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 Objections
Claims 1, 8, 10, and 12 are objected to because of the following informalities:
Claim 1 should be amended to recite a polyurethane (PU) foam in the preamble;
Claims 1 and 10 should be amended to recite “Rx, Ry- are independent identical…”, as x and y appear in lower case in formula 3a;
the recitation that “the total concentration of the at least one antioxidant of formula 3a and/or 1d in the recycled polyol is 0.001% to 10% by weight” in Claim 8 appears redundant, as this recitation is already set forth in independent Claim 1;
Claim 12 should be amended to recite “the PU foam according to Claim 11”;
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.
Claim 5 is 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.
Claim 5 is indefinite, as the claim does not set forth any steps involved in the method/process of “using”. It is consequently unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced (see MPEP 2173.05(q)). For the purposes of examination, Claim 5 will be interpreted as setting forth the process further comprises providing one or more of the recited ingredients.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 14, 15, and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 does not further limit Claim 1, as it sets forth the recycled polyol “optionally” comprises at least one further antioxidant selected from the recited group. Claims 14 and 15 are directed to further limiting these optional ingredients and therefore also do not further limit Claim 1. Claim 1 already inherently encompasses the optional further inclusion of these antioxidants in the recycled polyol as it does not limit the composition of this polyol.
Claim 19 does not further limit Claim 7, as each of the limitations recited in Claim 19 is already set forth in Claim 7.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1 – 5, 7 – 9, 11 – 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/024233 to Tang et al. (hereinafter Tang) in view of JPH07224141A to Koshiro et al. (hereinafter Koshiro). For the purposes of examination, citations for Koshiro are taken from a machine translation of the document obtained from the European Patent Office website in June 2026.
Regarding Claims 1, 2, and 7. Tang teaches a process for producing a polyurethane (PU) foam comprising forming and curing a reaction mixture, i.e. reacting, at least one isocyanate-reactive component and an aromatic polyisocyanate (Page 2, Lines 13 – 15). A preferred type of isocyanate-reactive component is a polyether polyol (Page 6, Lines 29 – 30).
Said reaction mixture further comprises one or more catalysts such as 1,4-diazabicyclo-2,2,2-octane (Page 9, Lines 21 – 25), which is also known in the art as triethylenediamine. Triethylenediamine is set forth as a species of (c) said at least one or more catalysts that catalyze an isocyanate-polyol and/or isocyanate-water and/or isocyanate trimerization catalysts in instant Claim 7. The reaction mixture may comprise a surfactant which serves to stabilize the cells of the foam (Page 9, Lines 13 – 15), i.e. a foam stabilizer. The reaction mixture also further comprises a chemical blowing agent, physical blowing agent, or a mixture thereof (Page 9, Lines 3 – 4).
Tang additionally teaches an antioxidant is provided, wherein the antioxidant used in the inventive examples is IRGANOX® 1135 (see Page 17, Line 13 and 30 – 32 and Page 17, Line 10 and 23 – 28). The instant specification teaches IRGANOX® 1135 is a commercially available form of nonyl 3-(3,5-di-tert-butyl-4-hydroxylphenyl)propanoate (see [0099] of the PG-PUB of the instant application). Nonyl 3-(3,5-di-tert-butyl-4-hydroxylphenyl)propanoate is set forth as a species of antioxidant of Formula (1d) in instant Claim 2. Tang teaches the antioxidant is provided in an amount of preferably up to 10 pph (parts per hundred parts polyol) (Page 14, Lines 25 – 27). Thus, when a polyether polyol is used as the polyol/isocyanate-reactive component, the total concentration of the antioxidant will be greater than 0 and up to 10 weight percent based on the weight of the polyether polyol.
Tang does not expressly teach the polyether polyol is a recycled polyol. However, Koshiro et al. teaches the concept of providing a recycled polyether polyol obtained from a polyurethane hydrolysis comprising the reaction product of a polyurethane with water in the presence of a base which serves as a decomposition catalyst ([0001], [0009] – [0013], and [0016]). Tang and Koshiro are analogous art as they are from the same field of endeavor, namely polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a recycled polyether polyol as taught by Koshiro as the isocyanate-reactive component of Tang. The motivation would have been that using recycled materials is beneficial from an environmental standpoint and also could reduce costs associated with preparation of the foam product.
Regarding Claim 3, 14, and 15. Tang teaches the process of Claim 1 and does not require a further antioxidant be provided, corresponding to embodiments of the claim in which this optional at least one further antioxidant is not included.
Regarding Claim 4. Tang teaches the process of Claim 1 wherein the obtained foam may be a flexible foam (Page 16, Line 1).
Regarding Claims 5 and 17. Tang teaches the process of Claim 1 wherein water is most preferably provided as a blowing agent (Page 9, Lines 8 – 12).
Regarding Claim 8. Tang teaches the process of Claim 1. As detailed in the rejection of Claim 1 above, Tang teaches a preferred type of isocyanate-reactive/polyol component is a polyether polyol (Page 6, Lines 29 – 30). In such embodiments, the polyether polyol would correspond to 100 weight percent of the polyol component.
It is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide a recycled polyether polyol as the isocyanate-reactive component of Tang, in light of Koshiro, for the reasons detailed in the rejection of Claim 1 above.
The Office again submits that Tang teaches the antioxidant is provided in an amount of preferably up to 10 pph (parts per hundred parts polyol) (Column 14, Lines 25 – 27). Thus, when a polyether polyol is used as the polyol/isocyanate-reactive component, the total concentration of the antioxidant will be greater than 0 and up to 10 weight percent based on the weight of the polyether polyol.
Regarding Claim 9. Tang teaches the process of Claim 1. As detailed in the rejection of Claim 1 above, it is the Office’s position that it would have been obvious to provide the recycled polyether of Koshiro in the process of Tang, wherein the recycled polyether of Koshiro is obtained from a polyurethane hydrolysis comprising the reaction product of a polyurethane with water in the presence of a base which serves as a decomposition catalyst ([0001], [0009] – [0013], and [0016]).
While the references do not expressly teach the particularly claimed base-catalyst combination (I) or (II), such limitations correspond to product-by-process limitations that are not further limiting in as so far as the structure of the product is concerned. "[E]ven 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113)
Regarding Claim 11. Tang teaches a polyurethane foam obtained by the process of Claim 1 (Page 2, Lines 13 – 15).
Regarding Claim 12. Tang teaches a method for manufacturing products containing a PU foam comprising constructing an instrument panel with the polyurethane foam obtained by the process of Claim 1 (Page 16, Lines 1 – 7).
Regarding Claim 13. Tang teaches the process of Claim 1 wherein the antioxidant is provided in a preferred amount of 0.1 to 5 pph (parts per hundred parts polyol) (Page 14, Lines 25 – 27).
Regarding Claim 16. Tang teaches the process of Claim 1 may provide a flexible foam (Page 16, Line 1) but not specifically a hot-cure flexible foam.
Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tang, when modified in the manner proposed in Claim 1, teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. a hot-cure flexible foam, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claim 20. Tang teaches the process of Claim 7 wherein triethylenediamine may be selected as the catalyst (Page 9, Lines 21 – 25). Limitations directed to the specifically claimed formula do not further limit embodiments of the claim in which triethylenediamine is selected as the catalyst, as in the above described rejection.
Claims 6, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/024233 to Tang et al. (hereinafter Tang) in view of JPH07224141A to Koshiro et al. (hereinafter Koshiro) – as applied to Claim 1 above – and further in view of US 2016/0264757 to Krebs et al. (hereinafter Krebs).
Regarding Claims 6, 18, and 19. Tang teaches the process of Claim 1 wherein TEGOSTAB® silicone foam stabilizers are suitably used (Page 9, Lines 13 – 18) though Tang does not expressly teach these silicon compounds further include carbon atoms. However, Krebs teaches the concept of providing TEGOSTAB® B 8242 as a silicone foam stabilizer in a polyurethane foam formulation. TEGOSTAB® B 8242 is specifically described as a polyether-modified siloxane (see Table 1 and footnote 6), wherein polyethers correspond to carbon atom-comprising moieties. Tang and Krebs are analogous art as they are from the same field of endeavor, namely polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to select TEGOSTAB® B 8242 as taught by Krebs as the TEGOSTAB® foam stabilizer in Tang. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Krebs shows that TEGOSTAB® B 8242 is known in the art to be a suitable TEGOSTAB® foam stabilizer for use in polyurethane formulations (see Table 1 and footnote 6).
Applicant is advised that limitations directed to the specifically claimed formula do not further limit embodiments of the claim in which silicon compounds that include carbon atoms are selected as the at least one foam stabilizer, as in the above described rejection.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/024233 to Tang et al. (hereinafter Tang) in view of JPH07224141A to Koshiro et al. (hereinafter Koshiro). For the purposes of examination, citations for Koshiro are taken from a machine translation of the document obtained from the European Patent Office website in June 2026.
Regarding Claim 10. Tang teaches a reaction mixture/composition for the production of a polyurethane foam comprising an isocyanate-reactive component and an aromatic polyisocyanate (Page 2, Lines 13 – 15). A preferred type of isocyanate-reactive component is a polyether polyol (Page 6, Lines 29 – 30). Said reaction mixture further comprises one or more catalysts (Page 9, Lines 21 – 25) and a surfactant which serves to stabilize the cells of the foam (Page 9, Lines 13 – 15), i.e. a foam stabilizer. The reaction mixture additionally comprises a chemical blowing agent, physical blowing agent, or a mixture thereof (Page 9, Lines 3 – 4).
Tang also teaches an antioxidant is provided, wherein the antioxidant used in the inventive examples is IRGANOX® 1135 (see Page 17, Line 13 and 30 – 32 and Page 17, Line 10 and 23 – 28). The instant specification teaches IRGANOX® 1135 is a commercially available form of nonyl 3-(3,5-di-tert-butyl-4-hydroxylphenyl)propanoate (see [0099] of the PG-PUB of the instant application). Nonyl 3-(3,5-di-tert-butyl-4-hydroxylphenyl)propanoate is set forth as species of antioxidant of Formula (1d) in instant Claim 2. The antioxidant is provided in an amount of preferably up to 10 pph (parts per hundred parts polyol) (Column 14, Lines 25 – 27). Thus, when a polyether polyol is used as the polyol/isocyanate-reactive component, the total concentration of the antioxidant will be greater than 0 and up to 10 weight percent based on the weight of the polyether polyol.
Tang does not expressly teach the polyether polyol is a recycled polyol. However, Koshiro et al. teaches the concept of providing a recycled polyether polyol obtained from a polyurethane hydrolysis comprising the reaction product of a polyurethane with water in the presence of a base which serves as a decomposition catalyst ([0001], [0009] – [0013], and [0016]). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a recycled polyether polyol as the isocyanate-reactive component of Tang. The motivation would have been that using recycled materials is beneficial from an environmental standpoint and also could reduce costs associated with preparation of the foam product.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to recycled polyols and polyurethane foams prepared therefrom.
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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