DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to a polyurethane composition, classified in C08J9/32; C08J2203/22.
II. Claims 18-20, drawn to foamed composition and articles, including multilayered articles, classified in B32B3/20; B32B27/065.
3. The inventions are independent or distinct, each from the other because:
Inventions of Groups I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as cushioned footwear or athletic gear, automotive parts, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
They require different areas of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
4. During a telephone conversation with Cynthia Neal on August 5, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
5. Claim 13 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.
6. Claim 13 recites the expanded polymeric microspheres being present in amount of about 0.05%wt to about 8%wt, wherein the polymeric microspheres in claim 1 are present in amount of about 0.1%wt to bout 10%wt. It is not clear how the lowest amount of microspheres added to the composition in amount of about 0.1%wt can result in the lowest amount of expanded microspheres of 0.05%wt. It is not clear if only half of the added microspheres are expanded, 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.
7. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Salsman (US 2020/0231735) in view of Morehouse, Jr. et al (US 3,615,972, incorporated by reference in US 2020/0231735).
6. Salsman discloses a polyurethane foam composition comprising:
1) a A-component comprising a polyisocyanate ([0096], [0103], as to instant claims 1 and 8);
2) a B-component comprising:
- polyols, including aromatic polyester polyether polyols based on a glycerol backbone, having PET units and based on transesterification of the PET with either glycerine or trimethylolpropane ([0016]-[0029], [0077], Abstract, as to instant claim 9);
- catalyst;
- blowing agents ([0096]);
- a surfactant ([0105], [0076], as to instant claim 10).
8. The blowing agents comprise a mixture of chemical and physical blowing agents ([0053], [0054]) comprising liquid or gas blowing agents as physical blowing agents ([0058], [0060]), water as a chemical blowing agent ([0067]) and
further 0.25-5%wt (as to instant claim 1, 13) of hollow microbeads comprising a shell made of thermoplastic polymer with a liquid low blowing substance such as isopentane in the core ([0064], as to instant claims 2, 5), specifically commercial product Expancel ([0064]).
For the description of the hollow microbeads, Salsman refers to US 3,615,972 (Morehouse, Jr. et al) incorporated in its entirety by reference (see [0064]).
9. Thus, Morehouse, Jr. et al discloses a variety of expandable microspheres (Abstract) comprising a core including blowing agents such as propane, neopentane (col. 4, lines 10-15, as to instant claim 5) and a shell formed by suspension polymerization of styrene monomers, acrylate materials including methyl methacrylate, ethyl acrylate, butyl acrylate (col. 3, lines 43-56), specifically exemplified microspheres comprising a copolymer of methyl methacrylate with acrylonitrile and divinyl benzene, having a diameter of 2-10 micron and expanded to form microcellular particles having diameters two to about five times the diameter of the unexpanded beads, i.e. 4-50 micron (Examples 24, 25, as to instant claims 2-3, 6-7,14).
10. As defined in instant specification, the claimed “acrylic ester”, i.e. acrylate comonomers include methyl methacrylate as well ([see [0064] of instant specification):
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11. In the alternative, though the specific Examples 24 and 25 are shown including methyl methacrylate as the acrylate monomer, based on the teachings of Morehouse, Jr. et al that ethyl acrylate, butyl acrylate can be used as the acrylate materials, and the styrene monomers can be used as the olefin monomers, to form the shell, it would have been obvious to a one of ordinary skill in the art to choose and use ethyl acrylate or butyl acrylate as the acrylate monomers to be copolymerized with both acrylonitrile and styrene to form the shell of the expandable beads, similar to said Examples 24 and 25, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claim 4). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
12. Further, based on the teachings of Salsman that mixture of chemical and physical blowing agents ([0053], [0054]) comprising liquid or gas blowing agents as the physical blowing agents ([0058], [0060]), water as a chemical blowing agent ([0067]) and said expandable microspheres, can be used, it would have been obvious to a one of ordinary skill in the art to choose and use all of water, gas blowing agents and expandable microspheres as the blowing agent mixture to foam the foamable polyurethane composition of Salsman, so to produce the polyurethane foam having a high expansion ratio and low density, given such is desired, and since it would have been obvious to choose material based on its suitability, especially since Salsman explicitly teaches that the hollow microbeads can be used in combination with other blowing agents ([0064]). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
13. As to instant claim 11, 13, a method for making the foam comprises mixing the A and B components ([0103]-[0106]), coating the mixture/composition onto a substrate, followed by reacting, curing at a temperature of as high as 150⁰C, and expanding the composition ([0108]-[0109], [0112], [0082], claim 1). Since the foamable composition of Salsman comprises expandable microspheres/beads, the purpose of which microspheres/beads is to expand under heating, therefore, upon curing the mixture of the component A and the component B at a temperature of as high as 150⁰C, the expandable microspheres will intrinsically and necessarily at least partially expand to form the expanded microspheres, and the use of 0.25-5%wt of the expandable microspheres will intrinsically and necessarily lead to providing at least 0.05%wt of expanded microspheres, as claimed in instant invention, as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
14. As to instant claims 12, the foam is open cell foam (claim 19, [0067]).
15. As to instant claims 16, 17, the produced foam has density of 16-40 g/L (1-2.5 lb/ft3) ([0083]) and compressive strength of 130-160 kPa (18-23 psi).
16. Since the foam of Salsman is produced from substantially the same composition as that claimed in instant invention, i.e. comprising polyisocyanate, polyol, catalyst, mixture of blowing agents and further expandable microspheres, which expandable microspheres are explicitly taught by Salsman as being used as a blowing agent, therefore, the foam of Salsman will intrinsically and necessarily have an increase of R-value of at least about 2% as compared to the same foam without said expandable microspheres as well (as to instant claim 15). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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