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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0149452 to Bogdan et al. (hereinafter Bogdan) in view of US 4,379,861 to Haas et al. (hereinafter Haas).
Regarding Claim 1. Bogdan teaches a polyol premix composition, i.e. a polyol resin blend, comprising:
a polyol/polyhydroxyl compound [0025];
trans-1-chloro-3,3,3-trifluoropropene (1233zd(E)) ([0008] and [0023]), i.e. a halogenated olefinic blowing agent; and
an amine catalyst which may be a morpholine compound ([0029] – [0031]).
Bogdan does not expressly teach the morpholine catalyst has the instantly claimed structure. However, Haas teaches bis(morpholinopropyl)methyl amine as a preferred catalyst for use in the preparation of polyurethane foams (Column 1, Lines 40 – 58; second to last structure depicted in Column 3; and Column 7, Lines 29 – 41). Bis(morpholinopropyl)methyl amine corresponds to a catalyst of the instantly claimed structure in which n is 3 and R is a C1 linear alkyl. Bogdan and Haas are analogous art are as they are from the same field of endeavor, namely polyurethanes. 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 bis(morpholinopropyl)methyl amine as the morpholine catalyst in Bogdan. The motivation would have been that Bogdan teaches its inventive catalysts, among which bis(morpholinopropyl)methyl amine is a preferred species, provide good overall reaction reactivity and reduced odor formation (Column 2, Lines 21 – 67).
Regarding Claim 2. Bogdan teaches the polyol resin blend of Claim 1 may further comprise one or more additional catalysts [0046], i.e. co-catalysts.
Regarding Claim 3. Bogdan teaches the polyol resin blend of Claim 1 may further comprise a metal co-catalyst which is a zinc, bismuth or tin catalyst [0046].
Regarding Claim 4. Bogdan teaches a polyurethane foam formed by reacting the polyol resin blend of Claim 1 with a polyisocyanate [0050] – [0051].
Claims 5 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0149452 to Bogdan et al. (hereinafter Bogdan) in view of US 4,379,861 to Haas et al. (hereinafter Haas).
Regarding Claim 5. Bogdan teaches a process for producing a rigid polyurethane foam [0056] comprising:
mixing a polyisocyanate with a polyol premix composition [0050] – [0051], i.e. a polyol resin blend. The polyol resin blend comprises a polyol/polyhydroxyl compound [0025]; trans-1-chloro-3,3,3-trifluoropropene (1233zd(E)) ([0008] and [0023]), i.e. a halogenated olefinic blowing agent; and an amine catalyst which may be a morpholine compound [0029] – [0031]. The amine catalyst is provided in an amount of preferably about 0.1 to about 2.0 weight percent of the polyol resin blend [0045].
Bogdan does not expressly teach the morpholine catalyst has the instantly claimed structure. However, Haas teaches bis(morpholinopropyl)methyl amine as a preferred catalyst for use in the preparation of polyurethane foams (Column 1, Lines 40 – 58; second to last structure depicted in Column 3; and Column 7, Lines 29 – 41). Bis(morpholinopropyl)methyl amine corresponds to a catalyst of the instantly claimed structure in which n is 3 and R is a C1 linear alkyl. 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 bis(morpholinopropyl)methyl amine as the amine catalyst in Bogdan. The motivation would have been that Bogdan teaches its inventive catalysts, among which bis(morpholinopropyl)methyl amine is a preferred species, provide good overall reaction reactivity and reduced odor formation (Column 2, Lines 21 – 67).
Regarding Claim 6. Bogdan teaches the process of Claim 5 may further comprise providing one or more additional catalysts [0029] – [0046], i.e. co-catalysts.
Regarding Claim 7. Bogdan teaches the process of Claim 6 wherein the one or more co-catalysts may be 1,2-dimethyimidazole [0038] or dimorpholinodiethylether [0032].
Regarding Claim 8. Bogdan teaches the process of Claim 6 wherein the one or more co-catalysts may be a zinc, bismuth or tin catalyst [0046].
Response to Arguments
Applicant's arguments filed June 29, 2026 have been fully considered but they are not persuasive because:
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections to the claims. Accordingly, all outstanding claim objections have been withdrawn.
Rejection Under 35 U.S.C. 103
Applicant argues that it would not have been obvious to a person of ordinary skill in the art to use Haas’ bis(morpholinopropyl)methyl amine in the composition of Bogdan with a reasonable expectation of success. However, both Bodan and Haas prepare polyurethane foams. While Bogdan does not expressly teach bis(morpholinopropyl)methyl amine as a suitable catalyst, Bogdan does set forth morpholine catalysts are suitably used and places no particular limitation on the specific species thereof which may be provided. Secondary reference Haas expressly teaches bis(morpholinopropyl)methyl amine as a suitable morpholine catalyst in the preparation of polyurethane foams. It thus remains the Office’s position that there would be a reasonable expectation of success in the provision of bis(morpholinopropyl)methyl amine as the morpholine catalyst in Haas.
In response to applicant’s arguments that Bogdan broadly discloses the use of morpholine catalysts without teaching the specifically claimed structure of the instant claims, the outstanding rejection relies on the combination of Bogdan with Haas. The Office further respectfully submits that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07.
In response to applicant's argument that Haas addresses general polyurethane foaming systems and predates the use of halogenated olefinic blowing agents, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, Bogdan is relied upon to teach a polyol premix composition comprising an olefin blowing agent and morpholine catalyst. Haas teaches bis(morpholinopropyl)methyl amine is a known morpholine catalyst in the preparation of polyurethane foams and further that it provides good overall reaction reactivity and reduced odor formation (Column 2, Lines 21 – 67). The additional advantages observed by applicant would then flow naturally from the proposed combination of references, in which bis(morpholinopropyl)methyl amine is provided as the morpholine catalyst in the polyol premix comprising a halogenated olefinic blowing agent of Bogdan.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Again, Bogdan expressly teaches morpholine catalysts are suitably used in the preparation of its polyurethane foams and Haas teaches bis(morpholinopropyl)methyl amine is a known species of morpholine catalyst for the preparation of polyurethane foams. Page 4 of the Non-Final Office action also provides evidence for specifically selecting as bis(morpholinopropyl)methyl amine as a morpholine catalyst for the preparation of polyurethane foams. The Office then maintains the position that a person of ordinary skill in the art would have been motivated to combine Bogdan and Haas and that the proposed combination is not based upon improper hindsight.
Applicant additionally argues the instantly claimed catalyst exhibits markedly improved reactivity while maintaining necessary stability in polyurethane systems containing halogenated olefinic blowing agents.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) The Office respectfully submits the examples provided in the instant specification are not commensurate in scope with the instant claims. The examples prepare a specific polyol composition comprising fixed amounts of a specific blend of polyols, 1233zd(E) as the halogenated olefin blowing agent, fire retardants, a silicone surfactant, and 5% of either a species of inventive catalyst (bis(morpholinoethyl)methyl amine) or comparative catalyst (DMDEE). This does not constitute sufficient evidence to conclude that the alleged unexpected results would be achieved in any polyol resin blend encompassed by the instant claims in which any polyhydroxyl compound(s), any halogenated olefin blowing agent, any catalyst having the instantly claimed structure, and any unrecited additives may each be provided in any amount.
Conclusion
THIS ACTION IS MADE FINAL. 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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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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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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