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 USP5208379A in view of EP3819323A1 further in view of GB21614758
Claim 1 is directed to a process for producing a PU foam, the process comprising: by 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 catalyst an isocyanate-polyol and/or isocyanate- water and/or isocyanate trimerization reactions, (d) at least one foam stabilizer, and also (e) optionally at least one or more chemical or physical blowing agents,
USP5208379A discloses recycling polyurethane by hydrolysis with water in the presence of a strong base and a quaternary ammonium compound to obtain an active hydrogen material suitable for reuse in polyurethane production and an organic polyamine. Example 1 shows the re overed polyamine as an 80/20 mixture of 2,4 toluene diamine and 2,6 toluene diamine. See abstract , col. 1 through col. 4 line 9, claims 1, 17 and Example 1.
EP3819323A1 discloses producing polyurethane foam using recycled polyol as a part of the polyol moiety to produce polyurethane foam by reaction with an isocyanate in the presence of a catalyst, foam stabilizer and blowing agent. See abstract, page 1 lines 35-36, page 3 line 16-18, specifically page 11 lines 1-18. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since both references teach recycling polyurethane material for reuse in polyurethane production. Moreover, although USP5208379A does not disclose the claimed carbon number limitation for the quaternary ammonium cation GB21614758 discloses lower carbon quaternary ammonium compounds including tetramethylammonium and tetraethylammonium compounds. See pages 1-3, Examples 1,5, 9 and claims 10,11.
Consequently, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ these known lower carbon quaternary ammonium compounds in the hydrolysis process of USP5208379A providing a quaternary ammonium cation within the claimed carbon number range.
Claim 2 is directed to the process according to Claim 1, wherein the PU foam is a rigid PU foam, a flexible PU foam, a hot-cure flexible PU foam, a viscoelastic PU foam, an HR PU foam, a hypersoft PU foam, a semirigid PU foam, a thermoformable PU foam, or an integral PU foam.
EP3819323A1 discloses producing polyurethane foam using recycled polyol as a part of the polyol moiety having low amine contents and using the recycled polyols for producing cellular polyurethane. The reference further discloses that recycled polyols obtained from polyurethane foam waste by hydrolysis may be reused to produce polyurethane hot-cure flexible foam. See abstract, page 1 lines 35-36, page 3 line 16-18, specifically page 11 lines 1-18.
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 recycled polyol taught by
EP3819323A1 in producing the polyurethane foam of claim 1.
Claim 3 is directed to the process according to Claim 1 wherein the reaction is carried out using f) water, g) one or more organic solvents, h) one or more stabilizers against oxidative degradation, i) one or more flame retardants, and/or j) one or more further additives.
EP3819323 discloses common additives used in polyurethane foam processes including water, crosslinkers, antioxidants, and other additives. See page 4 lines 23-25, page 6 line 11, page 9 lines 15, 17, and particularly page 13 lines 31-37. 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 known additives disclosed in EP3819323A1 in the polyurethane foam process of claim 1 for their known uses in polyurethane foam production. 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). 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 foam stabilizer is selected from the group consisting of silicon compounds that include carbon atoms, compounds described by the formula (1c), and er mixtures of two or more of said compounds: Formula (1C):.
In addition to the discussion for claim 1, EP3819323A1 discloses the use of stabilizers in the production of polyurethane foams including silicon foam stabilizers.. See page 6 lines 17 and 25 .
Claim 5 is directed to the process according to Claim 1 wherein the at least one or more catalysts for production of the PU foam is at least one selected from the group consisting of triethylenediamine, 1,4- diazabicyclo[2.2.2]octane-2-methanol, diethanolamine, N-[2-[2- (dimethylamino)ethoxy]ethyl]-N-methyl-1,3-propanediamine, 2-[[2-(2- (dimethylamino)ethoxy)ethyl]methylamino]ethanol, 1,1'-[(3-{bis[3- (dimethylamino)propyl]amino}propyl)imino]dipropan-2-ol, [3-(dimethylamino)propyl]urea, 1,3-bis[3-(dimethylamino)propyl]urea, and
EP3819323A1 discloses the use of suitable nitrogen-containing compounds as catalysts in the sense of the present invention are the amines triethylamine, triethanolamine and diethanolamine which is expressly recited in claim 5. See page 11 line 31 to page 12 line 12.
Claim 6 is directed to the process according to Claim 1 wherein, based on the total at least one
EP3819323A1 discloses the use of suitable nitrogen-containing compounds as catalysts in the sense of the present invention are the amines triethylamine, triethanolamine, diethanolamine, including those claimed. See page 11 line 31 to page 12 line 12.
Claim 7 is directed to the process according to Claim 1 wherein the recycled polyol was obtained from a polyurethane hydrolysis comprising the reaction of the polyurethane with water in the presence of a base-catalyst combination (I) or (II), where (I) comprises a base having a pKb at 25°C of 1 to 10 and at least one catalyst selected from the group consisting of quaternary ammonium salts containing an ammonium cation comprising 6 to 30 carbon atoms and organic sulfonates containing at least 7 carbon atoms, or where (II) comprises a base having a pKb at 25°C of < 1 and at least one catalyst selected from the group consisting of quaternary ammonium salts containing an ammonium cation having 6 to 14 carbon atoms in the case of an ammonium cation that does not contain a benzyl substituent, and
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 7.
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 that lower carbon quaternary ammonium compounds were known for use in polyurethanes..
Claim 8 is directed to a composition suitable for production of a polyurethane foam, comprising; at least one polyol component that comprises a recycled polyol, at least one isocyanate component, a catalyst, a foam stabilizer, a blowing agent and optionally auxiliaries wherein the employed recycled polyol comprises toluene 2,4-diamine, toluene 2,6-diamine, 2,2'-diaminodiphenylmethane, 2,4'-diaminodiphenylmethane and/or 4,4'-diaminodiphenylmethane
SP5208379 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.
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.
USP5208379A discloses recycling polyurethane by hydrolysis with water in the presence of a strong base and a quaternary ammonium compound to obtain an active hydrogen material suitable for reuse as a polyol. See abstract , col. 1 though col. 4 line 9, claims 1, 17 and Example 1.
Claim 9 is directed to a polyurethane foam, wherein it is obtained by the process according to Claim 1
Claim 9 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 10 is directed to a method for manufacturing products containing a PU foam, the method comprising: constructing the products with a PU foams according to Claim 9, and wherein the products comprise as refrigerator insulation, insulation panels, sandwich elements, pipe insulation, imitation wood,
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since EP3819323 disclose the use of the polyurethane to produce cushions such as mattresses. See page 1 lines 35-36, page 6 lines 32-36, page 8 lines 5-21, and claims 8 and 12.
Claim 11 is directed to the process according to Claim 1, wherein the recycled polyol is present in an amount of 0.00005% to 0.1% by weight, based on the total recycled polyol.
USP5208379 discloses hydrolyzing polyurethane to recover an active hydrogen containing polyether polyol using water a, a strong base and a quaternary ammonium activating agent. See abstract, col. 1 through col. 4 line 9 claims 1 and 17 and Example 1.
EP3819323 discloses recycled polyols obtained from polyurethane foam waste and their reuse in polyurethane foam production. See page 11 lines 8-16.
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 composition of EP3819323 since EP3819323
teaches recycled polyol obtained from polyurethane waste to foam production.
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.
Claim 12 is directed to the process according to Claim 1, wherein the PU foam is a hot-cure flexible PU foam.
See EP3819323 page 1 lines 36-41, pages 2-11 and claim 1.
Claim 13 is directed to the process according to Claim 3, wherein the one or more stabilizers against oxidative degradation are antioxidants.
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.
Claim 14 is directed to the process according to Claim 3, wherein the one or more further additives are at least one selected from the group consisting of surfactants, biocides, dyes, pigments, fillers, antistatic additives, crosslinkers, chain extenders, cell openers, fragrances, cell expanders, plasticizers, hardening promoters, aldehyde scavengers, additives for resistance of PU foams to hydrolysis, compatibilizers (emulsifiers), adhesion promoters, hydrophobization additives, flame-lamination additives, additives for preventing cold flow, and additives that reduce compression set, and odor-reducers.
See EP3819323 discloses further additives for polyurethane foam compositions, including additives within the claimed limitation. See page 13 lines 31-37
Claim 15 is directed to the process according to Claim 4, 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.
In addition to the discussion for claim 4, EP3819323 discloses silicon containing foam stabilizer having structures and ranges overlapping or encompassing those recited in claim 15.
Claim 16 is directed to the process according to Claim 4, wherein i = 1 to 80, j = 0 to 80, k = 0, and p =3 or4.
In addition to the discussion for claim 4, EP3819323 discloses corresponding structure and range parameters overlapping or encompassing those recited in claim 15.
Claim 17 is directed to the process according to Claim 5, wherein m = 2 or 3, n = 2 or 3, and i = 0 to 2.
EP3819323A1 discloses the use of suitable nitrogen-containing compounds as catalysts within the catalyst structures recited n claims 5 and 17. See page 11 line 31 to page 12 line 12.
Claim 18 is directed to the process according to Claim 5, wherein the metals are Sn or Bi. See EP3819323A1 pages 12 lines 27-page 13 line 1.
Claim 19 is directed to the process according to Claim 6, wherein, based on the total employed polyol component, 95% by weight of recycled polyol is used.
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 95wt% would have been an obvious optimization known to the skilled artisan. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine a suitable amount of recycled polyol for use in the polyurethane foam composition through routine experimentation.
Claim 20 is directed to the composition according to Claim 8, wherein the auxiliaries are surfactants, biocides, dyes, pigments, fillers, antistatic additives, crosslinkers, chain extenders, cell openers, or fragrances. See discussion for claim 14 as well as EP3819323 discloses additives within the recited claim. See page 13 lines 31-37.
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 1-3, 11 and 13 of copending Application No.18575871 and claims 1,2,4-7,9.10,12-15, and 18-19 of copending Application No.18575870.
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 related application ‘870 recite producing polyurethane foam using recycled polyol obtained by hydrolysis of polyurethane in the presence of a specific base catalyst.
The claims of each application are directed to the same overall subject matter of recycling polyurethane materials for use in polyurethane production. The present claims limitations would have been obvious and are not patentably distinct from the claims of the related applications.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice
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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