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. in the reply filed on 5/1/2026 is acknowledged. The traversal is on the ground(s) that amendments render restriction moot. This is not found persuasive because compositionally position as applied holds.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected grouping of invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/1/2026.
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.
Claims 1-7 are 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 1 recites the limitation "the polyurethane foam" in the 3rd from last line. There is insufficient antecedent basis for this limitation in the claim. The claims are confusing as to intent because it can not be determined how the unreacted and unfoamed compositions of the claims, particularly claims 1-4, are intended to be further limited and defined by recitations directed towards defining a claim element, specifically a “polyurethane foam”, that has not previously been accounted for by the recitations of the claims. The reference to a composition for forming polyurethane foam (i.e. “a polyurethane foam composition”) in the preamble is merely a statement of capability and/or predisposition, and does not define or account for a “polyurethane foam” to be referred back to as claim 1 presently does.
Regarding claims 5-7, in addition to their dependency upon claim 1, they are further confusing as to intent because it can not be definitively ascertained if the foams of these claims require the indefinitely referred to properties referred to by claim 1.
Appropriate corrections are required.
For examination purposes, claims 1-7 have been treated as not requiring the tensile and thermal conductivity effects indefinitely referred to by claim 1
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rider et al.(20200339733).
Rider et al. discloses polyurethane foam forming compositions and foams formed from polyols having functionalities and OH numbers as claimed, isocyanates as claimed, physical blowing agents [note: claim 2] as claimed that are combined at Index values as claimed {see abstract, Paras [0008], [0015]-[0047], [0051]-[0065] and the Examples}. Though applicants claims as currently defined do not require that flame retardant be present and, therefore, claim 3 is further defining of an optional claim feature, Rider et al. is sufficient to meet applicants’ claims through allowances for no fire retardant as well as specific allowances for inclusion of fire retardants as recited by the claims, including claim 3, in amounts as defined by the claims {see Examples}.
Regarding claim 6, though tensile strength values as claimed are not particularly identified by Rider et al., good rigid foam products are disclosed having good balances of compressive and tensile strengths in the constitution of their rigid make-up {para [0016] and Examples}. Accordingly, owing to the closeness their disclosed compositional make-ups, along with other identified foam product characteristics, it is held that the foams of Rider et al. inherently possess the tensile strength effects as set forth by claim 6.
Regarding claim 7, though fire retardancy values as claimed are not particularly identified by Rider et al., good rigid foam products are disclosed and, owing to the closeness their disclosed compositional make-ups, including fire retardants as claimed and polyol materials as claimed, along with other identified foam product characteristics, it is held that the foams of Rider et al. inherently possess fire retardancy effects as set forth by claim 7 {see the Examples}.
For purposes of expedited prosecution, it is noted that Rider et al. discloses thermal conductivity values {para [0061]} that correlate with converted values of <.023 using units that are indefinitely referred to by applicants’ claims {see rejection under 35USC112 above}.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rider et al.(‘791) is cited for its closely related compositions to those of the instant concern.
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
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