DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant's election with traverse of Group I, claims 1-6 in the reply filed on May 22, 2026 is acknowledged. The traversal is on the ground(s) that all claims are directly or indirectly directed to a dispersion of claim 1, and as such there is a technical relationship between all claims around this technical feature and Unity of the Invention should be recognized by the USPTO, further requesting to provide information on another materially different process to make the product.
3. This is not found persuasive because of the following:
1) The present application is filed under 35 USC 371, and thereby restriction was made based on lack of Unity of Invention; restrictions in such applications do not require to provide any evidence of any other possible materially different process used to make the product.
2) The lack unity of the present invention is based on the fact that the common technical feature between the groups (which is the dispersion of claim 1) is not a special technical feature as it does not make a contribution over the prior art in view of Qizheng Dou: “Polymer/inorganic nanocomposites using hyperbranched polyalkoxysiloxanes”, 2014, pp. 1-259 (submitted in IDS on 08/17/23) in view of Cookson et al (US 2014/0051778, submitted in IDS on 08/17/23).
The discussion with respect to the teachings of Qizheng Dou: “Polymer/inorganic nanocomposites using hyperbranched polyalkoxysiloxanes”, 2014, pp. 1-259 (submitted in IDS on 08/17/23) in view of Cookson et al (US 2014/0051778, submitted in IDS on 08/17/23) set forth on pages 4-6 of the Office action mailed on April 3, 2026 is incorporated here by reference.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 22, 2026.
Claim Rejections - 35 USC § 103
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.
4. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cookson et al (US 2014/0051778) in view of Walia et al (US 9,290,605), as evidenced by Bertucelli et al (US 2017/0022704).
5. Cookson et al discloses a polymer polyol dispersion produced from a reaction system comprising:
a) at least one polyol comprising ethylene oxide-capped polypropylene oxide-polyethylene oxide copolymers comprising 1-30%wt of polyethylene oxide groups, having equivalent weight of 400-3000 and 2-6 hydroxyl groups per molecule ([0038], as to instant claim 2-3);
b) at least one seed population comprising seed particles having size of less than 5 micron ([0010]) comprising PIPA ([0050], [0052], [0065]);
c) at least one catalyst;
d) at least one co-reactant having an equivalent weight of up to 400 and a nitrogen atom ([0067], as to instant claim 5);
e) at least one polyisocyanate ([0005]-[0010]) comprising aromatic polyisocyanate ([0060]),
wherein the reaction mixture reacts to form a polyurethane-urea particle population (PIPA, as cited in [0033], [0002]) suspended in at least one polyol with solids content of at least 15%wt ([0016]), or 15-40%wt ([0033], [0066], [0074]);
the PIPA polyol dispersion comprises 99%vol of particles having diameters of less than 5 micron and viscosity of less than 6,000 cps ([0078]), specifically exemplified viscosity of 4621 mPa.s (Table 1).
6. The specific PIPA polyol used as Seed A comprises 90 pbw of Voranol CP 4735 as a carrier polyol (glycerine-initiated polyoxypropylene polyol having polyoxyethylene cap, an average molecular weight of 4,700 ([0091]); 4.7 pbw ot triethanolamine reacted with toluene diisocyanate; having viscosity of 2,500 mPa.s and all PIPA particles having size of below 5 micron ([0105]).
7. Specific example 1 is produced by the reaction of:
a) VORANOL CP 4702 (glycerine-initiated polyoxypropylene polyol having polyoxyethylene cap, an average molecular weight of 4,700 ([0090], as to instant claim 2);
b) triethanolamine;
c) Seed A;
d) toluene diisocyanate;
e) catalyst,
having viscosity of 4621 mPa.s and maximum particle size of 3 micron (Example 1, Table 1).
As evidenced by Bertucelli et al, the commercial product VORANOL CP 4702 has a number average molecular weight of 4740 g/mol and functionality of 3 (see [0070] of Bertucelli et al, as to instant claims 2).
8. It is noted that PIPA polyether polyols of instant invention are produced by a reaction of EO capped polyol VORANOL, Seed polyol, triethanolamine and toluene diisocyanate (Table 3 of instant specification), which composition is substantially similar to that of Cookson et al with exception that the reaction mixture of inventive examples further includes silica triol, or as cited in instant specification -at least one alkoxysilane (see [0047] of instant specification).
9. Since the PIPA polyether polyol of Cookson et al is produced by a reaction of aromatic isocyanate and polyether polyols, which produces carbamate groups (as further confirmed by paragraph [0043] of instant specification), therefore the produced PIPA polyether polyol of Cookson et al will intrinsically and necessarily have, at least two aromatic carbamate groups as well (as to instant claims 1 and 4). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. The PIPA polyether polyol dispersion was further mixed with additional polyether polyol, catalysts, water and additional toluene diisocyanate (TDI) to form a foam forming mixture (Table 6, [0086], as to instant claim 6).
11. It is noted that the limitation “for use in making flexible polyurethane foams having inherent flame retardant properties” is an intended use limitation. Case law holds that 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 In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
12. Though Cookson et al does not recite the PIPA polyether polyol dispersion comprising silicate groups and alkoxy silane or silanol groups,
Walia et al discloses a reaction mixture for making flexible polyurethane foams, wherein the reaction mixture comprises:
A) one or more isocyanate-reactive compounds including polyether polyols comprising propylene oxide-ethylene oxide copolymers having 20%wt of oxyethylene units (col. 4, lines 7-20) and having 2-8 hydroxyl groups, and may also comprise amino groups (col. 3, lines 52-62);
B) hydrolysable silane compounds that contain at least two hydrolysable silane groups per molecule;
C) a blowing agent that includes water and
D) at least one organic polyisocyanate (col. 2, lines 45-62), including aromatic polyisocyanate (col. 5, lines 46-56);
wherein at least some of the components a) and b) are pre-reacted with the organic polyisocyanate (col. 2, lines 47-67).
The composition for making the flexible foam further comprises polyether polyols comprising copolymers of ethylene oxide having an oxyethylene content of 30% or more and 3-8 hydroxyl groups per molecule (col. 9, lines 5-15).
13. The polyether polyols of the component A) further comprises a disperse polymer phase (col. 4, lines 20-22).
14. The hydrolysable silane compounds component B) is in the form of -Si-(O-R)x, wherein x is 1-3 and R is hydrocarbyl and further comprise hydroxyl or amino group bonded to silicon atoms, i.e. silanol groups (col 4, lines 48-65; col. 5, lines 1-12).
15. Walia et al further teaches that the presence of said hydrolysable silane compound provides increase in tensile strength, tear strength and elongation (TTE properties) and lowers the viscosity of the composition, which also leads to lower operating pressures and easier mixing during foam processing (col. 3, lines 1-38).
16. Since the presence of hydrolysable alkoxysilane in the compositions for making flexible foams comprising polyether polyols and aromatic polyisocyanate provides polyurethane foams with increased tensile strength, tear strength and elongation (TTE properties) and lowers viscosity of the composition, as taught by Walia et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Walia et al and Cookson et al, and to include, or obvious to try to include, at least partially, the hydrolysable alkoxysilane in the reaction system for making PIPA polyether polyol dispersion of Cookson et al, so to further increase TTE properties of the foam produced from the PIPA polyether polyol dispersion of Cookson et al and further, at least partially, reduce viscosity of the PIPA polyether polyol dispersion as well, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
17. Since the PIPA polyether polyol dispersion of Cookson et al in view of Walia et al is produced by a reaction of aromatic isocyanate and polyether polyols, which produces carbamate groups (as further confirmed by paragraph [0043] of instant specification), therefore the produced PIPA polyether polyol of Cookson et al in view of Walia et al will intrinsically and necessarily have, at least two aromatic carbamate groups as well (as to instant claims 1 and 4). Further, since the PIPA polyether polyol dispersion of Cookson et al in view of Walia et al is produced by substantially the same reaction of aromatic isocyanate, polyether polyols and hydrolysable alkoxysilane, as that disclosed and claimed in instant invention, therefore, the PIPA polyether polyol dispersion of Cookson et al in view of Walia et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise at least one silicate groups and at least one alkoxysilane or silanol group, as well as at least two carbamate groups. Since the foam produced from the PIPA polyether polyol dispersion of Cookson et al in view of Walia et al is substantially the same as that claimed in instant invention, therefore, the foam produced from said dispersion will intrinsically and necessarily be at least partially flexible and would at least partially have inherent flame retardant properties as well.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
18. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cookson et al (US 2014/0051778) in view of Turunc et al (WO 2019/118693), as evidenced by Bertucelli et al (US 2017/0022704).
19. Cookson et al discloses a polymer polyol dispersion produced from a reaction system comprising:
a) at least one polyol comprising ethylene oxide-capped polypropylene oxide polymers comprising 1-30%wt of polyethylene oxide groups, having equivalent weight of 400-3000 and 2-6 hydroxyl groups per molecule ([0038], as to instant claim 2-3);
b) at least one seed population comprising seed particles having size of less than 5 micron ([0010]) comprising PIPA ([0050], [0052], [0065]);
c) at least one catalyst;
d) at least one co-reactant having an equivalent weight of up to 400 and a nitrogen atom ([0067], as to instant claim 5);
e) at least one polyisocyanate ([0005]-[0010]) comprising aromatic polyisocyanate ([0060]),
wherein the reaction mixture reacts to form a polyurethane-urea particle population (PIPA, as cited in [0033], [0002]) suspended in at least one polyol with solids content of at least 15%wt ([0016]), or 15-40%wt ([0033], [0066], [0074]);
the PIPA polyol dispersion comprises 99%vol of particles having diameters of less than 5 micron and viscosity of less than 6,000 cps ([0078]), specifically exemplified viscosity of 4621 mPa.s (Table 1).
20. The specific PIPA polyol used as Seed A comprises 90 pbw of Voranol CP 4735 as a carrier polyol (glycerine-initiated polyoxypropylene polyol having polyoxyethylene cap, an average molecular weight of 4,700 ([0091]), 4.7 pbw ot triethanolamine reacted with toluene diisocyanate; having viscosity of 2,500 mPa.s and all PIPA particles having size of below 5 micron ([0105]).
21. Specific example 1 is produced by the reaction of:
a) VORANOL CP 4702 (glycerine-initiated polyoxypropylene polyol having polyoxyethylene cap, an average molecular weight of 4,700 ([0090], as to instant claim 2);
b) triethanolamine;
c) Seed polyol A;
d) toluene diisocyanate;
e) catalyst,
having viscosity of 4621 mPa.s and maximum particle size of 3 micron (Example 1, Table 1).
As evidenced by Bertucelli et al, the commercial product VORANOL CP 4702 has a number average molecular weight of 4740 g/mol and functionality of 3 (see [0070] of Bertucelli et al, as to instant claims 2).
22. It is noted that PIPA polyether polyols of instant invention are produced by a reaction of EO capped polyol VORANOL, Seed polyol, triethanolamine and toluene diisocyanate (Table 3 of instant specification), which composition is substantially the same as that of Cookson et al with exception that the reaction mixture of inventive examples further includes silica triol, or as cited in instant specification - at least one alkoxysilane (see [0047] of instant specification).
23. Since the PIPA polyether polyol of Cookson et al is produced by a reaction of aromatic isocyanate and polyether polyols, which reaction produces carbamate groups (as further confirmed by paragraph [0043] of instant specification), therefore the produced PIPA polyether polyol of Cookson et al will intrinsically and necessarily have, or would be reasonably expected to have at least two aromatic carbamate groups as well (as to instant claims 1 and 4). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
24. The PIPA polyether polyol dispersion was further mixed with additional polyether polyol, catalysts, water and additional toluene diisocyanate (TDI) to form a foam forming mixture (Table 6, [0086], as to instant claim 6).
25. It is noted that the limitation “for use in making flexible polyurethane foams having inherent flame retardant properties” is an intended use limitation. Case law holds that 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 In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
26. Though Cookson et al does not recite the PIPA polyether polyol dispersion comprising silicate groups and alkoxy silane or silanol groups,
Turunc et al discloses a dispersion of silicate particles in a polyol base produced by a reaction of:
A) a polyether polyol comprising a polymer or copolymer of ethylene oxide comprising up to 50%wt of oxyethylene units (p.3, lines 18-29);
B) an alkoxysilane;
C) water; and
D) catalyst,
Wherein such reaction leads to formation of silanol intermediate and silicate particles in-situ in a polyol base (Abstract; p. 4, lines 13-14); wherein a portion of the polyol is incorporated into the silicate particles and/or at least a portion of the silicate particles become grafted to at least part of the polyol (p. 6, lines 5-8).
The silicate particles is a silicon-containing reaction product of the alkoxysilane, water and the polyol; those silicate particles contain Si-O-Si linkages, residual alkoxy groups and Si-polyol bonds (p. 6, lines 9-13).
27. The product of said reaction is a dispersion of silicate particles in polyol base; the dispersion is highly storage stable and is used for making isocyanate-based polymers by reacting it with polyisocyanate, including aromatic polyisocyanate (p. 8, lines 15-20), wherein the polyisocyanate reacts with hydroxyl groups of the polyol phase and with the silanol groups to form urethane linkages (p. 7, lines 4-10, 16-29).
The dispersion maybe blended with one or more additional polyols (p. 7, line30-33).
28. Turunc et al specifically teaches that the presence of said silicate particles provides advantages when used for making flexible foams, such as the particles can provide increased load-bearing, cell-opening and cell size of the foams; increased tensile, tear and elongation and improve flame resistance (p. 8, lines 9-14, claim 15; p. 16, lines 1-4)
29. Thus, Turunc et al specifically teaches the use of the polyol dispersion comprising silanol, silicate and silane groups, which may be used in combination with other polyols for making flexible foams having increased tensile, tear and elongation properties, improved flame retardant properties.
30. Since the polyol dispersion comprising silanol, silicate and silane groups of Turunc et al, which may be used in combination with other polyols for making flexible foams, provides said foams with increased tensile, tear and elongation properties and improved flame retardant properties, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Turunc et al and Cookson et al, and to use, or obvious to try to use the polyol dispersion comprising silanol, silicate and silane groups of Turunc et al as the additional polyol of the component a) in the reaction mixture of Cookson et al for making the PIPA polyether polyol dispersion of Cookson et al, so that such silicon-containing PIPA polyether polyol dispersion would be suitable for making flexible foams having increased tensile, tear and elongation properties and improved flame retardant properties, as taught by Turunc et al, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
31. Since the PIPA polyether polyol dispersion of Cookson et al in view of Turunc et al is produced by a reaction of aromatic isocyanate and polyether polyols, which produces carbamate groups (as further confirmed by paragraph [0043] of instant specification), therefore the produced PIPA polyether polyol of Cookson et al in view of Turunc et al will intrinsically and necessarily have, at least two aromatic carbamate groups as well (as to instant claims 1 and 4). Further, since the PIPA polyether polyol dispersion of Cookson et al in view of Turunc et al is produced by substantially the same reaction of aromatic isocyanate, polyether polyols and silicon/silicate/silanol-containing polyol, as that disclosed and claimed in instant invention, therefore, the PIPA polyether polyol dispersion of Cookson et al in view of Turunc et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise at least one silicate groups and at least one alkoxysilane or silanol group, as well as at least two carbamate groups. Since the foam produced from the PIPA polyether polyol dispersion of Cookson et al in view of Turunc et al is substantially the same as that claimed in instant invention, therefore, the foam produced from said dispersion will intrinsically and necessarily be at least partially flexible and would at least partially have inherent flame retardant properties as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.US 2018/244830 and US 2019/0300642 are related to PIPA based polyol dispersions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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