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 1 – 8, in the reply filed on July 27, 2026 is acknowledged. The traversal is on the ground(s) that JP 2017/016055 to Nishibori et al. (hereinafter Nishibori) fails to disclose “the urethane foam material has a compressive elastic modulus of 20 KN/m2 or less when compressed within a compression ratio range of 10% or more and 50% or less”. Applicant’s argument is not found persuasive, as this limitation was introduced on July 27, 2026 into the instant claims and application after the mailing of the restriction requirement on June 1, 2026. That Nishibori et al. fails to teach newly added subject matter does not then constitute an error in the restriction requirement.
Applicant additionally traverses on the ground(s) that there is no undue or serious burden in the search and examination of Groups I and II. This argument is not found persuasive, as serious burden is not a factor in restrictions based on PCT Rule 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9 and 11 – 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 requirement in the reply filed on July 27, 2026.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 should be amended to recite units of “kN/m2” in line 3. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent Claim 1 now sets forth “the urethane foam material has a compressive elastic modulus of 20 KN/m2 or less when compressed within a compression ratio range of 10% or more and 50% or less”. The closest support for this limitation would appear to come from Fig. 5 of the original disclosure which provides a graph plotting compressive elastic modulus of two inventive foams having thickness of 35 mm over compressive displacements of roughly 2.5 to 22.5 mm. While the plot does show compressive elastic modulus values which fall within the range of less than 20 kN/m2, it does not provide support for compressive elastic modulus values over the entire claimed range of 20 KN/m2 or less for all compression ratios of 10 to 50%.
As Claims 2 – 8 all depend on Claim 1, they also incorporate this new matter and are consequently also rejected under this statute.
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 – 8 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.
The metes and bounds of Claim 1 are not clearly defined by the phrase “it is needed”. It is unclear what “it” refers to in this phrase and how it may be determined to be needed. For the purposes of further examination, Claim 1 will be interpreted as setting forth “an increased thickness only in a particular region”.
As Claims 2 – 8 all depend on Claim 1, they incorporate this indefinite subject matter and are therefore also rejected under this statute.
Additionally, Claims 5 and 6 set forth sound absorption at low frequencies and vibration damping performance are improved and radiated sound is reduced. However, the claims do not set forth what has these improvements and reduction, nor what these improvements and reduction are relative to. The scope of these claims is consequently unclear.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. EP 0732684 teaches a sound absorbing layers comprising polyurethane foams with a compression modulus in the range of 5,000 to 2000 N/m2, though the reference does not expressly teach at what compression ratio these values are measured.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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