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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over JP-
2018016689 to Makoto et al.
As to claims 1-2, Makoto discloses a polyurethane (note reaction product of a polyester polyol and polyisocyanate component, 0016) comprising the reaction product of a polyester polyol and a polyisocyanate component wherein the polyester polyol comprising 7 parts of ethylene glycol, 27 parts of diethylene glycol (0.256 mols), 4 parts of neopentyl glycol (0.038 mols), 14 parts of adipic acid, 1 part of sebacic acid, 32.9 parts of isophthalic acid, 14.1 parts of terephthalic acid. Makoto does not expressly disclose the purity of the isophthalic acid in that the IPA is purified. However, the selection of IPA or purified IPA is prima facie obvious because the mere purity of a reactant, by itself, does not render the product nonobvious (See MPEP 2144.04 VII). The molar mixing ratio of NPG:DEG is 0.038:2.56, this sits inside of the claimed range.
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive.
The applicant argues that Makoto is not directed to a polyurethane resin and that the polyester polyol prepared in Makoto is merely blended with a polyisocyanate. This is not found persuasive because Makoto teaches the polyester polyol prepared according to Makoto is reacted with the polyisocyanate in the coating resin in its invention. This is taught in (0016) of Makoto.
Lastly, the applicant argues that the polyurethane prepared according to the invention provides unexpected effects of improved total smoke generation, flame retardancy, and compatibility.
When looking to showings of results in order to overcome a rejection, the following must be considered:
Results must be Unexpected:
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 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 March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
Claims Must be Commensurate with Showings:
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.
The showings are not commensurate in scope with very broad claims, which encompass hundreds of compounds, in particular with respect to the isocyanate component and as well as the other components that improve smoke generation or flame retardancy. The claims teach any type of polyisocyanate and the examples only demonstrate the alleged improvement using one specific type in one specific amount. Further, the claims are open to other components that would of ordinary skill in the art would add to a polyurethane system to improve the alleged properties. For instance, the examples add stabilizers and flame retardants. Therefore, the results are not commensurate in scope with the current claim set because the claims are open to other components that could improve flame properties and the claims are open to any type of isocyanate used in any amount. Any showing based on “compositions” must be reasonable commensurate in scope with both the kind and amount of polyisocyanate in the claims.
The results must compare the closest prior art. The difference between the prior art and the claimed invention is the purity of isophthalic acid. Makoto teaches a polyurethane comprising the reaction product of a polyisocyanate and polyester polyol comprising isophthalic acid and NPG:DEG in a molar ratio of 0.038:0.56. This is similar to the ratio used in the examples (1:7 to 1:8). The declaration and examples within the current specification compare polyurethanes with different amounts of NPG and DEG. A proper comparison would be a polyurethane prepared with isophthalic acid vs. a polyurethane prepared with purified isophthalic acid.
Accordingly, it is not evident that the argued results hold for the full scope of the claims or that the argued flame retardancy is necessarily possessed by the claimed composition and the applicants have failed to compare the closest prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. 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.
/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
Prosecution Insights