Patent Application 17764460 - POLYURETHANE AND POLYISOCYANURATE FOAM AND

Title: POLYURETHANE AND POLYISOCYANURATE FOAM AND METHOD OF MANUFACTURE THEREOF

Application Information

Invention Title: POLYURETHANE AND POLYISOCYANURATE FOAM AND METHOD OF MANUFACTURE THEREOF
Application Number: 17764460
Submission Date: 2025-05-21T00:00:00.000Z
Effective Filing Date: 2022-03-28T00:00:00.000Z
Filing Date: 2022-03-28T00:00:00.000Z
National Class: 521
National Sub-Class: 174000
Examiner Employee Number: 85837
Art Unit: 1766
Tech Center: 1700

Rejection Summary

102 Rejections: 0
103 Rejections: 4

Cited Patents

The following patents were cited in the rejection:

Office Action Text

DETAILED ACTION
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 amendment filed on 5/11/2025. In particular, claim 1 has been amended to recite “wherein the catalyst comprises one or more amine catalysts and one or more organometallic catalysts, wherein the amine catalyst is present in an amount of from about 0.3 to about 0.8 parts by weight per 100 parts by weight of polyol and/or wherein the organometallic catalyst is present in an amount of from about 0.5 to about 1.0 parts by weight per 100 parts by weight polyol.” Claims 4 and 5 are amended to change “such as” to “more preferably.” Claims 9 and 19 are amended to change “such as” to preferably. Claim 10 is cancelled. Claims 13-14 are cancelled.
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 § 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 4-5, 9, and 19 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.
Claims 4 and 5 have been amended to change “such as” to “more preferably.” The phrase “more preferably” is still indefinite. It is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if the claim is limited to what follows “preferably,” or if the claim is limited to the broader range recited therein.
Claims 9 and 19 have been amended to change the phrase “such as” to “preferably.” The phrase “preferably” is still indefinite. It is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if the claim is limited to what follows “preferably,” or if the claim is limited to the broader range recited therein.

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 1-6, 8-9, 12, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al. (US 2016/0326330). The rejection set forth in paragraphs 11-23 of the Non-Final Office Action mailed on 2/13/2025 is incorporated herein by reference. The amendment claim 1 are addressed in at least paragraph 17 of the Non-Final rejection mailed on 2/13/2025.

Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al. (US 2016/0326330) and further in view of Owens (US 2014/0058003). The rejection set forth in paragraphs 24-27 of the Non-Final Office Action mailed on 2/13/2025 is incorporated herein by reference.

Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al. (US 2016/0326330) and further in view of Schweiger (US 4,147,847). The rejection set forth in paragraphs 28-30 of the Non-Final Office Action mailed on 2/13/2025 is incorporated herein by reference.

Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Schuette et al. (US 2016/0326330) and further in view of Ehbing (US 2004/0065973). The rejection set forth in paragraphs 31-34 of the Non-Final Office Action mailed on 2/13/2025 is incorporated herein by reference.

Response to Arguments
Applicant's arguments filed 5/11/2025 have been fully considered but they are not persuasive.
It is noted that the Remarks filed on 5/11/2025, third full paragraph of page 10, state that claims 4-5, 9, and 19 were objected to. This is not correct. The claims were rejected, because it is unclear if the claims are limited to the phrases following “more preferably” in claims 4-5 and “preferably” in claims 9 and 19. The amendments do not overcome the indefinite issues as it is still not clear if the claims are limited to the broad ranges or the narrower ranges following “more preferably” or “preferably.”
Applicant argues that Schuette does not provide any teaching, suggestion or motivation for the skill person to arrive at the claimed invention.
This is not persuasive. Each of the instantly claimed components is disclosed in Schuette et al. The amounts overlap the claimed amounts of components. 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). As stated in MPEP 2123, “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).
It appears Applicant is attempting to establish criticality and unexpected results of the instantly claimed amounts. See page 12, first paragraph of the Remarks filed on 5/11/2025.
This is not persuasive.
MPEP 716.02(d) states:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).

MPEP 716.02(d), II. further states:
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).

The data cited to by Applicants is not commensurate in scope with the claimed invention and does not compare a sufficient number of tests inside and outside the claimed range, which is necessarily to show unexpected results and criticality.
The claims recite at least one polyisocyanate; at least one polyol component; a catalyst; and a blowing agent, a surfactant, and a cell nucleator of a specific formula. The catalyst is one or more amine catalysts in the amount of 0.3 to 0.8 parts per 100 parts by weight polyol and one or more organometallic catalysts. The claims are not limited to the extremely specific materials used in the data argued by Applicants, nor are the claims limited to any amount of polyisocyanate, polyol, blowing agent (non-water), surfactant or cell nucleator, as no amounts for these materials are recited in the independent claim.
The examples used Lupranate M70R as the polyisocyanate. The claims allow for any polyisocyanate and recite at least one. The claims are not limited to the extremely specific type or amount of polyisocyanate used in the Examples..
The examples use an extremely specific Polyol 1 or Polyol 2 which have specific properties. The claimed invention is not limited to these polyols, let alone the amounts of these used in the examples.
The examples include an extremely specific flame retardant, which is not even recited in independent instant claim 1. For this reason alone, the data is not commensurate in scope with the claimed invention.
The examples use a mixture of N-N-dimethylcyclohexylamine (73wt%) and pentamethyldiehtylenetriamine (27wt%) Polycat and Polycat 8. The claims are not limited to extremely specific mixture of amine catalyst.
The examples use diluted dibutyltin dilaurate, Dabco® T-12 or Dabco T2064. The organometallic catalyst of the instantly claimed invention is not limited to dibutyl tin dilaurate let alone the specific materials used in the Examples.
The claims allow for any surfactant and are not limited to the Niax L5162 or the amount used in the Examples.
The claims allow for a cell nucleator of the recited formula and are not limited to the FA188 used in the examples or the amount used therein.
A persuasive demonstration of criticality and unexpected results requires that the data be commensurate in scope with the claimed invention. The claims are not limited to the extremely specific materials used in the Examples of the data of the instant specification nor are they limited to the amounts shown in the examples. For this reason, the data does not show evidence of criticality and unexpected results.
There are also not enough examples outside the scope of the instant claims to show that that the allegedly unexpected results occur only with embodiments falling with the claimed amounts and claimed materials. This is another reason why unexpected results are not demonstrated.
Secondly, MPEP 2123, Section II. states:

Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Additionally, as stated in MPEP 2123, Section II.:
[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
The rejection establishes where each of the instantly claimed materials is present in the prior art, as well as how and why the amounts of the prior art overlap the amounts of the instant claims. Stating that the prior art does not disclose a feature, is not evidence showing that the prior art does not actually teach said feature. See the previous rejection, which is incorporated herein by reference, which establishes where, how and why the prior art teaches each of the instantly claimed components.
Applicant argues that there is no teaching in Schuette to use a combination of amine catalysts and organometallic catalysts. This is not persuasive as noted in the rejection, Schuette teaches combination of catalysts can be used and that amine and organotin catalysts are suitable catalysts (¶ 96). Thus, using two catalysts, including amine and organotin catalysts are within the scope of Schuette.
Applicant argues that Table 2 of Schutte teaches the polyol is present in 10-98 pbw with 0.05-5 pbw of catalyst, giving a range of 0.05-50 pbw catalyst per 100 pbw polyol and that a range this large cannot render obvious the much narrower ranges of claim 1.
This is not persuasive.
It is noted that the rejection of record does not rely on Table 2 of Schuette and that Applicant has not addressed the rationale presented in the rejection and incorporated into this action by reference.
Attention is directed to MPEP 2144.05 for guidance on overlapping ranges. What MPEP 2144.05 states is:
However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) ("[a] disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds."); MPEP § 2144.08; and subsection III.D below for an additional discussion on consideration of prior art disclosures of a broad range.

The reference does not disclose millions of compounds, nor does the instantly claimed invention recite three compounds. The scope of instant claim 1 is broad, reciting at least one polyisocyanate (no specified type or amount in independent instant claim 1), at least one polyol (no specified amount or type in instant claim 1), catalyst including one or more amine catalysts and one or more organometallic catalysts, a blowing agent, a surfactant (no specified type or amount; this alone contains hundreds of species and possibly thousands with substitutions), and a cell nucleator of a given formula. Thus, the situation described in MPEP 2144.05 is not applicable to the rejection of the instant claims using Schutte. Rather, the situation is analogous to obviousness of a species where the prior art discloses a genus. MPEP 2144.08 describes how prior art is applied in a genus/species situation. This analysis was conducted when applying Schuette as prior art.
Even the range discussed by the Applicant, i.e. that of Table 2 of Schuette, overlaps the claimed range. Furthermore, criticality has not been shown for the detailed reasons provided above. Additionally, the instant claims themselves are extremely broad and contain thousands of possible combinations of materials. When applying Schutte as prior art, the examples of Schuette were analyzed to determine the appropriate scale of the amount of catalyst. None of the examples of Schuette use 50 pbw catalyst, but rather use very small amounts. Therefore, in accordance with the MPEP, the finding by the examiner was that one of ordinary skill in the art would be directed to the claimed range based on the teachings of the prior art including the examples, not simply the broadest ranges disclosed. This is not only proper but required when considering prior art.
Because the scope of the instant claims is broad; because the prior art teaches and/or otherwise suggests each of the instantly claimed components and reasonably discloses the amounts recited in the instant claims; because the data of the instant specification is not commensurate in scope with the claimed invention and does not compare a sufficient number of tests both inside and outside the claimed range which is required to show criticality and unexpected results; the rejection properly establishes that the Schuette et al. reference obviates the instantly claimed invention. The rejections are maintained.

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