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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on August 18, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 August 18, 2026.
Claim Rejections - 35 USC § 112
Claims 1-16 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.
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 1 recites the limitation "the reaction product" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-16 are rejected based on their dependency on claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-7, 10-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hinz (DE 19545550 A1).
Regarding Claims 1 and 5: Hinz teaches polyurethanes made from lignin-containing isocyanate prepolymer mixtures (Para 001) comprising a polyisocyanate, a lignin, and at least one polyalkylene glycol wherein the polyalkylene glycol comprises of a polyoxypropylene-polyoxyethylene (PPO-PEO) glycol (para 14). The PPO-PEO comprises hydrophilic oxyethylene units and hydrophobic oxypropylene units read on the claimed limitation of an amphiphilic polyoxyalkylene copolymer comprising hydrophilic oxyalkylene groups and hydrophobic oxyalkylene groups. Hinz further teaches the polyurethane comprising catalysts (para 26).
Regarding Claim 4: Hinz teaches all the limitations of claim 1, as seen above. Hinz further teaches the polyurethane comprising an unmodified organosolv or kraft lignin (para 24) wherein the lignins have not undergone any special chemical treatment for further processing (para 17).
Regarding Claim 6: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches at least one polyoxyalkylene glycol having a molecular weight of 400 to 6000 (para 14), a functionality of 2 to 8 and a hydroxyl number of 25-500 (para 37). These overlap the claimed ranges of 100 to 10000 Dalton, functionality of 2-10 and hydroxyl value of 10-400 mg KOH/g.
Regarding Claim 7: Hinz teaches all of the limitations of claim 6, as seen above. Hinz further teaches the polyurethane comprising at least one polyoxypropylene-polyoxyethylene glycols having a molecular weight of 400 to 6000 overlapping the claimed ranges for both the first and second polyoxyalkylene copolymer (para 14). Hinz teaches a preferred polyoxypropylene-polyoxyethylene polyol for flexible PU foams with a functionality of 2 to 3 and a hydroxyl number of 30 to 80 (para 37) which overlaps the claimed range of 20 to 30 and a preferred polyoxypropylene-polyoxyethylene polyol for rigid PU foams with a functionality of 3 to 8 and a hydroxyl number of 100 to 500 (para 37) overlapping the claimed ranges of functionality of 4 to 6 and a hydroxyl value of 200 to 400. Hinz teaches that the polyoxyalkylene polyols can be used individually or in mixtures (para 39).
Regarding Claim 10: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches the polyisocyanate comprising of diphenylmethane diisocyanate, polyphenyl-polymethylene polyisocyanate, hexamethylene diisocyanate, toluene diisocyanate and mixtures thereof (para 46).
Regarding Claim 11: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches a catalysts comprising organic metal compounds and tertiary amines (para 51).
Regarding Claim 12: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches the polyurethane comprising of a siloxane-oxyalkylene copolymer foam stabilizing surfactant (para 53).
Regarding Claim 13: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches the isocyanate prepolymer mixture comprising of crosslinking agents comprising of alkanediols/polyols with molecular weighs from 62 to 300 (para 43), overlapping the claimed range of 50 to 300.
Regarding Claim 14: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches the polyurethane comprising of auxiliary agents/additives including flame retardants and pigments (para 52).
Regarding Claim 15: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches the polyurethane comprising of a blowing agent (para 48).
Claim Rejections - 35 USC § 103
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hinz (DE 19545550 A1) in view of Dursen et al. (EP 3549968 A1).
Regarding Claim 2: Hinz teaches all of the limitations of claim 1, as seen above. Hinz further teaches the lignin being a powder (para 60). However, Hinz is silent on the lignin powder having a mean particle diameter between 5-250 µM.
Dursen teaches a polyurethane comprising a lignin in powder foam having a mean particle size of less than 300 µM (para 20) overlapping the claimed range of 5-250 µM. Hinz and Dursen are analogous art as they are directed to the same field of endeavor, namely polyurethane materials comprising of lignin. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Hindz with the lignin powder of Dursen. Dursen discloses that lignin can be used in solid form, particularly as a fine powder, as an adhesion promoter (para 13) and that lignin is hardly soluble in water and other solvents (para 15). One of ordinary skill in the art would have be motivated to modify the lignin powder to have a mean particle size of 5-250 µM to promote the lignin ability to be dispersed evenly in a solvent and add better adhesive properties to the produced polyurethane material.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hinz (DE 19545550 A1) in view of Kurple (US 9593221 B1).
Regarding Claim 3: Hinz teaches all of the limitation of claim 1, as seen above. Hinz further teaches the lignin present in an amount of approximately 30 wt% of the isocyanate prepolymer mixture (para 23). However, Hinz is silent on the lignin being homogenously distributed throughout the polyurethane material.
Kurple teaches a polyurethane comprising of lignin and polyol(col 5, lines 3-6) wherein the lignin and polyol form a blend that is free of graininess or suspended matter (col 10, lines 4-6) reading on the claimed homogenous distribution. Hinz and Kurple are analogous art as they are directed to the same field of endeavor, namely polyurethane materials comprising of lignin. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Hinz with the homogenous lignin distribution of Kurple. Kurple discloses that graininess may pose a problem for some processes which require very small diameter orifices for the injection of polyurethanes at high pressure (col 26, lines 9-11). One of ordinary skill in the art would have been motivated to modify the polyurethane to have a homogenous distribution of lignin so that the graininess of undissolved lignin does not hinder the injection of polyurethane at high pressure.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hinz (DE 19545550 A1) in view of Zong et al (CN 111040108 B)
Regarding Claim 8: Hinz teaches all of the limitations of claim 1, as seen above. However, Hinz is silent on the polyol comprising of a polyalkylene copolymer having the formula R-[(OA1)a(OA2)b(OA3)c-OH]x, wherein R is a cyclic or acyclic aliphatic hydrocarbon group; AO1 and AO3 are oxyethylene; AO2 is oxypropylene; a, b, and c are integers; a+b+c is greater than or equal to 3 and less than or equal to 300; and x is an integer greater than or equal to 2 and less than or equal to 6.
Zong teaches a foamed polyurethane resin (para 12) comprising a triblock polyether polyol consisting of ethylene oxide-propylene oxide-ethylene oxide/EO-PO-EO ((OA1)a(OA2)b(OA3)c from the claim) and an initiator (R from the claim) of a mixture of glycerol and dipropylene glycol with an average functionality of 2.8 (para 26). This reads on the claimed limitation of x being an integer of 2 to 6 as x would be 3 for the glycerol initiated polyol and 2 for the dipropylene glycol initiated polyol. It further reads on the claim limitation of a+b+c being equal to or greater than 3 as the presence of the EO-PO-EO triblock copolymer means that a, b, and c must be at least 1. Zong and Hinz are analogous art as they are directed towards the same field of endeavor, namely foamed polyurethane materials. In would have been obvious for one of ordinary skill in the art before the effectively filling date of the claimed invention to substitute the polyol of Hinz with the polyol of Zong. The functionality and molecular weight of the polyol of Zong is within the ranges of the polyol taught by Hinz. Further both Zong and Hinz teach an amphiphilic polyol with hydrophobic propylene oxide groups and hydrophilic ethylene oxide groups. The polyol of Zong and the polyol of Hinz serve the same purpose in that the polyols react with the polyisocyanate in the forming of a polyurethane. Hinz teaches that polyols with a functionality of 2 to 3 are preferable used to make flexible polyurethane foams (para 37). One of ordinary skill in the art would have been able to substitute the polyol of Hinz with the polyol of Zong to obtain a predictable result of a flexible polyurethane foam product.
Regarding Claim 9: Modified Hinz teaches all of the limitations of claim 8, as seen above. Zong further teaches the triblock polyether polyol having a molecular weight of 4100 (para 26). The reference does not expressly teach a, b, and c being integers of greater than or equal to 2. However, the average molecular weight of the polyether polyol and the molecular weights of the precursor dipropylene glycol (134.17 g/mol), ethylene oxide (44.05 g/mol) and propylene oxide (58.08 g/mol) can be used to calculate suitable amounts for the EO-PO-EO block copolymer. In it simplest form the ratio of the EO-PO-EO copolymer is 1:1:1 resulting in a copolymer unit with a molecular weight of 146.18 g/mol (44.05+58.08+44.05). Since the initiator has a functionality of 2 the triblock copolymer would be present twice in the polyether polyol leading to a base unit molecular weight of 292.36 g/mol. The molecular weight of the triblock present in the polyether polyol is 3965.83 g/mol, calculated as the weight of the polyether polyol without the dipropylene glycol initiator (4100 g/mol-134.17 g/mol). It can be further calculated that the triblock base unit is present about 13 times in the polyether polyol (3965.83 g/mol / 292.36 g/mol = 13.6) therefore in the simplest EO-PO-EO block copolymer ratio of 1:1:1, a, b, and c would all be represented by the integer 13.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hinz (DE 19545550 A1) in view of Gondaliya et al (Lignin as a Partial Polyol Replacement in Polyurethane Flexible Foam. Molecules. 2021 Apr 15;26(8):2302).
Regarding Claim 16: Hinz teaches all of the limitations of claim 1, as seen above. Hinz further teaches a polyurethane foam with a density of 49.7 Kg/m3 (49.7 g/l) (Table 2 Experiment 6 of the foreign reference). However, Hinz is silent on a compression deflection force of 4 to 800 kPa.
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Gondaliya teaches a lignin based polyurethane foam (abstract) with a compression force deflection of 11 kPa (Figure 3, 7-K-SW). Gondaliya and Hinz are analogous art as they are directed to the same field of endeavor, namely polyurethane materials comprising of lignin. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane foam of Hinz with the compression force deflection of Gondaliya. Gondaliya discloses that lignin-based foams can be used in different PU foam applications depending on the CFD values. For instance, foams with lower CFDs are more suitable for car seating applications, while foams with higher CFD are suitable for heavy-duty construction and other parts of automotive (Page 6, para 2). One of ordinary skill in the art would be motivated to modify the compression deflection force of the polyurethane foam to create foam products that have different practical applications.
Claim 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hinz (DE 19545550 A1) in view of Gondaliya et al (Lignin as a Partial Polyol Replacement in Polyurethane Flexible Foam. Molecules. 2021 Apr 15;26(8):2302) in further view of Kurple (US 9593221 B1).
Regarding Claim 17: Hinz teaches a polyurethane foam (para 26) comprising lignin-containing isocyanate prepolymer mixtures (Para 1) comprising a polyisocyanate, a lignin present in an amount of approximately 30 wt% of the isocyanate prepolymer mixture (para 23), and at least one polyalkylene glycol wherein the polyalkylene glycol comprises of a polyoxypropylene-polyoxyethylene (PPO-PEO) glycol (para 14). The PPO-PEO comprises hydrophilic oxyethylene units and hydrophobic oxypropylene units read on the claimed limitation of an amphiphilic polyoxyalkylene copolymer comprising hydrophilic oxyalkylene groups and hydrophobic oxyalkylene groups. Hinz further teaches the polyurethane comprising catalysts (para 26) and surfactants (para 53). Hinz further teaches the polyurethane foam with a density of 49.7 Kg/m3 (49.7 g/l) (Table 2 Experiment 6). However, Hinz is silent on a compression deflection force of 4 to 800 kPa and the lignin being homogenously distributed throughout the polyurethane foam.
Gondaliya teaches a lignin based polyurethane foam (abstract) with a compression force deflection of 11 kPa (Figure 3, 7-K-SW). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane foam of Hinz with the compression force deflection of Gondaliya. Gondaliya discloses that lignin-based foams can be used in different PU foam applications depending on the CFD values. For instance, foams with lower CFDs are more suitable for car seating applications, while foams with higher CFD are suitable for heavy-duty construction and other parts of automotive (Page 6, para 2). One of ordinary skill in the art would be motivated to modify the compression deflection force of the polyurethane foam to create foam products that have different practical applications.
Kurple teaches a polyurethane comprising of lignin and polyol (col 5, lines 3-6) wherein the lignin and polyol form a blend that is free of graininess or suspended matter (col 10, lines 4-6) reading on the claimed homogenous distribution.. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Hinz with the homogenous lignin distribution of Kurple. Kurple discloses that graininess may pose a problem for some processes which require very small diameter orifices for the injection of polyurethanes at high pressure (col 26, lines 9-11). One of ordinary skill in the art would have been motivated to modify the polyurethane to have a homogenous distribution of lignin so that the graininess of undissolved lignin does not hinder the injection of polyurethane at high pressure.
Regarding Claim 18: Modified Hinz teaches all of the limitations of claim 17, as seen above. Hinz further teaches polyurethane foam comprising an unmodified organosolv or kraft lignin (para 24) wherein the lignins have not undergone any special chemical treatment for further processing (para 17). However, Hinz is silent on the lignin powder having a mean particle diameter between 5-250 µM.
Kurple teaches a polyurethane comprising a powder lignin having a particle size of 25-50 micron (para 53) overlapping the claimed range of 5-250 µM. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Hindz with the lignin powder of Kurple. Kurple discloses that the small particle size is advantageous for providing low viscosity blends of polyol quickly with excellent stability and reduction in suspended particles or graininess in the polyol (para 54). One of ordinary skill in the art would have been motivated to modify the lignin powder to have a mean particle size of 25-50 µM to obtain a low viscosity polyol blend and to improve the ability of the lignin to be dispersed evenly in a polyurethane foam.
Regarding Claim 19: Modified Hinz teaches all of the limitations of claim 18, as seen above. Hinz further teaches at least one polyol having a molecular weight of 400 to 6000 (para 14), a functionality of 2 to 8 and a hydroxyl number of 25-500 (para 37). These overlap the claimed ranges of 100 to 10000 Dalton, functionality of 2-6 and hydroxyl value of 10-400 mg KOH/g.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 5, 10-12, and 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 8, 9, and 13 of U.S. Patent No. 12,049,534. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims of the reference patent.
Regarding Claims 1, 5, and 15: Claim 1 of the reference patent teaches a polyurethane foam comprising a lignin, a catalyst, a polyisocyanate, a blowing agent and a polyethylene glycol and polypropylene glycol copolymer polyol which reads on the claimed limitation of an amphiphilic polyoxyalkylene copolymer.
Regarding Claim 2: Claim 5 of the reference patent teaches a lignin with a particle size of less than 200 micrometers
Regarding Claim 4: Claim 4 of the reference patent teaches a kraft lignin. Further claim 5 of the reference patent teaches an unmodified lignin.
Regarding Claim 10: Claim 13 of the reference patent teaches the polyisocyanate comprising of methylene diphenyl diisocyanate (MDI).
Regarding Claim 11: Claim 9 of the reference patent teaches the catalyst comprising of dibutyltin dilaurate catalyst and a tertiary amine catalyst
Regarding Claim 12: Claim 8 of the reference patent teaches a surfactant comprising of an organo-modified polysiloxane
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.B./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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