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 .
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 2 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 2 recites an amount of anhydride of from 0.1-3wt%. However, claim 2 depends from amended instant claim 1, which recites a range of from 0.25-3wt% for the anhydride. The range of claim 2 is broader than the claim on which it depends. It is therefore unclear what amount of anhydride is present in the composition of instant claim 2.
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 1-11 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over 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, 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.
With regards to the amendment to claim 1 reciting that the polyurethane foams have a density ranging from 100 to 450 g/L, Kreyenschmidt teaches that the foams produced therein have a density ranging from 15 to 300 kg/m3, which is equal to 15 to 300 g/L. See col. 4, ln. 16-18. This overlaps the range recited in amended instant claim 1. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Kreyenschmidt to produce a polyurethane foam having a density which meets the instant claim limitations of amended instant claim 1 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
With regards to the amendment to instant claim 15, Kreyenschmidt et al. teach that the foams of the invention are used in furniture applications.
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 example 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.
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, 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 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.
Response to Arguments
Applicant's arguments filed 5/5/2026 have been fully considered but they are not persuasive.
Applicant argues that corrosion inhibition is based on the “proper dosage” of anhydride.
This is not persuasive.
The originally recited range the amount of anhydride, was 0.05 to 5wt%. Claim 1 is now amended to recite “0.5-3wt%.” It is therefore unclear, which of these ranges is sufficient to provide the argued corrosion resistance. Is it the originally recited range which is discussed in the instant specification, of 0.05-5wt%, or the narrower range now being argued by Applicant? Applicant has also provided neither explanation nor evidence in support of the alleged “proper dosage.” What is said proper dosage? Where is the evidence that outside the claimed range, such as with 5wt% anhydride, the argued corrosion resistance is not achieved?
Regardless, the amount of anhydride used in the applied Kreyenschmidt reference meets the range of the instant claims. Kreyenschmidt show examples, containing 1.9 or 2wt% of anhydride, which falls within the instantly claimed range for amount of anhydride. Thus, the amount of anhydride in the instant claims, is not critical or unexpected. Table 6 of Kreyenschmidt shows amounts anhydride that fall within the range recited in both instant claims 1, 2, and 16, which means that the instantly claimed range is met by Kreyenschmidt.
As to Applicant’s argument regarding hindsight, with regards to instant claims 1-11 and 14-18, none of these claims recited corrosion resistance, so it is unclear with what the alleged “hindsight” is referring. If the Applicant is arguing that is hindsight to select the instantly claimed amount of anhydride, this is not persuasive. It is not hindsight to select an amount expressly disclosed within a reference, as is the case with Kreyenschmidt, even for the amended range. Kreyenschmidt shows examples having an amount of anhydride which falls within the amended range of the instant claims.
Additionally, it is not hindsight to produce a foam having a density which is expressly disclosed in the applied reference. The density disclosed in Kreyenschmidt is not limited to 20 to 70 kg/m3 as argued on page 6, fourth paragraph of the Remarks filed on 5/5/2026. The range of density disclosed in Kreyenschmidt is 15 to 300 kg/m3, as stated in col. 4, lines 16-18, which overlaps the range recited in amended instant claim 1. It would have been obvious to one of ordinary skill in the art, based on the teachings of Kreyenschmidt to produce a polyurethane foam having a density which meets the instant claim limitations of amended instant claim 1 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123. It would have been obvious to one of ordinary skill in the art to produce a foam having a density with any value within the range of 15 to 300 g/L, including densities which meet the range of 100 to 450 g/L, given the teaching in Kreyenschmidt of a density from 15 to 300 kg/m3.
Applicant argues that “Kreyenschmidt is deficient for the reasons addressed above,” on page 7 of the Remarks filed on 5/5/2026.
It is unclear to what “deficiencies” Applicant is referring. Kreyenschmidt shows Examples having an amount of anhydride which falls within the range of amended instant claim 1, as well as instant claims 2 and 16. The foams of Kreyenschmidit have a density of from 15 to 300 kg/m3 (15 to 300 g/L) and are not limited to a density of 20 to 70 kg/m3 as argued by Applicant. The density of the foams of Kreyenschmidt overlaps the range of amended instant claim 1. Thus, each of the features of instant claims 1-11 and 15-18 are present in teachings of Kreyenschmidt, and it again is unclear to what deficiencies Applicant is referring.
Furthermore, Applicant has provided no evidence that the foams of Kreyenschmidt, which comprise the requisite amount of anhydride in examples disclosed therein, do not have the argued corrosion resistance. It is noted that MPEP 2415 states “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Therefore, Applicant’s arguments are not persuasive. Applicant has provided neither explanation nor evidence showing that the foams of Kreyenschmidit do not provide corrosion resistance. The rejection establishes how and why this feature is necessarily present in the foams of Kreyenschmidt. 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. Applicants have provided no evidence which demonstrates the contrary.
For the reasons provided above, Applicant’s Remarks filed on 5/52026 are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
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, Randy Gulakowski can be reached at (571) 272-1302. 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.
/K. BOYLE/Primary Examiner, Art Unit 1766
Prosecution Insights