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 .
Claim Objections
Claim 17 is objected to because of the following informalities: it is suggested the claim be amended to recite “the hydroxyl…is not part of a carboxylic acid group
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 4, 10, 11, and 17 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 because:
Based on the amendment to independent Claim 1, there is now a lack of antecedent basis for “the” hydroxyl-containing polyether set forth in Claims 4 and 17, as well as “the” hydroxyl of the hydroxyl-containing polyether in Claim 17. Independent Claim 1 no longer sets forth a hydroxyl-containing polyether and the only polyether recited has terminal –O-M+ moieties, not hydroxyl groups. For the purposes of further examination, this phrase in Claim 4 will be interpreted as simply referring to “the polyether”. Claim 17 will be interpreted as setting forth the terminal –O-M+ moiety of the polyether is not based on a carboxylic acid group.
Based on the amendment to independent Claim 1, there is now a lack of antecedent basis for “the” low molecular weight ethylenically unsaturated monomers set forth in Claims 10 and 11. It is unclear to which of the initially recited one or more low molecular weight ethylenically unsaturated monomers this phrase refers. For the purposes of further examination, this phrase in the aforementioned claims will be interpreted as referring to said one or more low molecular weight ethylenically unsaturated monomers.
Claim Rejections - 35 USC § 103
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.
Claims 1 – 6, 10 – 13, and 15 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0274952 to Borella et al. (hereinafter Borella) in view of CN 109836538 to Li. For the purposes of examination, citations for Li are taken from the machine translation of the document filed by applicant on January 20, 2022.
Regarding Claims 1, 15, and 16. Borella teaches a process for making a polymer polyol comprising producing a polyether in the presence of potassium hydroxide [0069], i.e. an alkali metal hydroxide which is the same alkoxide polymerization catalyst used in Example 1 of the instant specification. The method in Borella will consequently result in the production of a polyether having terminal –O-M+ moieties in which M is the alkali metal potassium.
The polyether is then combined with a capping agent, wherein the capping agent may be an ethylenically unsaturated epoxide compound [0022] – [0023]. The polyether having terminal –O-M+ moieties reacts with said capping agent to produce a capped polyether ([0022] – [0023] and [0069]). This capped polyether is subsequently used as a macromer stabilizer in the disclosed method [0011].
Borella further teaches the method comprises polymerizing one or more low molecular weight ethylenically unsaturated monomers having a molecular weight of no greater than 150 g/mol in a continuous liquid polyol phase in the presence of 1.5 to 15% of said stabilizer, based on the weight of the one or more low molecular weight ethylenically unsaturated monomers. Said polymerization forms a dispersion of solid polymer particles in the continuous liquid polyol phase [0011].
Borella does not expressly teach said ethylenically unsaturated epoxide compound comprises isopropenyl benzyl glycidyl ether and/or vinyl benzyl glycidyl ether. However, Li teaches the concept of using p-vinyl phenyl glycidyl ether, which is alternatively known in the art as p-vinyl benzyl glycidyl ether, as a capping agent for macromonomeric polyol stabilizers [0080]. Borella and Li are analogous art as they are from the same field of endeavor, namely process of making polymer 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 p-vinyl benzyl glycidyl ether as the ethylenically unsaturated epoxide capping agent in Borella. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Li shows that p-vinyl benzyl glycidyl ether is known in the art as an ethylenically unsaturated epoxide capping agent for macromonomeric polyols to be used as stabilizers for polymer polyols [0080].
Regarding Claims 2 – 3. Borella teaches the process of Claim 1 wherein the macromer may constitute 100 weight percent of the stabilizer [0032].
Regarding Claim 4. Borella teaches the process of Claim 1 wherein the polyether is a random copolymer of a mixture of 84 to 90 weight percent propylene oxide and 10 to 16% ethylene oxide [0021].
Regarding Claim 5. Borella teaches the process of Claim 1 wherein the macromer has a molecular weight in the range of 8,000 to 15,000 g/mol [0021].
Regarding Claim 6. Borella teaches the process of Claim 1 wherein the macromer has more preferably 4 to 5 hydroxyl groups and 1 to 1.5 polymerizable carbon-carbon double bonds per molecule [0019] – [0020].
Regarding Claims 10 and 11. Borella teaches the process of Claim 1 wherein the one or more low molecular weight ethylenically unsaturated monomers include styrene and acrylonitrile at a weight ratio of 90:10 to 50:50 [0034].
Regarding Claim 12. Borella teaches a polymer polyol prepared by the process of Claim 1 ([0011] and [0022] – [0033])
Regarding Claim 13. Borella teaches a polyurethane foam produced by reacting the polymer polyol of Claim 12 with an organic isocyanate in the presence of a blowing agent ([0053], [0054], and [0060]).
Regarding Claim 17. Borella teaches the process of Claim 1 wherein the polyether used in the inventive examples is a sorbitol-initiated poly(propylene oxide) polyether [0069], i.e. a hydroxyl-containing polyether in which the hydroxyl is not part of carboxylic acid. As such, the terminal –O-M+ moiety of the polyether when combined with potassium hydroxide will not be based on a carboxylic acid group.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered. The Office responds as follows:
A) The Office agrees that the amendments to Claims 1 and 5 are sufficient to overcome the outstanding objections thereto. Accordingly, the outstanding claim objections have been withdrawn.
B) The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections under 35 U.S.C. 112(b). Accordingly, all outstanding rejections under 35 U.S.C. 112(b) have been withdrawn. However, in light of the amendments to Claim 1, two new rejections under 35 U.S.C. 112(b) are set forth with respect to antecedent basis issues in Claims 4, 10, 11, and 17.
C) Applicant’s arguments that Li does not disclose a process comprising the newly claimed step of producing a polyether having a terminal –O-M+ moiety are persuasive. Accordingly, all rejections under 35 U.S.C. 102(a)(1) in view of Li have been withdrawn.
D) With respect to the rejection of Claims 1 – 6, 10 – 13, and 15 -17 as being unpatentable over Borella and Li, applicant argues that Borella fails to teach or suggest using an alkali metal hydroxide or alkoxide catalyst to generate terminal –O-M+ moieties suitable for direct capping. However, the Office respectfully submits that the “first route” of preparing the macromer in Borella described by applicant on Page 10 of the remarks is reasonably considered to teach this newly claimed method step.
Specifically, Borella teaches producing a polyether in the presence of potassium hydroxide [0069], i.e. an alkali metal hydroxide which is the same alkoxide polymerization catalyst used in Example 1 of the instant specification. The method in Borella will consequently produce a polyether having terminal –O-M+ moieties in which M is the alkali metal potassium. The polyether is then combined with a capping agent which may be an ethylenically unsaturated epoxide compound [0022] – [0023], i.e. the terminal –O-M+ moieties of the polyethers are suitable for direct capping.
E) In response to applicant’s argument that the capping reaction in Borella occurs between the hydroxyl group of the polyether and a capping agent such as TMI, Borella also teaches the ethylenically unsaturated epoxide compounds as suitable alternatives to TMI. The purposes of the capping agent is to introduce unsaturation to the terminals of the polyether [0023]. A person of ordinary skill in the art would also readily recognize that both isocyanate groups and epoxide groups are highly reactive with oxygen containing groups, e.g. alkoxide salts and alcohols. Thus, substitution of an ethylenically unsaturated epoxide compound for TMI would be expected to result in the reaction of the epoxide group with the alkoxide –O-M+- terminal group of the polyether, such that a polyether having terminal unsaturation is provided.
F) In response to applicant’s argument that Li fails to cure the deficiencies of Borella, the alleged deficiencies have been addressed above. The Office further submits Li is not relied upon to teach the particular –O-M+- alkoxide-moiety capping reaction, which is taught by Borella. Instead, Li is relied upon to teach a suitable ethylenically unsaturated epoxide compound which can be used to cap macromeric polyether stabilizers for polymer polyols. The Office maintains that there is a reasonable expectation of success in their combination, as Borella already teaches ethylenically unsaturated epoxide compounds may be used as capping agents and Li simply describes a suitable species thereof. It has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07.
G) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
H) Applicant additionally argues that the instant specification demonstrates advantages and unexpected results over the prior art. Applicant cites [0026] of the instant specification, which describes such advantages. However, these advantages would also be expected to be achieved by Borella, which does not exclusively rely on neutral hydroxyl chemistry but does teach the in-situ capping of alkali-metal terminated polyethers (see, e.g. [0069] of the reference).
Applicant additionally cites [0067] – [0070] and Table 2 of the instant specification. Applicant notes that the use of vinylbenzyl glycidyl ether (VGBE) results in 87% conversion thereof, while isopropenyl glycidyl ether (IPGE) results in only 9% conversion and divinylbenzene monoxide in 50% conversion. The Office respectfully submits that this data is not persuasive to show unexpected results achieved by the claimed invention. The claims are directed to a stabilizer which is capped with an epoxide “comprising” VGBE or IPGE. However, the data is directed only to epoxides consisting of VGBE or IPGE. Moreover, the inventive IPGE provides a markedly lower conversion rate than either VGBE or the comparative divinylbenzene monoxide.
Applicant further cites the data in Table 2 as evidence that polyurethane foams prepared using macromers from the claimed process exhibit comparable properties to those prepared using TMI-capped macromers. However, expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) As Borella already teaches ethylenically unsaturated epoxides as suitable alternatives to TMI as a capping agent for polymer polyol stabilizers [0023], it would be reasonably expected that foams in which macromers capped with ethylenically unsaturated epoxides are provided would have substantially similar properties to those in which macromers capped with TMI are provided.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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