DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/27/2026 has been entered.
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 1, 4-6, 12-14, 16-18, and 23-25 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.
Claim 1 is amended to recite “wherein said composition excludes a carbodiimide forming catalyst.” Applicant cites to page 1, lines 10-12 as alleged support for the newly presented limitation. Page 1, lines 10-12 of the instant specification states:
Therefore, PU is understood in the context of the present invention to mean both polyurethane and polyisocyanurate, polyureas, and polyisocyanate reaction products containing uretdione, carbodiimide, allophanate, biuret, and uretonimine groups.
This teaching does not mention carbodiimide forming catalysts. The fact that polyurethane can contain carbodiimide groups, is not equivalent to a positive recitation of a carbodiimide-forming catalyst. The teaching that polyurethane contains carbodiimide groups is not basis for excluding carbodiimide-forming catalysts.
There is no disclosure in the instant specification of inclusion or exclusion of a carbodiimide-forming catalyst, which is necessary to provide support for such a limitation in the claims. The additional catalysts, in addition to the specific salts of amino acids having the structure of instant claim 1, expressly disclosed in the instant specification make no mention of a carbodiimide-forming catalyst. Page 12, lines 18-21 of the instant specification state:
It is possible here to make sure of the customary catalysts known from the prior art, including, for example, amines (cyclic, acyclic; monoamines, diamines, oligomers having one or more amino groups), ammonium compounds, organometallic compounds and metal salts, preferably those of potassium, tin, iron, bismuth, and zinc. In particular, it is possible to use mixtures of a plurality of components as catalysts.
The instant specification makes no mention of carbodiimide-forming catalysts. Carbodiimides do not fall within the scope of the known catalysts from the prior art which are discussed in the instant specification, i.e. amines (cyclic, acyclic; monoamines, diamines, oligomers having one or more amino groups), ammonium compounds, organometallic compounds and metal salts, preferably those of potassium, tin, iron, bismuth, and zinc. Thus, as there is no positive recitation of carbodiimide catalysts, or an express disclosure of their exclusion, the limitation reciting ““wherein said composition excludes a carbodiimide forming catalyst” is new matter, and claim 1 and all claims depending thereon (4-6, 12-14, 16-18, and 23-25) 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. Claims 4-6, 12-14, 16-18, and 23-25 depend from claim 1 which contains new matter and are therefore also 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.
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Horn et al. (WO 99/40138) and further in view of CN 102924686A. Because WO 99/40138 is in German, the machine-translated English equivalent is cited below. Because CN 102924686A is not in English , the machine-translated English equivalent is cited below.
Horn et al. teach polyurethane bodies, including hard (i.e. rigid) polyurethane foams (page 1, lines 22-23 of translation) formed via reaction of polyisocyanates with polyols and a foaming agent (i.e. blowing agent) and catalysts (page 1, lines 13-18 of the translation). The compositions can further include foam stabilizers (page 14, line 612). The compositions further comprise, for example, carboxylic acids and/or their amides. An example of carboxylic acid disclosed in Horn et al. is hippuric acid. See page 5, line 209 of the attached translation. Horn et al. teaches that the disclosed acids can be used in the form of their salts. Ammonium salts of the carboxylic acids are particularly suitable in Horn et al. See page 6, lines 223-229. Alkali metal salts of the disclosed acids are also used as the c2) component in Horn et al. Given this teaching, one of ordinary skill in the art would at once envisage the alkali metal salt of hippuric acid, which is a derivative of an amino acid and is a salt, wherein the cation is Li+, Na+, K+, Rb+, or Cs+. It is noted that formula I of instant claim 22 is the salt of hippuric acid when R3 is phenyl and R1 and each R2 are H. The salt of hippuric acid, which is obvious given the teachings of Horn et al., meets instant claim 22.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include the salt of hippuric acid, which is an amino acid derivative obtained by reacting amino acid and an aromatic carboxylic acid (meeting instant claim 2), including the ammonium salt or an alkali metal salt, because “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). See MPEP 2123. The compounds including the ammonium salts of hippuric acid disclosed in Horn et al. are described as catalysts.
As to the limitation in instant claim 22 reciting “wherein the composition contains at least one catalyst that catalyses the formation of a urethane or isocyanurate bond,” this is an intended use and a product-by-process limitation of the catalyst of the claims. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). As the ammonium or alkali metal salt of hippuric acid disclosed in Horn et al. is structurally identical to the catalyst described in instant claim 22, the ammonium or alkali metal salt of hippuric acid disclosed in Horn et al. is capable of performing the intended use of catalyst recited in the instant claims, including catalyzing “the formation of a urethane or isocyanurate bond” as recited in the instant claims.
Additionally, case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The ammonium or alkali metal salt of hippuric acid disclosed in Horn et al. is the same as the catalyst of instant claim 22 and is combined with identical components (isocyanate, polyol component, blowing agent) to produce an identical product (rigid polyurethane foam) as recited in the instant claims. Thus, the composition of Horn et al. is the same as that of instant claim 22.
Horn et al. teaches that water can be added as a blowing agent. See page 4, first full paragraph of the translation.
Horn et al. specifically teaches the addition of water and additional physical blowing agents. Horn et al. does not discuss the type of additional physical blowing agents. Horn et al. only states that the use of CFCs is excluded.
As evidenced by CN102924686, the common physical foaming agents, which are alternatives to CFCs, for use in polyurethane foams such as those disclosed in Horn et al., include hydrocarbons such as cyclopentane, pentane, isopentane. See page 5, lines 7-14 of the translation of CN 102954686. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use hydrocarbons such as cyclopentane, pentane, and isopentane, as the disclosed additional physical foaming agent to produce the foams disclosed in Horn et al., as these are the common physical foaming agents, used in conjunction with water, used to produce polyurethane foams.
Allowable Subject Matter
Claim 15 is allowed.
The closest prior art is that discussed above or discussed in previous office actions, i.e. (1) Horn et al. (WO 99/40138), (2) Bechara et al. (US 4,115,634), and (3) Rister (WO2017/160361A1), which are as previously made of record, the discussions of which are incorporated into this action by reference. None of Horn et al. (WO 99/40138), Bechara et al. (US 4,115,634), or Rister (WO2017/160361A1) disclosed an amino acid salt in which the cation is selected from the group consisting of tetraalkvlammonium, trialkylhydroxyalkylammonium, benzyltrialkxlammonium, tetramethylammonium, tetraethylammonium, tetrabutylammonium, tetrapropylammonium, dimethyldiallylammonium, trimethyl(2-hydroxypropyl)ammonium, triethvl(2- hydroxypropyl)ammonium, tripropyl(2-hydroxypropyl)ammonium, tributyl(2- hydroxypropyl)ammonium, dimethylbenzyl(2-hydroxvpropyl)ammonium, dimethylbenzyl(2-hydroxyethyl)ammonium, and combinations thereof.
Prior Art
Claims 1, 4-6, 12-14, 16-18, and 23-25 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. However, there are no prior art rejections over these claims. The closest prior art is Horn et al. described above, which requires the presence of a carbodiimide-forming catalyst.
Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
Applicant cites MPEP 2173.05(i) as basis for the amendment to the claims which states “wherein said composition exclude a carbodiimide-forming catalyst.” Applicant cites to page 1, lines 18-21 of the instant specification, apparently as an alleged positive recitation, or carbodiimide-forming catalyst.
This is not persuasive.
MPEP 2173.05(i) states:
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features. See Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356-57, 116 USPQ2d 2006, 2010-11 (Fed. Cir. 2015). The mere absence of a positive recitation is not basis for an exclusion.
The citation provided by Applicants as support, page 1, lines 18-21 of the instant specification, states:
Therefore, PU is understood in the context of the present invention to mean both polyurethane and polyisocyanurate, polyureas, and polyisocyanate reaction products containing uretdione, carbodiimide, allophanate, biuret, and uretonimine groups.
This discussion makes no mention of a carbodiimide-forming catalyst, either positively or to its exclusion. Thus, MPEP 2173.05(i) is not applicable to the amendment to claim 1. Stating what groups can be present in the polyurethane, is not equivalent to the recitation of a carbodiimide-forming catalyst. Attention is drawn to page 12, lines 18-21 of the instant specification, which states:
It is possible here to make sure of the customary catalysts known from the prior art, including, for example, amines (cyclic, acyclic; monoamines, diamines, oligomers having one or more amino groups), ammonium compounds, organometallic compounds and metal salts, preferably those of potassium, tin, iron, bismuth, and zinc. In particular, it is possible to use mixtures of a plurality of components as catalysts.
The instant specification makes no mention of carbodiimide-forming catalysts. Carbodiimides do not fall within the scope of the known catalysts from the prior art which are discussed in the instant specification, i.e. amines (cyclic, acyclic; monoamines, diamines, oligomers having one or more amino groups), ammonium compounds, organometallic compounds and metal salts, preferably those of potassium, tin, iron, bismuth, and zinc. Thus, as there is no positive recitation of carbodiimide catalysts, or an express disclosure of their exclusion, the limitation reciting “wherein said composition excludes a carbodiimide forming catalyst” is new matter, and claim 1 and all claims depending thereon (4-6, 12-14, 16-18, and 23-25) 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 claims are rejected as containing new matter for the reasons discussed above. However, there are no prior art rejections over the limitation wherein said composition excludes a carbodiimide forming catalyst.”
Claim 15 remains allowed.
Conclusion
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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/K. BOYLE/Primary Examiner, Art Unit 1766