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
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 3/2/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 3/2/2026. In particular, claim 1 has been amended to add a transesterification catalyst in an amount of 10-1500 µmol per mol of polytetramethylene ether glycol. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bott (US 5,173,518) in view of Hioki (WO 2018/117219 A1, citations to US 11,608,405 as English-language equivalent).
With respect to claims 1, 4, 6-10, 12-16, Bott discloses cellular (foam) polyurethane elastomers derived from polyisocyanate and a polyether polycarbonate diol which contains polyoxytetramethylene glycol radicals having a Mn of 50-500 (abstract), wherein the polyether polycarbonate diol is prepared from a polyoxytetramethylene glycol and a diphenyl or dialkyl carbonate having 1-4 carbon atoms which includes dimethyl carbonate (col. 2, lines 19-38). Example 1 is to preparing polyether polycarbonate diols with a polyoxytetramethylenediol having Mn of 232 and diethyl carbonate, wherein the polyether polycarbonate diols have Mn of 1970 and OH number of 57 (col. 11, lines 55-68). The hydroxyl value of the polyoxytetramethylenediol is calculated from equation mw = (56,000 x n)/hydroxyl value as 483 mg-KOH/g with n = 2 for difunctional.
Bott fails to (i) explicitly disclose an amount of transesterification catalyst of 10-1500 µm per mol of PTMG or (ii) explicitly disclose a polyether polycarbonate having chain terminal groups other than hydroxy groups.
With respect to (i), in Example 1, 12.5 g of tetraisopropyl orthotitanate (i.e., transesterification catalyst having molecular weight of 284 g/mol) per 7.54 mol of polyoxytetramethylenediol PTMG), which provides for an amount of transesterificatiaon catalyst in µmol per mol of PTMG of about 5,800 which is above claimed range of 10-1500. Even so, case law holds “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Bott teaches that a transesterification catalyst is added in an amount of 0.001-2 wt % (col. 5, lines 16-23).
Given that the disclosure of Bott is not limited to the examples and further given that Bott teaches that a suitable amount of transesterification catalyst can be as low as 0.001 wt % (as compared to exemplified 0.5 wt %), it would have been obvious to one of ordinary skill in the art to utilize relatively lower amounts of transesterification catalyst which overlap with claimed range of 10-1500.
With respect to (ii), Hioki discloses a polycarbonate polyol prepared from a polyhydric alcohol having a hydroxyl value of 20-450 mg KOH/g and a formula
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, wherein m is 2-4 and RA1 represents a carbon chain having 2-5 carbon atoms (abstract; col. 3, lines 13-19). Hioki teaches that the polycarbonate polyol has mainly hydroxy groups as terminal end groups but when prepared from dialkyl or dialkyl carbonates such as dimethyl carbonate, alkoxy (i.e., methoxy) groups “may remain as a molecular chain terminal” in an amount of up to 5 wt % (col. 17, line 61 to col. 18, line 19).
Given that both Bott and Hioki are drawn to polyether polycarbonate polyols derived from polyether glycols and dialkyl carbonates and further given that Hioki teaches that reacting hydroxyl groups in the presence of dialkyl carbonates results in an expected impurity of 5 wt % or less, it would have been obvious to one of ordinary skill in the art to prepare a polyether polycarbonate diol like claimed having alkoxy terminal groups from Hioki.
With respect to claims 2 and 3, the terminal alkoxy group is derived from the diphenyl or dialkyl carbonate having 1-4 carbon atoms. A dialkyl group with 1 carbon atom provides for a terminal methoxy group, and a dialkyl group with 4 carbon atoms provides for a terminal butoxy group.
With respect to claim 5, because the hydrolysis product is formed at the carbonate unit, the hydroxyl group value would be at least the hydroxy value for the polyoxytetramethylene glycol, e.g., 483 mg-KOH/g.
With respect to claim 11, in Example 7.54 mol of polyoxytetramethylene diol is mixed with 6.59 mol of diethyl carbonate, i.e, 0.87 molar ratio.
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that the amount of transesterification catalyst of 10-1500 µmol per mole of PTMG provides unexpected results.
Convincing secondary considerations such as unexpected results require data that is reasonably commensurate in scope with the claims rather than statements made in the specification. Case law holds that 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.” No criticality has been shown for the claimed range of 10-1500 or how it compares to exemplified amount of about 5,800 µmol per mole of PTMG. Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979).
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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