et al. teach a polyurethane foam produced using a polyol, the polyol produced from glycerol and liquified coffee grounds polyol. The coffee grounds polyol was produced by combining coffee grounds with a solvent comprising polyethylene glycol (a polyol), glycerol and 3.3wt% sulfuric acid. See page 14, column 2, first full paragraph under “2.2 Production of coffee grounds derived polyol.” The polyol of Gama produced from glycerol, PEG, sulfuric acid, and coffee grounds meets the bio-polyol of instant claim 1 which is used as one of three polyols to produce the resin of instant claim 9. The amount of bio-polyol used in the compositions of Gama meets the amount of instant claim 10.
Both Motta and Gama relate to the field of polyurethane resin compositions, which are used for, for example, thermal insulation (see ¶2, second sentence of Motta et al. and page 21, last sentence of the paragraph under “4. Conclusion” of Gama et al.). It would have been obvious to one of ordinary before the effective filing date of the instant invention to use the bio-polyol of Gama in the amount disclosed in Gama in the invention of Motta in order to provide an eco-friendly polyol and eco-friendly foam. Using waste coffee grounds to produce a polyol used in polyurethane foams, as disclosed in Gama, reduces the use of polyols derived from petrochemicals which are detrimental to the environment, while providing foams which retain good thermal insulation and thermal stability well beyond ambient temperatures. See page 21, “4. Conclusion” of Gama. Additionally, using the coffee-ground polyol of Gama is solving the same problem as applicants discussed at ¶5 of the instant specification, i.e use of coffee-based polyols made from coffee grounds to produce ecofriendly polyols and polyurethanes to replace petroleum-based polyols. See page 13, first paragraph under “1. Introduction” of Gama et al.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Motta et al. (US 2013/0331473), and further in view of Gama et al., “Sound absorption properties of polyurethane foams derived from crude glycerol and liquefied coffee grounds polyol,” Polymer Testing, 62 (2017) 13-22, as evidenced by the data sheet for Tegostab B8681.
Motta et al. in view of Gama et al. is as discussed in this rejection above, the discussion of which is incorporated herein by reference. The Examples of Motta et al. use Tegostab B8681 in an amount of 1.2 parts by weight per 100 parts by weight of polyol. This amount falls within the amount of cell opener of instant claim 12. Tegostab B8681 is a cell opener, as evidence by the attached data sheet for Tegostab B8681.
Response to Arguments
Applicant's arguments filed 8/20/2026 have been fully considered but they are not persuasive.
Applicant argues that “Applicant’s claimed invention is directed to a polyurethane resin composition that has been prepared via a simplified process of extracting polyols, which can save both time and cost,” as argued on page 6, lines 2-4 of the Remarks filed on 8/20/2026. Applicant asserts that the Applicants have “invented a way to directly mix coffee by-products…without requiring additional phase separation process…”
This is not persuasive. The claims do not recite a “simplified process,” nor do they exclude any additional phase separation. The claims merely recite mixing coffee by-products including coffee grounds with a polyol solvent mixture, wherein the polyol solvent mixture comprises a polyol, glycerol, and an acid. This has nothing to do with the presence or absence of phase separation, especially given the “comprising” language, which, as indicated in MPEP 2111.03, I, “is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004).”
Applicant argues that “in contrast to what is disclosed in Gama, Applicants do not use polyethylene glycol (PEG) to extract a bio-polyol from waste coffee grounds,” as state don page 6, second full paragraph of the Remarks filed on 8/20/2026, alleging that only the Comparative Examples employ PEG.
This is not persuasive.
Polyethylene glycol, is a polyol, and meets the polyol recited in claim 9 (which depends from claim 1). The polyethylene glycol polyol of Gama, is used together with glycerol and an acid, as also required by instant claim 9 which depends from instant claim 1. Thus, each of the instantly claimed features is present in the applied prior art, as discussed in the rejection above. Polyethylene glycol is not excluded from the instant claims and as it is a polyol, it meets the limitation of “polyol” recited in the instant claims.
Applicant argues that “Applicants found that the extraction process is inferior when PEG is used,” as argued on page 6, last paragraph of the Remarks filed on 8/20/2026.
This is not persuasive.
No such limitation is present in the claims. The claims do not exclude PEG, especially given that (1) PEG is a polyol and meets the polyol of the instant claims, and (2) the claims use “comprising,” which again, as indicated in MPEP 2111.03, I, “is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004).”
The claims are to a composition, and not a method, the composition of which does not exclude polyethylene glycol as a solvent or as a polyol. The claims also do not exclude phase separation. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The features which Applicant argues in the Remarks of 8/20/2026, namely PEG and phase separation, are not recited in the instant claims nor are they excluded from the instant claims. On the contrary, each of the instantly claimed components is present in the applied prior art as discussed in the rejection above and thus, the claims are obvious over the cited prior art.
Whether or not the Comparative Examples produce “inferior results,” this does not negate (1) the fact that the instantly claimed components do not exclude PEG as they claims use “comprising” and PEG is a polyol and (2) the fact that each of the instantly claimed components is present in the prior art, including a polyol derived from coffee-grounds wherein the coffee grounds are mixed with a solvent comprising a polyol, glycerol, and acid.
Applicant argues that Gama does not disclose the amount of bio-polyol recited in instant claim 9.
This is not persuasive. The amount of bio-polyol used in the invention of Gama falls within the amount recited in instant claim 9 and using the amount of bio-polyol disclosed in Gama in the invention of Motta, using the motivation of providing an eco-friendly polyol and eco-friendly foam (because using waste coffee grounds to produce a polyol used in polyurethane foams, as disclosed in Gama, reduces the use of polyols derived from petrochemicals which are detrimental to the environment, while providing foams which retain good thermal insulation and thermal stability well beyond ambient temperatures. See page 21, “4. Conclusion” of Gama), results in an amount of bio-polyol which meets the amount recited in amended instant claim 9. See Table 1 on page 15 of Gama where 25, 50, and 75 parts by weight coffee-derived polyol are used, per 100 parts by weight total polyol. Using this amount in Motta, for the reasons provided above, results in an amount of bio-polyol (derived from coffee grounds) which meets instant claim 9. Additionally, using the coffee-ground polyol of Gama is solving the same problem as applicants discussed at ¶5 of the instant specification, i.e use of coffee-based polyols made from coffee grounds to produce ecofriendly polyols and polyurethanes to replace petroleum-based polyols. See page 13, first paragraph under “1. Introduction” of Gama et al.
For the reasons provided above, particularly that the instantly claimed invention does not exclude PEG regardless of whether the comparative examples of the instant specification include PEG, and that Gama teaches an amount of bio-polyol which meets the amount of instant claim 9, Applicant’s arguments filed on 8/20/2026 are not persuasive.
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.
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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