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 .
Information Disclosure Statement
The information disclosure statement filed 05/28/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered where lined through.
Response to Arguments
The double patenting rejection is maintained.
The 112 rejection is withdrawn based on the claim amendments.
Applicant's arguments filed 07/07/2026 have been fully considered but they are not persuasive. Applicant primarily argues that the combination of references is not obvious as a general teaching does not make obvious the specific PU foam. This is not persuasive. A teaching of a general flexible PU foam for a steering wheel cover does make it an obvious choice for any flexible PU foam system unless the more specific system would somehow teach away from the general properties of a PU system that would be detrimental to the end use. There are no teachings in Vonorcik that show the flexible PU foam has any properties that would exclude it from use as a steering wheel cover. Further, the motivation for choosing the PU foam system is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious) . Thus, the rejections remain as set forth below.
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 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); 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7, 9-15, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,9-12, 14, 16-22 and 31 of copending Application No. 18/692,399 (app’399). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim substantially similar steering wheels.
The limitations of Instant claim 1 are met by claims 1, 9 of app’399.
The limitations of Instant claim 2 are met by claim 10 of app’399.
The limitations of Instant claim 3 are met by claim 11 of app’399.
The limitations of Instant claim 4 are met by claim 12 of app’399.
The limitations of Instant claim 7 are met by claim 14 of app’399.
The limitations of Instant claim 9 are met by claim 16 of app’399.
The limitations of Instant claim 10 are met by claim 17 of app’399.
The limitations of Instant claim 11 are met by claim 18 of app’399.
The limitations of Instant claim 12 are met by claim 19 of app’399.
The limitations of Instant claim 13 are met by claim 20 of app’399.
The limitations of Instant claim 14 are met by claim 21 of app’399.
The limitations of Instant claim 15 are met by claim 22 of app’399.
The limitations of Instant claim 24 are met by claim 31 of app’399
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claims 1-4, 9-12, 14-15 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Vonorcik et al. (US 20170174818 A1), herein Vonorcik, in view of Grikschat et al. (US 20100018343 A1), herein Grikschat.
Claims 1-4, 9-12 and 14-15 and 24 define the product by how the product was made. Thus, claims 1-4, 9-11 and 13-15 and 24 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a foamed polyurethane foam covering a steering wheel frame. The reference combination suggests such a product.
In regards to claim 1, Vonorcik teaches a flexible polyurethane, PU, injected molded foam for automotive applications [Abstract, 0095] . The PU thermoplastic polyurethane of the foam is formed from a PU with (a) a weight average molecular weight of 120,000 to 500,000, and (b) a dispersity (Mw/Mn) of 1.85 to 2.51 [Claim 1, 0001, 0006]. These range overlap the claimed range for the MW and PDI is encompassed by the claimed range. The PU of the foam further comprises a blowing agent and/or a cell opening surfactant [claim 1, 0009-0010].
Vonorcik does not teach that the automotive application is a steering wheel cover.
Grikschat teaches a steering wheel for a vehicle comprising a steering wheel frame and a steering wheel cover covering the frame [Title, Abstract, 0002, 0008, 0012, 0024]. The cover comprises a flexible polyurethane foam [0003, 0008, 0025-0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the TPU foam of Vonorcik as a steering wheel cover as taught by Grikschat. On e would have been motivated to do so as Grikschat teaches that it is a conventionally known application for flexible TPU and this one would have had a reasonable expectation of success.
In regards to claim 2, Vonorcik further teaches the flexible polyurethane foam has: (i) a peak temperature of crystallization, as measured by DSC, between 40° C. and 205° C.; (ii) a peak temperature of melting, as measured by DSC, between 106° C. and 206° C.; and (iii) a difference between the peak temperature of melting and the peak temperature of crystallization, each as measured by DSC, between 1 degree and 137 degrees [Claim 2, 0007]. These ranges meet the claimed ranges.
In regards to claim 3, Vonorcik further teaches the flexible polyurethane foam has: (i) a vertical rebound, as measured by ASTM D2632, of at least 30%; (ii) a compression set at room temperature, as measured by ASTM D395, of no more than 25%; (iii) a compression set at 50° C, as measured by ASTM D395, of no more than 50%; and (iv) an Asker C hardness, as measured by ASTM D2240, of 30 to 65 [claim 3, 008].
In regards to claim 4, It is noted that the claim is drawn to a steering wheel with a foam cover as a final product and the composition which is an intermediate product. It is unlikely that any of the blowing agent remains in the foam product as such only the resultant foam structure is necessary, which is taught by the reference.
However, it is noted that Vonorcik further teaches blowing agent includes water [0011, claim 5].
In regards to claims 4 and 9, It is noted that the claim is drawn to a steering wheel with a foam cover as a final product and the composition which is an intermediate product. It is unlikely that any of the blowing agent remains in the foam product as such only the resultant foam structure is necessary, which is taught by the reference.
However, Vonorcik further teaches blowing agent includes water and a sodium bicarbonate-citric acid mixture [0076].
In regards to claims 11, It is noted that the claim is drawn to a steering wheel with a foam cover as a final product and the composition which is an intermediate product. It is unlikely that the any of the blowing agent remains in the foam product as such only the resultant foam structure is necessary, which is taught by the reference.
Vonorcik further teaches blowing agent comprises 0.5-10 wt.% of the reaction system which includes the PU as the remainder [0068, 0076]. This meets or overlaps the claimed ranges.
In regards to claims 10 and 12, It is noted that the claim is drawn to a steering wheel with a foam cover as a final product and the composition which is an intermediate product. Further as set forth above the claim is a product by process claim and only the end product and resultant structure are considered. As such, the chemical blowing agent of Vonorcik is deemed to meet the claim requirements as the foam has polyurethane present.
In regards to claim 14, Vonorcik further teaches the cell opening surfactant comprises one or more silicones, siloxane copolymers, non-siloxane co-polymers, non-silicones, or any combination thereof [claim 7, 0013].
In regards to claim 15, Vonorcik further teaches the thermoplastic polyurethane comprising (i) at least one polyol, wherein the polyol is selected from polytetramethylene ether glycol, polycaprolactone polyester polyol, and polyester polyol derived from adipic acid, (ii) at least one isocyanate, and (iii) at least one chain extender [Claim 1]. The isocyante comprises one or more diisocyanates [0054]. By example the hard segment is 29.1 % by weight [Table 1 Invention T, 0099-0100].
In regards to claim 24, Vonorcik does not teach the details of the steering wheel.
Grikschat teaches a steering wheel for a vehicle comprising a steering wheel frame and a steering wheel cover covering the frame [Title, Abstract, 0002, 0008, 0012, 0024]. The cover comprises a flexible polyurethane foam [0003, 0008, 0025-0026].
Grikschat further teaches the steering wheel frame comprises a steering wheel frame, a hub base and at least one spoke, wherein the hub base is arranged inside the steering wheel rim and the hub base is connected to the steering wheel rim by the at least one spoke [Abstract, 0008].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the TPU foam of Vonorcik as a steering wheel cover of steering wheel taught by Grikschat. On e would have been motivated to do so as Grikschat teaches that it is a conventionally known application for flexible TPU and this one would have had a reasonable expectation of success.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Vonorcik et al. (US 20170174818 A1), herein Vonorcik, in view of Grikschat et al. (US 20100018343 A1), herein Grikschat, as applied to claims 1 and 4 above, and further in view of Limerkens et al. (US 20070142486 A1), herein Limerkens.
Claims 4 and 7 define the product by how the product was made. Thus, claims 4 and 7 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a foamed polyurethane foam covering a steering wheel frame. The reference combination suggests such a product.
In regards to claims 4 and 7, Vonorcik does not expressly teach that the blowing agent is azoicarbonamide.
Limerkens teaches foamed thermoplastic polyurethanes [Abstract].
Limerkens teaches conventionally known blowing agents include azodicarbonamides [0006, 0048].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used an azidocarbonamide as the blowing agent of Vonorcik as taught by Limerkens. One would have been motivated to do so as Limerkens teaches that azodicarbonamides are conventionally known blowing agents for foam PU that one would have had reasonable expectation of success.
Claims 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Vonorcik et al. (US 20170174818 A1), herein Vonorcik, in view of Grikschat et al. (US 20100018343 A1), herein Grikschat, as applied to claim 4 above, and further in view of Limerkens et al. (US 20070142486 A1), herein Limerkens and Qin et al. (Rheology Studies of Polyethylene/Chemical Blowing Agent Solutions Within an Injection Molding Machine), herein Qin.
Claims 10 and 13 define the product by how the product was made. Thus, claims 1-4, 7, 9-15 and 24 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a foamed polyurethane foam covering a steering wheel frame. The reference combination suggests such a product.
In regards to claims 10 and 13, Vonorcik does not expressly teach that the blowing agent is azoicarbonamide.
Limerkens teaches foamed thermoplastic polyurethanes [Abstract].
Limerkens teaches conventionally known blowing agents include azodicarbonamides [0006, 0048].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used an azidocarbonamide as the blowing agent of Vonorcik as taught by Limerkens. One would have been motivated to do so as Limerkens teaches that azodicarbonamides are conventionally known blowing agents for foam PU that one would have had reasonable expectation of success.
Limerkens does not teach that the azodicarbonamide is delivered in a masterbatch with a polyethylene carrier.
Qin teaches injected molded polymeric foams [Introduction].
Qin teaches conventionally and commercially available chemical blowing agents include Hydrocerol® 1191 which is a masterbatch comprising azodicarbonamide and a polyethylene carrier [Experimental- Materials].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the masterbatch based azodicarbonamide of Qin as the blowing agent of modified Vonorcik. One would have been motivated to do so as it would have been the simple substitution of one azodicarbonamide for another to obtain predictable results.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784
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