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 .
Notification Regarding Election of Species
2. Search and examination of the instant application has not been extended beyond applicants’ elected species, as the elected species have not been found patentable.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 25, 27-32, 34-38, 40, 42, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Posey et al. (US 2007/0208156 A1).
Posey et al. disclose polyurea polymer comprising the reaction product of polyisocyanates that correspond to those claimed (see paragraphs [0009] through [0011]), including polyisocyanates having the claimed functionalities, with a secondary polyetheramine, wherein the secondary polyetheramine may contain secondary amine terminal groups further having a hydroxyl group, corresponding to those claimed by applicants. Within paragraph [0013], the definitions of X, R1, R2, and Z are such that applicants’ secondary amine groups further having a hydroxyl group are disclosed. Furthermore, within paragraph [0017], it is disclosed that the polyetheramine may be derived from such amines as Jeffamines, which would further yield the instantly claimed structures. Though the reference is silent regarding applicants’ limitation that the polyurea copolymer is thermally reshapable, in view of the disclosures of the disclosed polyisocyanates and polyetheramines, having structures comparable to the instantly claimed isocyanate reactive component and having the claimed secondary amine and hydroxyl functionality, one would have reasonably expected the disclosed products of these reactants to intrinsically possess the same properties, such as thermal reshapability, as the instant copolymer.
5. Though polyetheramines having structures other than those claimed are disclosed, the position is taken that it would have been obvious to employ virtually any of the disclosed polyetheramines to produce polyureas with the reasonable expectation of success; the skilled artisan would have expected the use of any of the polyetheramines to yield viable products and polymers. Regarding claims 35 and 36, in view of the disclosure of the use of relatively high molecular weight Jeffamines, one would have reasonably expected the use of such reactants to yield molecular weights within the claimed ranges. Regarding claim 37, since the polyisocyanates and polyetheramines encompass those claimed, one would have reasonably expected the disclosed polyureas to possess the claimed glass transition temperatures. Regarding, the molar ratio of NCO groups to NH groups of claims 25, 38, and 40, given the breadth of the ranges and the understanding within the isocyanate chemistry art, one would have been motivated to utilize ratios of groups that promote complete reaction of the respective functional groups, which would have been expected to fall within the clamed ranges. Regarding claim 42, given the breadth of the claimed reaction temperature range and the rapid reaction of amine groups with isocyanate groups, the utilization of reaction temperatures that fall within the claimed range would have been obvious. Reaction of such groups under ambient conditions would have been reasonably expected.
6. Claims 25, 27-30, 35-38, 40, and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Burckhardt (US 2013/0237681 A1).
Burckhardt discloses polyurea polymer comprising the reaction product of polyisocyanates that correspond to those claimed (see paragraphs [0128], [0132], [0185]+, and [0234]), including polyisocyanates having the claimed functionalities, with a secondary polyetheramine, wherein the secondary polyetheramine may contain secondary amine terminal groups further having a hydroxyl group, corresponding to those claimed by applicants (see Formula (I) within paragraphs [0012]-[0015]. Furthermore, within paragraphs [0068], [0069], and [0079], it is disclosed that the polyetheramine may be derived from such amines as Jeffamines, which would further yield the instantly claimed structures. Regarding claims 42-44, the use of reaction temperatures and solvents corresponding to those clamed are disclosed within paragraphs [0237] and [0218]. Though the reference is silent regarding applicants’ limitation that the polyurea copolymer is thermally reshapable, in view of the disclosures of the disclosed polyisocyanates and polyetheramines, having structures comparable to the instantly claimed isocyanate reactive component and having the claimed secondary amine and hydroxyl functionality, one would have reasonably expected the disclosed products of these reactants to intrinsically possess the same properties, such as thermal reshapability, as the instant copolymer.
7. Though polyetheramines having structures other than those claimed are disclosed, the position is taken that it would have been obvious to employ virtually any of the disclosed polyetheramines to produce polyureas with the reasonable expectation of success; the skilled artisan would have expected the use of any of the polyetheramines to yield viable products and polymers. Regarding claims 35 and 36, in view of the disclosure of the use of relatively high molecular weight Jeffamines, one would have reasonably expected the use of such reactants to yield molecular weights within the claimed ranges. Regarding claim 37, since the polyisocyanates and polyetheramines encompass those claimed, one would have reasonably expected the disclosed polyureas to possess the claimed glass transition temperatures. Regarding, the molar ratio of NCO groups to NH groups of claims 25, 38, and 40, given the breadth of the ranges and the understanding within the isocyanate chemistry art, one would have been motivated to utilize ratios of groups that promote complete reaction of the respective functional groups, which would have been expected to fall within the clamed ranges.
8. Applicants' response of 27 March 2026 has been carefully considered; however, it is insufficient to overcome the prior art rejections. Applicants have argued that the prior art is silent regarding the reaction of a secondary amine and a polyisocyanate as described in claim 1, and further argue that the prior art is silent regarding the clamed isocyanate functionality range or the reshapability of the materials obtained. In response, firstly, the examiner assumes that applicants’ reference to claim 1 is misplaced, since claim 1 has been cancelled. Furthermore, the examiner is at a loss to understand applicants’ remark that the prior art is silent regarding the disclosure of the polyisocyanates having the claimed functionalities. As previously referenced within the bodies of the rejections, Posey et al. disclose these polyisocyanates within paragraphs [0009]-[0011], and Burckhardt discloses these polyisocyanates within paragraphs [0185]-[0196]. It is also noted, as previously addressed in the bodies of the rejections, that the prior art discloses secondary amines. Regarding the argued reshapability limitation, the examiner has previously explained within the bodies of the rejections why one would have reasonably expected the polymers (aforementioned products) to possess this property. Applicants have stated that this property is not an inherent feature and can only be achieved by the specific selection of the starting materials according to the present invention. In response, the position is maintained that the examiner has set forth reasonable rationale to address the products of the prior art having the property to the extent claimed. Therefore, the burden has been shifted to applicants to factually explain or demonstrate that the prior art products lack the property. Applicants’ response sans such factual explanation or demonstration is therefore insufficient to establish the products of the prior art lack the property; accordingly, the rejections have been maintained.
Allowable Subject Matter
9. Claims 33 and 46-48, as they relate to the examined species, are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
10. 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.
11. 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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