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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 5/20/2026. The limitations of previously presented claims 2, 6, and 9 have been added to amended instant claims 1, 11, and 14. Claims 2, 6, and 9 are cancelled.
It is noted that the newly introduced limitations were not present at the time of the preceding action. Additionally, no new prior art is presented over previously rejected claims. For this reason, it is proper to make the present action FINAL.
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.
Claims 1, 3-5, 7, and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Burdeniuc (US 2016/0102169).
Burdeniuc teach polyurethane foam products including rigid foam polyurethane polymers (abstract). The foam products are produced from compositions comprising flame retardants (¶63), quaternary ammonium surfactants (¶59), catalysts (¶48), blowing agents (¶57), polyisocyanates (¶49), and polyols (¶7, ¶17, ¶18, ¶50). This anticipates instant claim 1. The components are reacted to produce a polyurethane foam. This meets instant claims 11 and 14. The foams produced in Burdeniuc include rigid polyurethane foams. This meets instant claim 12 and 14. Examples of the flame retardant include melamine powder, which is a solid flame retardant which meets instant claims 1 and 7. It would have been obvious to one of ordinary skill in the art, if not at once envisaged (given that only three types are specifically named in ¶63) to use melamine powder, a solid flame retardant, as the flame retardant in Burdeniuc (US 2016/0102169), given its explicit disclosure at ¶63 of the applied reference, because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Expressly named examples of quaternary ammonium surfactant for use as cell stabilizer are cetyl trimethylammonium chloride and cetyl pyridinium chloride. Cetyl trimethylammonium chloride meets Formula (3), wherein R5 is linear radical having a chain length of 16 (cetyl), R6 is methyl (which also meets instant claim 17), c is 3 and d is 1 and which further meets instant claim 4 (h = 1 and g =3) and instant claim 5 (chloride). With regards to instant claims 3, 16, and 18-19, formula 1 and 2 are disclosed in the alternative to formula (3). Burdeniuc teaches a quaternary ammonium compound which meets formula (3). To the extent that formula (1) and/or formula (2) are alternative to (3), Burdeniuc meets instant claims 3, 16, and 18-19.
With regards to the limitations of instant claim 15, the recited improvements are dispersibility, redispersibility, and/or sedimentations stability of the solid flame retardant in the composition due to the quaternary ammonium compound. As embodiments of the compositions of Burdeniuc include both a quaternary ammonium surfactant (¶59) and solid flame retardants (¶63), the added quaternary ammonium surfactants will necessarily provide improved dispersibility, redispersibility, and/or sedimentations stability of the solid flame retardant.
The limitation in instant claim 13 which recites “an insulating material and/or a construction material,” this is an intended use of the rigid foams of instant claim 13. 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). The rigid foams (see abstract of Burdeniuc) comprises identical components as recited in the instant claims. These rigid foams are capable of performing the intended uses of “an insulating material” or a “construction material”.
The amount of cell stabilizers, of which quaternary ammonium surfactants are a named example, is typically 0.1 to 10 pphp (parts per hundred polyol; see ¶48). See ¶64. This falls within the range of the instant claims.
Burdeniuc teaches that the amount of fire retardant, of which melamine powder, a solid flame retardant, is a named example, is from about 0 to about 20 pphp (parts per hundred polyol, see ¶48). This significantly overlaps the amount of instant claims. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teaching Burdeniuc to use an amount of flame retardant, including melamine powder which is solid, which meets the instant claim limitations of instant claim 9 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
With regards to instant claim 10, Burdeniuc teaches that cell stabilizers (which are foam stabilizers) are present in the compositions in amounts of from about 0.1 to about 20 pphp, in some cases from about 0.1 to 5 pphr (parts per hundred polyol). This overlaps the amount of foam stabilizer of instant claim 10. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teaching Burdeniuc to use an amount of cell stabilizer which meets the instant claim limitations of instant claim 10 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Claims 8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Burdeniuc (US 2016/0102169) and further in view of Dueber et al. (US 6,130,267).
The discussion with respect to Burdeniuc above is hereby incorporated by reference.
Burdeniuc does not explicitly recite the flame retardants are those recited in claim 8 or 20.
However, Dueber et al. teach a fire retardant for producing rigid polyurethane foams (see abstract). The fire retardant is preferably a solid fire retardant, which is preferably, melamine, ammonium polyphosphate, or guanidine carbonate (col. 1., lines 54-55), which can be used in combination (see col. 1, lines 45-49). The fire retardants are added, to, for example, urethane prepolymers obtained by reacting a polyisocyanate with a polyol (col. 2, lines 35-37). The fire retardant may be mixed into the polyisocyanate and/or the polyol (col. 4, lines 49-50). The compositions further comprise blowing agents, catalysts, surface active agents (which are surfactants) and foam stabilizers (col. 6, lines 4-6). The compositions are reacted to form fire resistant, rigid polyurethane foams (col. 7, lines 16-18).
In view of Dueber et al.’s recognition that solid melamine and ammonium polyphosphate are equivalent and interchangeable as solid flame retardants for rigid polyurethane foams, it would have been obvious to one of ordinary skill in the art to substitute the melamine powder of Burdeniuc with ammonium polyphosphate and thereby arrive at the present invention of instant claim 20. 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). It would have been obvious to use a combination of solid flame retardants, including combinations of solid melamine and ammonium polyphosphate disclosed in Dueber et al., as the flame retardant in Burdeniuc, in order to provide enhanced levels of flame retardancy to the foams of Burdeniuc.
Response to Arguments
Applicant's arguments filed 5/20/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed choice and amount of quaternary ammonium compound as surfactant was found to improve the dispersibility, redispersibility and sedimentation stability of the composition.
However, Applicant has not discussed any data establishing unexpected results or shown how the data is commensurate in scope with the claims. Thus, the data cannot and does not provide evidence of unexpected results.
Applicant argues that Burdeniuc discloses the use of metal salt catalysts to make polyurethanes while the claims state that this is an optional feature.
First, the instant claims recite that an optional catalyst can be included. This teaching of a catalyst in the prior art meets the claimed embodiments where a catalyst is present. Secondly, catalysts are not excluded from the instantly claimed invention, because the claims use the transitional phrase ‘comprising’, which is “is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended."). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003).” See MPEP 2111.03, I.
Applicant argues that Burdeniuc generically discloses a multitude of additives and states that there is no express teaching in Burdeniuc to select melamine powders with sulfite salt catalysts.
The prior art is not required to exemplify every embodiment. Any examples provided amount to a preferred embodiment. A preferred embodiment is not controlling, and, all disclosures “including unpreferred embodiments” must be considered. See MPEP 2123 and In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123 and In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Thus, a teaching of melamine powder is sufficient to teach a solid flame retardant. It would have been obvious to use melamine powder, a solid flame retardant, given its express disclosure at ¶63 of the applied reference.
Applicant argues that the problem of dispersion and sedimentation are not recognized in Burdeniuc. However, as stated in MPEP 2144, IV., “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).” Each of the instantly claimed steps and/or components is present in the prior art. Thus, any alleged improvements due to the presence of a claimed component, in this case the ammonium compound and solid flame retardant, will be present in the prior art which teaches the same components. Applicants have provided no evidence which demonstrates the contrary. As stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).”
Applicant argues that a person of ordinary skill would not have been motivated to arrive at the present composition. However, as noted above, each of the claimed components is explicitly recited in singly applied Burdeniuc reference. It would have been obvious to select these components based on Burdeniuc because Burdeniuc explicitly teaches their use. This is a motivation to select such components, i.e. their express disclosure in the singly applied reference.
Applicant argues that the only flame retardant exemplified in Burdeniuc is TCPP.
This is not persuasive.
MPEP 2123, Section II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Additionally, as stated in MPEP 2123, Section II.:
[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Burdeniuc explicitly discloses melamine powder as a flame retardant for use in the disclosed composition. Thus, it would be obvious, if not at once envisaged, to use melamine powder as the flame retardant, given its disclosure in a list with only two other types of flame retardant.
Applicant’s arguments regarding Dueber are not persuasive because Dueber is used to show that it was known in the art that solid melamine and ammonium polyphosphate are equivalent and interchangeable as solid flame retardants for rigid polyurethane foams. It is not necessary for the secondary reference to teach each of the instantly claimed features by itself. The rejection is based on the combination of Burdeniuc in view of Dueber. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Again, Dueber is only relied on to show that ammonium polyphosphate and melamine are equivalent and interchangeable as solid flame retardants for rigid polyurethane foams. This was known before the effective filing date of the instant invention and thus, the claims are properly rejected.
Regarding the Double Patenting rejection, Applicant argues that Odani would not have been combined with US ‘417 because there is no reasonable expectation of success.
This is not persuasive. Regardless, the Double Patenting rejection is withdrawn only in light of the amendments to claims 1, 11 and 14 that the solid flame retardant is present in a total amount of 1 to 60 parts based on 100 parts by weight of polyols. This is not present in Odani et al.
For the reasons provided above, Applicant’s arguments filed on 5/20/2026 which are discussed above are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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