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 with traverse of Group I, claims 1-12, in the reply filed on September 10, 2026 is acknowledged. The traversal is on the ground(s) that (1) the Examiner has not provided that the claims are patentably distinct and there would be a serious burden on the Examiner, and (2) as to lack of unity, the Examiner has not explained why each group lacks unity with the other group, and the discussion provided in the Restriction Requirement is conclusory and does not include sufficient consideration of patentability. This is not found persuasive because (1) as to the patentable distinction and a serious burden, the present case is a national stage application of a PCT application, and therefore, restriction practice is based on lack of unity as required for PCT applications, where these features are not required. The features required for lack of unity were provided in the Restriction Requirement. (2) As to the Examiner not explaining why each groups lacks unity with the other group, the Examiner disagrees, noting the detailed discussion at paragraph 5 of the Restriction Requirement of August 26, 2026. It is argued that this Restriction Requirement is conclusory, noting that it was not explicitly addressed how the terms of claim 1 should be construed and correlated to specific features of Svenson and ‘857. The Examiner disagrees. The Examiner fully detailed with citations where the features required for resulting in claim 13 would be provided, and as well, addressed the features of claim 1 as required for claim 13. As to the claims not given lack of unity in the PCT examination, this is is not required. The Examiner can still provide a restriction in the national stage.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 10, 2026.
Therefore, after the election, claims 13-14 are withdrawn and claims 1-12 are pending for examination as filed with the preliminary amendment of June 2, 2025.
Information Disclosure Statement
The information disclosure statement filed July 11, 2025 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.
For EP 1888664, a translation was provided, but no copy of the actual EP document.
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 1-12 are 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 1, (b) has been changed to say “a compound” rather than “compounds” comprising (b1) and (b2) and further for claims 7-10, additional chain extenders and further polyols. It is unclear and indefinite as to what is meant by this change. Does applicant mean that (1) the compound is simply the combined presence of the listed components, or (2) that the compound means that the components are chemically joined, or (3) something else? Option (2) is not described in the disclosure as filed. For the purpose of examination, it is understood that option (1) is intended, but applicant should clarify what is intended, without adding new matter.
The dependent claims do not cure the defects of the claims from which they depend and are therefore also rejected.
Claim Objections
Claim 1 is objected to because of the following informalities: in claim 1, in (a), “PMDI” should be spelled out, for clarification as to what is intended. Appropriate correction is required.
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.
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Svenson et al (US 2014/0275305) in view of WO 2021/167857 (hereinafter ‘857), EITHER alone OR further in view of Eslava et al (US 2021/0198412).
Claim 1: Svenson teaches a process for the formation of a polyurethane foam (note Example 1, 0179-0182, 0007, 0174, where for sprayed-in-place, for example, the material would be sprayed on a substrate). The process comprises mixing/blending components to obtain a reaction mixture (note 0082, 0176, 0178, 0181). The reaction mixture is sprayed onto a substrate and the reaction mixture allowed to harden to obtain the polyurethane foam (note 00174, with sprayed in place, for example, 0006-0007, claim 13, note with use of a gelling/hardening catalyst). The components of the reaction mixture include (a) an isocyanate, which can be a polyisocyanate comprising PMDI (note 0082, 0099, 0103); (b) a polyol material (note 0082); (c) a catalyst, which can be an incorporable amine catalyst (note 0082, catalyst can be used, claim 13, 0152-0155); (d) a blowing agent comprising water (note 0082, 0113); and (f) plasticizer and crosslinker/extender, which can be considered auxiliaries and additional substances as claimed (note 0082 as to the minimum materials). Additionally, as to (e) a flame retardant, this is optional in the present claim language, and not required by Svenson (note 0082), where with no flame retardant, the reaction mixture would comprise less than 1 part by weight of a phosphorus flame retardant, as the amount would be zero with no flame retardant (note as well, 0124-0135, while phosphorus plasticizers can be used, they are not required). The resulting density of the foam can be 0.5-5 lb/ft3 (about 8-80 g/dm3), overlapping the claimed range (note 0080), where it would have been obvious to optimize from this range, giving a value in the clamed range, and with an example density of 1 ln/ft3 (about 16 g/dm3), within the claimed range (note 0173), giving a suggested density to provide in the claimed range.
As to the specific polyol compound used, it is described in Svenson to use natural polyols (note 0082, 0084, where this can include polyether triols based on glycerine, 0093, and where additional polyol can also be provided with the material polyol (indicating used multiple polyols), including any known polyol source used in making polyurethane, note 0086, 0097). As to using as polyol a compound having at least two hydrogen atoms reactive towards isocyanate groups, comprising (b1) at least one polyether polyol obtained by the alkoxylation (alcoxylation) of a two or three functional starter molecules having a hydroxyl value of 210-400 mg KOH/g and (b2) at lest one polyether polyol obtained by alkoxylation (alcoxylation) of an aliphatic diamine,
‘857 describes forming polyurethane foams using an isocyanate component, catalyst and blowing agent, and at least one isocyanate reactive component comprising an isocyanate reactive composition including at least (b1/bi) one polyol compound having a hydroxyl number from 125-800 mg KOH/g, overlapping the claimed range, and (b2/bii) at least one flexible polyol compound (note page 5), where the reactive combination can be a mixture, combination or blend (note page 10), where (bi) can be a polyether polyol (note page 10), and can be obtained from alkoxylation of molecules with multiple functional groups (note 2-10 hydroxyl groups) and use of glycerin, for example (note page 11). Additionally, (bii) can be a polyether polyol obtained from alkoxylation of aliphatic diamines (note pages 13-14). ‘857 further indicates providing a reaction mixture of the materials (note page 22), and there would be a hardening of the mixture of materials that is foamed, note transition to solid and tack free state (note page 34).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson to use a (b) polyol system with (b1) and (b2) as claimed from the suggestion of ‘857 with an expectation of forming a predictably acceptable polyurethane foam, since Svenson is making a polyurethane foam and indicates using polyol compounds, including using any known polyol source known in the art, and ‘857, as discussed above, indicates using combinations polyols of materials that would have (b1) and (b2) components overlapping that of the claimed (b1) and (b2), and by optimizing from the specific possible components, it would have been obvious to use (b1) and (b2) components meeting the present (b1) and (b2) requirements as a combination forming a compound (B) as claimed. Additionally, ‘857 would further suggest that when providing a mixture of reaction components as indicated by both Svenson and ‘857, the material would be understood to harden to give the desired polyurethane foam, since ‘857 indicates after reacting and foam forming, the material hardens (gels, and obtains a tack free state).
Optionally, further in view of Eslava: Eslava describes providing a polyurethane foam by mixing polymeric MDI, and polyol components, blowing agent, catalyst, etc. to form a reaction mixture, and spraying on a substrate (note 0012). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson in view of ‘857 to specifically spray the reaction mixture on a substrate, as suggested by Eslava, with an expectation of predictably acceptable results, since Svenson indicates the material can be used in spraying processes (note 0174, 0181), and Eslava indicates how to make polyurethane foam by spraying, where a reaction mixture can be sprayed onto a substrate for use.
The Examiner notes that the Examples in the present application do not make a showing of criticality commensurate in scope with what is claimed (note MPEP 716.02(d)), sufficient to overcome what is claimed. For example, comparative examples 1-4 all have a large amount of phosphorus containing flame retardant, however, such material is not required by Svenson.
Claim 2: As to preparing the component (A), preparing the component (B) comprising the compound (b), the catalyst (c) and blowing agent (d) and mixing (A) and (B) to obtain the reaction mixture, this is suggested by Svenson, where a component (A) with isocyanate prepared (note 0180), and a component (B) with polyol, catalyst, and blowing agent (d), since water is provided (note 0179) and then these are mixed together, giving a reaction mixture (note 0181), where the combination of the references would suggest the polyol compound to be as claimed. Note also 0176 has this setup for the (A) and (B) components.
Claim 4: the amount of catalyst (c) would be suggested by Svenson, which provides that the catalyst amount should be about 0.0001 to about 5 wt% of the total reaction mixture (note 0162), and as to removing the component (a) polyisocyanate amount from the reaction mixture for calculation of amount of catalyst, Svensen indicates to optimize the amount of isocyanate used (note 0109 and 0110), and describes using 5-61 wt% polyisocyanate in the reaction mixture and 0.5 to 2.5 wt% catalyst (note 0177), and such that even if the maximum amount (61 wt%) of polyisocyanate removed ((a) material), there would still be less than 8 wt% catalyst (from 2.5 wt% catalyst, changing to about 6.4 wt% catalyst).
Claim 5: as to mixing the isocyanates and isocyanate reactive compounds at a isocyanate index of 25-80, Svenson suggests an index of 20-60 (note 0109-0110), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. Note "[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).
Claim 6: as to the total amount of water used, based on the weight of components (b) to (f), this would be suggested by Svenson, note a suggested range of 5-30 wt% water for total composition with polyisocyanate at 5-61 wt% (note 0177), such that even if the maximum amount of polyisocyanate ((a) material) removed for calculation, the amount of water used would still overlap with that claimed, such that there would be, for example, with 61% polyisocyanate, about 12.8 - 77 wt% water, and variable amounts depending on how much polyisocyanate used. It would have been obvious to optimize from the ranges taught, giving a value in the claimed range.
Claim 7: the use of a chain extender as claimed would be suggested by Svensen, note the use of chain extenders (note 0136-0138), which can be chlorodiaminobenzene, for example (note 0139-0140), a aromatic diamine based chain extender.
Claim 8: as to the presence for (b) of at least one polyether polyol obtained by alkoxylation (alcoxylation) of a two or three functional starter molecule having a hydroxyl value of 20-50 mg KOH/g, this would be suggested by ‘857, which indicates such can be used for alkoxylation of the flexible polyol (note pages 13-14), which can have hydroxyl number of 20-80 mg KOH/g (page 14), and it would have been obvious to optimize from this range to obtain the claimed range. Furthermore, either the (b2) component can be this or an additional (b2) component can be this (noting page 13, one or more flexible polyols can be used).
Claim 9: as to the presence for (b) of at least one polyether polyol obtained by alkoxylation (alcoxylation) of a two or three functional starter molecule having a hydroxyl value of 20-50 mg KOH/g, this would be suggested by ‘857, which indicates such can be used for alkoxylation of the rigid polyol (note pages 10-12), which can have hydroxyl number of 125-800 mg KOH/g (page 5) , and it would have been obvious to optimize from this range to obtain the claimed range. Furthermore, this (bi) component can be an additional (b) component, since more than one (bi) component can be used (note page 10).
Claim 10: when using the additional (b) components as discussed for claims 8, 9 above and chain extender as discussed for claim 7 above, it would have been obvious to optimize the amount of (b1), (b2), (b3), (b4) and (b5) as claimed, where Svenson provides the amount of chain extender as 0.2-5 pphp (note 0143, parts per hundred by weight, 0014), where the total amount of (b) components as to the polyol there can be 30-90 wt% of the reaction mixture (note 0177), and as to the percent of each (b) component of the polyol itself, this would be optimized based on the material used. Note MPEP 2144.05(II)(A).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Svenson in view of ‘857, EITHER alone OR further in view of Eslava as applied to claims 1-2 and 4-10 above, and further in view of EITHER Kampf (US 2013/0184369) OR Jacobs et al (US 2015/0307647).
Claim 3: as to further providing a catalyst having a urea structure, Svenson indicates that any suitable catalyst known in the art and suitable for use in manufacture of polyurethane foam can be used (note 0153) and that catalysts can be used in mixtures with each other (note 0160).
Kampf describes making polyurethane foam using polyisocyanate and polyols, where catalysts would also be used(note 0015-0030), where the catalysts can include various amines, and bis(dimethylaminopropyl)urea (note 0118-0120).
Jacobs describes making polyurethane foam using polyisocyanate and polyols and catalysts (note 0001, 0019-0033), where the catalysts include various amines and urea derivatives, such as (3-dimethylaminopropylamine)urea which can be used in combinations (note 0062-0066).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson in view of ‘857, EITHER alone OR further in view of Eslava to additionally use a catalyst with urea structure as suggested by EITHER Kampf OR Jacobs with an expectation of predictably acceptable results, since Svenson indicates multiple catalysts can be used including amine structured, and known catalysts for polyurethane foam making, and Kampf OR Jacobs both indicate how urea structured catalysts can also be used to make polyurethane foam.
Claims 3 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Svenson in view of ‘857, EITHER alone OR further in view of Eslava as applied to claims 1-2 and 4-10 above, and further specifically in view of Eslava et al (US 2021/0198412).
Claims 3, 11 and 12: as to the catalyst with a urea structure (claim 3), the viscosity of the polyol component (B) (claim 1) and the string and tack free times (claim 12).
Eslava describes providing a polyurethane foam by mixing polymeric MDI, and polyol components, blowing agent, catalyst, etc. and spraying on a substrate (note 0012). The catalyst can include amines and that with a urea structure (note 0070-0071, such as bis(dimethylaminopropyl)urea). The mixing will include providing a polyisocyanate component (A) and a component (B) with polyols, catalyst and blowing agent, etc. (note 0083, 0012, 0096, can have blowing agent of water), and where the viscosity of (B) is, for example above 100 mPas and less than 500 mPas (note 0097), and further there is a gel time for the mixture (understood to be string time, as threads drawn, and also fiber time in the Tables) (note 0112, 0150, Table 4) and also Tack free time (note 0113, 0150, Table 4), where it is shown how there can be a range of fiber/string times (including values in the claimed range) and also ranges of tack free time (with 10 s as an industry standard, in an example) (note Table 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson in view of ‘857, EITHER alone OR further in view of Eslava to additionally use a catalyst with urea structure as suggested by Eslava with an expectation of predictably acceptable results, since Svenson indicates multiple catalysts can be used including amine structured, and known catalysts for polyurethane foam making, and Eslava indicates how urea structured catalysts can also be used to make polyurethane foam. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson in view of ‘857, EITHER alone OR further in view of Eslava to provide that the viscosity of component (B) is about 100 mPas and less than 500 mPas, in the claimed range, as suggested by Eslava with an expectation of predictably acceptable results, since Svenson indicates providing a component (B) as discussed for claim 1 above, and Eslava indicates conventional viscosities to use for such a component. Additionally as to the string time and tack free times, Eslava would further indicate these as controllable and adjustable values, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson in view of ‘857. EITHER alone OR further in view of Eslava to optimize conditions to provide optimum values for each, giving values in the claimed range.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Svenson in view of ‘857, EITHER alone OR further in view of Eslava as applied to claims 1-2 and 4-10 above, and further in view of Riccio et al (US 2021/0347989).
Claim 12: as to the string and tack free times (claim 12).
Riccio describes providing a polyurethane foam by mixing polyisocyanates, and polyol components, blowing agent, catalyst, etc. and spraying on a substrate (note 0045). Where there is a gel time for the mixture (understood to be string time, as strings drawn) (note 0072, Table 1) and also Tack free time (note 0072, Table 1), where it is shown how there can be a range of gel/string times (including values in the claimed range, note 15 seconds for Example 1) and also ranges of tack free time (that can be in the claimed range, note 17 seconds for Example 1, 25 seconds Example 2) (note Table 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Svenson in view of ‘857, EITHER alone OR further in view of Eslava to optimize conditions to provide optimum values for each of string and tack free times, giving values in the claimed range, from the suggestion of Riccio, with an expectation of predictably acceptable results, since Svenson is making a polyurethane foam, and Riccio indicates that when making polyurethane foam there are controlled and adjusted gel/string times and tack free times, including values in the claimed range, and it would have been obvious to optimize from such ranges, providing values in the claimed range.
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, 2, 4, 6 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/505,412 (hereinafter, ‘412, reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, and 7 of ‘412 provide the features of the present claim 1, where a method for making a polyurethane foam is provided with the foam with a density less than 50 g/dm3 (overlapping that claimed, and obvious to optimize from, giving values in the claimed range), with providing a reaction mixture and spraying onto a substrate, where it hardens to give the polyurethane spray foam (note claim 1), where the reaction mixture has (a) component as claimed, has the (b) materials as claimed (note (b2) as claimed in claim 1, and (b1) as claimed in claim 3, with an overlapping hydroxyl value that it would have been obvious to optimize from), has the (c) component claimed (note also claim 7), has the (d) component claimed, has the (e) component claimed, where retardant optional, and thus with no phosphorus flame retardant, and (f) as claimed (note claim 1). Present claim 2 would be suggested by claim 9 of ‘412. Present claim 4 would be suggested from optimizing the amount of catalyst to be used. Present claim 6 would be suggested from optimizing the amount of water and present claim 9 would be suggested from (b1) as listed in claim 1 of ‘412.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
