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 .
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.
Claims 1-19 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.
Claims 1 and 14 recite “p in a range of from 1 to 18.” There is insufficient antecedent basis for “p.” The variable “p” does not appear to be part of any structure or formula in claims 1 or 14. None of claims 2-13 or 15-19, which depend from 1 or 14, clarify this issue. Therefore, claims 1-19 are indefinite.
Claim 2 recites a “standard” flexible PU foam. It is unclear what falls within the scope of “standard” flexible PU foam and what does not. The instant specification does not define the term, nor does the instant specification set forth what meets “standard” flexible PU foam and what does not.
Claim 10 recites “The article linear polyoxyalkylene oxide polyether” and then refers to variable G. It is unclear whether claim 10 is intended to depend from another claim because it starts with “The article…” and because it refers to variable “G” present in claim 1 or whether it is intended to be an independent claim because it does not refer back to a previous claim. If it is supposed to depend from another claim, it is indefinite because it fails to refer to another claim and because the “article linear polyoxyalkylene oxide polyether” does not have proper antecedent basis. If it is supposed to be an independent claim, then the variable “G” does not have antecedent basis and the claim should not start with “The”.
Claim 11 recites “a process of improving dimensional recovery of a shaped flexible hot-cure PU foam article” where the method comprises “polymerizing components”. It is unclear how polymerizing the components to form the article is a process of improving dimensional recovery. In other words, it is unclear how forming the article (via polymerizing) is a process for improving dimensional recovery of that article.
Claim 12 recites “A process for storing and/or transporting a shaped flexible hot-cure PU foam article” where the method comprises reacting the components and compressing the foam article. This is indefinite because the claim does recite any steps of storing or transporting the article. It is unclear how the process steps of reacting and compressing result in a process of storing and/or transporting. Claim 13 depends from claim 12 and thus has the same indefinite issues.
Claim Rejections - 35 USC § 102
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.
Claims 1-7 and 9-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferenz (EP 3219738). As the EP document is not in English, citations are made to the attached translation.
Ferenz teaches polyurethane foams (¶ 30) that are hot melt flexible foams (¶37) that can be used as cushions or mattresses (¶ 124-126), meaning they are shaped articles which meet instant claims 16-18. Ferenz teaches that the foams are soft, viscoelastic polyurethane foams (¶119) which are flexible hot melt foams (¶37). This meets instant claims 2 and 15. Ferenz specifically teaches that the catalyst used in the invention catalyze the isocyanate-polyol and/or isocyanate-water and/or isocyanate trimerization (¶47). Ferenz teaches that the polyurethane foams are formed by reacting a composition comprising a polyol component and polyisocyanate component (¶ 25-26), a catalyst (¶ 47), at least one blowing agent (¶52), and stabilizers (¶53).
Ferenz teaches adding siloxane block polymers (¶24) having the formula MaM1bDcD1dTeQfGg (¶25) which meets claim formula 1. Particularly, Ferenz teaches
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(¶ 25) and thus M corresponds to [R13SiO1/2]b, M1 corresponds to [R12R2SiO1/2]a, D corresponds to [R2SiO2/2]c, D1 corresponds to [RR2SiO2/2]d, T corresponds to [R3SiO3/2]e, Q corresponds to [SiO4/2]f. The values of R, R1, a, b, c, d, e, and f (¶25) of Ferenz fall within or overlap the claimed ranges of instant claim 1.
The unit G of Ferenz corresponds to the instantly claimed G. Specifically, the instantly claimed formula 1 requires G to be a bridging group of formula (2)
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which is met by formula (i) of Ferenz
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when y1 and y3 of the instant claims are 0, y2 is 1, Rx is a linear organic radical, n is 1 or 2, and m is 1 or 2. Ferenz teaches R is an alkyl group, preferably a methyl (¶ 25) which meets the claimed R1 of formula (2).
With regards to the substituents on the silicon atoms, Ferenze teaches R1 is a polyether residue (¶25) such as
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(¶25) which corresponds to claimed formula
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33
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The subscripts of Ferenz meet the claimed subscripts. Ferenz teaches R5 includes methyl (¶ 25) which meets the claimed R7 being alkyl.
As the siloxane block copolymers of Ferenz are structurally identical to the instantly claimed stabilizer, these compounds will necessarily perform the function of “stabilizer” as recited in the instant claims. Additionally, Ferenz teaches that siloxane block copolymers provide a stabilizing effect (¶ 22) and thus meet the limitation ‘stabilizer’. Ferenz teaches the foam is formed by mixing the catalyst, blowing agent, isocyanate component, polyol and siloxane component (¶ 52).
Ferenz teaches an example of a silicon block copolymer formed by the reaction of a Me3SiO-(SiMe2O)91-(SiHMeO)7-SiMe3 with CH2=CHCH2O[CH2CH2O]14[CH2CH(Me)O]14-H and CH2=CHCH2O[CH2CH2O]3CH2CH=CH2 (¶ 140) which forms a hydrogenation product where the carbon-carbon double bond reacts with the silicon-hydrogen bond to form a silicon-carbon bond. Thus, the polyethers become covalently bound to the siloxane at the Si-H location. This meets instant claim 9 and 10. Ferenz teaches the reaction occurs until all the SiH functions are reacted (¶ 140). The resultant siloxane meets formula (1) of the instant claims when a is 0, b is 2, c is 91, d is about 7, e is 0, f is 0, and g is about 1 and where the sum of these is about 101, which meets instant claim 19, and where a+b is 2, and a+d is 9. The resultant siloxane of Ferenz has a portion formed by the hydrosilylation of CH2=CHCH2O[CH2CH2O]3CH2CH=CH2 which after hydrosilylation gives the structure (O1/2)2SiMe-CH2-CH2CH2O[CH2CH2O]3CH2CH2CH2-SiMe(O1/2)2- which meets the limitations of G of the instant claims when R1 is Me, y1 is 0, y3 is 0, y1 is 1, n is 1 and m is 2 and n+m is 3.The polyether covalently attached to the silicon atom after hydrosilylation is CH2CH2CH2O[CH2CH2O]14[CH2CH(Me)O]14-H which corresponds to R2 of the instant claims and meets formula 4 of the instant claims when R4 is a propyl group, i is 14, j is 14, k is 0, i+j=28, and R7 is H.
Ferenz teaches an example where this example (example 6) is used with Formulation 1 in an amount of 1 pphp (parts per hundred polyol) (Table 7). Formulation 1 uses a total of about 152.02 parts of all the components (adding the amounts of the components shown in Table 1 and the 1 pphp siloxane). This gives about 0.66 wt% siloxane which meets claims 6 and 13.
The group G taught by ¶ 140 of Ferenz is the structure (O1/2)2SiMe-CH2-CH2CH2O[CH2CH2O]3CH2CH2CH2-SiMe(O1/2)2- which meets the instant claim 10 when n is 2, m is 1, R1 is Me, R10 is an C3 alkylene, and R11 is an ether.
Formulation 1 includes polyols, toluene diisocyanate, an amine catalyst, a tin catalyst, and water (Table 1, ¶142) where water is an example of a blowing agent (¶92). The foams were formed by mixing the components and allowing them to react (¶143-145).This meets instant claims 14-15.
The articles formed in Ferenz have a higher in a range of from 5 to 50 cm, which falls within the range of instant claim 3, and a width of 50 to 200 cm, which falls within the range of width of instant claim 3.
With regards to instant claim 4-5 and 12, Ferenz teaches compressing the articles disclosed therein by 40% (of the initial volume). See ¶35. The articles are compressed and “kept” in a compressed state of 40% compression. Claims 4 and 12 do not indicate that the compressed articles are compressed indefinitely. The test used to measure the compression (to 40% of initial volume) in Ferenz DIN EN ISO 3386-1:1997 + A1:2010 (see ¶35) which uses an “auxiliary means” to compress the articles of Ferenz and keep them in a compressed state. This meets instant claims 4-5 and 12.
The components of Ferenz are reacted and polymerized to form an article, a mattress, which is compressed. Thus, the same steps are recited in instant claim 11 are disclosed in Ferenz, which meets the process of instant claim 11. The phrase “improving dimensional recovery of a shaped flexible hot-cure PU foam article,” is an intended use of the method steps of claim 11, which again, only recite polymerizing the components recited instant claim 1 to obtain a shaped flexible hot-cure PU foam article. As the same steps are disclosed in Ferenz, the method of claim 11 is met by teachings of Ferenz.
Regarding instant claim 7, “recycled polyols” is a product-by-process, i.e. polyols which have been recycled. Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The data of the instant specification provides no evidence that using recycled polyols to produce the instantly claimed shaped flexible hot-cure PU foam article provides a different product than using an otherwise identical polyol which is not recycled. Thus, the structure of the foams formed in Ferenz, and the structure of the polyols used to produce the foams of Ferenz, is the same as that of the instant claims, regardless of whether the polyols used are recycled or not.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ferenz (EP 3219738). As the EP document is not in English, citations are made to the attached translation.
Ferenz teaches the flexible viscoelastic, soft polyurethane foam and composition as discussed above, the discussion of which is incorporated herein by reference.
The total siloxane of formula (1) of Ferenz comprises at least 5wt% of a proportion having a molecular weight of greater than 60,000 g/mol, which overlaps the range of instant claim 8.
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 teachings of Ferenz to use an amount of siloxane compound which meets the instant claims and to use a proportion of siloxane having a molecular weight which meets the instant claims 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 4-5 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ferenz (EP 3219738) and further in view of Dai (CN 102079391). As the CN document is not in English, citations are made to the attached translation.
Ferenz teaches the flexible viscoelastic, soft polyurethane foam and composition as discussed above, the discussion of which is incorporated herein by reference.
Ferenz does not explicitly recite compressing by at least 20% and keeping the foam in a compressed form by an auxiliary means.
However, Dai teaches a method of compressing and packaging mattresses (¶1), where a mattress has its volume reduced to ¼ of its original size (¶ 5) by forced compression and using vacuum (¶ 4). This corresponds to a 75% compression. It would have been obvious to one of ordinary skill in the art to use the process of Dai to compress the mattresses disclosed in Ferenz in order to reduces transportation and storage costs and create a price advantage and allows export to all parts of the world (¶ 5).
Conclusion
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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/K. BOYLE/Primary Examiner, Art Unit 1766
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