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 .
Claim Rejections - 35 USC § 112
2. 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.
3. 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 3-6, 12 and 13. Specifically, the examiner has not found support for step a) within claims 12 and 13 and the limitations of claims 3-6, relative to claim 12, and in view of the argued examples. The specification, including the examples, does not provide support for the claimed weight ratio of claim 12 or the claimed equivalence ratio of claim 13. Furthermore, the initial reaction steps of Examples 1 and 2, in view of the disclosed equivalence ratio, do not produce a soy polyol. Also, support has not been found for the claiming of the use of phenylisocyanate, which is distinct from 4,4’-methylenebis(phenylisocyanate). Lastly, the examples, argued to provide support for claims 12 and 13, 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.
4. The examiner has considered applicants’ response; however, the argued examples continue to not provide support for the claims. If applicants maintain that the examples provide support for the claims, then applicants must specifically explain how the claimed limitations are supported by the examples; merely referring to the examples is insufficient.
5. 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.
6. 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 what is meant by “soy-based polyisocyanate” or how this language further modifies or limits the associated “solid thermoset polyurethane resin” language. The examiner has considered applicants’ response; however, it is unclear from the claims what constitutes a soy-based polyisocyanate, especially in view of the fact that claims 12 and 13 specify that a soy polyol is produced, as opposed to a soy-based polyisocyanate. Applicants’ argument does not appear to agree with the subject matter of the claims.
Secondly, with respect to step a) of claims 12 and 13, since phenylisocyanate of step a) is distinct from 4,4’-methylenebis(phenylisocyanate), it is unclear how to interpret the ratios of step a) of claims 12 and 13.
Thirdly, with respect to step a) of claim 13, since only the use of a petroleum based polyol has been claimed, it is cannot be reconciled how a soy polyol is produced.
Fourthly, with respect to claim 4, the claim depends from cancelled claim 1.
7. 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
8. 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.
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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/RABON A SERGENT/Primary Examiner, Art Unit 1765