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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 27, 2026 has been entered.
Claim Objections
Claims 36, 41 – 43, and 47 – 50 are objected to because of the following informalities:
the second recitation of the phrase “d = 2 to 80” in Claim 36 should be deleted;
it is suggested Claims 41 – 43 be amended to recite the polyester-polysiloxane block copolymers are provided;
it is suggested Claim 47 be amended to recite “wherein at least one R2 radical corresponds to R4.”; and
it is suggested Claims 48 – 50 be amended to recite “10% by weight of the composition”.
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 36 – 51 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 because:
Claim 36 now sets forth “wherein at least two different R7 radicals are present in the polyester radical of Formula 2, the polyester repeat units comprising a caprolactone residue and a residue of lactide, butyrolactone, valerolactone, or propiolactone”. These limitations conflict in scope with the earlier recited limitations that R3 and R7 are identical or different radicals, as all R3 and R7 radical cannot all be identical radicals and satisfy the aforementioned new limitation set forth. These new limitations also conflict in scope with the earlier recited limitation that R3 is at least one radical, as at least two R3 radicals now must necessarily be present. There is also a lack of antecedent basis for “the” polyester repeat units set forth, as it is unclear which polyester radicals are being referred to by this phrase. It is further unclear how at least two different R7 radicals are present in the polyester radical of Formula 2. For the purposes of examination, Claim 36 will be interpreted as setting forth “R3 = twos R3 must have the structure of Formula 2…R7 = 7 radicals are provided, such that at least one radical R3 comprises a caprolactone residue and at least one radical R3 comprises a residue of lactide, butyrolactone, valerolactone, or propiolactone.”
Claim 36 sets forth R10 = identical or different alkyl radicals having 1 to 16 carbon atoms. There is a lack of antecedent basis for R10 in this phrase, as the claim does not set forth an R10 moiety prior to this recitation. For the purposes of examination, the aforementioned phrase will be interpreted as not further limiting the claim.
Claim 36 now requires the presence of a caprolactone residue and a residue of lactide, butyrolactone, valerolactone, or propiolactone in polyester radicals R3. It is then unclear how the limitations set forth in Claim 37 with respect to R5, R6, and R7 in the polyester radicals now integrate with the required presence of the aforementioned residues. Additionally, Claim 37 sets forth definitions for R9 and “e”. There is a lack of antecedent basis for R9 and “e”, as the claims do not set forth R9 or “e” prior these recitations. For the purposes of examination, Claim 37 will be interpreted as only setting forth definitions for R2, a, b, and c.
The metes and bounds of Claims 41 – 43 are not clearly defined. The claims set forth “parts” but do not specify how these parts are measured. For the purposes of further examination, Claims 41 – 43 will be interpreted as setting forth parts by weight in each instance.
There is a lack of antecedent basis for “the” polyester repeat units of Formula 2 in Claim 51. The claims do not previously set forth the units of Formula 2 are repeat units. For the purposes of further examination, Claim 51 will be interpreted as simply setting forth the at least two radicals R3 of Formula 2.
As all other pending claims ultimately depend on at least Claim 36, they incorporate the subject matter thereof and are also therefore rejected under this statute.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 38 – 40 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 36 now requires the presence of a caprolactone residue and a residue of lactide, butyrolactone, valerolactone, or propiolactone in polyester radicals R3, corresponding to polyester-polysiloxane copolymers prepared from at least two specific cyclic ester compounds. Claims 38 – 40 does not then appear include all limitations of Claim 36.
Claim 38 sets forth the polyester-polysiloxane copolymers are obtained by reacting one or more cyclic esters, cyclic dimer, or higher analogues thereof. Claim 39 requires at least two or more different cyclic esters be provided but not the specifically claimed cyclic ester compounds. Claim 40 sets forth the same species of cyclic ester compound set forth in Claim 40 but only requires the presence of one of these species.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 36, 37, and 41 – 51 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or suggest a composition of producing polyurethane foam comprising all of the instantly claimed ingredients, including polyester-polysiloxane block copolymers of Formula 1 in which at least two different R7 radicals are provided, such that at least one radical R3 comprises a caprolactone residue and at least one radical R3 comprises a residue of lactide, butyrolactone, valerolactone, or propiolactone.
US 3,778,348 to Morehouse corresponds to the closest prior art. Morehouse teaches a composition for producing a foamed polyurethane material (Column 2, Lines 1 – 4). The composition comprises an organic polyisocyanate, a polyol, a blowing agent mixture, a catalyst, and a polyester siloxane block copolymer as a surfactant (Column 13, Lines 51 – 69). In Example 4, Morehouse teaches a polyester siloxane block copolymer having the instantly claimed formula which comprises R7 radicals corresponding to caprolactone residues and R8 as an acetoxy group. The exemplary surfactant of Morehouse differs from the instant claims in that it does not further comprises an R7 radical comprising a residue of lactide, butyrolactone, valerolactone, or propiolactone and R8 is acetoxy group instead of hydrogen. While Morehouse does suggest hydrogen may be provided as a terminal group in the general disclosure, the focus of Morehouse is on the preparation of polycaprolactone siloxanes. Thus, the reference provides no guidance to partially substitute the caprolactone residues with a residue of lactide, butyrolactone, valerolactone, and/or propiolactone. Nor does any other reference provide the necessary teaching or guidance which lead a person of ordinary skill in the art to make such as substitution to the exemplary surfactant of Morehouse. The prior art thus neither anticipates nor renders obvious the claimed invention.
Response to Arguments
Applicant's arguments filed May 27, 2026 have been fully considered and are found persuasive. The Office agrees that the present amendments to claims are sufficient to overcome the outstanding claim objections and rejections under 35 U.S.C. 112(b) and 103. However, the amendments do raise new issues which are detailed under the corresponding claim objections and rejections under 35 U.S.C. 112(b) and (d).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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