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 .
Election/Restrictions
Applicant’s election of Group II in the reply filed on June 15, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1, 61-64 and 74 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 15, 2026.
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.
Claims 43, 44, 57, 72 and 73 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.
Claim 43 recites the limitation "the foam reaction". There is insufficient antecedent basis for this limitation in the claim. For the purposes of this examination “the foam reaction” will be considered to be the liquid coating composition expanding into a closed-cell foam coating.
Claim 44 recites the limitation "the foam reaction". There is insufficient antecedent basis for this limitation in the claim. For the purposes of this examination “the foam reaction” will be considered to be the liquid coating composition expanding into a closed-cell foam coating.
Claim 57 recites the limitation "the expanded closed-cell foam coating". There is insufficient antecedent basis for this limitation in the claim.
Claim 72 recites the limitation "the overcoated closed-cell foam coating". There is insufficient antecedent basis for this limitation in the claim.
Claim 73 recites the limitation "the overcoated closed-cell foam coating". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 2, 4, 7, 8, 10, 11, 13, 14, 16, 21, 24, 25, 39, 46 and 71-73 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic (U.S. Patent # 11,655,328).
In the case of claim 39, Sendijarevic teaches a method for forming a protective coating on a surface by producing a closed-cell rigid foam (Abstract). The foam was formed by spray applying a two-component system/composition comprising a polyol component comprising one or more polyols and an isocyanate component comprising one or more isocyanates wherein the polyol component comprised flames retardants, blowing agents and catalysts onto a surface and allowed to foam/expand into the closed-cell coating (Column 12 Lines 11-28). Sendijarevic teaches that the surfaces the system/composition was applied onto included electronic substrates in the form of appliances and formed a protective/thermal insulative coating (Column 1 Lines 7-13 and Column 7 Lines 54-57). Sendijarevic teaches that the blowing agent comprised water (Column 5 Lines 19-45 and Column 18 Claim 12).
Sendijarevic teaches that the polyol had a functionality of 2 or more (Column 7 Lines 35-57 and Column 8 Lines 33-64) and that the isocyanate prepolymer had a functionality of 2 or more (Column 7 Line 58 through Column 8 Line 21). Both the functionality ranges of the polyol and isocyanate of Sendijarevic overlapped with the claimed functionality ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
As for claims 2 and 4, Sendijarevic teaches that the polyols included difunctional and trifunctional polyols comprising polyester (Column 8 Line 33 through Column 9 Line 3), polyethers (Colum 9 Lines 4-16) and ethylene glycols (Column 9 Lines 33-41).
As for claims 7, 9, 10, 11, 13, 14 and 71, as was discussed previously, Sendijarevic taught that the polyol component comprised one or more polyols having a functionality of 2 or more. Therefore, the polyol component of Sendijarevic comprised di-, tri- and/or tetra-functional polyols. Sendijarevic does not teach any of the claimed concentration ranges for the di-, tri- and tetra-functional polyols. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A
Furthermore, Sendijarevic teaches that the amount and type of polyol affected the dimensional stability of the formed foam (Column 7 Lines 3-34).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal concentrations for the di-, tri- and/or tetra-functional polyol of the polyol component of Sendijarevic through routine experimentation because amount of each type of polyol affected the dimensional stability of the formed foam.
As for claim 16, Sendijarevic does not teach that water was present in Part A in the range of 0.05 to 10 wt%. However, as was discussed previously, water was used in Sendijarevic as a blowing agent. Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal concentration range for the water in Part A of Sendijarevic because water was used as a blowing agent and affected the cell formation in the foam.
As for claim 21, Sendijarevic teaches that the foam catalyst included amine catalysts including triethylenediamine (Column 10 Line 34 through Column 11 Line 3).
As for claims 24 and 25, Sendijarevic teaches that the system comprised organo-metallic catalyst including dibutyltin dilaurate and dibutyltin diacetate (Column 10 Lines 51-60).
As for claim 46, as was discussed previously, the composition of Sendijarevic was spray applied.
As for claims 72 and 73, Sendijarevic does not teach that the closed-cell foam coating exhibited less than 1% w/w water uptake after 14 days of immersion and had nor cracks or loss adhesion after being subjected to thermal shock from -40 to 85 ℃ for 1000 cycles. However, the examiner takes the position that the closed-cell foam coating of Sendijarevic would inherently have these properties because it was made by substantially the same process and material required by the claims. 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). See MPEP section 2112.01.
Claims 28, 30, 33, 34 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic as applied to claim 39 above, and further in view of Zhao et al (U.S. Patent Publication No. 2022/0315757).
The teachings of Sendijarevic as they apply to claim 39 have been discussed previously and are incorporated herein.
In the case of claims 28 and 30, Sendijarevic does not specifically teach that the composition comprised a chain extender. Sendijarevic does teach that the polyol component comprised known additives (Column 12 Lines 11-21).
Zhao taught a flame-resistant polyurethane spray foam system comprising chain extenders used to form heat insulation (Abstract). Zhao teaches that suitable chain extenders included aliphatic, araliphatic and/or cycloaliphatic diols such as 1,4-butanediol and 1,6-hexanedioil (Page 3 Paragraph 0065-0067).
Based on the teachings of Zhao, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have added 1,4-butanediol and/or 1,6-hexanediol to the polyol component of Sendijarevic in order to act a chain extenders joining the polyurethane chains together.
As for claims 33, 34 and 37, though Sendijarevic teaches that the polyol component comprised flame retardants (Column 11 Lines 4-13) Sendijarevic does not teach that the flame retardant was a solid flame retardant comprised of expandable graphite.
Zhao teaches that the foam system comprised a solid flame retardant in the form of expandable graphite which had a particle size of 50 to 200 mesh (Page 3 Paragraphs 0068-0071), which equals a particle size of 127 to 508 microns.
Based on the teachings of Zhao, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used expandable graphite as the flame retardant of Sendijarevic because this was a known flame retardant in the art. Furthermore, the size of the taught expandable graphite overlapped with the claimed range and as was discussed previously, overlapping ranges are prima facie obvious.
Claims 31, 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic as applied to claim 39 above, and further in view of Lakrout et al (U.S. Patent # 11,661,472).
The teachings of Sendijarevic as it applies to claim 39 have been discussed previously and are incorporated herein.
In the case of claim 31, Sendijarevic does not specifically teach that the composition comprised an inert filler. Sendijarevic does teach that the polyol component comprised known additives (Column 12 Lines 11-21).
Lakrout teaches a method for forming a polyurethane foam material by reacting isocyanates and polyols (Abstract) wherein the foam material comprised inert filler including talc, silica and mica (Column 10 Lines 20-51).
Based on the teachings of Lakrout, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included an inter filler such as talc, silica or mica to the polyol component of Sendijarevic in order to increase the density of the foam.
As for claims 43 and 44, though Sendijarevic taught a foam reaction to form the foamed coating Sendijarevic did not teach that the reaction produced a tack-free coating in less than 10 minutes or less than 5 minutes.
Lakrout teaches that the polyurethane was foamed to a tack-free surface in 2 to 7 minutes (Column 22 Lines 31-60).
Based on the teachings of Lakrout, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the system of Sendijarevic to have a foam reaction of 2 to 7 minutes in order to achieve a tack-free coating. Furthermore, the range of 2 to 7 minutes overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
Claims 40 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic as applied to claim 39 above, and further in view of Prissok et al (U.S. Patent Publication No. 2010/0222442).
The teachings of Sendijarevic as it applies to claim 39 have been discussed previously and are incorporated herein.
In the case of claims 40 and 41, Sendijarevic does not teach that the liquid coating expanded in volume in a vertical direction from the substrate by a factor of less than 25X, specifically 8X to 20X, of the applied thickness.
Prissok teaches an expandable polyurethane composition comprising a blowing agent (Abstract) which was foamed (Page 5 Paragraph 0062) and during foaming the expansion factor was in the range of 2 to 50 (Page 5 Paragraph 0063).
Based on the teachings of Prissok, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have expanded the liquid coating composition of Sendijarevic in a vertical direction from the substrate surface by a factor of 2X to 50X the applied thickness during the formation of the closed-cell foam coating because this was a known expansion factor in the art for polyurethane foams. Furthermore, the expansion factor of 2X to 50X overlaps with the claimed ranges and as was discussed previously overlapping ranges are prima facie obvious.
Claims 48 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic as applied to claim 39 above, and further in view of Abe et al (U.S. Patent # 12,098,851).
The teachings of Sendijarevic as it applies to claim 39 have been discussed previously and are incorporated herein.
In the case of claims 48 and 58, Sendijarevic does not specifically teach that the substrate comprised at least one of asperities and protrusions and that the coating expanded to enclose the at least one of asperities and protrusions. Furthermore, Sendijarevic does not teach that the coating composition was constrained in at least one direction to limit the expansion space. However, as was discussed previously, the closed-cell foam coating of Sendijarevic was used to form thermal insulation for appliances (Abstract and Column 1 Lines 7-12).
Abe teaches an electronic substrate in the form of an appliance wherein a backing layer 40 comprised of foamed polyurethane was formed on an insulating layer 38 on a liner 22 (Abstract, Column 4 Lines 19-33, Column 25 Lines 24-30 and Figure 4). Abe teaches that the formation was conducted by placing the liner and insulating layer 38 in a mold, thus restricting the expansion of the polyurethane coating, and applying/spraying the backing layer/second composition on the insulating layer 38 (Column 6 Line 51 through Column 7 Line 13). Furthermore, as shown in Figures 6 and 7 the insulating layer 38 comprised asperities and protrusion on the layer’s surface which were enclosed/covered by the backing layer 40 composition (Column 8 Lines 19-34 and Figures 6 and 7).
Based on the teachings of Abe, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used the composition of Sendijarevic to form the coated electronic substrate of Abe because Abe taught a known process in the art for forming a thermal insulation for an appliance.
Claims 49 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic as applied to claim 39 above, and further in view of Neff ‘280 (U.S. Patent # 8,302,280).
The teachings of Sendijarevic as it applies to claim 39 have been discussed previously and are incorporated herein.
In the case of claim 49, Sendijarevic does not teach having further applied a topcoat layer over the expanded closed-cell foam coating. However, as was discussed previously, the expanded closed-cell foam coating of Sendijarevic was a foamed polyurethane coating used to form thermal insulation on appliances.
Neff ‘280 teaches an appliance comprising a layer of polyurethane foam (Abstract and Column 6 Lines 11-28) wherein the polyurethane was formed by reacting an isocyanate with a polyol (Column 8 Lines 36-48). Neff ‘280 further teaches that a topcoat/outermost layer 36 was formed on the polyurethane foam 34 (Column 12 Lines 7-30) in order to increase reductions in noise and vibrations and was formed from an asphalt mastic (Column 12 Line 31-54), which is a chemical/water resistant material.
Based on the teachings of Neff ‘280, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed a topcoat of asphalt mastic on the foamed polyurethane layer of Sendijarevic in order to reduce noise and vibrations from the appliance/electronic substrate.
As for claim 50, Neff ‘280 teaches that the outermost layer had a thickness of 1/16 to 1 inch (Column 12 Lines 55-61) or approximately 1.6 mm to 25.4 mm, which overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
Claims 57 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Sendijarevic as applied to claim 39 above, and further in view of Neff ‘984 (U.S. Patent # 9,908,984).
The teachings of Sendijarevic as it applies to claim 39 have been discussed previously and are incorporated herein.
In the case of claim 57, though Sendijarevic teaches that the foam coating was flame-retardant (Column 11 Lines 4-13) Sendijarevic does not teach that the foam coating was capable of passing a UL 94 V-o vertical burn test.
Neff ‘984 teaches a polyurethane foam composition which was flame retardant and capable of passing a UL 94 V-0 vertical burn test (Abstract and Column 13 Line 50 through Column 14 Line 33).
Based on the teachings of Neff ‘984, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the foam coating of Sendijarevic to pass a UL 94 V-0 vertical burn test because this was a desired property in the art for flame retardant polyurethane foams.
As for claim 59, Sendijarevic does not teach that the liquid coating composition was formulated to delay the onset of foam.
Neff ‘984 teaches that foaming/cream time was delayed in the composition through controlling the initiation speed of foaming/creaming by including a blocking agent which increased the cure time for the polyurethane foam (Column 10 Lines 33-43).
Based on the teachings of Neff ‘984, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formulated the liquid coating composition of Sendijarevic to have a delayed onset for foaming by controlling the initiation speed of foaming by including a blocking agent in order to increase the cure time for the polyurethane foam.
Conclusion
Claims 2, 4, 7, 9, 10, 11, 13, 14, 16, 21, 24, 25, 28, 30, 31, 33, 34, 37, 39-41, 43, 44, 46, 48-50, 58-59 and 71-73 have been rejected. Claims 1, 61 through 64 and 74 have been withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 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, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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