DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant's election with traverse of Group I, claims 1-10 in the reply filed on August 10, 2026 is acknowledged. The traversal is on the ground(s) that the pre-mixture of a silicone resin solubilized in a blowing agent gives lower K factor, as shown by Comparative Example 12 of instant specification. This is not found persuasive because of the following:
1) the inventions of Groups I-V 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, which are the limitations of claim 1.
2) Instant claim 1 is silent with respect to any properties, specifically K-factor as argued by Applicant.
3) If both the silicone resin and blowing agent are mixed in the same composition, said silicone resin would be reasonably expected to be at least partially and at least in a minor amount mixed and solubilized by said blowing agent; instant claim 1 does not specify the level of said solubilization. Even in making the composition of Emmrich-Smolczyk et al (US 2016/0304685), given the silicone resin and blowing agent are added to the mixing chamber first, before polyol and isocyanate, they will intrinsically and necessarily be at least partially mixed and solubilized as well. Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
4) Though Comparative Example 12 of instant specification shows K-factor of 29.4 mW/m.K, which is higher than K-factor of inventive examples 6-9 (19.4-20.4 mW/m.K), the composition of Comparative Example 13 does not have an organopolysiloxane resin at all, and thereby does not have a solubilized organopolysiloxane present, but still show K-factor of as low as 19.4 mW/m.K (see Table 10 of instant specification). Comparative Example 4 was based on mixing the organopolysiloxane resin with blowing agent before mixing with other components, but still shows K-factor of 25.3 mW/m.K , i.e. higher than inventive examples 1-5 (Tables 5-6 of instant specification). Therefore, there is no substantial evidence that the premixing and solubilization of the organopolysiloxane in the blowing agent is the only factor determining the value of K-factor.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 10, 2026.
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.
3. Claims 7 and 9 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.
4. Claims 7 and 9 refer to components (A), (B), (C) and (D), but do not have preposition “the” or “said” in from of those; therefore, it is not clear if said components are the same or different from those claimed in claim 1.
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.
5. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Glos et al (EP 3,677,610) in view of Emmrich-Smolczyk et al (US 2016/0304685), as evidenced by Craton (US 6,139,957) and Ejiri et al (US 2007/0219281).
It is noted that while the rejection is made over EP 3,677,610 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0041829 is relied upon. All citations to paragraph numbers, etc, below refer to US 2022/0041829.
6. Glos et al discloses a composition for preparing polyurethane foam comprising:
A) an isocyanate;
B) a polyol;
C) a catalyst and
D) a mixture of polyalkylsiloxane (PAS), hydrocarbons (HC) and polyether-modified siloxane (PES) ([0034], [0042]),
wherein the PAS, the hydrocarbons and the PES are added as a mixture ([0034], [0045], Abstract);
wherein the hydrocarbons include dodecane and tetradecane ([0040]).
As evidenced by Craton and Ejiri et al, both dodecane and tetradecane are taught in the art as being blowing/foaming agents (Abstract of Ejiri et al and col. 7, lines 50-52 of Craton).
7. Thus, the component D) comprises a mixture of hydrocarbons that act as foaming agents (as to instant claim 5) and silicone resins, and said component is specifically taught as being added as a mixture. Since the mixture of the components D) is substantially the same as that claimed in instant invention, i.e. comprises a combination of liquid hydrocarbons, PAS and PES, therefore, said silicone resins PAS and PES will intrinsically and necessarily be, or would be reasonably expected to be, at least partially, solubilized by said liquid hydrocarbons as well.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. The PAS is having the following formula ([0047]-[[0056]):
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Wherein:
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And
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9. As to instant claim 6, the PAS is present in the mixture of the component D) ([0126]), with a weight ratio of PAS to PES of 1:5 ([0044]), that is in amount of greater than zero.
10. As to instant claim 7, the isocyanate index is 150-550 ([0157]) and the form is polyisocyanurate foam ([0134]).
11. As to instant claim 8, the polyol comprises polyether polyol or polyester polyol ([0146]).
12. As to instant claim 10, the composition further comprises additives including surfactants and nucleating agents ([0175]).
13. Glos et al does not explicitly recite the PAS having the structure comprising the content of units as cited in instant claims, and the isocyanate component stored separately from other components.
14. However, Emmrich-Smolczyk et al discloses a composition for preparing a polyurethane foam ([0030]) comprising a polyol component, an isocyanate component, a catalyst ([0016], [0031]-[0035], [0040]), a blowing agent including hydrocarbons ([0043]) and further silicone compounds as stabilizers ([0045]), wherein the silicone compound is having the following formula (IV) ([0046]-[0048]):
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15. Based on the teachings of Emmrich-Smolczyk et al, it would have been obvious to a one of ordinary skill in the art to choose and use the silicone resin of Formula (IV) having R1 and R2 as methyl; k of 4 or 5; p of 5 and m, n and o as zeros, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
16. Thus, given R1 and R2 are methyl; k is 5; p is 5 and
m, n and o are zeros, the silicone of formula (IV) will intrinsically and necessarily consist of
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and
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units (as to instant claim 4), and therefore the molar amount of said units will be more than 85%mol, and the content of
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will intrinsically and necessarily be at least 20%mol and the content of
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units will intrinsically and necessarily be at least 40%mol based on the combined amount of all units (as to instant claim 1, 2). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
17. Further, given R1 and R2 are methyl, the unit
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(Molar mass 81) having k=4 and the unit
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(Molar mass 60) having p=5, therefore, the molar ratio of said units
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to
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will be 0.52 : 0.48, or 1.08 :1 (as to instant claim 3). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
18. All ranges in the composition of Emmrich-Smolczyk et al are overlapping with the corresponding ranges of those as claimed in instant invention. 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).
19. As to instant claim 9, the polyol, catalyst, additives and the silicone stabilizer are premixed and stored separately; the isocyanate is then added to said premix ([0075] of Emmrich-Smolczyk et al).
20. Since both Emmrich-Smolczyk et al and Glos et al are related to compositions for preparing polyurethane foams, the compositions comprising polyol, an isocyanate, catalyst and further silicone resins, and thereby belong to the same field of endeavor, wherein Emmrich-Smolczyk et al discloses the use of silicone resin having the formula (IV) above used as a stabilizer in such compositions ([0044]-[0045] of Emmrich-Smolczyk et al), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Emmrich-Smolczyk et al and Glos et al, and to use, or obvious to try to use, at least partially the silicone resin of formula (IV) of Emmrich-Smolczyk et al as the PAS in the mixture of component D) of Glos et al, since such silicone resin is specified as being used as a stabilizer in said composition, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
21. Claims 1-6, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Landers et al (US 8,034,848) in view of Emmrich-Smolczyk et al (US 2016/0304685).
22. Landers et al discloses polyurethane foams produced from a composition comprising:
A) polyols including polyether polyols (col. 19, lines 36-40, as to instant claim 8);
B) isocyanate including MDI (col. 18, lines 23-26);
C) a catalyst (col. 19, line 65-col. 20, line 25) and
D) a stabilizer solution,
wherein the stabilizer solution comprises polyethersiloxane, surfactant, water (Abstract, col. 2, lines 20-25) and further includes blowing agents (col. 8, lines 59-61), wherein the blowing agents used to form said foam include hydrocarbons such as n-pentane, cyclopentane or halogenated hydrocarbons (col. 17, lines 50-55, as to instant claim 5).
Based on the teachings of Landers et al, it would have been obvious to a one of ordinary skill in the art to choose and use hydrocarbons or halogenated hydrocarbons as the blowing agents, and further to include said blowing agents, at least partially, into the stabilizer solution component D) as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
23. The component D) of the composition of Landers et al is specified as being a solution and comprises blowing agents, therefore the silicone resins present in the solution will intrinsically and necessarily be at least partially solubilized by said blowing agents as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
24. As to instant claim 9, polyol, water, catalysts and the stabilizer are premixed first, followed by addition of the isocyanate (col. 26, lines 8-14). Thus, it would have been obvious to a one of ordinary skill in the art that the isocyanate is separated from other components to avoid premature reaction.
25. As to instant claim 10, the composition further comprises surfactants (col. 26, lines 50-55).
26. Landers et al does not recite the stabilizer solution component D) further comprising a silicone resin comprising the content of units as cited in instant claims.
27. However, Emmrich-Smolczyk et al discloses a composition for preparing a polyurethane foam ([0030]) comprising a polyol component, an isocyanate component, a catalyst ([0016], [0031]-[0035], [0040]), a blowing agent including hydrocarbons ([0043]) and further silicone compounds as stabilizers ([0045]), wherein the silicone compound is having the following formula (IV) ([0046]-[0048]):
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28. Based on the teachings of Emmrich-Smolczyk et al, it would have been obvious to a one of ordinary skill in the art to choose and use the silicone resin of Formula (IV) having R1 and R2 as methyl; k of 4 or 5; p of 5 and m, n and o as zeros, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
29. Thus, given R1 and R2 are methyl; k is 5; p is 5 and
m, n and o are zeros, the silicone of formula (IV) will intrinsically and necessarily consist of
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and
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units (as to instant claim 4), and therefore the molar amount of said units will be more than 85%mol, and the content of
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will intrinsically and necessarily be at least 20%mol and the content of
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units will intrinsically and necessarily be at least 40%mol based on the combined amount of all units (as to instant claim 1, 2). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
30. Further, given R1 and R2 are methyl, the unit
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(Molar mass 81) having k=4 and the unit
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(Molar mass 60) having p=5, therefore, the molar ratio of said units
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to
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will be 0.52 : 0.48, or 1.08 :1 (as to instant claim 3). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
31. All ranges in the composition of Emmrich-Smolczyk et al are overlapping with the corresponding ranges of those as claimed in instant invention. 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).
32. As to instant claim 9, the polyol, catalyst, additives and the silicone stabilizer are premixed and stored separately; the isocyanate is then added to said premix ([0075] of Emmrich-Smolczyk et al).
33. Since both Emmrich-Smolczyk et al and Landers et al are related to compositions for preparing polyurethane foams, the compositions comprising polyol, an isocyanate, catalyst and further silicone resin-based stabilizers, and thereby belong to the same field of endeavor, wherein Emmrich-Smolczyk et al discloses the use of silicone resin having the formula (IV) above used as a stabilizer in such compositions ([0044]-[0045] of Emmrich-Smolczyk et al), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Emmrich-Smolczyk et al and Landers et al, and to use, or obvious to try to use, at least partially, such as in minor amount of more than zero percent (as to instant claim 6) the silicone resin of formula (IV) of Emmrich-Smolczyk et al as additional stabilizer in the stabilizer solution component D) of Landers et al, since such silicone resin is specified as being used as a stabilizer in said composition, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
34. Given the silicone resin of formula (IV) is added to the component D) of Landers et al that comprises the blowing agents, therefore, said silicone resin of formula (IV) would be reasonably expected to be at least partially solubilized by said blowing agents as well. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
35. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Landers et al (US 8,034,848) in view of Emmrich-Smolczyk et al (US 2016/0304685) and Tokumoto et al (US 6,307,102).
36. The discussion with respect to Landers et al (US 8,034,848) in view of Emmrich-Smolczyk et al (US 2016/0304685), set forth in paragraphs 21-34 above, is incorporated here by reference.
37. Though Landers et al in view of Emmrich-Smolczyk et al disclose a flexible polyurethane foam produced from an isocyanate and a polyol, in the presence of amine catalyst (col. 17, 35-40; col. 20, lines 1-20 of Landers et al), Landers et al in view of Emmrich-Smolczyk et al do not teach the isocyanate index and the foam being a polyisocyanurate foam.
38. However, Tokumoto et al discloses flexible polyurethane foams and polyisocyanurate foams produced by a reaction of an isocyanate and polyol in the presence of amine catalyst (Abstract, col. 1, lines 6-10), wherein Tokumoto et al explicitly teaches that a polyol-isocyanate index should be 60-130 in a polyurethane product production and in the range of 150-400 in polyisocyanurate containing product (col. 5, lines 50-57).
Thus, Tokumoto et al explicitly teaches that depending on the specifically chosen equivalent number of isocyanate group in isocyanate component per number of active hydrogen in the polyol index (i.e. isocyanate index), either polyurethane foam or polyisocyanurate foam can be produced.
39. Since both Tokumoto et al and Landers et al are related to a flexible polyurethane foams produced from an isocyanate and a polyol, in the presence of amine catalyst, and thereby belong to the same field of endeavor, wherein Tokumoto et al teaches that depending on the specifically chosen equivalent number of isocyanate group in isocyanate component per number of active hydrogen in the polyol index (i.e. isocyanate index), either polyurethane foam or polyisocyanurate foam can be produced, and the isocyanate index in the range of 150-400 leads to producing polyisocyanurate foam, therefore, given the foam produced from the composition of Landers et al in view of Emmrich-Smolczyk et al is desired to have polyisocyanurate structure, it would have been obvious to a one of ordinary skill in the art to choose and use the isocyanate index in said reaction in the range of 150-400, as taught by Tokumoto et al as well, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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