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 Objections
Claims 36 and 37 are objected to because of the following informalities:
it is suggested Claim 36 be amended to recite “wherein the composition further comprises polyester-polysiloxane block copolymers” in lines 3 – 4;
the proviso in Claim 36 that at least one radical R3 must be present in the molecule appears redundant, as the requirement that “b” be 1 – 20 necessarily provides for the presence of 1 – 20 radicals R3 in each molecule;
it is suggested that the definition of “d=2 to 80” in Claim 36 be relocated to appear after the line “R8 = H”, as d is part of the polyester radical of Formula 2;
the definition of R10 should also be relocated to appear after the definition of R13 in Claim 36, as R10 is set forth for the first time in the definition of R13; and
Claim 37 should be amended to recite “–(CH2)3–”.
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 40 and 48 – 50 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:
There is a lack of antecedent basis for “the” cyclic esters recited in Claim 40. It is unclear to which of the previously recited one or more cyclic esters are referred by this phrase. For the purposes of examination, Claim 40 will be interpreted as setting forth the one or more cyclic esters.
Claims 48 – 49 set forth the composition further comprises one or more foam stabilizers. However, the polyester-polysiloxane block copolymers set forth in the instant claims are described as foam stabilizers. It is then unclear if the one or more foam stabilizers recited in Claims 48 and 49 encompass the polyester-polysiloxane block copolymers. Additionally, Claims 48 – 50 do not specify what has a total amount of foam stabilizers. For the purposes of examination, Claim 48 will be interpreted as setting forth “The composition of claim 36, wherein siloxane-based foam stabilizers comprising exclusively polyethers are present to an extent, based on a total amount of foam stabilizers in the composition, of less than 10% by weight”. Claim 49 will be interpreted as setting forth “The composition of claim 36, wherein Si-containing foam stabilizers are present to an extent, based on a total amount of foam stabilizers in the composition, of more than 20% by weight”. Claim 50 will be interpreted as setting forth “The composition of claim 49, wherein Si-containing foam stabilizers are present to an extent, based on the total amount of foam stabilizers in the composition, of more than 50% by weight”.
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 36 – 50 are rejected under 35 U.S.C. 103 as being unpatentable over US 3,778,458 to Morehouse.
Regarding Claims 36 and 37. 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 lactone/polyester siloxane block copolymer as a surfactant (Column 13, Lines 51 – 69). The catalyst serves to accelerate the isocyanate/reactive-hydrogen reaction (Column 15, Lines 57 – 58), corresponding to the reaction which forms the urethane linkages of the polyurethane.
The surfactant prepared in Example 4 and utilized in Example 7 has the following formula:
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(Column 17, Lines 20 – 50 and Column 18, Lines 15 – 33). The surfactant prepared in Example 4 therefore corresponds to the polyester-polysiloxane block copolymers of instantly claimed formula 1 in which R1 is methyl, i.e. an aliphatic C1 hydrocarbon radical; R2 is methyl and therefore the same as R1; R3 is the polyester radical CH3CO(OC5H10CO)-5.6(OC2H4)2O(CH2)3; R4 is not present, as c is zero; a is 13; and b is 5.5.
The polyester radical CH3CO(OC5H10CO)-5.6(OC2H4)2O(CH2)3 corresponds to a polyester radical of instantly claimed general formula 2 in which R5 is -(CH2)3O(OC-2H-4)2-, i.e. a divalent alkyl radical interrupted by one or more carbon atoms; R6 is oxygen; R7 is -C5H10-, i.e. an alkyl radical of general formula –[CR92]e in which R9 is H and e is 5; and d is 5.6.
Morehouse teaches R8 corresponds to -C(O)CH3 in the surfactant prepared in Example 4, rather than hydrogen as instantly claimed. However, in the general disclosure, Morehouse teaches the terminal group R’ may instead correspond to hydrogen (Column 9, Lines 40 – 65). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the polyester radical in the surfactant of Example 4 of Morehouse with a terminal hydrogen, such the radical is capped with a hydroxyl (OH) group, instead of a -C(O)CH3 group. The motivation would have been that the presence of a hydroxyl end group would provide for a surfactant that is isocyanate-reactive and which can thereby be permanently incorporated into the structure of the polyurethane polymer.
Regarding Claims 38 – 40. Morehouse teaches the composition of Claim 36. Morehouse teaches substantially identical polyester-siloxane block copolymers to those set forth in instant Claim 18 as detailed in the rejection thereof.
While Morehouse does not expressly teach the polyester-siloxane block copolymers are obtained by reaction of the claimed ingredients, the synthesis of the polyester-siloxane block copolymers via the claimed ingredients is a product-by-process limitation that is not further limiting in as so far as the structure of the product is concerned. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113)
Regarding Claims 41 – 43. Morehouse teaches the composition of Claim 36 may be used in the preparation of a rigid foam (Column 13, Lines 51 – 57). In Example 7, the polyester-polysiloxane block copolymers are provided in an amount of 1.5 parts by weight per 100 parts by weight of the polyol component used in Example 7 (Column 18, Lines 16 – 33).
Regarding Claim 44. Morehouse teaches the composition of Claim 36 wherein the blowing agents may include butane (Column 15, Lines 42 – 44), i.e. a hydrocarbon having four carbon atoms.
Regarding Claims 45 and 46. Morehouse teaches the composition of Claim 36 wherein the blowing agents may include water (Column 15, Lines 22 – 25).
Regarding Claim 47. Morehouse teaches the composition of Claim 36. The polyester radical of the surfactant prepared in Example 4 in Morehouse and depicted in the rejection of instant Claim 17 contains a side chain comprising the polyether group (OC2H4)2O(CH2)3.
Regarding Claim 48. Morehouse teaches the composition of Claim 36. In Example 7, the only foam stabilizer provided is the polyester-polysiloxane block copolymer prepared in Example 7. 0 weight percent of the foam stabilizers in the compositions are thus siloxane-based foam stabilizers comprising exclusively polyethers, as defined in the instant specification (see [0040] of the PG-PUB of the instant application).
Regarding Claims 49 and 50. Morehouse teaches the composition of Claim 36. In Example 7, the only foam stabilizer provided is the polyester-polysiloxane block copolymer prepared in Example 7. 100 weight percent of the foam stabilizers in the composition are thus Si-containing.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered. The Office responds as follows:
Claim Objections
Applicant indicates that the matters objected to in the previous pending claims are not believed to be present in the new claims. The Office agrees, except with respect to the proviso in Claim 36 that at least one radical R3 must be present in the molecule appears redundant. This particular claim objection has consequently been maintained. Additionally, Claims 36 and 37 contain several new, minor formalities which are detailed in the new objections to the claims above.
Rejection of Claims Under 35 U.S.C. 112
The Office agrees that the newly presented claims do not contain the subject matter which was previously rejected under 35 U.S.C. 112(b). However, Claims 40 and 48 – 50 do raise several new issues of indefiniteness, which are detailed in the new grounds of rejection under 35 U.S.C. 112(b) above.
Rejection of Claims Under 35 U.S.C. 102
The Office agrees that Morehouse does not anticipate the new claims, as the reference does not expressly disclose polyester-polysiloxane block copolymers of instantly claimed Formula 1 in which the polyester radicals correspond to instantly claimed general Formula 2 and in which R8 of Formula 2 is hydrogen.
Rejection of Claims Under 35 U.S.C. 103
A) Applicant argues that Morehouse teaches away from a hydroxyl capped surfactant because it affirmatively performs acetoxy capping in the relied upon example, thereby demonstrating an intentional choice to provide an acetoxy-capped surfactant. However, 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 reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123)
Thus, while the Office does acknowledge that the surfactant of Example 4 is acetoxy capped, this does not constitute a teaching away from the broader disclosure of Morehouse. Morehouse teaches in its general disclosure that the terminal group R’ may correspond to hydrogen instead of an acyl group (Column 9, Lines 40 – 65), thus providing evidence of obviousness is substituting one group for the other in its surfactants.
B) Applicant argues that Morehouse teaches a broad genus list for R’. However, the possible species for R’ fall into three categories: hydrogen, unsaturated aliphatic carbon groups, and acyl groups. Moreover, when a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex part A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (MPEP 2131) Thus, the comprehensiveness of the list of possible R’ moieties including hydrogen does not negate the fact that hydrogen is specifically taught by Morehouse.
C) Applicant argues that Morehouse does not provide a teaching to substitute an hydroxyl group for the acyl group originally provided in Example 4. However, the rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings).
As detailed above, Morehouse teaches both hydroxyl and acyl groups are suitably used to cap the disclosed surfactants, thus providing evidence of substituting one for the other at the polyester terminals of these compounds. Moreover, persons of ordinary skill in the art would readily recognize it is advantageous to provide surfactants with hydroxyl groups such that they react with isocyanate and become incorporated into the polyurethane polymer (see, e.g. Column 7, Lines 37 – 45 of US 4,264,743 and Column 1, Lines 20 – 23 of US 5,180,061).
D) Applicant additionally argues that the acetoxy-capped product of Example 4 is satisfactory in practice and the reference does to supply a reason to modify that working system to require hydroxyl termination. However, the Office maintains the position that it would have been obvious to modify Example 4 of Morehouse to provide a hydroxyl-capped product for at least the reasons in sections A) – C) above.
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.
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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