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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/23/2026 has been entered.
Election/Restrictions
Newly submitted claim 20 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The originally examined invention is to polyurethane foams. The related claims are 1-13 and 15-18. Newly presented claim 20 is a composition comprising the polyurethane foams of claim 1.
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-13 and 15-19, drawn to polyurethane foams.
Group II, claim 20, drawn to a composition.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the polyurethane foam of Group I, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of 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.
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.
Thus, the feature which is common among Groups I and II (the foam of instant claim 1) is present in the prior art; the technical feature does not amount to a special technical feature; unity of invention is not present; and Restriction is proper.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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, 3-11, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kreyenschmidt et al. (US 6,800,667). The rejection set forth in paragraphs 5-18 of the Final Office Action mailed on 5/21/2026 are incorporated herein by reference.
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). The rejection set forth in paragraphs 21-25 of the Final Office Action mailed on 5/21/2026 are incorporated herein by reference.
Claims 1, 3-11, 15-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kelly, II (US 2014/0023553) and in view of Kreyenschmidt et al. (US 6,800,667).
Kelly, II teach a corrosion prevention foam (abstract) produced from a composition comprising an isocyanate component and a polyol composition, the polyol composition comprising a blowing agent, a catalyst and a fire-retardant component (¶7). The flame retardant corresponds to (f) of instant claim 1. The isocyanate is a polyisocyanate (¶20) and corresponds to the (a) at least one polyisocyanate of instant claim 1. The polyol of the polyol composition corresponds to the instantly claim (b) at least one compound having at least two hydrogen atoms reactive towards isocyanates. Examples of the polyols include polyethers and polyesters, as well as polyether amines (¶9-12). This meets instant claim 7. Examples of polyisocyanates include 4,4’-diphenylymethane diisocyanate. This meets instant claim 6. The blowing agent of Kelly, II meets (d) of instant claim 1. The catalyst of Kelly, II meets (e) of instant claim 1. Examples of catalysts in Kelly, II include amine-based catalysts (¶46). This meets instant claim 9. The polyol composition comprising the blowing agent, catalyst and flame retardant corresponds to component (A) of instant claim 10. The isocyanate component of Kelly, II corresponds to B of instant claim 10. The polyol composition of Kelly, II can further include water which meets instant claim 8. See ¶20, ¶25 of Kelly, II.
The foams of Kelly, II have a density of from about 0.5 pound per cubic foot to about 40 pounds per cubic foot. This is equivalent to a range of about 8 g/L to about 640 g/L. This overlaps the range of density in instant claims 1 and 19. 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 Kelly, II to produce a foam having a density which meets the instant claim limitations of instant claims 1 and 19 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.
Kelly, II does not expressly teach the addition of from 0.25 to 3%wt% based on the weight of the isocyanate of an anhydride or that the anhydride meets instant claims 3-5. Kelly, II does not expressly recite the isocyanate index of instant claim 11 and 18.
However, 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 are dissolved in the isocyanate. See col. 8, lines 30-31. This meets instant claim 1 and component (B) of instant claim 10. The amount of anhydride used in the Examples falls in the ranges of instant claims 1 and 16. See Table 1, col. 10, lines 35-50 of Kreyenschmidt et al. See Table 6, col. 15, line 17, Example 25. 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.
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.
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.
Both Kelly, III and Kreyenschmidt et al. relate to the field of polyurethane foams used to produce, for example, furniture applications (see ¶26 of Kelly, III and col. 4, ln. 1-5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the amount and type of anhydride as disclosed in Kreyenschmidt et al. in the polyurethane foams of Kelly, II in order to 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). Kreyenschmidt et al. teaches that use of the anhydrides stabilizes the foams by preventing the formation of primary amines, which counters not only deterioration in mechanical properties of the foam but also counters formation of primary amines. See col. 4, ln. 6-15 of Kreyenschmidt et al. What this means is that anhydrides as disclosed in 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 Kelly, II in order to prevent corrosion of the products disclosed in Kelly, II, which is an expressly disclosed objective of the invention of Kelly, II. It would have been obvious to produce an isocyanate index as disclosed in Kreyenschmidt et al. in the invention of Kelly, II in order to provide foams with excellent properties and significantly increased stability. See col. 10, lines 65-67 of Kreyenschmidt et al.
Response to Arguments
Applicant's arguments filed 7/23/2026 have been fully considered but they are not persuasive.
It is noted that Applicants have acknowledged on the record that the broad teaching of density present in Kreyenschmidt et al. (US 6,800,667), is from 15 to 300 kg/m3, as stated in lines 1-2 of page 6 of the Remarks filed on 7/23/2026. Applicant argues, however, that Kreyenschmidt et al. (US 6,800,667) does not exemplify the broad range and claims a more narrow range in the applied reference and alleges that this means the reference does not obviate the instant claims.
This is not persuasive.
It is initially noted, that the rejection of the claims is under 35. U.S.C. 103 as obvious over Kreyenschmidt et al. (US 6,800,667). If the instantly claimed density was exemplified in Kreyenschmidt et al. (US 6,800,667), the rejection would be anticipatory. However, as stated in the previous rejection incorporated into this action by reference, the density of Kreyenschmidt et al. (US 6,800,667) overlaps the instantly claimed range and thus the rejection is under 35 U.S.C. 103 as being obviated by Kreyenschmidt et al.
It is again noted that MPEP 2123, Section II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). (underline added for emphasis)
Additionally, as stated in MPEP 2123, Section II.:
[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004)/
It is not a requirement that an applied reference exemplify the instant claims in order to meet the instant claims. The rejection outlines how, where, and why the broad density disclosed in Kreyenschmidt et al. meets the instant claims. Citing to examples of the applied reference does not negate the broad teaching of the reference, as explicitly articulated in MPEP 2123.
Furthermore, it is not a requirement that the prior art claim the instant invention in order for the prior art to meet the instant claims. The specification of an application or patent outlines the details and explanation of the intended invention. An obvious rejection is not concerned with what is claimed in prior art rejection. On the contrary, the obvious rejection above cites to where the reference expressly teaches a density which overlaps the density of the instant claims. The rejection properly establishes that the broad teaching of the reference meets the instant claims, regardless of what is exemplified or claimed in the reference.
Applicant alleges that Kreyenschmidt et al. (US 6,800,667) does not teach the combination of the claimed amount of anhydride and the instantly claimed density.
This is not persuasive.
Each of the instantly claimed amount of anhydride, which falls within the range of the instant claims in the examples of Kreyenschmidt et al. (US 6,800,667), and the density of the instant claims, is present in the singly applied Kreyenschmidt et al. (US 6,800,667) reference. Once again, the reference is relevant for all it teaches and is not limited to its examples. One of ordinary skill in the art, given the teachings of Kreyenschmidt et al. (US 6,800,667), would readily be able to select and amount of anhydride falling within the instantly claimed range as well as a density which meets the instant claims given the teaching of a density range from 15 to 300 kg/m3. No modifications are being made. The reference is being used for exactly what it discloses, as it is not limited to the examples and is relevant for all it teaches. It teaches an amount of anhydride which meets the instant claims, and a broad density which overlaps the instant claims. If both were in a single example, the claims would be anticipated by Kreyenschmidt et al. (US 6,800,667). However, it is not a requirement that a reference exemplify each instant claim limitation for the purposes of obviousness. Therefore, Applicant’s argument is not persuasive.
Applicant did not invent addition of 0.25wt% to 3wt% anhydride, based on polyisocyanate, to a polyurethane foam, and Applicants did not invent production of a polyurethane foam having a density in a range of 100 g/L to 450 g/L (or a density of 350 g/L to 450 g/L). Applicant also did not invent these features together as they are both present in the singly applied Kreyenschmidt et al. (US 6,800,667) reference, regardless of what is exemplified in the applied reference. Furthermore, it has long been known to those of ordinary skill, that to change the density of a polymer foam, more or less blowing agent is added. Increased blowing agent results in decreased density, while decreased blowing agent results in increased density. This is disclosed at ¶17 of the applied Kelly, II reference, which expressly states that the density is a function of how much blowing agent is added to the foam composition.
The discussion above is incorporated herein with regards to Applicant’s arguments on page 7 of the Remarks filed on 7/23/2026.
With regards to Applicant’s argument regarding claim 20, claim 20 is non-elected and withdrawn as indicated above.
Claim 19 is rejected as indicated above.
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.
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