DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 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.
Status of Claims
Claims 24 and 27-29 are currently under examination. Claims 31-45 are withdrawn from consideration. Claims 1-23, 25-26 and 30 have been cancelled. Claim 24 is amended.
Previous Grounds of Rejection
Regarding claims 24 and 27-29, in the light of the amendments, the rejection 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn.
New grounds of rejection is set forth below.
New Grounds of Rejections
Claim Rejections - 35 USC § 112
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.
Claims 24 and 27-29 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.
In this case, the claim 24 contains subject matter of “a stable isocyanate trimerization catalyst composition consisting essentially of …” (emphasis added). The transitional term of “consisting of” 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.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(a) for the reasons set forth above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 24 and 27-29 are rejected under 35 U.S.C. 102(a)(1) 102 ()(2) as being anticipated by Metzger et al. (US 5,5157, 074).
Regarding claim 24, Metzger et al. teach composition for polyisocyanates comprising catalyst component potassium salt of acetic acid (potassium acetate, applicant’s elected species) (col. 5 line 61) and monofunctional blocking agent of succinimide (applicant’s elected carboxamide compound) ( (col. 6, line 18 7).
Molecular mass of potassium acetate CH3COOK is 98.15 g/mol, total positive valency of potassium is +1, therefore, the equivalent of potassium acetate is 98, which is greater than 4 times the number of trimerization catalyst equivalents as the instant claim.
Molecular mass of succinimide is 99.08 g/mol, the number of carboxamide -CO-NH2 in succinimide is 1, therefore, the equivalent of succinimide is 99, which is greater than 4 times the number of trimerization catalyst equivalents as the instant claim.
Since the reference of Metzger et al. teaches all of the claimed reagents, composition (CH3COOK , succinimide, etc.) and method of using the catalyst composition, the physical properties of the resulting composition (i.e., the final concentrations of CH3COOK and succinimide does not change at room temperature for at least several months, etc.) would be inherent as set forth in MPEP 2112.01(II).[1]
According to MPEP 2105, a “consisting essentially of” claim occupies a middle ground between closed claims that re written in a “consisting of” format and fully open claims that are drafted in a “comprising” format.
Based on the specification, it clear states that “A trimerization catalyst composition comprising a trimerization catalyst compound…”(Abstract, [0019-[0023]).
In addition, the instant Examples 1 and 9, a trimerization catalyst comprises Alcupol R1610, Dabco K2097, and Suprasec S30303, they are known contains other components including polyols, glycol and polyurethanes. Therefore, the transition phrase of “consisting essentially of” is determined as a fully open claims as a “comprising” format.
Regarding claims 27-28, as discussed above, Metzger et al. teach an organic earth alkali salt of potassium acetate which read on the instant claimed limitations.
Claims 24 and 27-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liman et al. (CA 2,119, 480 A1).
Regarding claim 24, Liman et al. teach a composition for polyisocyanates comprising catalyst component potassium salt of acetic acid (potassium acetate, applicant’s elected species) (line 13 on page 6) and urea (applicant’s elected carboxamide compound) (line 8 on page 7).
Molecular mass of potassium acetate CH3COOK is 98.15 g/mol, total positive valency of potassium is +1, therefore, the equivalent of potassium acetate is 98, which is greater than 4 times the number of trimerization catalyst equivalents as the instant claim.
Molecular mass of urea is 60.06 g/mol, the number of carboxamide -CO-NH2 in urea is 1, therefore, the equivalent of urea is 60, which is greater than 4 times the number of trimerization catalyst equivalents as the instant claim.
According to MPEP 2105, a “consisting essentially of” claim occupies a middle ground between closed claims that re written in a “consisting of” format and fully open claims that are drafted in a “comprising” format.
Based on the specification, it clear states that “A trimerization catalyst composition comprising a trimerization catalyst compound…”(Abstract, [0019-[0023]).
In addition, the instant Examples 1 and 9, a trimerization catalyst comprises Alcupol R1610, Dabco K2097, and Suprasec S30303, they are known contains other components including polyols, glycol and polyurethanes. Therefore, the transition phrase of “consisting essentially of” is determined as a fully open claims as a “comprising” format.
Regarding claims 27-28, as discussed above, Liman et al. teach an organic earth alkali salt of potassium acetate which read on the instant claimed limitations.
Regarding claims 29-30, as discussed above, Liman et al. teach an amount of 0.01 to 30% wt. of urea having the formula of NH2CONH2 (R6 is NH2) and 0.1 to 10% wt. of KOAc which overlaps the instant claimed ranges (pages 6-7).
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments with respect to claims 24 and 27-29 filed on 10/15/2025 have been considered but are moot in view of the new ground(s) of rejection.
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 YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
[1] [1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).