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 .
Response to Amendment
Applicant’s claim amendments and remarks filed January 23, 2026 are entered and have been fully considered. Applicant has cancelled claim 1. Applicant has amended claim 106 to overcome the 112b rejection, therefore it is withdrawn. Applicant amended claim 112, but a couple issues remain, as explained below.
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 109 and 112 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 109 recites the limitation "or polyester (poly)ol" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 100 from which it depends, only claims a polycarbonate (poly)ol copolymer is formed in the first reaction, there is no mention of an alternate polyester (poly)ol formed therein.
Claim 112 is rejected on the basis that it still contains an improper Markush
grouping of alternatives. Applicant amended the claim to state “selected from the group consisting of” but needs to replace the word “or” before the last selection with the word “and” to indicate a closed set of selections. The location of the “or” that should be replaced is at the end of line 7 of the claim where it states “or Z”, the phrase should read “and Z may be a combination of any of these groups;” and the “or” in line 14 of the claim should be deleted because it is within the list of selections, the phrase should read “H, optionally substituted alkyl, heteroalkyl, aryl, heteroaryl, cycloalkyl, and heterocycloalkyl.”
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 125-126, 128-129 are rejected under 35 U.S.C. 103 as being unpatentable over Hofman et al, US20170158804A1.
Regarding claim 125, Hofman teaches a different method than claimed in claim 100 for producing the polyether carbonate polyol comprising step (i) reacting carbon dioxide, alkylene oxide, and an H-starter ¶[0022], in the presence of a DMC catalyst ¶[0022]. The copolymer formed in step (i) is then further reacted with propylene oxide and ethylene oxide ¶[0027] which Hofman teaches that it is possible to achieve a block copolymer polyol, depending on the manner and sequence of the addition of the alkylene oxide and carbon dioxide ¶[0077], which has 40- 90 mol% primary hydroxyl groups ¶[0110], and overlaps with the claimed range. The resulting polyol block copolymer comprises polyether and carbonate blocks ¶[0005] with general structure shown in scheme I of ¶[0005]. Where the starter is a polyether polyol, the structure of scheme I would give a BAB block formula where B is the polyether and A is the polycarbonate. Hofman teaches that the sequence, number and length of blocks may vary and the final polyol is not restricted to scheme I ¶[0005]. It is preferable that the polyether carbonate polyols have 40-90 mol% primary OH groups ¶[0110], which overlaps with the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
This claim is a product-by-process claim and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 126, the polyether carbonate polyol is further used to create flexible polyurethane foams, ¶¶[0011, 0022, 0173].
Regarding claims 128 and 129, the polyether carbonate polyol is used in lubricant and surfactant compositions ¶[0173].
Claim 127 is rejected under 35 U.S.C. 103 as being unpatentable over Hofman et al, US20170158804A1 in view of Zhou et al, US20120095122A1
Regarding claim 127, Hofman teaches a process of making a flexible urethane foam by mixing component A comprising the polyether carbonate polyol, optionally a conventional polyether polyol, water and or a blowing agent, and additives such as catalysts, surfactants, or pigments ¶¶[0175-0183]. Then component B is the polyisocyanate. Component A and B are mixed and reacted in a one-stage process to form the polyurethane foam ¶[0214].
Hofman does not teach an isocyanate terminated polyurethane prepolymer comprising the block copolymer residue.
Zhou discloses a process of making a polyurethane microcellular elastomer by reacting a polycarbonate polyol with isocyanate to form an isocyanate terminated prepolymer ¶[0005], with a second polyol and a chain extender ¶¶[0007-0008]. The polycarbonate polyol is obtained by reacting carbon dioxide with an alkene oxide ¶[0009]. Zhou further discloses the polycarbonate polyol is added to the isocyanate first for forming the prepolymer, and added as the second polyol for reacting with the prepolymer, or can also be added as the first and second polyol at the same time, by optimizing the amount of the polycarbonate polyol and adjusting the NCO content of isocyanate-terminated prepolymer, to obtain a polyurethane microcellular elastomer with good physical and mechanical properties for industrial applications ¶[0027]. The prepolymer approach optimizes the reaction route and also adjusts the amount of polycarbonate polyol obtained by a reaction of carbon dioxide and alkene oxide to prepare a polyurethane microcellular elastomer with good mechanical and physical properties to meet the requirements for industrial application ¶[0028].
Zhou and Hofman are analogous to the claimed invention because both are in the field of polycarbonate polyol synthesis for use in polyurethanes.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form an isocyanate terminated prepolymer with the polyether carbonate polyol of Hofman with the motivation of optimizing the reaction route and preparing a polyurethane microcellular elastomer with good mechanical and physical properties to meet the requirements for industrial application.
Allowable Subject Matter
Claims 109 and 112 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claims 100-124 are allowable because the amended claim 100 overcomes the prior art rejection of Allen. Allen isolates the first reaction product before adding to the second reaction, and does not suggest the claimed method in the broader disclosure, as such Allen fails to teach the step of not isolating the first polyol before adding to the second reaction vessel.
Response to Arguments
Applicant’s arguments, see pages 2-4, filed 1/23/2026, with respect to claim 100 have been fully considered and are persuasive. The 103 rejections of claims 100-124 of 10/23/2025 has been withdrawn. As claim 1 has been cancelled and its dependent claims amended to being dependent from claim 100, those previous rejections are now moot.
The rejection of claims 125-126 and 128-129 over Hofman and the rejection of claim 127 over Hofman in view of Zhou are maintained because claim 125 is a product by process claim, and as explained above, Hofman teaches the polyether carbonate polyol of the same structure with the number of hydroxyl end groups overlapping the claimed range.
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to show criticality for the “>70%......primary hydroxyl groups” vs the prior art which teaches an overlapping range. Applicants specification provides no such evidence/comparisons.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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