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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/20/2026 has been entered.
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 16 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 is confusing as to intent because it can not be determined what “expansion factor(s)” are intended to be included or excluded by the metes and bounds of this claim as it currently stands. Though it can be agreed that the totality of the preponderant evidence of record establishes an understood meaning of S to be an “Edge Length Expansion Factor” as specifically defined by the supporting disclosure. Such understood meaning does not extend to S being defined as it currently is by the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1 and 3-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sutterlin et al.(WO 2019/137,879) {hereon reference will be made to the equivalent US2019/0218329}.
Sutterlin et al. discloses methods for producing polyurethane foams by mixing foaming and curing (i.) isocyanate functional prepolymers prepared from A1) aliphatic diisocyanates and A2) polyoxyalkylene polyols as claimed, (ii.) water in amounts as claimed, wherein prepolymers of preferred NCO contents of 1.5-3% are disclosed and good polyurethane foams for wound dressing are obtained (see paragraphs [0014]-[0045] ,[0070], [0096] and the Examples).
Regarding claim 8, viscosities as claimed are disclosed {see para [0097]}.
Sutterlin et al. differs from applicants’ claims in that it does not particularly require component A3 of the claims. However, it does identify that polyhydric alcohols inclusive of the diols as claimed may be utilized in the preparations of their disclosure (see para [0041]). Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized these diols of Sutterlin et al. in any amount, including those as now claimed, within the preparations of Sutterlin et al. for the purpose of imparting their recognized chain building and lengthening, isocyanate reactive effects to the developing prepolymers of Sutterlin et al. in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejection as set forth above are maintained.
The following previous arguments are maintained to be still applicable:
As to applicants' discussion of results and problems solved, it is held that teachings may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods.,Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).[see also MPEP 2144 IV.]. “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) [see also MPEP 2145 II.]. Applicants’ have not related their recitations of the claims to distinguishable limitations over the teachings and fair suggestions of the above cited prior art. Further, they have not established showings of new or unexpected results attributable to the invention of the claims that are commensurate in scope with the scope of the claims as they currently stand.
As to applicants’ arguments concerning results, the following are held to apply:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977. Obviousness does not require absolute predictability. In re Miegel 159 USPQ 716. Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; In re Beattie, 24 USPQ 2d 1040.
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. See also In re Kulling, 14 USPQ 2d 1056.
Applicants’ have not persuasively demonstrated unexpected results for the combinations of their claims. Applicants have not demonstrated their results to be unexpected and more than mere optimizations of the knowledge in the art or more significant than being secondary in nature.
More significantly, applicants’ have not demonstrated their showings to be commensurate in scope with the scope of the combinations now claimed.
As to applicants’ latest arguments on reply, in addition to those arguments set forth again above, it is maintained based on the preponderant evidence of record that sufficient motivation is provided for utilization of the active hydrogen compounds of the instant concern in amounts as claimed for the function indicated. Criticality through sufficient representation of showings commensurate in scope with the claims as they currently stand has not been made evident through the showings discussed on reply or any other evidence of record.
Rejection under 35USC103 over previously cited Schonberger et al. reference is withdrawn in light of pointed to distinctions made on reply.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding new claim 16, presuming resolution to the rejection under 35USC112 as guided in the rejection above, the prior art, including the above cited reference taken alone or in combination with other prior art, is insufficient in its teaching or fair suggestion of the process as defined by this newly submitted claim. Particularly, there is insufficient teaching or fair guidance, based on the preponderant evidence of record, that products formed by the processes of the teachings and fair guidance of the prior art would necessarily arrive at products having the range of product relationship values as set forth by this claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
