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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2026 has been entered.
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 requirement was found proper and is therefore made FINAL as cited in Office Action file dated 02/03/2026.
Claims 46-52 and 54-56, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 29-45 and 53 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 29 recites in line 45-56, “wherein Rb and Re together with the carbon atoms to which they are bonded, or…Rf and Rg together with the carbon atoms to which they are bonded…form a…5- to 30-membered carbocyclic ring…” However, Claim 34, recites secondary amines for formula (B), that do not have Rb to Rg form a carbocyclic ring. For example, “N1,N3-diisopropyl-4-methylcycloehxane-1,3-diamine,” has the formula
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, which does NOT meet wherein Rb, Rc, Rd, Re, Rf, and/or Rg together form a carbocyclic ring. Thus, it is unclear whether the limitation of wherein Rb, Rc, Rd, Re, Rf, and/or Rg together form a carbocyclic ring, is a requirement or merely optional.
Claims 30-45 and 53, are dependent claims which fail to alleviate the issues above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 32 and 34 are rejected 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.
Claim 32, line 6, after “30-membered heteroaryl…” does not contain the phrase “; wherein,” before the limitation of “Rb and R2 together…form a…carbocyclic ring…” as in Claim 29. This appears to make the limitation optional and thus, fails to further limit claim 29, which requires the carbocyclic ring.
Claim 34, recites “wherein the secondary amine of formula (B) is selected from the group consisting of…” However, the list of claim 34 contains numerous secondary amines which do not meet formula (B) of claim 29 and thus, broadens the claim to other secondary amines. For example, “N1,N3-diisopropyl-4-methylcycloehxane-1,3-diamine,” has the formula
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, which does NOT meet wherein Rb, Rc, Rd, Re, Rf, and/or Rg together form a carbocyclic ring. For the reasons above, claim 34 fails to further limit claim 29.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Amendment
The previous rejection of Claim(s) 29-33, 35-45, and 53, 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 is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 29-33, 35-45 and 53 under 35 U.S.C. 102(a)(1) as being anticipated by US 4,663,201 A to House et al. (hereinafter House). is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 29-33, 35-45 and 53, under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0115351 A1 to Iezzi. (hereinafter Iezzi). is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 29-45 and 53, under 35 U.S.C. 102(a)(1) as being anticipated by US 2002/0166630 A1 to Bonilla. (hereinafter Bonilla) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 29-45 and 53, under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0009933 A1 to Cheng et al. (hereinafter Cheng) is/are withdrawn in light of the Applicant’s amendments.
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, independently C5-C30 cycloalkyl, C5-C30 cycloalkenyl, or a 5-30 member heteroaryl group, 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 or 1,4-diazacycloheptane (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), wherein Rc to Rg are independently a C5-C30 cycloalkyl group or hetercycloalkyl group (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) 34, 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 34, 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) N-sec-butyl-4-[[4-(sec-butylamino)phenyl]methyl]aniline cited in claim 34.
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) 34, 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 34 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) N-sec-butyl-4-[[4-(sec-butylamino)phenyl]methyl]aniline cited in claim 34.
Claim(s) 34, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0115351 A1 to Iezzi. (hereinafter Iezzi).
Regarding claim 34, 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 N-isopropyl-3-((isopropylamino)methyl)-3,5,5-trimethylcyclohexanamine formula (B) cited in claim 34.
Response to Arguments
Applicant's arguments filed 07/01/2026 have been fully considered but they are not persuasive in part.
On page 11-12, regarding the above double patenting rejections, the Applicant argues that they do not teach wherein 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 for Formula (B). This is not persuasive because, as cited and incorporated herein, App. No. 17/784,132 teaches wherein Ra, and Rb, independently C5-C30 cycloalkyl, C5-C30 cycloalkenyl, or a 5-30 member heteroaryl group, App. No. 18/280,690 teaches wherein the secondary amine is N1,N3-Diisopropyl-4-methylcyclohexane-1,3-diamine or 1,4-diazacycloheptane (claim 23), which meets claim 34, and App. No. 19/129,700 teaches wherein Rc to Rg are cycloalkyl groups.
On page 13-18, the Applicant argues that claim 29 requires “Rb, Rc, Rd, Re, Rf and Rg” together to form the carbocyclic ring. The arguments are found to be persuasive in part, however, claim 34 recites a list of secondary amines that do NOT meet formula (B) which the above art teaches and thus, the arguments for claim 34 are found unpersuasive. Claim 34 also causes the indefinite and failure to limit 112 rejections as cited above and incorporated herein.
Conclusion
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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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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