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 .
Claim Objections
Claims 1 and 14 are objected to because of the following informalities:
Claim 1 should be amended to recite, for example, “0.1 to 10% by weight, based on the total weight of the polyether polyol
wherein the polyether polyol further comprises”; and
Claim 14 should be amended to recite “or a mixture of any two or more thereof; and” in the line before the last paragraph of the claim.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 8, 11 – 13, and 21 are rejected under 35 U.S.C. 103 as being unpatentable US 10,253,134 to Nefzger et al. (hereinafter Nefzger) in view of US 2014/0243560 to Lorenz et al. (hereinafter Lorenz).
Regarding Claims 1, 5 – 8, and 11. Nefzger teaches an ethoxylated bisphenol A (BPA) resin/polyether polyol comprising:
an ethoxylate/alkoxylate of 4,4’-isopropylidenediphenol, in an amount of at least 10 weight percent;
an ethoxylate/alkoxylate of 2,4’- and 2,2’-isopropylidenediphenol, in an amount of at least 5 weight percent; and
an ethoxylate/alkoxylate of components which may be derived from phenol and/or acetone, in an amount of at least 10 weight percent (Column 4, Lines 15 – 29).
Nefzger does not expressly teach the above described ethoxylated bisphenol A (BPA) resin/polyether polyol further comprises an alkoxylate corresponding to instantly claimed component (d). However, Lorenz teaches the concept of preparing a polyether polyol using bisphenol A as a starter compound [0021]. Lorenz further teaches combining such a starter compound with up to 30 weight percent of starter compounds having melting points lower than 40°C, such as a propylene glycol or ethylene glycol [0022]. Propylene glycol and ethylene glycol have molecular weights of 76 g/mol and 62 g/mol, and therefore less than the molecular weight of isopropylidenediphenol (228.29 g/mol). Nefzger and Lorenz are analogous art as they are from the same field of endeavor, namely polyether polyols. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a starter compound having melting points lower than 40°C, such as a propylene glycol or ethylene glycol, in the amount taught by Lorenz in conjunction with bisphenol A when preparing the polyether polyol of Nefzger. The motivation would have been that Lorenz teaches such compounds are suitably used as suspension aids for solid high-melting starter compounds [0005], e.g. bisphenol A. Lorenz further teaches the use of suspension aids can be associated with increased clarity and homogeneity in the end products prepared with solid starter compounds [0005] – [0007].
Additionally, Nefzger does teach propylene oxide is the preferred alkylene oxide to be used in conjunction with ethylene oxide in the preparation of the polyether polyol (Column 5, Lines 23 – 26) but does not expressly teach the polyether polyol comprises the polymerized ethylene oxide moieties as an internal block and an external cap comprising the propylene oxide moieties as a cap. However, Lorenz teaches the concept of providing a polyether polyol with at least one En block and at least one Pn block. The at least one En block comprises more preferably at least 100% by weight of oxyethylene units, while the at least one Pn block comprises preferably at least 75% by weight of oxypropylene units. The at least one En block may be provided as an internal block [0026]; in such an embodiment, the at least one Pn block will correspond to the end block/cap of the polyether polyol. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide ethylene oxide and propylene oxide in the sequence and relative amounts suggested by Lorenz to prepare the polyether polyol of Nefzger. The motivation would have been that this order of metering ethylene oxide and propylene oxide would provide advantages such as improving the space-time efficiency of the polymerization process, while providing control over the hydrophilicity and reactivity of the polyether polyol.
Regarding Claim 2. Nefzger teaches the polyether polyol of Claim 1 but is silent with respect to its arithmetic functionality. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nefzger, in view of Lorenz, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a polyether polyol having an arithmetic functionality in the instantly claimed range, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 3. Nefzger teaches the polyether polyol of Claim 1 wherein the polyether polyol has a viscosity at 25°C of particularly preferably 1,000 to 6,000 mPas (Column 5, Lines 41 – 45).
Regarding Claim 4. Nefzger teaches the polyether polyol of Claim 1 wherein the polyether polyol has a hydroxyl number of preferably 120 to 300 mgKOH/g (Column 5, Lines 41 – 43).
Regarding Claim 12. Nefzger teaches a PUR-PIR rigid foam-forming reaction mixture comprising:
b) at least one polyisocyanate-containing component;
a) at least one BPA resin ethoxylate, i.e. the polyether polyol of Claim 1; and
c) at least one propellant/blowing agent (Column 7, Lines 38 – 52). The propellant may comprise both chemical and physical propellants/blowing agents (Column 8, Lines 47 – Column 9, Line 13).
Regarding Claim 13. Nefzger teaches a method of forming a PUR-PIR rigid foam comprising reacting at least one polyisocyanate-containing component with
at least one BPA resin ethoxylate, i.e. the polyether polyol of Claim 1, in the presence of at least one propellant/blowing agent and at least one catalyst (Column 7, Lines 38 – 53). The isocyanate index provided is particularly preferably 180 to 450 (Column 10, Lines 51 – 55).
Regarding Claim 21. Nefzger teaches the polyether polyol of Claim 1. As detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide ethylene oxide and propylene oxide in the sequence and relative amounts suggested by Lorenz to prepare the polyether polyol of Nefzger. Lorenz specifically teaches the concept of providing a polyether polyol with at least one En block and at least one Pn block. The at least one En block comprises more preferably at least 100% by weight of oxyethylene units, while the at least one Pn block comprises preferably at least 75% by weight of oxypropylene units. The inventive examples of Lorenz provide blocks which are 100% weight polymerized ethylene oxide and polymerized propylene oxide (see Examples 1 – 5). Thus, the provision of ethylene oxide and propylene oxide in amounts of 100 weight percent in their respective blocks would be readily envisioned from the disclosure of Lorenz.
Claims 14 – 18 and 23 are rejected under 35 U.S.C. 103 as being unpatentable US 10,253,134 to Nefzger et al. (hereinafter Nefzger) in view of US 2014/0243560 to Lorenz et al. (hereinafter Lorenz).
Regarding Claims 14, 17, and 18. Nefzger teaches a process for preparing a polyether polyol comprising ethoxylating/alkoxylating an active hydrogen-containing initiator BPA resin composition comprising:
4,4’-isopropylidenediphenol;
2,4’- and 2,2’- isopropylidenediphenol; and
components which may be derived from phenol and/or acetone (Column 4, Lines 15 – 29).
Nefzger does not expressly teach the above described active hydrogen-containing initiator BPA composition further comprises a compound corresponding to instantly claimed component (d). However, Lorenz teaches the concept of preparing a polyether polyol using bisphenol A as a starter compound [0021]. Lorenz further teaches up to 30 weight percent of additional starter compounds having melting points lower than 40°C, such as a propylene glycol or ethylene glycol, in conjunction with starter compounds such as bisphenol A [0022]. Propylene glycol and ethylene glycol have molecular weights of 76 g/mol and 62 g/mol, and therefore less than the molecular weight of isopropylidenediphenol (228.29 g/mol). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a starter compound having melting points lower than 40°C, such as a propylene glycol or ethylene glycol, in the amount taught by Lorenz in conjunction with bisphenol A when preparing the polyether polyol of Nefzger. The motivation would have been that Lorenz teaches such compounds are suitably used as suspension aids for solid high-melting starter compounds [0005], e.g. bisphenol A. Lorenz further teaches the use of suspension aids can be associated with increased clarity and homogeneity in the end products prepared with solid starter compounds [0005] – [0007].
Additionally, Nefzger does teaches propylene oxide is the preferred alkylene oxide to be used in conjunction with ethylene oxide in the preparation of the polyether polyol (Column 5, Lines 23 – 26). Nefzger further teaches ethoxylation, i.e. reaction with ethylene/alkylene oxide, occurs in the presence of a catalyst (Column 4, Line 35 – Column 5, Line 22). Though Nefzger does not expressly teach preparing the polyether polyol such that a first portion of alkylene oxide is provided to form an intermediate polymer and then providing a second portion of alkylene oxide to form the polyether polyol, secondary reference Lorenz teaches the concept of providing a polyether polyol with at least one En block and at least one Pn block. The at least one En block comprises more preferably at least 90% by weight oxyethylene units, while the at least one Pn block comprises preferably at least 75% by weight oxypropylene units. The at least one En block may be provided as an internal block [0026]. In such an embodiment, a first portion of alkylene oxide comprising preferably at least 90% by weight of ethylene oxide would be provided to form an intermediate polymer comprising primary hydroxy end groups, followed by a second portion of alkylene oxide comprising at least 75% by weight propylene oxide to form the polyether polyol. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide ethylene oxide and propylene oxide in the sequence and relative amounts suggested by Lorenz in the method of Nefzger. The motivation would have been that this order of metering ethylene oxide and propylene oxide would provide advantages such as improving the space-time efficiency of the polymerization process, while providing control over the hydrophilicity and reactivity of the polyether polyol.
Regarding Claim 15. Nefzger teaches the method of Claim 14 wherein the polyether polyol has a viscosity at 25°C of particularly preferably 1,000 to 6,000 mPas and a hydroxyl number of preferably 120 to 300 mgKOH/g (Column 5, Lines 41 – 45).
Nefzger is silent with respect to the arithmetic functionality of the polyether polyol. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nefzger, in view of Lorenz, teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. a polyether polyol having an arithmetic functionality in the instantly claimed range, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claim 16. Nefzger teaches the method of Claim 14. Nefzger teaches an ethoxylated bisphenol A (BPA) resin/polyether polyol comprises an ethoxylate/alkoxylate of 4,4’-isopropylidenediphenol, in an amount of at least 10 weight percent; an ethoxylate/alkoxylate of 2,4’- and 2,2’-isopropylidenediphenol, in an amount of at least 5 weight percent; and an ethoxylate/alkoxylate of components which may be derived from phenol and/or acetone, in an amount of at least 10 weight percent (Column 4, Lines 15 – 29). It would then be reasonably expected that the active hydrogen initiators used to generate each of the ethoxylates must also be provided in substantially the same amounts such that the relative weight ratios would be achieved.
Regarding Claim 23. Nefzger teaches the process of Claim 14. As detailed in the rejection of Claim 14, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide ethylene oxide and propylene oxide in the sequence and relative amounts suggested by Lorenz to prepare the polyether polyol of Nefzger. Lorenz specifically teaches the concept of providing a polyether polyol with at least one En block and at least one Pn block. The at least one En block comprises more preferably at least 100% by weight of oxyethylene units, while the at least one Pn block comprises preferably at least 75% by weight of oxypropylene units. The inventive examples of Lorenz also provide blocks which consist of polymerized ethylene oxide and which consist of polymerized propylene oxide (see Examples 1 – 5). Thus, the provision of a first portion of alkylene oxide which consists of ethylene oxide and a second portion of alkylene oxide which consists of propylene oxide would be readily envisioned from the disclosure of Lorenz.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable US 10,253,134 to Nefzger et al. (hereinafter Nefzger) in view of US 2014/0243560 to Lorenz et al. (hereinafter Lorenz), as applied to Claim 14 above, and further in view of US 2015/0122150 to Ritz.
Regarding Claim 22. Nefzger teaches the process of Claim 14 may comprise adding to an autoclave at 80°C, i.e. a pre-heated reactor, a BPA resin and a catalyst (DMAE) (Column 12, Lines 51 – 55). The BPA resin includes components which may be derived from phenol and/or acetone (Column 4, Lines 15 – 29). The alkylene oxide (e.g. EO) is subsequently introduced and an alkoxylation reaction conducted (Column 12, Lines 62 – 67).
Nefzger does not expressly teach the BPA is provided to the reactor in a molten state. However, Ritz teaches the concept of preparing alkoxylated BPA in which the BPA is provided in a molten state [0008]. Nefzger and Ritz are analogous art as they are from the same field of endeavor, namely methods of making alkoxylated bisphenol A. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide BPA in a molten state to the reactor during the process of Nefzger. The motivation would have been that BPA in a molten state be expected to improve the flowability and processability of the resin, as well as expedite mixing with the subsequently added reactive components.
Terminal Disclaimer
The terminal disclaimer filed on February 4, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,104,006 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed February 4, 2025 have been fully considered. The Office responds as follows:
A) The Office agrees that the amendments to Claim 8 are sufficient to overcome the outstanding claim objection and rejection under 35 U.S.C. 112(b). Accordingly, the objection and rejection of Claim 8 under 35 U.S.C. 112(b) have been withdrawn.
B) The subject matter of Claims 9 and 10 have been incorporated into independent Claim 1. The subject matter of Claims 19 and 20 have been incorporated into independent Claim 14. With respect to the rejection of Claims 9, 10, 19, and 20 under 35 U.S.C. 103, applicant argues that Lorenz is not properly relied upon to teach this subject matter. Specifically, applicant argues that Lorenz’s disclosure in which an En block is metered in as an internal block does not mean that the polyether polyol necessarily has a propylene oxide end block. However, it remains the Office’s position that an embodiment in which an En block is metered in as an internal block and propylene oxide end block is readily envisioned from the reference.
In considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01) Lorenz teaches its polyether polyols preferably consist of En and Pn blocks. While Lorenz does not expressly teach the Pn blocks are end blocks, Lorenz does teach the En blocks may be provided “as internal blocks or as an end block” [0026]. The use of “or” would imply the En is provided as either as an internal block or as an end block. Thus, in an embodiments in which the internal block is En, it would appear from the reference disclosure that the end block must be a different than En. The only alternative to En expressly disclosed by Lorenz is Pn. It is consequently the Office’s position that the use of a Pn end block would by readily envisioned by a person of ordinary skill in the art when considering the disclosure of Lorenz.
C) Applicant additionally argues that, reading Nefzger and Lorenz as a whole, one of ordinary skill would have no motivation to produce a polyether polyol with a propylene oxide cap as both references express a preference for ethylene oxide caps.
However, preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123) Thus, while Nefzger and Lorenz may express a preference for an ethylene oxide cap, this does not constitute a teaching away from, or a lack of motivation for, other embodiments such as one in which a propylene oxide cap is provided.
D) In response to applicant's argument that the, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As, per the 103 rejections above, the combination of Nefzger and Lorenz suggests a polyether polyol prepared from the claimed H-functional starter composition and which has a propylene oxide external end cap, the advantages with respect to viscosity and reactivity profile would also be expected to flow naturally from their proposed combination.
E) The Office agrees that the concurrent filing of a terminal disclaimer is sufficient to obviate the outstanding obviousness-type double patenting rejection. Accordingly, the obviousness-type double patenting rejection over U.S. Patent No. 12,104,006 has been withdrawn.
F) Applicant argues that the subject matter of new Claims 21 – 23 is neither disclosed or suggested by the applied references. However, for the reasons detailed in the new grounds of rejection under 35 U.S.C. 103, it is the Office’s position that the subject matter of Claims 21 and 23 is rendered obvious by Nefzger in view of Lorenz. It is further the Office’s position that the subject matter of Claims 21 is rendered obvious by Nefzger in view of Lorenz and newly discovered US 2015/0122150 to Ritz.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764