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 .
Specification
The disclosure is objected to because of the following informalities:
Page 8 of the specification sets forth two particularly preferred compounds (d) in Lines 6 – 14. However, neither compound corresponds to the formula W-Kw-NH-C(O)-CH2-Q required for compound (d) on Page 7, Line 25 – Page 8, Line 5 in which W is required to be present and correspond to a cyclic amine. Neither of the compounds depicted on Page 8 comprise the cyclic amine moiety W.
Additionally, Page 13 sets forth four different compounds (d) in Lines 1 – 13. However, only compound A1 corresponds to a species of compound (d) which is characterized as having the formula W-Kw-NH-C(O)-CH2-Q. The remaining compounds V1, V2, and A2 do not correspond to species of this general formula.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 6 and 9 – 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 now sets forth -Kw- represents a linear or branched-chain hydrocarbon radical which may be substituted. However, the original disclosure and claims did not ever set forth -Kw- could correspond to a substituted moiety. As Claims 2 – 6 and 9 – 16 ultimately depend on Claim 1, they also incorporate this new matter and are therefore rejected under this statute.
Claim Rejections - 35 USC § 102
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 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 – 3, 6, 9, 10, and 12 – 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1 099 718 to Meier.
Regarding Claims 1, 2, and 9. Meier teaches a process for producing polyurethanes comprising preparing a reaction mixture/formulation, i.e. mixing:
a polyisocyanate;
a polyol and polymer polyol, i.e. polymeric compounds having isocyanate-reactive groups;
a catalyst composition;
a cell opener;
a blowing agent and an auxiliary blowing agent;
a crosslinker [0040], [0044] – [0047];
optionally a chain extender [0042]; and
optionally other additives [0046].
The cell opener may correspond to a compound of the following formula:
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Alternatively, the cell opener may correspond to a compound of the following formula:
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[0011] and [0016] – [0018].
Either of the above cell openers compounds corresponds to a compound of the instantly claimed general formula W-Kw-NH-C(O)-CH2-Q. Specifically, the first compound depicted above corresponds to a compound of the instantly claimed general formula in which W represents a pyrrolidine ring, i.e. a cyclic amine which is unsubstituted, and bonded to -Kw- via the nitrogen atom in the ring; -Kw- is (CH2-)n and therefore represents a linear hydrocarbon radical; N represents a nitrogen atom; C represents a carbon atom; O represents an oxygen atom; H represents a hydrogen atom; and Q represents cyanide (CN). The second compound depicted above corresponds to a compound of the instantly claimed formula in which W represents a pyrrolidine ring, i.e. a cyclic amine, which is unsubstituted and bonded to -Kw- via the nitrogen atom in the ring; -Kw- is (CH2-)n and therefore represents a linear hydrocarbon radical; N represents a nitrogen atom; C represents a carbon atom; O represents an oxygen atom; H represents a hydrogen atom; and Q an electronegative radical of the formula -C(O)-R2 in which R2 represents -R7-- and -R7-- is a substituted araliphatic radical of the formula –(CO)-CH2-(CO)-NH-(CH2)n-W and W in this radical is also a pyrrolidine ring.
Meier further teaches the catalyst may be diethanolamine [0041]. Diethanolamine corresponds to a compound of the formula (CH3)2NCH2CH2OH. It therefore comprises one isocyanate-reactive group (OH), one tertiary amine group ((CH3)2NCH2), two organic radicals (the two CH3 groups), and one additional organic radical (CH--2CH2).
Regarding Claim 3. Meier teaches the process of Claim 1. In each of the structures depicted in the rejection of Claim 1, -Kw- is (CH2-)n and n is 1 or 2 [0017] – [0018]. -Kw- in each of these structures therefore represents a linear, unsubstituted hydrocarbon radical having 1 or 2 carbon atoms.
Regarding Claim 6. Meier teaches the process of Claim 1 wherein the polymer compound having isocyanate-reactive groups may comprise polyalkylene ether polyols [0036].
Regarding Claim 10. Meier teaches the process of Claim 1 wherein the polyurethane may be a polyurethane foam having a density of 12 – 100 kg/m3 [0043].
Regarding Claim 12. Meier teaches the process of Claim 1 wherein the polyurethane may be part of an item of furniture [0012].
Regarding Claim 13. Meier teaches a polyurethane producible by the process of Claim 1 [0011], [0016] – [0018], [0040], [0042], and [0044] – [0047].
Regarding Claims 14 and 15. Meier teaches the polyurethane of Claim 13 is formed as automotive seating [0012], i.e. an article which is an enclosed space in the interior of a means of transport.
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1 099 718 to Meier, as applied to Claim 1 above.
Regarding Claim 4. Meier teaches the process of Claim 1 wherein the cell opener may correspond to a compound of the following formula:
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[0018]. This compound corresponds to a compound of the instantly claimed formula in which Q is an electronegative radical of the formula -C(O)-R2 in which R2 represents -R7-- and -R7-- is a substituted araliphatic radical of the formula –(CO)-CH2-(CO)-NH-(CH2)n-W and W in this radical is a pyrrolidine ring.
This compound in Meier differs from the instantly claimed compound in that the Q moiety in Meier contains an additional -(CO)-CH2- group. The compound in Meir thus differs regularly by the successive addition of a -(CO)-CH2- group, with the compound in Meir having three such groups and the instantly claimed compound having only two. However, compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Notably, Meir itself discloses a number of other species of cell openers having only two -(CO)-CH2- groups (see, e.g. [0020] – [0021]) and thus the absence of this additional group would still be reasonably expected to provide a compound having similar properties, i.e. a compound which functions as a cell opener.
Regarding Claim 5. Meier teaches the process of Claim 4 wherein the cell opener may correspond to a compound of the following formula:
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in which n is 1 or 2 [0018]. This compound corresponds to a compound of the instantly claimed formula in which W in the general formula and in Q both correspond to a pyrrolidine ring and Kw in general formula and in Q both correspond to the same linear, unsubstituted radical having 1 to 2 carbon atoms.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1 099 718 to Meier, as applied to Claim 1 above, and further in view of US 2018/0334256 to Sesoko et al. (hereinafter Sesoko).
Regarding Claim 11. Meier teaches the process of Claim 1 but does not expressly teach it may have an average density of more than 850 g/L. However, Sesoko teaches the concept of preparing a polyurethane with a density as high as 1000 kg/m3 [0060]. Polyurethanes having densities of more than 850 g/L correspond to compact polyurethanes as set forth in instant Claim 11. Meier and Sesoko are analogous art as they are from the same field of endeavor, namely flexible polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the polyurethane of Meier with a density as high as 1000 kg/m3 as taught by Sesoko. The motivation would have been a higher density article may provide advantages such as improved load bearing and durability.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1 099 718 to Meier, as applied to Claim 1 above, and further in view of US 2016/0304690 to Takemoto et al. (hereinafter Takemoto).
Regarding Claim 16. Meier teaches the process of Claim 1 in which the incorporable catalyst is dimethylethanolamine [0041], which does not correspond to one of the instantly claimed species. However, Takemoto teach both dimethylethanolamine and diethylethanolamine as active hydrogen-containing/incorporable amine catalysts in processes of making polyurethane foams [0055]. Meier and Takemoto are analogous art as they are from the same field of endeavor, namely flexible polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute diethylethanolamine for dimethylethanolamine in the process of Meier. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Takemoto teach both dimethylethanolamine and diethylethanolamine as active hydrogen-containing/incorporable amine catalysts in processes of making polyurethane foams [0055], thus providing obviousness of substituting one of the other in such processes.
Response to Arguments
Applicant's arguments filed April 8, 2026 have been fully considered. The Office responds as follows:
Objections to the Specification
Applicant argues that compounds (I) and (II) indeed include cyclic amines. However, the Office maintains that the specification filed with the USPTO on May 5, 2023 and the PG-PUB of the instant application set forth compounds (I), (II) and A2 which all lack a cyclic amine moiety. See Pages 8 and 13 of the May 5, 2023 specification, as well as [0033] and [0063] of the PG-PUB of the instant application which are reproduced below:
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and in [0063] of the PG-PUB:
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Objections to the Claims
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections to the claims. Accordingly, all outstanding claim objections have been withdrawn.
Rejections Under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the claims under 35 U.S.C. 112(b). Accordingly, all outstanding rejections under 35 U.S.C. 112(b) have been withdrawn.
Rejections Under 35 U.S.C. 102
With respect to the rejection of Claims 7 – 9, the Office does note the typo with respect to dimethylethanolamine in the outstanding Office action. However, the Office maintains that it is evident that the Office action is referring to dimethylethanolamine. The formula and accompanying description provided are that of dimethylethanolamine, not diethanolamine. Additionally, the relied upon citation of Meier [0041] only sets discloses dimethylethanolamine and not diethanolamine.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a marked reduction in formaldehyde emissions) are not recited in the rejected claim(s). 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). Moreover, even assuming such a limitation were incorporated into the instantly claims, Meier teaches a process comprising all the claimed ingredients in the claimed amounts, steps, and processing conditions. Thus, a reduction in formaldehyde emissions would be expected to flow naturally from the teachings of the prior art.
Rejections Under 35 U.S.C. 102
Applicant’s arguments that Sesoko does not remedy the deficiencies of Meier are not persuasive, as the alleged deficiencies have been addressed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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