, 12-22DETAILED 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 .
Election/Restriction
Applicant's election with traverse of Group I, claim(s) 29-45 and 53, and the species of N1,N3-Diisopropyl-4-methylcyclohexane-1,3-diamine for the secondary amine, and polymeric methylene diphenyl isocyanate for the isocyanate mixture, in the reply filed on 08/18/2025 is acknowledged. The traversal is on the ground(s) that the claims share the special technical feature of the polyurea copolymer and thus, have unity of invention. This is not found persuasive because, as cited in the restriction file dated 06/17/2025, the polyurea copolymer not a special technical feature as it does not make a contribution over the prior art in view of
US 5,223,551 A to Gattuso et al. (hereinafter Gattuso) as cited in IDS file dated 06/29/2022. Gattuso teaches a polyurethane foam obtained by reacting a polymeric methylene diphenyl diisocyanate (PAPI 27), having an average NCO functionality of 2.7, with N,N’-di-sec-butyl-4,4’-methylene dianiline (Unilink 4200), (Example 1, col 6, ln 20-68, Table 1). The above polyurethane meets the claimed polyurea copolymer, the above PAPI 27 meets the claimed isocyanate mixture A, and the above Unilink 4200 has the formula
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which meets the claimed formula (B). Thus, the shared technical feature of the polyurea copolymer is not a special technical feature because as it does not make a contribution over the prior art since it is already known and evidence above by Gattuso.
The requirement is still deemed proper and is therefore made FINAL.
Claims 46-52 and 54-56, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/18/2025.
Response to Amendment
The previous objection of Claim 38 because of informalities is/are withdrawn in light of the Applicant’s amendments.
The previous rejections are maintained.
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 29-33, 35-45, and 53, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25, 27-37 and 45 of copending Application No. 17/784,132 (App. No. 17/784,132).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 17/784,132 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 29-33, 35-45, and 53, App. No. 17/784,132 teaches a polyurea copolymer obtained by reacting polyisocyanate (A) with an NCO functionality of 2.0 to 6.0, and a compound of formula (B1)
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, wherein Ra, and Rb, are linear C1-C30 alkyl and R1 to R3 are hydrogen or isopropyl, and n is 1-1000, the molar ratio of NCO to NH is 1.0:10 to 10:1.0, (claim 25), the polyisocyanate is a polymeric form of diisocyanate (claim 27).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 29-42 and 53, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-31 of copending Application No. 18/280,690 (App. No. 18/280,690).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/280,690 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 29-42 and 53, App. No. 18/280,690 teaches reacting a secondary amine of formula (B) with a polyurea (A) to forma reaction product and then reacting the reaction product with a polyisocyanate component having an average NCO functionality of 2.0 to 6.0 (claims 18-19), wherein the polyisocyanate is a polymeric form of diisocyanate (claim 20-22), and the secondary amine is N1,N3-Diisopropyl-4-methylcyclohexane-1,3-diamine (claim 23), the molar ratio of NCO to -NH- is 1.0:10 to 10:1.0 (claims 24-26), and a copolymer and article obtained thereof above (claim 30-31).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 29-39, and 53, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-34 of copending Application No. 19/129,700 (App. No. 19/129,700).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 19/129,700 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 29-39, and 53, App. No. 19/129,700 teaches a poly(urea-urethane) polymer obtained by reacting at least one isocyanate, a polyol and a secondary amine having formula (I), (claims 18-27), wherein the isocyanate is pMDI and mMDI mixture (claim 28), and article thereof. (claim 33).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 29-45, and 53, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,223,551 A to Gattuso et al. (hereinafter Gattuso) as cited in IDS file dated 06/29/2022.
Regarding claims 29-45, and 53, Gattuso teaches a polyurethane foam obtained by reacting a polymeric methylene diphenyl diisocyanate (PAPI 27), having an average NCO functionality of 2.7, with N,N’-di-sec-butyl-4,4’-methylene dianiline (Unilink 4200), in an NCO/NH2 ratio of 5 (Example 1, col 6, ln 20-68, Table 1), or an NCO/NH ratio of 1-9 (col 5, ln 8-11). The above polyurethane meets the claimed polyurea copolymer, the above PAPI 27 meets the claimed isocyanate mixture A of trifunctional and difunctional polymeric MDI, and the above Unilink 4200 has the formula
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which meets the claimed formula (B).
Regarding the claimed average molecular weight, one skilled in the art would have a reasonable expectation for the polyurea of Gattuso to have the claimed Mw properties of the claimed invention because Gattuso teaches a substantially identical polyurea to the claimed invention obtained by a substantially identical process such as reacting pMDI with N,N’-di-sec-butyl-4,4’-methylene dianiline in about a 5:1 equivalent ratio of isocyanate to amine group, which is within the Applicant’s claimed range, and the Applicant further teaches that the properties are dependent upon the NCO/NH ratios. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 29-45 and 53, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,663,201 A to House et al. (hereinafter House).
Regarding claims 29-45 and 53, House teaches a polyurea coating formed by reacting a polymeric hexamethylene diisocyanate (Desmodur N-100), i.e. trifunctional HDI biuret with residual monomeric HDI, with N,N’-di(2-butyl)-4,4’-methylenedianiline (Unilink 450), in an NCO/NH2 ratio of 0.9, 1.0, or 1.1. (Examples 1-3, col 6, ln 5-40, Table 1). The above polyurea meets the claimed polyurea copolymer, the above Desmodur N-100 with HDI biuret and residual monomeric HDI meets the claimed isocyanate mixture A of trifunctional and difunctional polymeric HDI, and the above Unilink 450 has the formula
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which meets the claimed formula (B).
Regarding the claimed average molecular weight, one skilled in the art would have a reasonable expectation for the polyurea of House to have the claimed Mw properties of the claimed invention because House teaches a substantially identical polyurea to the claimed invention obtained by a substantially identical process such as reacting Desmodur N-100 with N,N’-di(2-butyl)-4,4’-methylenedianiline (Unilink 450), in an NCO/NH2 ratio of 1.0, or 1.1, and Applicant further teaches in the examples with about a 1:1 NCO:NH molar ratio and that the properties are dependent upon the NCO/NH ratio. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 29-45 and 53, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0115351 A1 to Iezzi. (hereinafter Iezzi).
Regarding claims 29-45 and 53, Iezzi teaches a polyurea formed by reacting 0.446 eq of a polymeric hexamethylene diisocyanate with an isocyanurate trimer structure with 0.147 eq of N-isopropyl-3-((isopropylamino)methyl)-3,5,5-trimethylcyclohexanamine, and N-butyl-3-aminopropyltrimethoxysilane, (para 75), which correlates to an NCO/NH2 ratio of 0.149/0.0735 or about 2. The above polyurea meets the claimed polyurea copolymer, the above HDI trimer meets the claimed isocyanate mixture A of trifunctional polymeric HDI, and the above N-isopropyl-3-((isopropylamino)methyl)-3,5,5-trimethylcyclohexanamine has the formula
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(page 5), which meets the claimed formula (B).
Regarding the claimed average molecular weight, one skilled in the art would have a reasonable expectation for the polyurea of Iezzi to have the claimed Mw properties of the claimed invention because Iezzi teaches a substantially identical polyurea to the claimed invention obtained by a substantially identical process such as reacting HDI trimer with N-isopropyl-3-((isopropylamino)methyl)-3,5,5-trimethylcyclohexanamine in an NCO/NH2 ratio of about 2, which is within the Applicant’s claimed range, and the Applicant further teaches that the properties are dependent upon the NCO/NH ratios. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 29-45 and 53, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2002/0166630 A1 to Bonilla. (hereinafter Bonilla).
Regarding claims 29-45 and 53, Bonilla teaches a polymer composition formed by reacting a polyisocyanate component of a mixture of HDI100 and XP7100, which is mixture of polymeric difunctional and trifunctional polymeric hexamethylene diisocyanate (HDI), (para 50), with an isocyanate reactive mixture of Desmophen NH1200 and cyclohexanamine,4,4’-methylenebis[N-(1-methylpropyl) (Clearlink 1000), (See Table 1-2, and para 50-53), in an 1:1 equivalent ratio of isocyanate to isocyanate reactive group (para 5). The above polymer composition meets the claimed polyurea copolymer, the above HDI trimer/dimer mixture meets the claimed isocyanate mixture A, and the above N-isopropyl-3-((isopropylamino)methyl)-3,5,5-trimethylcyclohexanamine has the formula
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, which meets the claimed formula (B).
Regarding the claimed average molecular weight, one skilled in the art would have a reasonable expectation for the polymer composition of Bonilla to have the claimed Mw properties of the claimed invention because Bonilla teaches a substantially identical polyurea to the claimed invention obtained by a substantially identical process such as reacting HDI trimer/dimer mixture with N-isopropyl-3-((isopropylamino)methyl)-3,5,5-trimethylcyclohexanamine in an NCO/NH2 ratio of about 1, which is within the Applicant’s claimed range, and the Applicant further teaches that the properties are dependent upon the NCO/NH ratios. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 29-45 and 53, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0009933 A1 to Cheng et al. (hereinafter Cheng).
Regarding claims 29-45 and 53, Cheng teaches a polyurea formed by reacting a polyisocyanate component of a polyHDI trimer, Desmour-3900, with N,N’-di-tert-butylethylenediamine in about a 1:1 equivalent ratio of isocyanate to amine group (0.516/0.544), (para 165) as shown in Fig. 3A
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. The above polyurea meets the claimed polyurea copolymer, the above HDI trimer meets the claimed isocyanate mixture A, and the above N,N’-di-tert-butylethylenediamine meets the claimed formula (B).
Regarding the claimed average molecular weight, one skilled in the art would have a reasonable expectation for the polyurea of Cheng to have the claimed Mw properties of the claimed invention because Cheng teaches a substantially identical polyurea to the claimed invention obtained by a substantially identical process such as reacting HDI trimer mixture with N,N’-di-tert-butylethylenediamine in about a 1:1 equivalent ratio of isocyanate to amine group, which is within the Applicant’s claimed range, and the Applicant further teaches that the properties are dependent upon the NCO/NH ratios. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
The Applicant argues that Formula (B) in Claim 29 requires that Rb and Re, Rc and Rf, Rc and Rd…etc., together with the carbons to which they are bonded form…a 5-30 membered carbocyclic ring. This is not persuasive because in Claim 29 after the “Rb, Rc, Rd, Re, Rf and Rg” can “hydrogen...C1-C30 alkyl…” and further uses the conjunction “or,” which causes the “carbocyclic ring” to be an optional component. This is further exemplified by dependent claim 34, which specifically states secondary amines that have formula (B) include N1,N3-Diisopropyl-4-methylcyclohexane-1,3-diamine, which was also elected by the Applicant. This shows that isopropyl groups and hydrogen as the “Rb, Rc, Rd, Re, Rf and Rg,” and further exemplifies that “Rb, Rc, Rd, Re, Rf and Rg” together as a carbocyclic ring is an optional component.
Furthermore, if Claim 29 “required” for “Rb, Rc, Rd, Re, Rf and Rg” together to form the carbocyclic ring, then this would result in a rejection of claim 34 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
It appears that the Applicant desires to “require” for “Rb, Rc, Rd, Re, Rf and Rg” together to form the carbocyclic ring. The examiner suggest amending claim 29 to include “and wherein the Rb and Re together…or the Rc and Rf together…or the Rd and Rg…etc.,” and deleting the non-carbocyclic compounds in claim 34.
On page 11-12, the Applicant argues that App. No. 17/784,132, does not teach the requirement of Rb and Re, Rc and Rf, Rc and Rd…etc., together with the carbons to which they are bonded form…a 5-30 membered carbocyclic ring. This is not persuasive for the reasons addressed above and incorporated herein.
On page 12, the Applicant argues App. No. 18/280,690 does not teach the same polyurea because additionally uses a polyurethane/polyurea to react with the secondary amine and polyisocyanate. This is not persuasive because Applicant’s claim 29 states “comprising” which is inclusive and allows for additional components in the copolymer.
In response to applicant’s request to address the double patenting rejection of App. No. 19/129,700, following an indication that claims are allowable, i.e. hold in abeyance a response, it is noted that the Applicant’s request is not a complete response. (See MPEP 804(I)(B)(1)). MPEP 804(I)(B)(1) states a complete response to a nonstatutory patent rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer…” MPEP 804(I)(B)(1) also states, “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
On page 13-17, the Applicant argues that the prior art of Gattuso, House, Iezzi, Bonilla, and Cheng, does not teach the requirement of Rb and Re, Rc and Rf, Rc and Rd…etc., together with the carbons to which they are bonded form…a 5-30 membered carbocyclic ring. This is not persuasive for the reasons addressed above and incorporated herein.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766