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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a flame retardant composition and foam formulation thereof, classified in C08G18/3855.
II. Claims 11 and 14, drawn to polyurethane foam, classified in C08J9/0019.
III. Claims 12 and 13, drawn to a process of creating polyurethane foam, classified in C08G18/14.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as a flame retardant composition for other compositions, such as non-polyurethane materials or to non-foam compositions and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the flame retardant composition can be used in other processes, such as a flame retardant composition for other compositions, such as non-polyurethane materials or to non-foam compositions.
Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the foam product can be created by alternative means, such as a prepolymer process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
There would be a search and/or examination burden as evidenced by the difference in classification between Groups I through III. Also, different search parameters would be required. For instance, a search for rigid polyurethane foams would not result in applicable art for generic flame retardants such as that set forth in claim 1.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Leon Legleiter on 7/17/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention
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 § 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 1-10 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.
Claim 1 requires that the isocyanate-reactive brominated flame retardant be selected from a) mixed ester, b) tribromoneopentyl alcohol, c) dibromoneopentyl glycol, and d) tetrabromobenzenedimethanol, but later indicates the flame retardant can be 2,3-dibromoallyl alcohol when the sulfur compound is diamine. Therefore, the intended scope of the claim is unclear.
As claims 2-10 depend from claim 1, they are rejected for the same issue discussed above.
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.
Conclusion
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
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