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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 10/1/2026 is acknowledged.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/1/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications Application No. 62/525,596, 62/564,522, and 62/608,206 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, neither the ‘596 provisional nor the ‘522 provisional describes isocyanate-reactive sulfur containing compounds that are disulfides. Neither the ‘596, the ‘522, nor the 206 provisional describes a proviso where if mixed ester is used with diamine, tribromoneopentyl alcohol is also included. Claims 2-10 depend from claim 1 and therefore contain all of the limitations of claim 1. Consequently, the filing date of claims 1-10 are construed as being that of international application US2018/039562, filed 6/26/2018.
Claim Rejections - 35 USC § 103
Claim(s) 1-3 and 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ruebenacker (US 2021/0095072 A1) as evidenced by Anater (US 2013/0197159 A1).
The examiner has reviewed the foreign priority application of Ruebenacker (EP17179783.0) and finds support for the subject matter relied upon below. Therefore, Ruebenacker constitutes prior art under 35 USC 102(a)(2).
Regarding Claims 1 and 2, Ruebenacker teaches polyol compositions containing sulfur-containing polyols with disulfide groups (Abstract; ¶ 19; Examples), construed as “isocyanate-reactive sulfur containing disulfide”. While Ruebenacker does not describe particular compositions of disulfide-containing polyols with the specific isocyanate-reactive brominated flame retardants claimed with sufficient specificity, Ruebenacker nevertheless expressly teaches a wide variety of flame retardants can be used, including dibromoneopentyl glycol, tribromoneopentyl alcohol, and PHT-4-diol (¶ 124). In view of this, it would have been obvious to one of ordinary skill in the art to include flame retardants such as dibromoneopentyl glycol, tribromoneopentyl alcohol, or PHT-4-diol within the compositions of Ruebenacker, thereby predictably affording workable flame retardant polyol compositions in accordance with the teachings of Ruebenacker. As evidenced by Anatar, PHT-4-Diol is a mixed ester of tetrabromophthalic anhydride with diethylene glycol and propylene glycol (¶ 32).
Regarding Claim 3, Ruebenacker teaches embodiments where disulfide polyol constitutes roughly 16 or 41 wt% of a polyol composition (Tables 3 and 4) whereby flame retardant can be included at concentrations spanning 1-70 wt% (¶ 126). Accordingly, Ruebenacker suggests overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ruebenacker suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Ruebenacker. See MPEP 2123.
Regarding Claims 5 and 9, Ruebenacker teaches foam formulations comprising polyol (Polyols 1 and 4), isocyanate-reactive disulfide sulfur compound (Polyol 2 or 3), blowing agent (pentane), catalyst, and surfactant (¶ Tables 3 and 4). While the examples of Ruebenacker do not use the specific isocyanate-reactive brominated flame retardants claimed, Ruebenacker nevertheless expressly teaches a wide variety of flame retardants can be used, including dibromoneopentyl alcohol, tribromoneopentyl alcohol, and PHT-4-diol (¶ 124). In view of this, it would have been obvious to one of ordinary skill in the art to include flame retardants such as dibromoneopentyl alcohol, tribromoneopentyl alcohol, or PHT-4-diol within the compositions of Ruebenacker, thereby predictably affording workable flame retardant polyol compositions / foams in accordance with the teachings of Ruebenacker. As evidenced by Anatar, PHT-4-Diol is a mixed ester of tetrabromophthalic anhydride with diethylene glycol and propylene glycol (¶ 32).
Regarding Claim 6, Ruebenacker teaches both polyester and polyether polyols (Tables 3 and 4; ¶ 225, 228).
Regarding Claim 7, Ruebenacker teaches functionalities spanning 2-6 (¶ 98), which overlap the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ruebenacker suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Ruebenacker. See MPEP 2123.
Regarding Claim 8, Ruebenacker teaches various blowing agents such as water or halogenated hydrocarbons/olefins (¶ 108-109).
Regarding Claim 10, Ruebenacker reads on claim 5 where the aromatic diamine is further defined as a mixture of 3,5-dimethylthio-toluene-2,4-diamine and 3,5-dimethylthio-toluene-2,6-diamine.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Letko (WO 2018/111750 A1) in view of Rudner (U.S. Pat. No. 4,052,346).
Regarding Claims 1, 2, and 4, Letko teaches polyurethanes formed from sulfur containing polyols and flame retardants (Abstract; ¶ 30,37). The sulfur containing polyester polyols can be derived from disulfide materials such as 2,2’-dithiodiethanol / 2-hydroxyethyl disulfide (¶ 15, 22). Therefore, embodiments where the polyol is an “isocyanate-reactive sulfur containing disulfide” is suggested by Letko. Moreover, Letko teaches 2,2’-dithiodiethanol as a chain extender (¶ 28), synonymous with bis(2-hydroxyethyl)disulfide. Letko differs from the subject matter claimed in that the particular flame retardants of the claims are not described.
Rudner teaches tribromoneopentyl alcohol is a known flame retardant suitable for use within polyurethane (Abstract). Accordingly, it would have been obvious to one of ordinary skill in the art to incorporate tribromoneopentyl alcohol into the polyurethane compositions of Letko, thereby achieving the predictable result of enhanced flame retardancy characteristics in accordance with the teachings of Rudner.
Regarding Claim 3, Letko teaches sulfur-containing polyester polyol can be present in concentrations spanning 1-99 wt% of the isocyanate-reactive component additive component, inclusive of flame retardant, can be present in amounts spanning 0.1-60 wt% of the isocyanate-reactive component (¶ 8). Rudner teaches the amount of tribromoneopentyl alcohol is not critical and depends upon the degree of flame-retardancy required, although 3-30 pbw per 100 pbw polyol can be used (Col. 5, Lines 59-64). Accordingly, the prior art suggests overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Rudner suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Rudner. See MPEP 2123. Alternatively, with respect to flame retardant quantity, the express teachings of Rudner convey the amount of flame retardant to be a result effective variable subject to routine experimentation by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal flame retardant quantities within the scope of the present claims so as to produce desirable flame retardancy effects in view of the teachings of Rudner.
Regarding Claims 5, 6, 8, and 9, Letko teaches foam formulations comprising disulfide polyol, water blowing agent, catalyst, and surfactant (Table 5). Additional polyether and/or polyester polyols can be included (¶ 24). Letko differs from the subject matter claimed in that the particular flame retardants of the claims are not described.
Rudner teaches tribromoneopentyl alcohol is a known flame retardant suitable for use within polyurethane (Abstract). Accordingly, it would have been obvious to one of ordinary skill in the art to incorporate tribromoneopentyl alcohol into the polyurethane compositions of Letko, thereby achieving the predictable result of enhanced flame retardancy characteristics in accordance with the teachings of Rudner.
Regarding Claim 7, Letko teaches functionalities spanning 3-8 (¶ 24), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Letko suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Letko. See MPEP 2123.
Regarding Claim 10, Letko reads on claim 5 where the aromatic diamine is further defined as a mixture of 3,5-dimethylthio-toluene-2,4-diamine and 3,5-dimethylthio-toluene-2,6-diamine.
Response to Arguments
Applicant's arguments filed 10/1/2026 have been fully considered but they are not persuasive.
Applicant argues the cited prior art fails to describe an alleged “mandatory three-component system” of sulfur-containing aromatic diamine, mixed ester, and tribromoneopentyl alcohol within the claims. This is not found persuasive as the claims clearly do not require such a combination. Rather, the claims only mandate the presence of mixed ester and tribromoneopentyl alcohol should a sulfur-containing aromatic diamine be present.
Applicant alleges the examiner is engaging in “picking and choosing” with respect to the listed flame retardants at issue with respect to Ruebenacker. This is not found persuasive. The rejections at issue are not anticipation rejections. Ruebenacker teaches one can use the flame retardants at issue and reasonably expect the creation of flame retardant foams. Therefore, the use of such flame retardants would have been obvious in view of the cited art. Applicant’s argumentation with respect to “aromatic diamine” is unclear as Ruebenacker’s express disclosure of sulfur-containing polyols with disulfide groups meets the claim.
Applicant argues unexpected results with respect to a composition of sulfur-containing aromatic diamine, mixed ester, and tribromoneopentyl alcohol with respect to dimensional stability characteristics, referring to Runs 13 and 14 of Table C-2 and Run 28 within Table C-4 of the specification. This is not found persuasive. Runs 14 and 16 of Table C-2 reveal dimensional stabilities on the order of roughly -3.16 and +0.93 appear to be ordinary experimental deviations that occur over the foaming/aging process. The Examiner finds insufficient evidence of dimensional stability characteristics that are significant to the extent that they can be regarded as unexpected. This notwithstanding the claims at issue are not commensurate in scope with the evidence relied upon in support of the alleged unexpected results.
With respect to Letko, Applicant argues the cited art fails to obviate the further inclusion of mixed ester. This is not found persuasive as the claims do not require the presence of mixed ester for instances where disulfide is present.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
