Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 18-28 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.
Regarding claims 18-28, the examiner has not found support for compositions having a quinazolinedione group produced in the absence of an aromatic isocyanate within the reactant mixture. According to paragraph [0041] of the specification, reaction of the aromatic isocyanate yields the claimed quinazolinedione.
4. Applicant’s response that paragraph [0041] supports that the quinazolinedione is produced in the presence of an isocyanate fails to address the issue raised by the examiner; as stated within the rejection, paragraph [0041] refers to the use of a predominantly aromatic isocyanate mixture, and the reaction scheme within paragraph [0041] specifies an aromatic isocyanate.
Prior Art Rejections
5. 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.
6. Claims 1, 2, 8-11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Younes (US Patent 4,757,123).
Younes discloses the production of polyisocyanurate fibrous composites, wherein polyisocyanates, including mixtures of MDI and p-MDI, which have functionalities greater than 2 (See column 3, lines 5+), are combined with trimerization catalysts, wherein amines such as triethylenediamine are disclosed (See column 3, line 57), to form a mixture, which is combined with a fibrous material in a mold, and reacted in a preheated mold at 82oC (See column 4, lines 6+ and Examples 2-5), though it is noted that the reaction may occur at temperatures as high as about 140oC (See Abstract). Regarding claim 10, the reaction occurs within 2 minutes or less (See column 3, lines 60 and 61) and given the production of highly crosslinked polyisocyanurates from relatively short chain isocyanates, one would have reasonably expected the composites to have glass transition temperatures in excess of that claimed. Regarding claim 11, internal mold release agents are disclosed within column 4, lines 27+. Regarding the limitation where the composite is substantially free of urethane groups, the reference discloses within Examples 2-5, the reaction of isocyanates in the absence of active hydrogen compounds; therefore, the compositions are substantially free of urethane groups.
7. Regarding the claim 1 limitation requiring the use of a mixture of aromatic and aliphatic isocyanates, though the reference fails to explicitly disclose such a mixture, it is noted that mixtures of the disclosed isocyanates, which include aromatic and aliphatic species, are disclosed within column 2, lines 49+. Accordingly, in view of this disclosure, the position is taken that it would have been obvious to use such mixtures to produce the polyisocyanurate. Furthermore, regarding claim 9, given the aforementioned disclosure pertaining to the use of mixtures of isocyanates and the disclosure within column 2, line 40 that toluene diisocyanate may be used, the position is taken that it would have been obvious to employ these polyisocyanates with the MDI species, so as to realize the benefits of using these additional reactants.
8. Claims 1-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over EP 294768 A1 in view of Younes (US Patent 4,757,123).
EP 294768 A1 discloses the production of polyisocyanurate fibrous composites, wherein polyisocyanates, including mixtures of MDI and p-MDI, which have functionalities greater than 2 (See page 6, lines 25+), are combined with trimerization catalysts to form a mixture, which is combined with a fibrous material in a mold, and reacted at 85oC to 120oC for 0.5 to 4 minutes (See page 7, lines 24-32). Regarding the limitation where the composite is substantially free of urethane groups, the reference discloses within page 5, lines 47 and 48 that the polyisocyanates may be trimerized alone to produce a resin having only isocyanurate linkages. Regarding claims 3, 4, 6, 12-14, and 16, within page 7, lines 10 and 11, epoxide trimerization catalysts are disclosed, and within page 7, lines 12-15, catalyst quantities are disclosed that are considered to render the claimed quantities prima facie obvious. Regarding claim 11, internal mold release agents are disclosed within page 7, line 40.
9. Regarding the claim 1 limitation requiring the use of a mixture of aromatic and aliphatic isocyanates, the primary reference fails to explicitly disclose such a mixture; however, the primary reference teaches within page 5, lines 44-46 that any prior art polyisocyanurate resin forming system can be employed. Given this teaching, its noted that Younes disclose mixtures of the disclosed isocyanates to produce polyisocyanurates, which isocyanates include aromatic and aliphatic species, within column 2, lines 49+. Accordingly, in view of this disclosure, the position is taken that it would have been obvious to use such mixtures to produce the polyisocyanurate of the primary reference. Regarding claim 7, the position is taken that once trimerization was under way with respect to the blend of aromatic and aliphatic isocyanate species, polymerization in the presence of the claimed species, such as aliphatic trimers, would have implicitly occurred. Regarding claim 9, given the aforementioned disclosure pertaining to the use of mixtures of isocyanates and the disclosure within column 2, line 40 of Younes that toluene diisocyanate may be used, the position is taken that it would have been obvious to employ these polyisocyanates with the MDI species, so as to realize the benefits of using these additional reactants. Regarding the claimed use of triethylene diamine of claims 10 and 17, though the primary reference discloses tertiary amine trimerization catalyst, the reference fails to disclose triethylene diamine; however, triethylene diamine is disclosed within column 3, line 57 of the secondary reference as being a suitable catalyst component. Accordingly, the position is taken that it would have been obvious to use this compound as the tertiary amine catalyst of the primary reference. Regarding the glass transition temperature of claims 5 and 10, given the production of highly crosslinked polyisocyanurates from relatively short chain isocyanates, one would have reasonably expected the composites to have glass transition temperatures in excess of that claimed.
10. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over EP 294768 A1 in view of Younes (US Patent 4,757,123) and further in view of Jonas (US 5,053,274) or Burkus (US 2,979,485).
EP 294768 A1 discloses the production of polyisocyanurate fibrous composites, wherein polyisocyanates, including mixtures of MDI and p-MDI, which have functionalities greater than 2 (See page 6, lines 25+), are combined with trimerization catalysts to form a mixture, which is combined with a fibrous material in a mold, and reacted at 85oC to 120oC for 0.5 to 4 minutes (See page 7, lines 24-32). Regarding the limitation where the composite is substantially free of urethane groups, the reference discloses within page 5, lines 47 and 48 that the polyisocyanates may be trimerized alone to produce a resin having only isocyanurate linkages. Within page 7, line 7, tertiary amine trimerization catalysts are disclosed, and within page 7, lines 10 and 11, epoxide trimerization catalysts are disclosed.
11. Regarding the claim 1 limitation requiring the use of a mixture of aromatic and aliphatic isocyanates, the primary reference fails to explicitly disclose such a mixture; however, the primary reference teaches within page 5, lines 44-46 that any prior art polyisocyanurate resin forming system can be employed. Given this teaching, its noted that Younes disclose mixtures of the disclosed isocyanates to produce polyisocyanurates, which isocyanates include aromatic and aliphatic species, within column 2, lines 49+. Accordingly, in view of this disclosure, the position is taken that it would have been obvious to use such mixtures to produce the polyisocyanurate of the primary reference. Regarding the claimed use of triethylene diamine, though the primary reference discloses tertiary amine trimerization catalyst, the reference fails to disclose triethylene diamine; however, triethylene diamine is disclosed within column 3, line 57 of the secondary reference as being a suitable catalyst component. Bearing this in mind, the primary and secondary references fail to disclose the combined use of the epoxide catalyst and triethylene diamine; however, the use of epoxy compounds with tertiary amines as trimerization catalysts was known at the time of invention as evidenced by the disclosure within column 13, lines 18 and 19 of Jonas and column 1, lines 25+ and column 2 within Burkus. Accordingly, given the disclosed advantages of fast reaction time under mild reaction conditions resulting from employing epoxy compounds with tertiary amines as trimerization catalysts for polyisocyanates, the position is taken that it would have been obvious to employ this catalyst system employing epoxide and triethylene diamine within the reaction composition of the primary reference.
12. Applicant’s arguments have been considered; however, they are insufficient to overcome the prior art rejections. Firstly, there is no prohibition with respect to the application of proper new rejections after the filing of an RCE, even without amendment of the claims. The filing of the RCE reopens prosecution. Secondly, the newly applied references are not merely cumulative to the prior relied upon references, as is apparent from a comparison of the now withdrawn prior art rejections in view of the previously relied upon prior art and the instant rejections. Accordingly, applicant’s assertion that the present rejections are improper is entirely without merit. Lastly, applicant’s response in no way serves to address the merits of the instant prior art rejections; accordingly, there is nothing on the record to justify removal of the these prior art rejections.
Conclusion
13. THIS ACTION IS MADE FINAL. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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