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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10, in the reply filed on 5/27/2026 is acknowledged. The traversal is on the grounds there is no undue search burden and that the restriction does not establish “an appropriate explanation of separate classification, or separate status in the art, or a different field of search,” on page 2 of the Remarks filed by Applicant on 5/27/2026.
This is not found persuasive.
The Restriction mailed on 3/30/2026 properly establishes that each Group is classified in a different class and subclass as follows:
Group I. Claims 1-10, drawn to a foamable composition comprising a polyol, surfactant, catalyst, blowing agent and polymeric MDI, classified in C08G 18/72.
Group II. Claims 11-14 and 18, drawn to a polyurethane foam which is foamed and cured, classified in C08G 2261/135.
Group III. Claims 15-17, drawn to a method of producing a polyurethane foam, classified in C08J 2201/026.
Group IV. Claim 19, drawn to a method of applying a polyurethane foam to a substrate, classified in B32B 2038/0076.
Group V. Claims 20, drawn to an assembly comprising a substrate and a polyurethane foam, classified in B32B 29/00.
This properly establishes separate classifications for the groups.
The rejection also discussed how each Group has a separate status in the art, by the following discussions:
Inventions I and II 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 of Group I is deemed to be useful for products other than the cured foam of Group II. For example, the foam need not be foamed or cured but can be applied as a coating which is neither foamed nor cured. Additionally, the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product of Group I can be used in a materially different process than that of Group III. For example, the product of Group I need not be cured or foamed but may be applied or sprayed as a coating which is not foamed or cured.
Inventions I and IV are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product of Group I can be used in a materially different process than that of Group IV. For example, the product of Group I need not be applied to a substrate but can be free foamed into a slabstock or foamed to produce packaging which is not applied to a substrate.
Inventions I and V 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 of Group I is deemed to be useful for products other than the assembly of Group V. For example, the composition of Group I need not be applied to a substrate but can be foamed and cured to form packaging material which is not applied to a substrate. Additionally, the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of Group II can be made by another and materially different process than that of Group III. For example, the polyurethane of Group II can be produced by combining a bowing agent with a polymeric MDI, combining a polyol with a catalyst and surfactant, and then mixing the two combinations, which is distinct from mixing the blowing agent with the polyol. Alternatively, the polyol and polyisocyanate can be reacted with the catalyst and surfactant followed by adding a blowing agent to foam the polyurethane.
Inventions II and IV are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the design of Group II is production of a polyurethane foam. The mode of operation is foaming and curing a polyurethane composition. The effect is formation of a polyurethane foam. The design of Group IV is a method of applying a foam to a substrate. The mode of operation is coating a composition onto a substrate and foaming and curing the composition on the substrate. The result is formation of a coated substrate.
Inventions II and V 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 of Group II is deemed to be useful for products other than the assembly of Group V. For example, the foam need not be applied to a substrate. The foam can be used to fill components for insulation which does not require application to a substrate or can be used as packaging which does not require application to a substrate. Additionally, the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions III and IV are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the design of Group III is production of a polyurethane foam. The mode of operation is providing a first part comprising a polyol, a catalyst, a blowing agent, and a surfactant; providing a second part comprising a polymeric MDI; combining the first and second parts; and foaming and curing to produce a polyurethane foam. The effect is formation of a polyurethane foam. The design of Group IV is a method of applying a foam to a substrate. The mode of operation is coating a composition onto a substrate and foaming and curing the composition on the substrate. The result is formation of a coated substrate. The process of Group III does not involve a substrate.
Inventions III and V are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the design of Group III is production of a polyurethane foam. The mode of operation is providing a first part comprising a polyol, a catalyst, a blowing agent, and a surfactant; providing a second part comprising a polymeric MDI; combining the first and second parts; and foaming and curing to produce a polyurethane foam. The effect is formation of a polyurethane foam. The process of Group III does not involve a substrate. The design of Group V is an assembly. The mode of operation is applying a polyurethane foam on a substrate. The result is formation of a coated substrate.
Inventions IV and V are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of Group V can be made by another and materially different process than that of Group IV. For example, the assembly of Group V can be produced by joining an already foamed polyurethane to a substrate via an adhesive, rather than applying a polyurethane composition to a substrate and then foaming and curing.
The above discussion describes, in detail, how the Groups have separate status in the art.
Finally, the Restriction mailed on 3/20/2026, properly establishes a different field of search, as it stated the following:
A search for Group I will not produce search results for Groups II, III, IV, or V. Groups II and III requires the search terms “foaming” and “curing” which are not required for Group I. Group III requires the search terms “first part” and “second part” and particularly components within each part, which are not required for Groups I, II, IV or V. A search for Group IV requires the search terms “applying” and “substrate” which are not required for Groups, I, II, III, or V. Group IV requires a search for a foamable composition and application to a substrate followed by subsequent curing, which is not required for Group V. Group V requires the search term “assembly” which is not required for Groups I, II, III, or IV. Group V requires the search term “substrate” which is not required for Groups I, II, or III. Each Group requires unique search terms which are not required for the other Groups. Additionally, each Group is classified in a different class and/or subclass as indicated above.
Therefore, Applicant’s argument that the Restriction fails to establish “an appropriate explanation of separate classification, or separate status in the art, or a different field of search,” on page 2 of the Remarks filed by Applicant on 5/27/2026, is not persuasive, given that the Restriction contains the details discussed above. It is unclear how any of the above lacks “appropriate explanation.”
Claims 11-20 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 5/27/2026, the traversal of which is not persuasive for the reasons discussed above.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 7 is 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.
Claim 7 recites “The composition of claim 1, further comprising at least one surfactant, such as a silicone-based surfactant.” The term “such as” renders the claim indefinite, because it is unclear if the limitations following “such as” limit the claim or not. It appears claim 7 intends to state “The composition of claim 1, wherein the (d) surfactant comprises a silicone-based surfactant.” Such an amendment to claim 7 will be sufficient to overcome the indefinite issue.
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 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Connor et al. (US 2009/0082481).
O’Connor et al. teach a composition for producing polyurethane (i.e. a polyurethane composition) and foams produced therefrom, making the composition a foamable polyurethane composition. The composition of O’Connor et al. comprises PMDI (polymeric methylene bid(phenyl isocyanate) (¶20), a polyol, a blowing agent, and urethane-reaction-promoting or isocyanate-reaction-promoting catalyst, and a surfactant (see ¶33). Examples of polyols are polyester polyols, polyether polyols, and mixtures thereof (¶42). This meets instant claim 3. Examples of catalyst include trimerization catalyst (see ¶25-29). This meets instant claim 4. The examples include water. This meets instant claim 6. Examples of surfactant include silicone-based surfactants. See ¶49. This meets instant claim 7. The compositions of O’Connor et al. further comprise additives with examples including fillers or dyes (¶52) or flame retardants (¶50-51). This meets instant claim 8. In Examples, Mondur 489 is used as the polymeric MDI. Mondur® 489 inherently has a viscosity which meets instant claim 1, as shown in the Inventive Examples of the instant specification and also appears to have a functionality which meets instant claim 2 as this is the polymeric MDI used in the Inventive Examples of the instant inventio. Additionally, see the rejection below including the data sheet for Mondur® 489.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Connor et al. (US 2009/0082481), as evidenced by the attached data sheet from TriiSO, Bayer Material Science, 2026 for Mondur® 489.
O’Connor teach the compositions as discussed above. An example of O’Connor et al. uses Mondur® 489. Mondur® 489 has a functionality of 2.8 which falls within the range of instant claim 2, as evidenced by the attached data sheet for Mondur® 489 from TriiSO, Bayer Material Science.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allen et al. (US 2020/0087436).
Allen et al. teach a composition comprising Mondur 489, which has a functionality and viscosity which meet instant claim 1 (see Example 3, Tables of Allen et al. and Inventive Examples of instant specification for viscosity), a polyol, water as a blowing agent, a blowing catalyst, and a silicone surfactant. See Example 3A. This meets instant claims 1-2, 4, and 6-7. The composition forms a foamable polyurethane. Specifically named examples of polyols are polyethers, polyesters, and polyether-copolyesters. This meets instant claim 3.
The composition is produced by combining the B-side components, which include the polyol, catalysts, blowing agent, and other additives, and mixing to combine these components, which corresponds to the “first part” of instant claims 9-10. The polymeric MDI is in a separate second component which corresponds to the “second part” of instant claims 9-10. The ratio of the first part to the second part Example 3A falls within the range of instant claim 10.
Examples of the additives, which are added to the “first side” of Allen et al., include colorants (which are dyes or pigments), flame retardants, plasticizers, antistatic components (¶242 of Allen et al.). This meets instant claim 8.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allen et al. (US 2020/0087436) as evidenced by the attached data sheet for Mondur® 489 from TriiSO, Bayer Material Science.
Allen teaches the composition as discussed above, the discussion of which is incorporated herein by reference. Mondur® 489 has a viscosity which meets instant claim 1, as evidenced by the attached data sheet for Mondur® 489 from TriiSO, Bayer Material Science.
Claims 1 and 3-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dedecker et al. (US 2016/0376397).
Dedecker et al. teaches a composition for producing polyurethane foams (i.e. a foamable polyurethane composition), comprising a polymeric MDI having a viscosity (in the Examples) of 650 cps at 25ºC which meets (e) of instant claim 1 (see the Table under ¶78 and Table 1); a polyether polyol which meets (a) of instant claim 1 and which meets instant claim 3 (see ¶78 and Table 1); a catalyst including a trimerization catalyst (¶59) which meets (b) of instant claim 1 and which meets instant claim 4; a blowing agent of which hydrochlorofluoroolefins and hydrofluoroolefins are expressly named preferred examples (¶47 and ¶55), which meets (c) of instant claim 1 and which meets claim 5; water which meets instant claim 6 (see Table 1); a silicone surfactant (¶64 and Table 1) which meets (d) of instant claim 1 and which meets instant claim 7. The composition further includes additives such as flame retardants which are included in the examples (see Table under ¶78 and Table 1) as well as filler s(¶61). This meets instant claim 8.
Dedecker et al. teaches that all of the additives including the blowing agent are added to the polyol blend tank. This meets the “first part” of instant claim 9. The isocyanate is in a separate tank which is combined with the polyol blend and corresponds to the “second part” of instant claim 9. See ¶79 of Dedecker et al. Again, all additives, which includes the catalysts, blowing agent, and surfactant, (as well as flame retardant and filler; see above) are added to the polyol blend part. This meets instant claim 9. The ratio of, for example, Example 1 of Dedecker et al. meets the ratio of “about 1:1.2” with regards to the polyol (including additives) to polyisocyanate. See Tables 1 and 3 of Dedecker et al.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Combs et al. (US 2017/0174821).
Combs et al. teach a foamable composition comprising a polymeric MDI (diphenyl methane diisocyanate), i.e. pMDI which corresponds to (e) of instant claim 1; a polyol which is a polyester polyol or a polyether polyol (which meets instant claim 3 and component (a) of instant claim 1; see ¶71), and a blowing agent (see ¶71) which meets (c) of instant claim 1. The composition further comprises a surfactant (¶40), which meets (d) of instant claim 1 and which meets instant claim 7. The compositions further comprise a catalyst, including trimerization catalysts, which meets (b) of instant claim 1 and which meets instant claim 4 (see ¶41). A specifically named example of blowing agent is hydrofluoroolefins (¶34, ¶73), which meets instant claim 5. Water is also included in the composition, which meets instant claim 6 (¶72). The composition further comprises flame retardants, which meet the additive of instant claim 8. See ¶74. The pMDI used in Examples 1, 7, and 9 of Combs et al. is Mondur®489, which has a viscosity and functionality which meet instant claims 1-2, as this is the pMDI used in the Inventive Examples of the instant specification. Additionally, see the rejection below evidenced by the data sheet for Mondur®489.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Combs et al. (US 2017/0174821) as evidenced by the attached data sheet for Mondur®489 from TriiSO, Bayer Material Science, 2026
Combs et al. teach a foamable composition comprising a polymeric MDI (diphenyl methane diisocyanate), i.e. pMDI which corresponds to (e) of instant claim 1; a polyol which is a polyester polyol or a polyether polyol (which meets instant claim 3 and (a) of instant claim 1; see ¶71), and a blowing agent (see ¶71), which corresponds to (c) of instant claim 1. The composition further comprises a surfactant (¶40), which meets (d) of instant claim 1 and which meets instant claim 7. The compositions further comprise a catalyst, including trimerization catalysts, which meets (b) of instant claim 1 and which meets instant claim 4 (see ¶41). A specifically named example of blowing agent is hydrofluoroolefins (¶34, ¶73), which meets instant claim 5. Water is also included in the composition, which meets instant claim 6 (¶72). The composition further comprises flame retardants, which meet the additive of instant claim 8. See ¶74. The pMDI used in Examples 1, 7, and 9 of Combs et al. is Mondur®489.
As evidenced by the attached data sheet for Mondur®489, Mondur®489 has a viscosity which meets instant claim 1 and a functionality which meets instant claim 2.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Wardius et al. (US 2013/0030073).
Wardius et al. teach foamable polyurethane compositions comprising polymeric methylene diphenyl diisocyanate, which is Mondur®489 in the Examples, having a viscosity of 700 mPa•sec at 25ºC which is equal to 700 cPs at 25ºC. This meets (e) of instant claim 1. See ¶64 and Table 1. The composition further comprises a polyol which is a polyether polyol, which meets (a) of instant claim 1 and meets instant claim 3; catalysts which meet (b) of instant claim 1 and which meet instant claim 4 (see ¶60-62 and Table 1); a blowing agent which meets (c) of instant claim 1; a silicone surfactant which meets (d) of instant claim 1 and meets instant claim 7 (¶59); water which meets instant claim 6 (see Table 1); and a flame retardant (which meets instant claim 8). See Table 1 and ¶57. Expressly named examples of blowing agent include hydrofluoroolefins, which meets instant claim 5. See ¶30. Mondur®489, used in Tables 3-5 of Wardius, has a viscosity and functionality which meet instant claims 1-2, as this is the pMDI used in the Inventive Examples of the instant specification. Additionally, see the rejection below evidenced by the data sheet for Mondur®489.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Wardius et al. (US 2013/0030073) as evidenced by the attached data sheet for Mondur®489 from TriiSO, Bayer Material Science, 2026.
Wardius et al. teach foamable polyurethane compositions comprising polymeric methylene diphenyl diisocyanate, which is Mondur®489 in the Examples, having a viscosity of 700 mPa•sec at 25ºC which is equal to 700 cPs at 25ºC. This meets (e) of instant claim 1. See ¶64 and Table 1. The composition further comprises a polyol which is a polyether polyol, which meets (a) of instant claim 1 and meets instant claim 3; catalysts which meet (b) of instant claim 1 and which meet instant claim 4 (see ¶60-62 and Table 1); a blowing agent which meets (c) of instant claim 1; a silicone surfactant which meets (d) of instant claim 1 and meets instant claim 7 (¶59); water which meets instant claim 6 (see Table 1); and a flame retardant (which meets instant claim 8). See Table 1 and ¶57. Expressly named examples of blowing agent include hydrofluoroolefins, which meets instant claim 5. See ¶30.
As evidenced by the attached data sheet for Mondur®489, Mondur®489 has a functionality which meets instant claim 2.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Allen et al. (US 2020/0087436).
Allen teaches the compositions as described in this action above, the rejection of which is incorporated herein by reference. Allen teaches that examples of blowing agents include perfluorinated compounds, with named examples being pentafluoropropylene and tetrafluoroproylene, which are hydrofluoroolefins. This meets instant claim 5. It would have been obvious to one of ordinary skill in the art, given the teachings of Allen et al., to select either pentafluoropropylene and tetrafluoroproylene (which are hydrofluoroolefins) as the blowing agent for use in the disclosed compositions, given their express disclosure at ¶256 of Allen et al., 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Dedecker et al. (US 2016/0376397).
Dedecker et al. teach the composition as discussed in the rejection above, the rejection of which is incorporated herein by reference. Dedecker et al. teach that the isocyanates including polymeric MDI have a functionality greater than 2 (¶45) which overlaps the range of instant claim 2. 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 Dodecker et al. to use a polymeric MDI having a functionality which meets the instant claim limitations of instant claim 2 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.
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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