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 with traverse of Group I (claims 66-68) in the reply filed on May 20, 2026 is acknowledged. The traversal is on the grounds that the inventions are linked by special technical features not disclosed in DE ‘120. This is not found persuasive because, as set forth in the below prior art rejection over DE ‘120, the common technical features do not made a contribution over the prior art as required for unity of invention under PCT Rule 13.2. The requirement is still deemed proper and is therefore made FINAL.
Claims 69-85 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
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.
Claims 66-68 are rejected under 35 U.S.C. 103 as being unpatentable over DE 43 18 120. The English language translation submitted in the IDS filed on May 24, 2024 is relied on in this Office action.
Regarding claim 66, DE ‘120 discloses a polyalkyleneoxy polyol ([0016], [0027]) having an average nominal functionality of 2-4 [0027], a hydroxy number of 30 to 60 mg KOH/g [0016], an average molecular weight of 2200 to 6500 [0027], and an ethyleneoxy amount in the range of 60-90 wt% of the polyol [0016]. DE ‘120 discloses that the primary hydroxy content is in the range of >50% [0027], which overlaps with the presently claimed range of 30 to 65%. As set forth in MPEP 2144.05, “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). Further, DE ‘120 discloses that the primary hydroxy content is a result effective variable based on the amount of closed cells present in a foam formed with the polyol [0051].
Regarding claim 67, DE ‘120 discloses that the polyol can further contain propyleneoxy ([0016], [0027]).
Regarding claim 68, DE ‘120 discloses a viscosity within the presently claimed range (Examples 1 and 2).
Claims 66-68 are rejected under 35 U.S.C. 103 as being unpatentable over Pluracol® 593 Technical Bulletin (hereinafter “Pluracol”) as evidenced by Neff (US Pub 2004/0266900) in view of either DE 43 18 120 or Reisch et al. (US Patent No. 4,946,922).
Regarding claim 66, Pluracol discloses a polyalkyleneoxy polyol having an average nominal functionality of 3, a hydroxy number of 44.0-47.0 mg KOH/g and an average molecular weight of 3650. As evidenced by Neff, Pluracol® 593 has an ethyleneoxy content of 75% [0043]. Pluracol is silent as to the primary hydroxy content of the polyol. As stated above, DE ‘120 discloses a primary hydroxy content of >50% and discloses that the primary hydroxy content is a result effective variable based on the amount of closed cells present in a foam formed with the polyol [0051]. Additionally, Reisch discloses that the content of primary hydroxyl is a result effective variable based on the miscibility properties of a blended polyol and the mold release properties desired (column 4, lines 22-57). It would have been obvious to one of ordinary skill in the art to have formed the polyol of Pluracol, wherein the primary hydroxy content is within the claimed range of 30-65%, motivated by the desire to optimize or discover workable ranges based on the amount of closed cells desired in a resulting foam product formed with the polyol, as taught in DE ‘120, and/or the miscibility and mold release properties desired, as taught in Reisch.
Regarding claim 67, as evidenced by Neff, Pluracol® 593 has a propyleneoxy content of 25% [0043].
Regarding claim 68, Pluracol has a viscosity of 1340 at 25ᵒC.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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