Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10 September 2026 has been entered.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 2-9, 12, and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Despite applicants’ remarks, the examiner has not found support for the subject matter of claims 2-9, 12, and 13. Specifically, the examiner has not found support for step a) within claims 12 and 13 and the limitations of claims 2-9, relative to independent claim 12. The specification, emphasis being with respect to paragraphs [0014] and [0018] and examples 1 and 2, does not provide support for the claimed weight ratio or process of producing a soy based polyisocyanate of step (a) of claim 12 or the claimed equivalence ratio or process producing a soy based polyisocyanate of step (a) of claim 13. The examiner stresses that there is no disclosure within the specification, as filed, that provides support for step (a) of claims 12 or 13. A weight ratio (claim 12) is not equivalent to an equivalence ratio, and the equivalence ratio of step (a) of claim 13 is neither disclosed within example 2 nor can such an equivalence ratio yield a soy based polyisocyanate. Lastly, the examples fail to provide support for the scope of the soy polyol of the claims; Examples 1 and 2 specifically state that the soy polyol is produced according to a specifically referenced method; however, the claims are not so limited.
5. The examiner has considered applicants’ response; however, the response does not serve to explain how the subject matter of the claims is supported.
6. 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.
7. Claims 2-9, 12, and 13 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.
Firstly, the language, “soy-based polyisocyanate solid thermoset polyurethane resin” renders the claims indefinite, because it is unclear how “soy-based polyisocyanate” further modifies or limits the associated “solid thermoset polyurethane resin” language. It is not seen that applicants’ response has clarified this issue, especially with respect to claim 13 since step (a) claims the production of a soy based polyisocyanate; however, step (a) of claim 13 does not disclose the reaction of a soy polyol, rather step (a) of claim 13 discloses the use of a petroleum based polyol.
Secondly, with respect to step (a) of claim 12, in view of the claiming of a weight ratio, insufficient information has been provided to interpret the claimed reaction chemistry.
Thirdly, with respect to step a) of claim 13, since only the use of a petroleum based polyol has been claimed, it cannot be reconciled how a soy polyol is produced. Applicants’ response is incorrect that a petroleum based polyol has not been claimed. Also, the claimed equivalence ratio of 450 (assuming hydroxyl equivalency):7.35 (assuming isocyanate equivalency) cannot yield the claimed soy based polyisocyanate, because all isocyanate functionality would be consumed.
Fourthly, with respect to each of claims 12 and 13, step (a) and step (b) cannot be reconciled, because step (a) refers to the production of a soy based polyisocyanate and step (b) refers to the “soy polyol previously made in step (a)”.
Fifthly, with respect to claim 4, the claim improperly depends from itself. Also, the claiming of multiple dependencies raises the issue of the claim being improperly multiply dependent. Furthermore, it is unclear to what mixing steps are being referred.
8. The severity of the 35 USC 112(a) and 112(b) rejections/issues with respect to the claims continue to preclude meaningful search and examination of the claims relative to the prior art.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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