DETAILED ACTION
Claim Objections
Claim 17 is objected to because of the following informalities: Claim 17 recites “wherein the blowing agent comprises exclusively water.” The term “comprises” allows for unrecited components to be present. However, the claim then recites “exclusively water,” indicating that only water can be present in the recited blowing agent. For the sake of compact prosecution, the claim is interpreted to mean that the blowing agent consists of water, given the “exclusively” language.
Appropriate correction is required and is respectfully requested, specifically to change the language in claim 17 from “wherein the blowing agent comprises exclusively water” to “wherein the blowing agent consists of water.”
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 14-15 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 14 recites “A method of using the polyurethane foams obtained or obtained according to claim 1, the method comprising using the polyurethane foams for reducing or preventing corrosion of polymeric materials.” The claim is indefinite because while the claim recites a method of using, there are no active steps in the method. Claim 15 depends from claim 15 and does not clarify the issue. The claim could be clarified, for example, by reciting “A method of using the polyurethane foams obtained or obtained according to claim 1, the method comprising bringing the polyurethane foams into contact with polymeric materials to reduce or prevent corrosion of the polymeric materials.” It is additionally suggested that the phrase “used in “ in line 2 of claim 15 be deleted.
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 1-11 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kreyenschmidt et al. (US 6,800,667).
Kreyenschmidt et al. teach polyurethane foams produced by reacting isocyanates with compounds which are reactive towards isocyanates in the presence of catalysts, blowing agents, additives and/or auxiliaries (col. 3, lines 49-55 and col. 8, lines 36-41). The polyurethane foams are used in, for example, furniture (col. 4, lines 1-5). The anhydride is used in an amount of from 0.01 to 20% by weight based on the weight of a mixture of at (i) at least one isocyanate and (ii) at least one acid anhydride and preferably 0.1 to 6% by weight based on the isocyanate and acid anhydride. See col. 4, lines 29-33. Particular preference is given to anhydrides which dissolved in the isocyanate. See col. 8,m lines 30-31. This meets instant claim 1. The amount of anhydride used in the Examples falls in the ranges of instant claims 1, 2, and 16. See Table 1, col. 10, lines 35-50 of Kreyenschmidt et al. See Table 6, col. 15, line 17, Example 25.
Chain extenders and crosslinkers can optionally be added to the reaction mixture disclosed in Kreyenschmidt et al. See col. 6, lines 35-38. This meets component (c) of instant claim 1. Other additives may also optionally be added to the reaction mixture of Kreyenschmidt et al., which meet (f) of instant claim 1. See col. 8, lines 57-60.
Examples of the acid anhydrides for use in the reaction mixture of Kreyenschmidt et al. include aliphatic, cycloaliphatic, and/or aromatic carboxylic acid anhydrides having from 1 to 10 carboxyl groups, with specific named examples including naphthalene 1,8-dicarboxylic anhydride (col. 7, line 18), dodecenylsuccinic anhydride (col. 7, line 54), and glutaric anhydride (col. 7, line 48-49). These meet instant claims 3-5.
Expressly named examples of isocyanates include polyisocyanates such as tolylene 2,4 and 2,6 diisocyanate (col. 4, line 54); hexamethylene 1,6-diisocyanate (col. 4, lines 45-46, diphenylmethane 4,4’-, 2,4’-, and 2,2’- diisocyanates and mixtures thereof (col. 4, lines 55-57) and tetramethylene diisocyanate (col. 4, lines 43-44). Preferred isocyanates include polyisocyanates diphenylmethane 4,4’-, 2,4’-, and 2,2’- diisocyanates and mixtures thereof; tolylene 2,4 and 2,6 diisocyanate and mixtures thereof; hexamethylene diisocyanate, and/or isophorone diisocyanate (col. 5, lines 38-44). This meets instant claim 6.
Examples of the compounds which are reactive towards isocyanates include polyether amines and polyols, with examples of polyols including polyether polyols and polyester polyols. See col. 5, lines 47-60. This meets instant claim 7.
An expressly named examples of blowing agent is water (see col. 8, lines 42-47). This meets instant claim 8.
Examples of catalyst for use in the reaction mixture of Kreyenschmidt et al. include amine catalysts. See col. 8, lines 61-67. This meets instant claim 9.
Regarding instant claim 10, the mixtures of Kreyenschmidt et al. are used to produce polyurethane foams by reacting the components reactive towards to the isocyanates (corresponding to instantly claimed component (b)), the catalysts, the blowing agents, and auxiliaries or additives (including crosslinking agents or chain extenders) to form the A component and adding the acid anhydrides and isocyanates (corresponding to instantly claimed components (a) and (g)) to form a B component and to then react the A and B components. See col. 9, lines 56-65 as well as examples.
In Examples, water is used exclusively as the blowing agent. See col. 10, line 26.
Regarding instant claims 14-15, Kreyenschmidt et al. teaches that the polyurethane foams, which have the anhydride added to the polyisocyanate, are used to produce furniture and mattresses (which are a “leisure good”) which are frequently exposed to hot steam for cleaning or disinfection. Kreyenschmidt et al. teaches that the foams produced in the invention, which have the anhydride added to the polyisocyanate, have prevented deterioration when exposed to hot or humid conditions, which is necessarily a reduction or prevention of corrosion (i.e. deterioration) of the foam. See claim 1 of Kreyenschmidt et al.
Regarding instant claims 11 and 18, Kreyenschmidt et al. teaches that components A and B as discussed above are reacted at an index of 100. See col. 10, lines 50-53 and col. 14, lines 15-18. This is an isocyanate index as discussed at col. 12, lines 62-65.
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 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Echevarria (US 5,355,816) in view of Kreyenschmidt et al. (US 6,800,667).
Echevarria teaches a mattress where a polyurethane foam is in contact with a polyester ticking and a polyester backing (Fig. 5-6, col. 4, ln. 59-col. 5, ln. 18). Echevarria teaches a method of making assembling these components (claim 9) to be in contact with each other.
Echevarria does not explicitly recite the polyurethane foam formed from the composition of claim 1.
However, Kreyenschmidt et al. teach polyurethane foams produced as described above, the discussion of which is hereby incorporated by reference.
Both Echevarria and Kreyenschmidt et al relate to the field of polyurethane foams used to produce, for example, mattresses. It would have been obvious to one of ordinary skill in the art to use the polyurethane foams of Kreyenschmidt et al. in the invention of Echevarria because it uses anhydrides which block any amine catalysts present in the products and prevent redissociation of the urethane bonds (col. 3, ln. 10-21), thereby preventing the diffusion of amines (col. 3, ln. 32-36). Thus, use of the foams of Kreyenschmidt et al. necessarily prevent corrosion (dissociation of urethane bonds) due to the presence of amine catalysts. In other words, would have been obvious to one of ordinary skill in the art to use the polyurethane foams of Kreyenschmidt et al. in the invention of Echevarria in order to prevent corrosion of the products disclosed in Echevarria.
While Kreyenschmidt does not explicitly recite reducing or preventing corrosion of polymeric materials in contact with the polyurethane foams, this is (1) an intended use of the polyurethane foams and (2) is necessarily for the reasons discussed above.
With regards to (1) the intended use, the phrase “for reducing or preventing corrosion of polymeric materials” does not provide any structural limitations to the claims. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The polyurethane foams of Kreyenschmidt comprise identical amounts of identical materials as recited in the instant claims and are therefore capable of performing the intended use of “reducing or preventing corrosion of polymeric materials.” With regards to (2), as discussed above, the anhydrides of Kreyenschmidt prevents the diffusion of amines which act as catalysts on the adjoining polymeric materials. The prevention necessarily results in the reduction or prevention of corrosion of polymeric materials.
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