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 .
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Interpretation
Claim 1: “polyol comprising multiple hydroxyl groups” will be interpreted as a polyol other than a diol or triol (see instant specification [0003] which recites alcohols (e.g. diols, triols, polyols) that contain two or more reactive hydroxyl (-OH) groups).
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 5 is 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 5 recites “the polyol comprises at least one of petroleum, natural oil and animal by-products” in lines 1-2. It is unclear what the polyol comprises at least one of petroleum, natural oil and animal by-products encompasses, as petroleum, natural oil and animal by-products are not polyols. Therefore, claim 5 is indefinite. Claim 5 will be interpreted as the polyol is derived from at least one of petroleum, natural oil and animal by-products [see instant specification 0024].
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.
Claim(s) 1-14, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lakrout (WO 2017/204778) [IDS 8/25/23] in view of Loredo-Treviño, A.; Gutiérrez-Sánchez, G.; Rodríguez-Herrera, R.; Aguilar, C. N. J. Polym. Environ. 2012, 20, 258 [IDS 8/25/23].
Regarding claims 1-3 and 6: Lakrout (WO ‘778) discloses filled polyurethane or polyisocyanurate foam compositions [abstract], wherein Foam #1 [pg. 34, ln. 1-pg. 35, ln. 5; Table 2, Foam #1] contains 17 wt% polyol A (petroleum derived propylene based polyol [pg. 34, ln. 10-11]), 13 wt% isocyanate (methylene diphenyl diisocyanate [pg. 34, ln. 18-19]), 1 wt% fiberglass, 69 wt% filler 0.2 pphp catalyst and 0.17 wt% water [pg. 34, ln. 1-pg. 35, ln. 5; Table 2, Foam #1].
Lakrout (WO ‘778) does not disclose a plurality of digesters. However, Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) discloses microbes and fungi for the biodegradation of polyurethanes [abstract; §Microorganisms and Enzymes]. Lakrout (WO ‘778) and Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polyurethanes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined microbes and fungi, as taught by Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) in the invention of Lakrout (WO ‘778), and would have been motivated to do so since Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) suggests microbes and fungi promotes polyurethane biodegradation, thereby reducing the amount of waste polyurethane in the environment after disposal of the polyurethane [abstract; §Degradation Mechanism; §Microorganisms and Enzymes].
Lakrout (WO ‘778) does not specifically disclose a cushioning foam composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claims 4-5: Lakrout (WO ‘778) discloses 35 wt% to 90 wt% filler [pg. 15, ln. 24-31]. Foam #1 contains 69 wt% fillers and 17 wt% polyol A (petroleum derived). 80-90 wt% fillers would result in an associated decrease in the amount of polyol A.
Lakrout (WO ‘778) does not specifically disclose about 2% to about 8% polyol A. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claims 7-8: Lakrout (WO ‘778) discloses 35 wt% to 90 wt% filler [pg. 15, ln. 24-31]. Foam #1 contains 69 wt% fillers and 13 wt% isocyanate (methylene diphenyl diisocyanate). 80-90 wt% fillers would result in an associated decrease in the amount of isocyanate.
Lakrout (WO ‘778) does not specifically disclose about 1% to about 5% isocyanate (methylene diphenyl diisocyanate). However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 9: Lakrout (WO ‘778) discloses curing catalyst (gelation catalyst) [pg. 13, ln. 1-9; Foam #1; pg. 34, ln. 1-pg. 35, ln. 5; Table 2, Foam #1].
Regarding claims 10-12: Lakrout (WO ‘778) discloses 35 wt% to 90 wt% filler [pg. 15, ln. 24-31].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 13: Lakrout (WO ‘778) discloses fly ash and calcium carbonate as filler [pg. 16, ln. 1-8].
Regarding claim 14: Lakrout (WO ‘778) and Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) disclose the basic claimed composition [as set forth above with respect to claim 1].
A prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
Regarding claim 16: Lakrout (WO ‘778) and Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) disclose the basic claimed composition [as set forth above with respect to claim 12]; wherein Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) discloses microbes and fungi for the biodegradation of polyurethanes [abstract; §Microorganisms and Enzymes].
Regarding claim 19: Lakrout (WO ‘778) discloses foams and foam panels [abstract].
Lakrout (WO ‘778) does not specifically disclose a cushion. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lakrout (WO 2017/204778) in view of Loredo-Treviño, A.; Gutiérrez-Sánchez, G.; Rodríguez-Herrera, R.; Aguilar, C. N. J. Polym. Environ. 2012, 20, 258.
Regarding claim 20: Lakrout (WO ‘778) discloses a method of producing a filled polyurethane or polyisocyanurate foam composition [abstract; pg. 2, ln. 2-3], wherein Foam #1 [pg. 34, ln. 1-pg. 35, ln. 5; Table 2, Foam #1] contains 17 wt% polyol A (petroleum derived propylene based polyol [pg. 34, ln. 10-11]), 13 wt% isocyanate (methylene diphenyl diisocyanate [pg. 34, ln. 18-19]), 1 wt% fiberglass, 69 wt% filler 0.2 pphp catalyst and 0.17 wt% water [pg. 34, ln. 1-pg. 35, ln. 5; Table 2, Foam #1].
Lakrout (WO ‘778) does not disclose a plurality of digesters. However, Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) discloses microbes and fungi for the biodegradation of polyurethanes [abstract; §Microorganisms and Enzymes]. Lakrout (WO ‘778) and Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polyurethanes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined microbes and fungi, as taught by Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) in the invention of Lakrout (WO ‘778), and would have been motivated to do so since Loredo-Treviño et al. (J. Polym. Environ. 2012, 20, 258) suggests microbes and fungi promotes polyurethane biodegradation, thereby reducing the amount of waste polyurethane in the environment after disposal of the polyurethane [abstract; §Degradation Mechanism; §Microorganisms and Enzymes].
Claim(s) 1-2, 6, 10-12, 14-15, and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eicken et al. (US 5,134,072).
Regarding claims 1-2, 6, 10-12, 14-15, and 17: Eicken et al. (US ‘072) discloses polyurethane modified enzyme compositions [abstract], wherein Example 3 [Ex. 3; 5:54-6:10] reacts 46 mg α-glucosidase (digester/filler) and 184 mg of the pre-polymer of Example 1 with subsequent dialysis to afford the polyurethane modified enzyme [Ex. 3; 5:54-6:10]. Eicken et al. (US ‘072) discloses pre-polymer of Example 1 was prepared from 200 polyethylene glycol 2000 (diol; see claim interpretation above) and 23.5 g hexamethylene diisocyanate {corresponding to ~ 10.5 wt% hexamethylene diisocyanate; 0 wt% polyol} [Ex. 1; 5:5-34]. Eicken et al. (US ‘072) discloses 0.1 to 25 wt% of pre-polymer and 0.1 to 5 wt% of the enzyme [4:29-68].
Eicken et al. (US ‘072) does not disclose Ex. 3 preparing a polyurethane (after dialysis) containing 40 wt% of the enzyme; 75 wt% of the enzyme; 90 wt% of the enzyme. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05]. Additionally, while the polyurethane of Ex. 3 does not contain 40 wt% of the enzyme; 75 wt% of the enzyme; 90 wt% of the enzyme, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have prepared a polyurethane containing 40 wt% of the enzyme; 75 wt% of the enzyme; 90 wt% of the enzyme, as Eicken et al. (US ‘072) discloses 0.1 to 25 wt% of pre-polymer and 0.1 to 5 wt% of the enzyme in solution prior to reacting and dialysis of the product [4:29-68]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Eicken et al. (US ‘072) does not specifically disclose a cushioning foam composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 18: Eicken et al. (US ‘072) discloses the polyurethane was purified by dialysis {barrier encapsulating the polymer} [4:32-45; Ex. 3; 5:54-6:10].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eicken et al. (US 5,134,072).
Regarding claim 20: Eicken et al. (US ‘072) discloses a method of forming polyurethane modified enzyme compositions [abstract; 1:61-68], wherein Example 3 [Ex. 3; 5:54-6:10] reacts 46 mg α-glucosidase (digester/filler) and 184 mg of the pre-polymer of Example 1 with subsequent dialysis to afford the polyurethane modified enzyme [Ex. 3; 5:54-6:10]. Eicken et al. (US ‘072) discloses pre-polymer of Example 1 was prepared from 200 polyethylene glycol 2000 (diol; see claim interpretation above) and 23.5 g hexamethylene diisocyanate {corresponding to ~ 10.5 wt% hexamethylene diisocyanate; 0 wt% polyol} [Ex. 1; 5:5-34]. Eicken et al. (US ‘072) discloses 0.1 to 25 wt% of pre-polymer and 0.1 to 5 wt% of the enzyme [4:29-68].
Eicken et al. (US ‘072) does not disclose Ex. 3 preparing a polyurethane (after dialysis) containing 40 wt% of the enzyme. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05]. Additionally, while the polyurethane of Ex. 3 does not contain 40 wt% of the enzyme, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have prepared a polyurethane containing 40 wt% of the enzyme, as Eicken et al. (US ‘072) Eicken et al. (US ‘072) discloses 0.1 to 25 wt% of pre-polymer and 0.1 to 5 wt% of the enzyme in solution prior to reacting and dialysis of the product [4:29-68]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Eicken et al. (US ‘072) does not specifically disclose a cushioning foam composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767