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 .
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-13 and 19, drawn to a polyol blend and polyurethane foam therefrom.
Group II, claim(s) 14-16, drawn to a method of improving stability/reactivity.Group III, claim(s) 17 and 18, drawn to an amine catalyst composition.Group IV, claim(s) 20, drawn to a second polyurethane foam.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I through IV lack unity of invention because even though the inventions of these groups require the technical feature of the amine catalyst of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Tokumoto (JP2014-105288A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Specifically, Tokumoto teaches catalysts for hydrohaloolefin rigid polyurethane foam compositions (¶ 15-16, 64) and describes emobidments comprising polyol (active hydroxyl compound), trans-1-chloro-3,3,3-trifluoropropene (HFO blowing agent), silicone surfactant, polyisocyanate, and sterically hindered amine catalyst (Table 1). From a listing of roughly 16 preferred catalysts, Tokumoto teaches bis[2-(diethylamino)ethyl]ether is suitable (¶ 36), consistent with Formula 1 of claim 1 where R1 and R2 is ethyl and n = 1. As all common technical features fail to make a contribution over the prior art in view of Tokumoto, they are not special technical features. Therefore, there is lack of unity between Groups I through IV.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or 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 or species may be made with or without traverse. To preserve 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 on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may 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. Where such evidence or admission is provided by applicant, 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.
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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Aleece Hayes on 7/20/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-13 and 19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-18 and 20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
Various foreign references have been lined through in the IDS’s received 8/23/2024, 4/1/2025, and 5/19/2026. While concise explanations of relevance have been provided in the form of abstracts/machine translations, legible copies of the original untranslated foreign patent documents have not been provided. See 37 CFR 1.98(a)(2) and MPEP 609.04(a)(II).
Claim Objections
Claims 3 and 10 are objected to because of the following informalities: “2 ethylhexyl” should be “2-ethylhexyl”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 7-11, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokumoto (JP2014-105288A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 4, 7, 8, 11, and 19, Tokumoto teaches catalysts for hydrohaloolefin rigid polyurethane foam compositions (¶ 15-16, 64) and describes embodiments comprising polyol (active hydroxyl compound), trans-1-chloro-3,3,3-trifluoropropene (HFO blowing agent), silicone surfactant, polyisocyanate, and sterically hindered amine catalyst (Table 1). From a listing of roughly 16 preferred catalysts, Tokumoto teaches bis[2-(diethylamino)ethyl]ether is suitable (¶ 36), consistent with Formula 1 of claim 1 where R1 and R2 is ethyl and n = 1.
Regarding Claims 2, 3, 9, and 10, Tokumoto teaches various chain extenders and crosslinkers can be used, such as ethylene glycol (¶ 72).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6, 8-13, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Burdeniuc (WO 2020/174030 A1) as evidenced by Evonik (DC193 Information).
Regarding Claims 1, 4-6, 8, 11-13, and 19, Burdeniuc teaches catalysts for rigid polyurethane foam formulations comprising HFOs (¶ 15-16, 57). Examples are taught where formulations comprise polyol (active hydroxyl compound), silicone surfactant (DC193; see Evonik), HFO, polyisocyanate, and 1,1’-(oxybis(ethane-2-1-diyl)dipyrrolidine amine catalyst (¶ 143-145; Table 11). From Page 16, Line 30 to Page 17, Line 7, Burdeniuc teaches several ether surfactants, inclusive of species that fall within the scope of the claim. See N,N’-diethyl-N,N’-dimethyl-bis(aminoethyl)ether, N,N’-diisopropyl-N,N’dimethyl-bis(aminoethyl)ether, and N,N’-diisobutyl-N,N’-dimethyl-bis(aminoethyl)ether. Therefore, Burdeniuc anticipates the claim. See MPEP 2131.02(II) with respect to Ex Parte A and In re Sivaramakrishnan. Alternatively, although the claimed ether catalysts are not used within the preferred embodiments of Burdeniuc’s examples, it would have been obvious to one of ordinary skill in the art that catalysts such as N,N’-diethyl-N,N’-dimethyl-bis(aminoethyl)ether, N,N’-diisopropyl-N,N’dimethyl-bis(aminoethyl)ether, and N,N’-diisobutyl-N,N’-dimethyl-bis(aminoethyl)ether may be used in the foam formulations of Burdeniuc, thereby predictably affording workable catalyzed foams in accordance with the teachings of Burdeniuc.
Regarding Claims 2, 3, 9, and 10, Burdeniuc teaches the further inclusion of acids such as acetic acid (¶ 65). Chain extenders such as ethylene glycol are also taught (¶ 94).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tokumoto (JP2014-105288A) in view of Zhang (US 2015/0291506 A1). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Tokumoto teaches catalysts for hydrohaloolefin rigid polyurethane foam compositions (¶ 15-16, 64) and describes embodiments comprising polyol (active hydroxyl compound), trans-1-chloro-3,3,3-trifluoropropene (HFO blowing agent), silicone surfactant, polyisocyanate, and sterically hindered amine catalyst (Table 1). From a listing of roughly 16 preferred catalysts, Tokumoto teaches bis[2-(diethylamino)ethyl]ether is suitable (¶ 36), consistent with Formula 1 of claim 1 where R1 and R2 is ethyl and n = 1.
Regarding Claims 5 and 12, Takumoto teaches the various R groups of the generic formulae of amine catalysts can be various species, such as isopropyl (¶ 35). To the extent Takumoto differs from the subject matter claimed by the disclosure of specific species of the ether structure of claim 1 where R1 and R2 is isopropyl, Zhang teaches bis(2-diisopropylaminoethyl) ether is a known catalyst suitable for the creation of polyurethane foams (¶ 5, 25, 55-60). Therefore, it would have been obvious to one of ordinary skill in the art to utilize catalysts such as bis(2-diisopropylaminoethyl) ether within the foam formulations of Takumoto, thereby predictably catalyzing the formation of polyurethanes in accordance with the teachings of Zhang.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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