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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP5208379 See abstract , col. 1 though col. 4 line 9, claims 1, 17 and Example 1.
in view of EP3819323 see abstract, page 3 line 16-18, page 5 lines 26-48, page 6 lines 27-44, page 11 lines 1-18 and further in view of GB2161475A see pages 1-3, Examples 1,5, 9 and claims 10,11.
Claim 1 is directed to a process for producing PU foams, the process comprising: reacting (a) at least one polyol component, comprising a recycled polyol with (b) at least one isocyanate component in the presence of (c) at least one or more catalysts that catalyze an isocyanate-polyol and/or isocyanate- water reactions and/or isocyanate trimerization, and (d) optionally further additives, wherein the recycled polyol was obtained by hydrolysis of a polyurethane, comprising contacting said polyurethane with water in the presence of a base- catalyst-combination (I) or (II), wherein(I) comprises a base having a pKb value at 25 °C of from 1 to 10, and at least one catalyst selected from the group consisting of quaternary ammonium salts containing an ammonium cation containing 6 to 30 carbon atoms and organic sulfonates containing at least 7 carbon atoms, and (II) comprises a strong inorganic base having a pKb value at 25 °C of< 1, and as a catalyst a quaternary ammonium salt containing an ammonium cation containing 6 to 14 carbon atoms if the ammonium cation does not comprise a benzyl residue or containing 6 to 12 carbon atoms if the ammonium cation comprises a benzyl residue.
USP5208379 discloses hydrolyzing polyurethanes such as polyurethane foams with water in the presence of a strong base and an activating agent to produce an active hydrogen containing polyether polyol. See abstract , col. 1 though col. 4 line 9, claims 1, 17 and Example 1.
Note, USP5208379 teaches that the quaternary ammonium salts contain at least 15 carbon atoms and do not teach the lower carbon limitation of claim 1.
However, EP3819323 discloses producing polyurethane foam using recycled polyol as a part of the polyol moiety. See abstract, page 1 lines 35-36, page 3 line 16-18, specifically page 11 lines 1-18.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the recovered polyol of USP5208379 as the recycled polyol in the polyurethane foam process of EP3819323 in order to return the polyurethane polyol derived from waste to a useable polyurethane such as mattresses and pillows.
Additionally GB2161475A discloses quaternary ammonium catalysts in polyurethane, including tetramethyl ammonium and tetraethyl ammonium moieties and also discloses quaternary ammonium cations having alkyl radicals containing 1-20 carbon atoms. The reference further shows their use in polyurethane foam in Example 9 where the flexible foam uses a boronium catalyst prepared from tetraethylammonium hydroxide. See pages 1-3, Examples 1,5, 9 and claims 10,11.
Thus, it would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a lower carbon quaternary ammonium compound as taught by GB2161475A as the quaternary ammonium activating agent in the polyurethane hydrolysis process of USP5208379 in view of EP3819323 since GB2161475A shows in Example 9 that lower carbon quaternary ammonium catalysts were effective catalysts in polyurethane isocyanate processes and provided a known alternative to be used.
Claim 2 is directed to the process of claim 1, wherein the base-catalyst- combination (I) comprises a base selected from the group consisting of alkali metal phosphates, alkali metal hydrogen phosphates, alkali metal carbonates, alkali metal silicates, alkali metal hydrogen carbonates, alkali metal acetates, alkali metal sulfites, ammonium hydroxide, and mixtures thereof.
USP5208379 discloses hydrolysis of polyurethane using inorganic bases such as those from alkali metals and would have been obvious to the skilled artisan. See claims 2,13,14,15,17. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
Claim 3 is directed to the process of claim 1, wherein the base-catalyst- combination (II) comprises a strong inorganic base selected from the group consisting of alkali metal hydroxides, alkali metal oxides, alkaline earth metal hydroxides, alkaline earth metal oxides, and mixtures thereof.
USP5208379 discloses strong inorganic bases polyurethane hydrolysis including alkali metal hydroxides. See claims 2,13,14,15,17. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
Claim 4 is directed to the process according to claim 1 wherein the reaction is performed with use of (d) further additives, comprising (e) water, and/or (f) one or more organic solvents, and/or (g) one or more stabilizers against oxidative degradation, and/or (h) one or more flame retardants, and/or (i) one or more foam stabilizers, and/or (j) one or more further auxiliaries.
EP3819323 discloses common additives used in polyurethane foam processes including water, crosslinkers, antioxidants, etc. see page 4 lines 23-25, page 6 line 11, page 9 lines 15, 17, and particularly page 13 lines 31-37. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
Claim 5 is directed to the process according to claim 1 wherein the PU foam is a flexible PU foam.
EP3819323 discloses flexible PU foams including hot flexible, viscoelastic, HR and other flexible PU foam types. See page 1 line 36 to page 2 line 14. Consequently, selecting a flexible PU foam would have been obvious to the skilled artisan given the disclosure of the reference.
Claim 6 is directed to the process according to claim 1, wherein the reaction is performed with use of (d) further additives comprising one or more foam stabilizers according to the following formula (2), formula (3) and formula (4) as claimed.
EP3819323 discloses siloxane/polyether foam stabilizers for polyurethane foam, including polydiakylsiolxane-polyoxyalkylene copolymers. The claimed foam stabilizer would have been a known stabilizer to the skilled artisan. See page 6 line 25 and page 24 line 31.
Claim 7 is directed to the process according to claim 1 wherein the at least one or more catalysts (c) is selected from the group consisting of nitrogen-containing compounds and compounds of the general formula R1R2N
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where X represents oxygen, nitrogen, hydroxyl, amines (NR3 or NR3R4), or urea (N(R5)C(O)N(R6) or N(R5)C(O)NR6R7), Y represents amine NR$R9 or ether OR9,R°2 represent identical or different aliphatic or aromatic linear or cyclic hydrocarbon radicals having 1-8 carbon atoms optionally bearing an OH-group or representing hydrogen,R3-9 represent identical or different aliphatic or aromatic linear or cyclic hydrocarbon radicals having 1-8 carbon atoms optionally bearing an OH or a NH or NH2 group or representing hydrogen, where m = 0 to 4, n = 2 to 6, i = 0 to 3.
EP3819323 discloses nitrogen containing polyurethane catalyst such as amines for catalyzing the isocyanate polyol and isocyanate water reactions. See page 11 lines 27-30 and lines 31 through page 12 line 13. Consequently, selecting nitrogen-containing compounds and compounds of the general formula R1R2N would have been obvious to the skilled artisan given the disclosure of the reference.
Claim 8 is directed to the process according to claim 1 wherein the at least one or more catalysts (c) is selected from the group consisting of the low-emission amines and/or the low-emission compounds containing one or more tertiary amine groups bearing a functionality reactive with a polyurethane matrix.
EP3819323 discloses nitrogen containing polyurethane catalyst such as amines for catalyzing the isocyanate polyol and isocyanate water reactions. The selection of low emission amine catalyst of the same known catalytic purpose would have been obvious to the skilled artisan. See page 11 lines 27-30 and lines 31 through page 12 line 13.
Claim 9 is directed to the process according to claim 1 wherein the at least one or more catalysts (c) is selected from the group consisting of the metal-organic or organometallic compounds, metal-organic or organometallic salts, organic metal salts, inorganic metal salts, and from the group of the charged or uncharged metallic coordination compounds.
EP3819323 discloses metal containing polyurethane catalyst including those as shown on page 12 lines 21-31.
Claim 10 is directed to the process according to claim 1 wherein the recycled polyol content is > 25% by weight, , based on the total polyol content.
EP3819323 discloses recycled polyols obtained from polyurethane foam waste and their reuse in polyurethane foam production. See page 11 lines 8-9. The claimed limitation of 25wt% would have been an obvious optimization known to the skilled artisan. One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 11 is directed to the PU foam wherein it is obtained by the process according to claim 1.
Claim 11 is a product-by-process and thus the claim is not limited to the manipulations of the recited steps of claim 1, only the structure of the implied by the steps. As such, note USP5208379 discloses hydrolyzing polyurethane to recover an active hydrogen containing polyether polyol using water a, a strong base and a quaternary ammonium activating agent.
EP3819323 discloses polyurethane foam produced from a polyol component and an isocyanate component and teaches recycled polyols obtained from polyurethane foam waste. The reference also discloses that the waste may be liquified by hydrolysis and that the resulting recycled polyol may be reused to make polyurethane foam. See page 11 lines 8-16.
Additionally GB2161475A discloses quaternary ammonium catalysts in polyurethane, including tetramethyl ammonium and tetraethyl ammonium species and discloses quaternary ammonium cations having alkyl radicals containing 1-20 carbon atoms. The reference further shows their use in polyurethane foam in Example 9 where a flexible foam using a boronium catalyst prepared from tetraethylammonium hydroxide. See pages 1-3, Examples 1,5, 9 and claims 10,11.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the recovered polyol produced according to the modified hydrolysis process of USP5208379 in the process of making polyurethane foam produced from a polyol component in EP3819323 since EP3819323 shows returning recycled polyol to polyurethane foam production. The resulting PU foam would have been the product of the obvious process and the recited process of making the foam does not distinguish the claimed product from the prior art product.
Claim 12 is directed to the U foam according to claim 11, wherein the foam is a flexible PU foam and has a rebound resilience of 1-80%, measured in accordance with DIN EN ISO 8307:2008-03, and/or a foam density of 5 to 800-kg/m3, measured in accordance with ASTM D 3574-11, and/or a porosity of 1 to 250mm water column, measured in accordance with DIN ISO 4638:1993-07.
Since EP3819323 discloses that polyurethane foams have resilience, density and porosity values within or overlapping the claimed ranges, the claimed property ranges would have been obvious to the skilled artisan. See page 5 lines 26-48, and page 6 lines 27-44. Generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 13 is directed toa method for manufacturing products containing a PU foam, the method comprising: constructing the products with a PU foam according to according to claim 11, and wherein the products comprise a packaging foam, mattress, furniture cushion, automobile seat cushion, headrest, dashboard, automobile interior trim, automobile roof liner, sound absorption material, and corresponding products.
See EP3819323 page 1 lines 35-36, page 6 lines 32-36, page 8 lines 5-21, and claims 8 and 12.
Claim 14 is directed to the process according to claim 4, wherein the one or more stabilizers against oxidative degradation are antioxidants.
See EP3819323 page 13 line 34.
Claim 15 is directed to the process according to claim 4, wherein the one or more foam stabilizers are based on siloxanes and/or polydialkylsiloxane-polyoxyalkylene copolymers.
EP3819323 discloses siloxane foam stabilizers on page 14 lines 25-26.
Claim 16 is directed to the process according to claim 4, wherein the one or more further auxiliaries are at least one selected from the group consisting of surfactants, biocides, dyes, pigments, fillers, antistatic additives, crosslinkers, chain extenders, cell openers, organic esters, and fragrances.
See discussion for claim 4 as well as EP3819323 page 13 lines 31-37
Claim 17 is directed to the process according to claim 5, wherein the flexible PU foam is a hot-cure flexible PU foam, viscoelastic PU foam, an HR PU foam, or a hypersoft PU foam.
See EP3819323 page 1 lines 36-41.
Claim 18 is directed to the process according to claim 6, wherein a = 0 to 8, b = 0 to 2, c = 1.5 to 150, d = 0 to 20, e = 0 to 6, f= 0, and g = 0 to 2.
EP3819323 discloses siloxane polyethers foam stabilizer structures and ranges. The recited narrow ranges would have been selected from the known foam stabilizers and would have been obvious to the skilled artisan.
Claim 19 is directed to the process according to claim 6, wherein Rv = same or different divalent organic radicals having 2 - 30 carbon atoms, optionally interrupted by ether, ester or amide- groups and optionally bearing OH functions, or (-SiR20-)xSiR2 groups.
EP3819323 discloses organic modified siloxane polyether foam stabilizers. The claimed Rv would have been a known selection within those skilled in the art.
Claim 20 is directed to the process according to claim 6, wherein x = 1 to 10.
EP3819323 discloses various ranges for siloxane polyester foam stabilizer compounds. Selection of n=1-10 would have been an obvious selection or optimization.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Obviousness-type Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of copending Application No.18575871.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains dependent claims which, when read as a whole, contain the same subject as claim 1 of the present application, respectively and thus would have been obvious over the claimed invention. Note that the related claims ‘871 recite polyurethane hydrolysis using a base catalyst stem and recovery of the resulting di or polyamines, conversion of the amines to di or polyisocyanates and the use of the recycled isocyanate in polyurethane production. The claims of the present application recite producing polyurethane foam using recycled polyol obtained by hydrolysis of polyurethane in the presence of a specific base catalyst.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to recover the di or polyamines product during the polyurethane hydrolysis of the related application ‘870 and convert them to the di or polyisocyanates and reuse them in polyurethane production. Note also that related claim 19 further recites a recycled polyol obtained by polyurethane hydrolysis using the base and a quaternary ammonium salt and organic sulfone catalyst system which corresponds to that which is recited in the related application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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