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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 3 and 4 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.
Regarding Claim 3,
The applicant states that the second polyol comprises a 10-60% by weight non-volatile phase, however it is unclear from the claim language what this limitation requires as a polyol meeting the required range for the hydroxyl value would have a molecular weight of over 2,000 and would thus not be volatile. This term also does not appear to be defined within the applicant’s specification and as a result, it cannot be determined what limitation is intended to be imparted onto the second polyol, rendering the claim to be indefinite. The applicant is required to revise the claim language to clarify what is meant by a non-volatile phase to remove the ambiguity. For the purposes of examination, the second polyol will be interpreted to mean a polyol that may or may not be mixed with or attached to a non-polyol polymer.
Claim 4 is rejected based upon its dependence upon claim 3.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Otero Martinez (WO 2022003022, herein using US version US 20230265233) in view of Sung (KR 20180031400, Foreign Patent Document #5 from IDS dated 1/18/2024).
Regarding Claim 1,
Otero Martinez teaches a composition that includes a polyol mixture (Abstract) and at least one isocyanate (Abstract) in which the ratio of isocyanate to polyol is preferred to be from 1:5 to 5:1 (Paragraph 72), overlapping with the range of the instant claim. One of ordinary skill in the art would recognize that the ratio of polyol to isocyanate would affect properties such as strength and flexibility in the final polyurethane and that the amount of isocyanate required would also vary based upon the hydroxyl value of the polyols. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Otero Martinez further teaches that the composition includes a flame retardant (Paragraph 95), which Otero Martinez teaches can include expandable graphite (Paragraph 96) and phosphorus-based compounds (Paragraph 95). Otero Martinez additionally teaches that the composition includes a blowing agent (Paragraph 98), which reads upon a foaming agent. Further, Otero Martinez teaches that other additives such as surfactants, fillers, and pigments may be used (Paragraph 93).
While Otero Martinez teaches the use of phosphorus-based flame retardants, Otero Martinez does not teach the use of a phosphorus-based flame retardant that includes hydroxyl groups. Sung teaches a phosphorus-based flame retardant of the following structure:
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in which R is an alkyl group (Paragraph 10). Sung teaches that compounds of this type have the advantage of lacking halogens as is often the case with flame retardants (Paragraph 4), and that such compounds are chemically bonded to the polyurethane (Paragraph 46), exhibit flame retardant properties even at low levels (Paragraph 47), and have low viscosity and improve pot-life (Paragraph 48). These improvements would afford the ordinarily skilled artisan with the motivation to have used this type of phosphorus flame retardant over other options. As such, it would have been obvious prior to the effective filing date of the instant application to have used the phosphorus flame retardant of Sung in the composition of Otero Martinez to obtain the predictable result of a flame retardant polyurethane foam with a reasonable expectation of success.
Regarding Claim 2,
Otero Martinez teaches the use of foaming agent in amounts of 1:14 to 1:6 relative to all isocyanate reactive components (Paragraph 98), which when including the weight of other components such as flame retardant and additives would overlap with the range of the instant claim. Otero Martinez further teaches other additives can comprise preferably 0.5 to 5% by weight relative to the polyol (Paragraph 94), overlapping with the range of the instant claim. As the amount of foaming in the composition would be affected by the amount of foaming agent and because additives such as surfactants would affect the final properties of the cured composition, It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. Otero Martinez in view of Sung also teaches the use of the flame retardant compounds required, with Sung teaching that the phosphorus based flame retardant to be used in amounts of 6 to 25% by weight (Paragraph 47). While Otero Martinez does not teach a range for the flame retardant use, one of ordinary skill in the art would recognize that the flame retardant properties would increase with increasing amounts of flame retardant but that high levels may lead to adverse effects, which Sung notes include increased curing time (Paragraph 47). As such, the ordinarily skilled artisan would adjust the amounts to achieve the desired level of flame retardant properties without adversely affecting the other properties of the composition. As such it would have been obvious prior to the effective filing date of the instant application to have selected any amount of flame retardant that gives the appropriate properties in the final composition and it would have been obvious to have used the phosphorus-based flame retardant taught by Sung in the composition of Otero Martinez for the reasons discussed above in regard to claim 1.
Regarding Claims 3 and 4,
Otero Martinez teaches the use of a mix of polyols (Paragraph 24) and teaches one type of polyol (equivalent to the first polyol) that can have between 2.2 and 8 hydroxyl groups, but most preferably between 2.4 and 3.3 (Paragraph 33) and which has a preferred hydroxyl value of 25 to 50 mg KOH/g (Paragraph 34), which overlaps with the range of the instant claims. Otero Martinez further teaches that this polyol most preferably contains 8 to 22% by weight ethylene oxide (Paragraph 39), which overlaps with the 5 to 20% range of the instant claims. Otero Martinez also teaches the use of a second type of polyol (equivalent to the second polyol) which has a preferred hydroxyl value of 25 to 50 mg KOH/g (Paragraph 27) which is contained within the range of the instant claims. In the alternative where a non-volatile phase is equivalent to a graft polymer, Otero Martinez teaches the use of a polymer that meets this requirement (Paragraph 47). Finally, Otero Martinez teaches the use of polyols that can contain up to 8 hydroxyl groups (Paragraphs 26 and 38) that based upon Otero Martinez teaching that polyols can be used as mixtures (Paragraph 24), would overlap with the requirements for the third polyol.
With regard to the molecular weight requirements for the first and third polyols, Otero Martinez is silent. However, because Otero Martinez teaches hydroxyl values that overlap with those required for the polyols, one of ordinary skill in the art would recognize that these values correlate to molecular weight and would thus meet the molecular weight requirements on the basis of the preferred number of hydroxyl groups falling within the required range along with the overlapping range of hydroxyl values. As such, based upon the hydroxyl number requirements and the required number of hydroxyl groups, it would logically follow that the polyols taught by Otero Martinez would meet the molecular weight requirements of polyols one and three. Further, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the amounts of each polyol, Otero Martinez does specify an explicit ratio. However, Otero Martinez does teach that the relative amounts are adjusted depending upon the desired hardness or softness of the final foam (Paragraph 28). Because of this, the ordinarily skilled artisan would be motivated to set the levels of each polyol to be appropriate in order to obtain the desired softness or hardness of the final foam in order to meet the material requirements. As a result, it would have been obvious prior to the effective filing date of the instant application to have set the amounts of each polyol to any amount in order to achieve the desired level of softness or hardness in the final foam.
Regarding Claims 5 and 6,
Otero Martinez is silent on the values of the phosphorus-based flame retardant. However, Sung teaches a phosphorus-based flame retardant meeting the requirements of claim 1 of the following structure:
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where R equals ethyl and n equals, on average, 4.5 (Paragraph 75). This structure would have a percentage of phosphorus of 18% by weight and based upon a calculated molecular weight of 911 would have an hydroxyl number of 455, meeting the requirements of the instant claims. It would have been obvious prior to the effective filing date to have used the phosphorus-based flame retardant of Sung in the composition of Otero Martinez for the reasons addressed in regard to claim 1 above.
Regarding Claim 7,
Otero Martinez is silent on the size of the exfoliated graphite. However, one of ordinary skill in the art would recognize that smaller sized particles can be packed more densely into a composition and would be motivated to adjust the size based upon the needs of the final composition. As such, it would have been obvious prior to the effective filing date of the instant application to have used a carbon-based flame retardant of any size that afforded the desired properties and amounts in the final composition.
Regarding Claim 8,
Otero Martinez teaches that the expandable graphite is produced by known processes and considerable expansion occurs under the conditions of fire (Paragraph 96). While Otero Martinez does not elaborate upon the exact amount of expansion of the graphite, it would logically follow that because Otero Martinez does disclose the use of known processes that the graphite would expand similarly to that required by the instant claim. Further, while Otero Martinez is silent on the amount of carbon contained within the graphite, one of ordinary skill in the art would recognize that graphite is an allotrope of carbon and is composed entirely of carbon atoms and that any treatments necessarily only functionalize the surface. It would logically follow that such treated graphite would remain almost entirely comprised of carbon and would therefore meet the requirements of the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claim 9,
Otero Martinez teaches that isocyanates used in the composition include tolylene diisocyanate (TDI) and diphenylmethane diisocyanate (MDI) (Paragraph 63).
Regarding Claims 10 and 11,
Otero Martinez teaches the use of a siloxane polymer or copolymer in amounts of 0.5 to 5 parts per weight relative to the amount of polyol (Paragraph 94), which overlaps with the range of the instant claim. Further, Otero Martinez teaches the use of catalysts such as triethylamine and tin (II) octoate (Paragraph 83) in amounts of 0.05 to 2 parts per 100 parts of polyol (Paragraph 85), which overlaps with the range of the instant claims. One of ordinary skill in the art would choose an amount of catalyst to accelerate the reaction to a desired rate (Paragraph 81) and would select an amount of siloxane to obtain better homogenization of the mixture as well as to regulate the cell structure of the foam (Paragraph 94). As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 12 and 13,
Otero Martinez teaches that the polyurethane foam is preferably used as a sound absorption material in a mobile means for transport, specifically citing automobiles (Paragraph 117) and noting use as an interior material (Paragraph 119), meeting the requirements of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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