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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
3. Claim(s) 1, 3, 4, 6, 9, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duggal (US 9,969,837, of record) as modified by Vitale (CA 2262889, of record) and https://www.sigmaaldrich.com/US/en/product/aldrich/481939 (will be referred to as NPL ‘939- of record).
Duggal is directed to microcellular polyurethane foams having applicability as tire fillers (Column 8, Lines 35-40). More particularly, the term “tire filler” is well recognized as corresponding with a foam material that is arranged within a tire cavity and provides puncture resistance. Duggal further teaches that such foams comprise at least one polyisocyanate compound and at least one isocyanate reactive material (material that contains at least two hydrogen atoms that are active), such as polyols (Column 4, Lines 40+ and Column 5, Lines 25+). Among the isocyanate reactive materials are chain extenders such as ethylene glycol, diethylene glycol, neopentyl glycol, hexanediol, butanediol, propylene glycol, and dipropylene glycol (all of which are disclosed by Applicant as being suitable polyols- corresponds with (iii)).
In terms of the isocyanate reactive materials, though, Duggal fails to specifically teach the use of polysiloxane diols and/or polysiloxane diamines. However, a fair reading of Duggal suggests the use of any number of isocyanate reactive materials, including a plurality of high equivalent weight isocyanate reactive materials, such as polyester polyols (Column 5, Lines 40-60). One of ordinary skill in the art would have found it obvious to use any number of known isocyanate reactive materials that are commonly used in similar polyurethane compositions and such would include the claimed polysiloxanes (corresponds with (ii) of the claimed invention), as shown for example by Vitale (Page 7, Lines 34-8). It is particularly noted that Vitale suggests the alternative use of polyester polyols and each of the claimed polysiloxane materials. Absent a conclusive showing of unexpected results, one of ordinary skill in the art would have found it obvious to form the polyurethane of Duggal with a polysiloxane diol and/or a polysiloxane diamine as it constitutes a known isocyanate reactive material that is consistent with the general disclosure by Duggal (the fact that the claimed foam is degradable with a certain anion fails to provide a conclusive showing of unexpected results since the anion is separate and distinct from the claimed foam-containing tire- limitations are directed to the method of removing a foam as opposed to the structure of the claimed foam-containing tire). Again, the disclosure of polyester polyols by Duggal, for example, would have been recognized as being exemplary- one of ordinary skill in the art would have found it obvious to use additional isocyanate reactive materials known in the manufacture of polyurethane compositions, such as the claimed polysiloxane materials.
Additionally, Duggal teaches the use of at least one isocyanate reactive compound and exemplary compounds include a wide variety of glycols. The specific selection of (a) polysiloxane diols and/or polysiloxane diamines and (b) one of the glycols detailed above would have been obvious in view of the general disclosure to use multiple compounds and Applicant has not provided a conclusive showing for the claimed combination of materials. Also, a fair reading of the Duggal and Vitale does not limit the loading of individual isocyanate reactive materials. One of ordinary skill in the art would have found it obvious to use any number of loadings for components (ii) and (iii), including that required by the claimed invention, absent a conclusive showing of unexpected results. It is further noted that Applicant’s original disclosure broadly states that the polyol comprises about 1 to about 95% by volume of the combined volume (Paragraph 42 in originally filed specification) and there is no evidence that a specific range between about 75% and about 95% provides an unexpected benefit (suggests a lack of criticality for the claimed range).
Lastly, regarding claim 1, a polydimethylsiloxane diol is seen to correspond with the claimed material (directly analogous to the material taught by Applicant in Paragraph 49 of the original disclosure). NPL ‘939 is further provided to evidence the general structure of polydimethylsiloxane diols (the term diol refers to compounds that have a pair of hydroxyl groups). Also, given that the modified foam of Duggal is substantially the same as that of the claimed invention, it reasons that said foam would similarly be “capable of degradation” upon contact with a source of fluoride anion (claims as currently drafted fail to require the actual degradation and removal of a given foam material).
As to claims 3, 9, and 20, Duggal teaches polyisocyanates in accordance to the claimed invention (Column 4, Lines 55+).
With respect to claim 6, Vitale teaches the use of polysiloxane diamines.
4. Claim(s) 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duggal, Vitale, and NP ‘939 as applied in claims 4 and 6 above and further in view of Gunatillake (CN 1267304, of record).
As detailed above, Vitale recognizes the known use of polysiloxane diols and polysiloxane diamines to form polyurethanes. It is well recognized that the term polysiloxane diol (and polysiloxane diamine) covers a wide range of materials that are silicones (polysiloxanes) with hydroxyl groups (or amine groups) attached in terminal positions. Gunatillake provides one example of the general makeup of polysiloxane diols, wherein any number of groups are present along the polymer chain. More particularly, respective groups can be optionally substituted (e.g. oxygen, nitrogen- heteroatom) and can be straight chain, branched, or cyclic, saturated or unsaturated hydrocarbon group. One of ordinary skill in the art would have found it obvious to use any number of polymers under the genus of polysiloxane diols, including that required by the claims, to form the foam of Duggal. It is emphasized that Gunatillake provides the general makeup of polysiloxane diols and Applicant has not provided a conclusive showing of unexpected results for the claimed polysiloxane material (would be applicable to hydroxyl terminated or amine terminated polysiloxanes).
Response to Arguments
5. Applicant's arguments filed June 4, 2026 have been fully considered but they are not persuasive.
Applicant contends that Vitale does not teach or disclose that component (A) can be used alone for ingredient (ii). First, it is noted that component (A) can in fact be used alone for ingredient (ii). Vitale states that (a) one or more different organic components with active hydrogens are used (Page 6, Lines 26+) and (b) one or more organic components with active hydrogens component of the present invention may be one or more of A, B, or C (Page 8, Lines 9-11). Second, Duggal defines suitable isocyanate-reactive materials as containing at least two hydrogen atoms that are active. Exemplary materials that fall under the genus disclosed by Duggal are polyester polyols (Column 5, Lines 55+). Given the general disclosure of Duggal, one of ordinary skill in the art would have found it obvious to use additional isocyanate-reactive materials that contain at least two hydrogen atoms that are active and such includes polysiloxane diamines and polysiloxane diols, as shown for example by Vitale (Page 7, Lines 3+). It is emphasized that Vitale suggests that polyester polyols, polysiloxane diamines, and polysiloxane diols are in the same class of materials having at least two active hydrogen atoms and being used in the manufacture of polyurethanes.
It is further noted that the pending rejection involves the modification of Duggal with Vitale. The fact that the polyurethane composition of Vitale includes ingredient (i) and possibly components B and/or C fails to render the combination non-obvious. The particular type of isocyanate reactive material is completely independent of whether a polyurethane includes an ingredient such as (i). This is evident in view of Duggal and Vitale, which describe the use of polyester polyols in polyurethane compositions that are devoid of ingredient (i) (Duggal) and include ingredient (i). As such, a fair reading of Vitale does not suggest the exclusive use of polysiloxane diamines and polysiloxane diols in polyurethane compositions formed with ingredient (i).
Applicant further argues that Vitale is non-analogous art. The Examiner respectfully disagrees. First, Duggal and Vitale are both directed to polyurethane compositions comprising isocyanates and isocyanate reactive materials. Second, Duggal specifically teaches the use of isocyanate reactive materials having at least two active hydrogen atoms, such as polyester polyols. The polyurethane industry in general recognizes the known use of additional isocyanate reactive materials having at least two hydrogen atoms, such as polysiloxane diamines and polysiloxane diols. It is emphasized that Vitale suggests that polyester polyols, polysiloxane diamines, and polysiloxane diols are in the same class of materials having at least two active hydrogen atoms and being used in the manufacture of polyurethanes (all materials are recognized as being suitable isocyanate reactive materials having at least two active hydrogen atoms in the manufacture of polyurethanes).
Conclusion
6. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 June 10, 2026
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