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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 7, 2025 has been entered.
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, 12, 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) and CA 2 385 085 to Grosch et al. (hereinafter Grosch).
Regarding Claims 1, 5 – 8, 11, and 21. 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, Grosch teaches the concept of providing a polyether polyol with an inner block of ethylene oxide, i.e. an inner block of polymerized alkylene oxide moieties comprising 100% by weight oxyethylene units. Attached to this block is a block which is particular preferably propylene oxide, i.e. an external cap of polymerized alkylene oxide moieties comprising 100% by weight oxypropylene units (Page 5, Lines 5 – 15 and 36 – 41). Nefzger and Grosch 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 ethylene oxide and propylene oxide in the sequence and relative amounts suggested by Grosch to prepare the polyether polyol of Nefzger. The motivation would have been that this order of metering ethylene oxide and propylene oxide provides for the presence of ethylene oxide units to enhance the compatibility of the polyols with water and other polyurethane foam formulation ingredients, without making the polyol so hydrophilic that it become susceptible to gelling and causing other negative impacts to foam properties as when the ethylene oxide units are provided as an external cap.
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 and Grosch, 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).
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) and CA 2 385 085 to Grosch et al. (hereinafter Grosch).
Regarding Claims 14, 17, 18, and 23. 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 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, Grosch teaches the concept of providing a polyether polyol with an inner block of ethylene oxide, i.e. an inner block of polymerized alkylene oxide moieties comprising 100% by weight oxyethylene units. Attached to this block is a block which is particular preferably propylene oxide, i.e. an external cap of polymerized alkylene oxide moieties comprising 100% by weight oxypropylene units (Page 5, Lines 5 – 15 and 36 – 41). 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 Grosch to prepare the polyether polyol of Nefzger. The motivation would have been that this order of metering ethylene oxide and propylene oxide provides for the presence of ethylene oxide units to enhance the compatibility of the polyols with water and other polyurethane foam formulation ingredients, without making the polyol so hydrophilic that it become susceptible to gelling and causing other negative impacts to foam properties as when the ethylene oxide units are provided as an external cap.
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 and Grosch, 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.
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. and CA 2 385 085 to Grosch et al., 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 8, 11, 12, 14 – 18, and 21 – 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 18 of U.S. Patent No. 12,162,976 in view of US 2014/0243560 to Lorenz et al.
The claims of U.S. Patent No. 12,162,976 differ from the instant claims in that they do not set forth an alkoxylate of the diol is further provided in the polyether polyol. However, Lorenz also teaches the concept of preparing a polyether polyol using bisphenol A as a starter compound [0021]. Lorenz further teaches including up to 30 weight percent of a starter compounds having melting points lower than 40°C, such as a propylene glycol or ethylene glycol, in conjunction with a starter compound such as bisphenol A [0022]. 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 glycol or propylene glycol in the amount taught by Lorenz in conjunction with bisphenol A when preparing the polyether polyol set forth in the claims of U.S. Patent No. 12,162,976. 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].
Response to Arguments
Applicant’s arguments, as well as the concurrently filed 132 declaration in support of these arguments, have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, Lorenz is no longer relied upon teach the claim limitations regarding an inner block comprising ethylene oxide and an outer block comprising propylene oxide. CA 2 385 085 to Grosch et al. is now relied upon to teach this limitation.
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.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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