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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any new grounds of rejection set forth below are necessitated by Applicant’s amendments filed on 6/12/2026. In particular, all of the previously examined claims, claims 18-37, are cancelled. New claims 38-55 are presented. New claim 38 combines the limitations of previously presented claims 18, 21, 24, and 25, which were not all previously required to be present together. The type of solid filler has also been limited in a manner not presented in the previous claims. The previous claims did not require that the solid filler to simultaneously be the material of claim 21 and to have the size of claim 24. The limitations of new claims 39, 42, and 54 were not presented in any of the previous claims. Claim 53 recites actual process steps for forming the polyurethane foam which were not present in the previously presented claims.
It is noted that the newly introduced limitations were not present at the time of the preceding action. For this reason, it is proper to make the present action FINAL.
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.
Claims 38-41 and 43-55 are rejected under 35 U.S.C. 103 as being unpatentable over Burdeniuc (US 2016/0102169) and further in view of DE3530754A1.
Burdeniuc teach polyurethane foam products including rigid foam polyurethane polymers (abstract) produced from compositions comprising polyisocyanates (¶49), polyols (¶7, ¶17, ¶18, ¶50), blowing agents (¶57), catalysts (¶48), and quaternary ammonium surfactants (¶59). The composition further comprises additives including fillers (¶58), including solid fillers (¶62). The components are reacted to produce a polyurethane. This meets instant claim 53. The foams produced in Burdeniuc include rigid polyurethane foams (abstract) and the catalysts catalyze the formation of a urethane linkage. This meets instant claim 40.
With regards to instant claims 43-44 and 47, and the formula of new claim 38, expressly named examples of quaternary ammonium surfactant for use as cell stabilizer in Burdeniuc are cetyl trimethylammonium chloride and cetyl pyridinium chloride (which is recited in instant claim 25). Cetyl trimethylammonium chloride meets Formula (3), wherein R5 is linear radical having a chain length of 16 (cetyl), R6 is methyl (which also meets instant claims 26-27), c is 3 and d is 1 and which further meets instant claim 30 (chloride). With regards to instant claims 45-46, formula 1 and 2 are disclosed in the alternative to formula (3). Burdeniuc teaches a quaternary ammonium compound which meets formula (3). To the extent that formula (1) and/or formula (2) are alternative to (3), Burdeniuc meets instant claims 45-46.
The amount of cell stabilizers, of which quaternary ammonium surfactants are a named example, is typically 0.1 to 10 pphp (parts per hundred polyol; see ¶48). See ¶64. This falls within the range of instant claim 48.
The use of metal oxides (pigments) is optional in Burdeniuc, meaning at once envisaged, to not include a pigment, because the pigments are optional (see ¶61), and that means they either are or are not include (only two possibilities). This meets instant claim 52.
Burdeniuc teaches that the amount of cell stabilizers, of which quaternary ammonium surfactants are a named example, is typically 0.1 to 10 pphp (parts per hundred polyol; see ¶48). See ¶64. This overlaps the range of instant claim 49. Burdeniuc teaches that the amount of filler, including solid filler, is from about 0 to about 40 pphr (parts per hundred polyol). This overlaps the amount of instant claim 50. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teaching Burdeniuc to use an amount of quaternary ammonium compound (see ¶59 and ¶64) and to use an amount of calcium carbonate filler (¶62 and ¶64) because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
With regards to instant claim 51, Burdeniuc teaches that combinations of cell stabilizers (which are foam stabilizers) can be used in the compositions of the invention. Burdeniuc teaches that the cell stabilizers are present in the compositions in amounts of from about 0.1 to about 20 pphp, in some cases from about 0.1 to 5 pphr (parts per hundred polyol). This overlaps the amount of foam stabilizer of instant claim 51. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teaching Burdeniuc to use an amount of cell stabilizer (foam stabilizer) which meets the instant claim limitations of instant claim 35 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123. It would have been obvious to use the cetyl trimethylammonium chloride and/or the cetyl pyridinium chloride (meeting the quaternary ammonium compound of instant claims 38 and 43-47) together with an additional cell stabilizer because Burdeniuc specifically teaches that combinations of cell stabilizers can be used in the compositions of the invention. This meets instant claim 51.
Burdeniuc teach the composition as discussed in this rejection above, the rejection of which is incorporated herein by reference. Burdeniuc et al. does not expressly recite that the solid filler comprises plastic particles (in new claim 38) which are wholly or partly from recycled plastics (instant claims 41 and 55) or that the solid filler consists of the plastic particles (new instant claims 39 and 54).
However, DE3530754A1 teaches a rigid polyurethane foam comprising a solid filler, the filler of which is plastic particles from recovered plastic waste (i.e. recycled plastic particles). See ¶5. This meets instant claims 41 and 55. Examples of plastic particles for use as the filler include polystyrene, polyacrylates, polymethacrylates, polyesters, polyamides (¶6). This meets instant claims 38. The particles have a diameter of greater than 50 nm (see ¶7). This meets instant claim 38. The polyurethane foam is produced from a composition comprising a polyol (¶9-13), a polyisocyanate (¶14), a blowing agent (¶16), and fillers such as chalk (which is calcium carbonate; see ¶17), which also has a size which meets instant claim 24. The composition further comprises foam stabilizers (¶18). It is additionally noted that one of ordinary skill in the art would at once envisage that the particles of DE3530754A1, which have a diameter of preferably 3 to 6 mm will necessarily have a diameter, when measured using a light scattering method, of greater than 50 nm. Applicants have provided no evidence which demonstrates the contrary. It is further noted that the plastic particles disclosed in DE3530754A1, meet the filler consisting of the plastic particles recited in the instant claims. While the solid filler must consist of plastic particles, as the plastic particles do in DE3530754A1, the overall composition uses the transitional phrase “comprising” meaning additional, unrecited components, including additional fillers other than the instantly claimed solid filler, can be present in the instantly claimed composition.
Both Burdeniuc and DE3530754A1 relate to the field of polyurethane compositions comprising polyol, polyisocyanate, blowing agent, and fillers, wherein the foams are rigid (see abstract of Burdeniuc and ¶1 and ¶41 of DE3530754A1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use plastic particles recovered from plastic waste (i.e. recycled plastic particles) of the type and size disclosed in the DE3530754A1, in the foams of Burdeniuc, in order to reduce the cost of production of the foams of Burdeniuc while also having a positive impact on the environment by the reuse of plastic waste (See ¶2 of DE353075A1), while also providing foams which have insulation values similar to polystyrene and which are very light (¶40 of DE3530754A1).
Claims 38-55 are rejected under 35 U.S.C. 103 as being unpatentable over Burdeniuc (US 2016/0102169) and further in view of De Vries et al. (WO 2018/102333), and DE3530754A1.
Burdeniuc teach polyurethane foam products including rigid foam polyurethane polymers (abstract) produced from compositions comprising polyisocyanates (¶49), polyols (¶7, ¶17, ¶18, ¶50), blowing agents (¶57), catalysts (¶48), and quaternary ammonium surfactants (¶59). The composition further comprises additives including fillers (¶58), including solid fillers (¶62). The components are reacted to produce a polyurethane. This meets instant claim 53. The foams produced in Burdeniuc include rigid polyurethane foams (abstract) and the catalysts catalyze the formation of a urethane linkage. This meets instant claim 40.
With regards to instant claims 43-44 and 47, and the formula of new claim 38, expressly named examples of quaternary ammonium surfactant for use as cell stabilizer in Burdeniuc are cetyl trimethylammonium chloride and cetyl pyridinium chloride (which is recited in instant claim 25). Cetyl trimethylammonium chloride meets Formula (3), wherein R5 is linear radical having a chain length of 16 (cetyl), R6 is methyl (which also meets instant claims 26-27), c is 3 and d is 1 and which further meets instant claim 30 (chloride). With regards to instant claims 45-46, formula 1 and 2 are disclosed in the alternative to formula (3). Burdeniuc teaches a quaternary ammonium compound which meets formula (3). To the extent that formula (1) and/or formula (2) are alternative to (3), Burdeniuc meets instant claims 45-46.
The amount of cell stabilizers, of which quaternary ammonium surfactants are a named example, is typically 0.1 to 10 pphp (parts per hundred polyol; see ¶48). See ¶64. This falls within the range of instant claim 48.
The use of metal oxides (pigments) is optional in Burdeniuc, meaning at once envisaged, to not include a pigment, because the pigments are optional (see ¶61), and that means they either are or are not include (only two possibilities). This meets instant claim 52.
Burdeniuc teaches that the amount of cell stabilizers, of which quaternary ammonium surfactants are a named example, is typically 0.1 to 10 pphp (parts per hundred polyol; see ¶48). See ¶64. This overlaps the range of instant claim 49. Burdeniuc teaches that the amount of filler, including solid filler, is from about 0 to about 40 pphr (parts per hundred polyol). This overlaps the amount of instant claim 50. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teaching Burdeniuc to use an amount of quaternary ammonium compound (see ¶59 and ¶64) and to use an amount of calcium carbonate filler (¶62 and ¶64) because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
With regards to instant claim 51, Burdeniuc teaches that combinations of cell stabilizers (which are foam stabilizers) can be used in the compositions of the invention. Burdeniuc teaches that the cell stabilizers are present in the compositions in amounts of from about 0.1 to about 20 pphp, in some cases from about 0.1 to 5 pphr (parts per hundred polyol). This overlaps the amount of foam stabilizer of instant claim 51. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teaching Burdeniuc to use an amount of cell stabilizer (foam stabilizer) which meets the instant claim limitations of instant claim 35 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123. It would have been obvious to use the cetyl trimethylammonium chloride and/or the cetyl pyridinium chloride (meeting the quaternary ammonium compound of instant claims 38 and 43-47) together with an additional cell stabilizer because Burdeniuc specifically teaches that combinations of cell stabilizers can be used in the compositions of the invention. This meets instant claim 51.
Burdeniuc teach the composition as discussed in this rejection above, the rejection of which is incorporated herein by reference. Burdeniuc et al. does not expressly recite that the solid filler comprises plastic particles (in new claim 38) which are wholly or partly from recycled plastics (instant claims 41 and 55) or that the solid filler consists of the plastic particles (new instant claims 39 and 54).
However, De Vries et al. teaches polyurethane foams produced using a polyol, a polyisocyanate, a blowing agent and a solid filler. Examples of the solid filler include calcium carbonate, polystyrene, styrene-acrylonitrile, polyimide, polyetherimide, and polyurethane solid particles. These meet instant claim 38. The particles have a size of about 50 nm to about 100 µm (¶36), measured using dynamic light scattering methods (¶36). This meets instant claim 38. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention, based on the teachings of De Vries, to use wholly or partly recycled plastic particles, including the expressly disclosed polyurethane particles, in order to reduce the cost of production of the foams of while also having a positive impact on the environment by the reuse of plastic waste, as disclosed in DE3530754A1 (see ¶40 of DE3530754A). When the particles are polyurethane particles, the solid filler meets instant claims 39, 42, and 54.
Both Burdeniuc and De Vries relate to the field of polyurethane compositions and foams produced therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the solid filler of De Vries in the invention of Burdeniuc in order to reduce production cost (via the use of a filler) and/or reduce the weight/density in which the particles are employed. Using particles of the size disclosed in De Vries will ensure weight reduction while still allowing the particles to be uniformly dispersed in the polyurethane compositions and foams formed therefrom.
Response to Arguments
Applicant’s arguments with regards to the Double Patenting rejections set forth in the Non-Final Rejection mailed on 3/26/2026 have been fully considered and are persuasive in light of the amendments made to the claims. The Double Patenting rejections set forth in the Non-Final Rejection mailed on 3/26/2026 are withdrawn.
Applicant’s arguments with regards to the rejection of the claims over Fukushima et al. (JPH08-113703) and/or Krebs (US 2016/0264711) set forth in the Non-Final Rejection mailed on 3/26/2026 have been fully considered and are persuasive in light of the amendments made to the claims. The rejection of the claims over Fukushima et al. (JPH08-113703) and/or Krebs (US 2016/0264711)set forth in the Non-Final Rejection mailed on 3/26/2026 are withdrawn.
Applicant's arguments filed 6/12/2026 with regards to the rejection of the claims over Burdeniuc (US 2016/0102169) and further in view of DE3530754A1 have been fully considered but they are not persuasive. Applicant's arguments filed 6/12/2026 with regards to the rejection of the claims over Burdeniuc (US 2016/0102169) and further in view of De Vries et al. (WO 2018/102333) have been fully considered but they are not persuasive.
It will first be made of note that “DLS-characterized” plastic-particle solid filler, is merely describing the way in which the size of the particles is measured. It is analogous to saying “measured” plastic particles (it is unclear how plastic particles could be anything but solid, as they are recited to be particles). Essentially, the filler of the instant claims is large plastic particles, i.e. particles that have a specific diameter, greater than 50 nm. 50 nm is equivalent to 0.00005 mm. Smaller particles just scatter more light than larger ones do. Dynamic light scattering and the weight average it obtains, is still describing an average particle size. In the case of the instant claims, that average size, is greater than 50 nm, or greater than 0.00005 mm.
Applicant appears to be arguing that the motivation for combining a primary and secondary reference, must be present in the primary reference. This is not accurate and is not a requirement for combining references to properly establish a prima facie case of obviousness. Each of the limitations of the instant claims is present in the rejection of the claims over Burdeniuc (US 2016/0102169) and further in view of DE3530754A1 and/or the rejection of the claims over Burdeniuc (US 2016/0102169) and further in view of De Vries et al. (WO 2018/102333) (now evidenced by DE3530754A1 in light of the amendments to the claims).
Applicant attacks each reference individually, stating what each reference is respectively lacking. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is based on the combination of references as presented above and not over any reference individually, in light of the amendments made to the claims. Again, it is not a requirement that the motivation to combine a primary and second reference be present in the primary reference. If there was such a requirement, combinations of references would be nearly impossible. Budeniuc teaches the claimed quaternary ammonium compounds, and DE3530754A1 or De Vries et al. in view DE3530754A1, teach the instantly claimed plastic particles (which are a solid filler), as well as a motivation to use those plastic particles in the invention of Burdeniuc.
Both Burdeniuc and DE3530754A1 relate to the field of polyurethane compositions comprising polyol, polyisocyanate, blowing agent, and fillers, wherein the foams are rigid (see abstract of Burdeniuc and ¶1 and ¶41 of DE3530754A1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use plastic particles recovered from plastic waste (i.e. recycled plastic particles) of the type and size disclosed in the DE3530754A1, in the foams of Burdeniuc, in order to reduce the cost of production of the foams of Burdeniuc while also having a positive impact on the environment by the reuse of plastic waste (See ¶2 of DE353075A1), while also providing foams which have insulation values similar to polystyrene and which are very light (¶40 of DE3530754A1).
Both Burdeniuc and De Vries relate to the field of polyurethane compositions and foams produced therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the solid filler of De Vries in the invention of Burdeniuc in order to reduce production cost (via the use of a filler) and/or reduce the weight/density in which the particles are employed. Using particles of the size disclosed in De Vries will ensure weight reduction while still allowing the particles to be uniformly dispersed in the polyurethane compositions and foams formed therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention, based on the teachings of De Vries, to use wholly or partly recycled plastic particles, including the expressly disclosed polyurethane particles, in order to reduce the cost of production of the foams of while also having a positive impact on the environment by the reuse of plastic waste, as disclosed in DE3530754A1 (see ¶40 of DE3530754A). When the particles are polyurethane particles, the solid filler meets the instant claims.
Applicant appears to be asserting that the recycled plastic particles of DE3530754A , which have a size of 3 to 6 mm, will not have a weight-average diameter (determined by light scattering) of greater than 50 nm, which is greater than 0.00005 mm.
This is not persuasive.
As discussed in the rejection above, one of ordinary skill in the art would at once envisage that the particles of DE3530754A1, which have a diameter of preferably 3 to 6 mm will necessarily have a diameter, when measured using a DLS method, of greater than 50 nm. As discussed above, “DLS-characterized” plastic-particle solid filler, is merely describing the way in which the size of the particles is measured. It is analogous to saying “measured” plastic particles (it is unclear how plastic particles could be anything but solid, as they are recited to be particles. If they are melted, i.e. not solid, they would no longer be particles). Essentially, the filler of the instant claims is large plastic particles, i.e. particles that have a specific average diameter, i.e. greater than 50 nm. 50 nm is equivalent to 0.00005 mm. It is respectfully requested that Applicants provide factually supported evidence, that particles having a size (i.e. diameter) of 3 to 6 mm, can have a diameter (even a weight-average diameter measured using a specific method), of less than 0.00005 mm.
It is not clear how particles having a size of 6 mm would not necessarily have a weight-average particle diameter greater than 50 nm, which again is 0.00005 mm, nor has Applicants explained how this would be possible or provided any evidence demonstrating that the particles of DE3530754A1, which have a diameter of 3 to 6 mm will not necessarily have a diameter, when measured using a light scattering method, of greater than 50 nm. In other words, how could particles having a diameter of 6 mm, not have a weight-average diameter of greater than 50 nm? Therefore, Applicant’s argument is not persuasive.
With regards to Applicant’s argument that Burdeniuc does not disclose solid plastic particles as filler, this is present in the secondary references as is a motivation to use said particles as the solid filler in Burdeniuc, as discussed above.
For the reasons provided above, Applicant’s arguments filed on 6/12/2026, with regards to Burdeniuc, DE3530754A, and De Vries et al., are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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