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 Status
Claims 1-7 are pending. Claim 1 has been amended with new matter. Claim 4 has been amended for clarity.
Response to Arguments
The claim interpretation of claim 7 in the previous office action was intended clarify for the record that the ratios of claim 7 were interpreted as A:B, not A:(A+B). Claim 7 is not interpreted under 112(f).
Applicant’s arguments, see page 6, filed 07/23/2025, with respect to the rejection of claim 4 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claim 4 under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments and amendments, see pages 6-7, filed 07/23/2025, with respect to the rejection(s) of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Li et. al. (CN 104231203 A) in view of Jiang et. al. (CN 107652937 A), further in view of Kosters et. al. (US 20110263736 A), as evidenced by Witter et. al. (US 20220186069 A).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation of polyether polyol A having a hydroxyl value of 350-650 mg KOH/g is new matter. Applicants do not have support for the hydroxyl value range of polyether polyol A as the concept of a range is not present in the specification. Applicants have support for the hydroxyl values of the individual polyols exemplified and those presented in [p. 0017] of the specification. These individual hydroxyl values do not represent a range, and what polyols might be included for those not specifically mentioned.
In addition, the limitation of polyol B having a functionality of 3-6 is new matter. The concept of the functionality of polyol B is not present in the specification.
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.
Claim 2 is 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. Polyether polyol A is limited to a sorbitol starting agent-typed (based) polyether polyol in claim 1, therefore claim 2 fails to further limit the subject matter of claim 1. 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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Li et. al. (CN 104231203 A) in view of Jiang et. al. (CN 107652937 A), further in view of Kosters et. al. (US 20110263736 A), as evidenced by Witter et. al. (US 20220186069 A).
Note: All citations are in reference to the English Machine Translation
Regarding claims 1, 2 and 3:
Li et. al. teaches a high-strength polyurethane grouting reinforcing material comprising component A and B. Component A comprises 10 to 50 parts by weight polyether polyol, 0.01 to 5 weight parts catalyst of and 0.5 to 20 parts by weight first auxiliary agent. The first auxiliary agent is selected from one or mixture of several fire retardants [abstract]. Component B comprises 25 to 75 parts by weight isocyanate and/or prepolymer, 5 to 20 parts by weight flame retardant, and 0 to 10 parts by weight second auxiliary agent; the second auxiliary agent is selected from plasticizers and/or special foam inhibitor [abstract].
The composition of Li et. al. comprises flame retardant in both component A and component B. As evidenced by Witter et. al., it is known in the art that useful flame retardants for polyurethane systems may be present in component A; but it may also be present in Component B, either instead of or in addition to in Component A. The total amount of flame retardant in the composition of Li et. al. ranges from 20 parts by weight to 40 parts by weight, which reads over the range of instant claim 1. A skilled artisan would reasonably predict that the distribution of a non-reactive component, such as a flame retardant, across two components of a two-component composition would not impact the final composition. Redistribution of the flame retardant to one component is an obvious variant of the composition of Li et. al.
Regarding component A:
Li et. al. teaches existing polyurethane grouting materials have low compressive strength which results in no reinforcement effect [p. 0006] Li et. al. teaches the polyether polyol of component A is selected from one and/or a mixture of more than one of PPG polyether polyols, POP polymer polyether polyols, PTMEG poly(tetrahydrofuran) type polyols, etc. [p. 0011]. However, Li et. al. is silent with respect to sorbitol starting agent-typed polyether polyols.
Kosters et. al. teaches the preparation of polyurethane compositions comprising sorbitol-initiated polyethers [table 5; p. 0045]. Kosters et al exemplifies the use of a sorbitol started polyether polyol having a hydroxyl number of 490 mg KOH/g, reading over the instantly claimed range [p. 0082]. Kosters teaches that the use of sorbitol-initiated polyether alcohols brings advantages in the processing, improves the curing, and increases the compressive and flexural strength. [p. 0045, p. 0104].
In light of this, it would be obvious to one having ordinary skill in the art at the time the invention was filed to use the sorbitol-initiated polyether having a hydroxyl number of 490 mg KOH/g in component A of Li et. al. as Kosters et. al. teaches their use improves curing as well as increases the compressive and flexural strength of polyurethane compositions. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding component B:
Li et. al. teaches the isocyanate (NCO) prepolymer may be prepared from a polymer with a molecular weight below 1500 Da and TDI, MDI, or PAPI [p. 0013]. Li et. al. teaches the catalyst is selected from a mixture of one or more tertiary amine catalysts, and organic metal catalysts such as dibutyltin dilaurate and stannous octoate [p. 0014]. Li et. al. is silent with respect to the polymer species used to prepare the NCO prepolymer.
Jiang et. al. teaches the preparation of an environmentally friendly polyurethane composition with high flexibility and good tensile strength [p. 0008, 0017]. The polyurethane composition of Jiang et. al. comprises a NCO prepolymer prepared from 15 to 40 parts of polyether polyol, 0.01 to 0.05 parts of catalyst and 10 to 40 parts of polyisocyanate [p. 0011]. Jiang teaches suitable isocyanates include TDI, MDI, and PAPI [p. 0023]. Jiang et. al. teaches suitable catalysts include tertiary amine catalysts, stannous octoate, and dibutyltin dilaurate [p. 0022]. Jiang et. al. teaches the use of PPG-204 as the polyether polyol [p. 0024], which is the same polyol used by applicants to prepare the NCO prepolymer. Jiang et. al. teaches the use of non-crystalline polyols can extend the open time of the composition [p. 0025] Furthermore, Jiang teaches polyoxypropylene-ethylene oxide triol as a suitable polyether polyol, which reads over the claimed functionality of 3 to 6 [p. 0024].
The proportion of polyether polyol to polyisocyanate of instant claim 1 can be understood as 22% - 32% polyol (18:61 to 24:50 polyol: NCO, respectively). Embodiments of Jiang et. al. can be understood as 22% - 32% polyol (17:40 to 19:40 polyol: NCO, respectively) which obviously read over the proportions of the NCO prepolymer constituents of instant claim 1.
It would be obvious to one having ordinary skill in the art at the time the application was filed to select a NCO prepolymer of Jiang et. al. to prepared from a polyether triol to prepare the composition of Li et. al. as the NCO prepolymer of Jiang et. al. satisfies all of the limitations regarding molecular weight, isocyanate, and catalysts of Li et. al. Furthermore, Jiang et. al. teaches the selection of a polyether polyol-based NCO prepolymer can extend the open time of the polyurethane composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists
Regarding claim 4: Li et. al. teaches the isocyanate (NCO) prepolymer may be prepared from PAPI [p. 0013].
Regarding claim 5:
Li et. al. teaches the flame retardant may be a mixture of one or more flame retardants, including tris(2-chloroethyl)phosphate, and tris(2-chloroisopropyl)phosphate [p. 0016] Li et. al. is silent with respect to triethyl phosphate and cresyl diphenyl phosphate.
Kosters et. al. teaches it is necessary to restrict the use of halogenated flame retardants [p. 0008]. Kosters et. al. teaches the flame retardant preferably comprise at least on phosphorous atom and does not comprise any hydrogen atoms which are reactive toward isocyanate groups [p. 0059]. Kosters et. al. teaches triethyl phosphate and diphenyl cresyl phosphate are particularly preferred flame retardants [p. 0062-0063]. Kosters et. al. teaches these polyurethane foams have good mechanical and processing properties in addition to good flame resistance [p. 0077].
It would be obvious to one having ordinary skill in the art at the time the invention was filed to select the triethyl phosphate or diphenyl cresyl phosphate flame retardants taught by Kosters et. al. to be used alone or in combination in the composition of Li et. al. as Kosters teaches they are not reactive towards isocyanate groups and result in polyurethane foams with good flame resistance. In addition, they are free of halogens, which are of concern in flame retardants.
Regarding claim 7: Li et. al. teaches the volume ratio of components A and B is 1:1 [p. 0026]. Li et. al. is silent with respect to the mass ratio of components A and B.
However, a skilled artisan would appreciate that components A and B are co-reactive. The ratio in which they are combined is dictated by the degree of functionality and the molarity of the co-reactants. A skilled artisan could reasonably predict an appropriate ratio for the combination of co-reactants based on the aforementioned molarity and functionality of the individual components. A skilled artisan would have recognized this ratio as a result effective variable to arrive at a reaction product having a sufficient degree of polymerization of these co-reactive components. In the absence of evidence of criticality of the claimed range, the claimed range of component A: component B is considered optimization within prior art conditions or through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ; see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; see also In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Li et. al. (CN 104231203 A) in view of Jiang et. al. (CN 107652937 A), in view of Kosters et. al. (US 20110263736 A), as evidenced by Witter et. al. (US 20220186069 A), as applied to claims 1-5 and 7 above, and further in view of Xia et. al. (CN 103224701 A), and further in view of Kawato et. al. (US 20150315327 A1).
Li et. al. teaches that component A is prepared by adding the polyether polyol into a reaction kettle with the catalyst and flame retardant with stirring [p. 0019]. Li et. al. is silent with respect to further preparation details.
Xia et. al. teaches a method of preparing the polyether polyol component by stirring at room temperature 0.5-1 hour to obtain the mixed material [p. 0029]
Xia et. al. teaches a method of preparing an isocyanate prepolymer wherein a polyether polyol is heated to 110-120 °C and dehydrated for 2h under vacuum. Xia et. al. teaches the temperature is then reduce to 60 °C , vacuum is released, then the other components are added. Xia et. al. teaches the temperature reaction temperature is controlled at 50-70 °C for 1-2 h and the isocyanate pre-polymer is obtained [p. 0027]. Xia et. al. teaches the flame retardant is then added to the pre-polymer composition[p. 0028].
A skilled artisan would recognize the reaction time at 50-70 °C as a result effective variable to arrive at a pre-polymer reaction product wherein the alcohol groups have been completely reacted with the isocyanates. In the absence of evidence of criticality of the claimed reaction time, the claimed reaction time is considered optimization within prior art conditions or through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ; see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; see also In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Kawato et. al. teaches a two-component polyurethane composition comprising a prepolymer component prepared from a propylene glycol-based alcohol species and an isocyanate [p. 0048, 0069]. Kawato et. al. teaches the viscosity of the prepolymer component is equal or less than 1,000 mPa-s for good handleability [p. 0020, 0026]. Kawato et. al. teaches a prepolymer component viscosity of 1,000 mPa-s or less inhibits adherence loss and contamination as well as prevents pipes from being blocked, which in turn prevents instruments from breaking down [p. 0026, p. 0108].
In light of this, it would be obvious for one having ordinary skill in the art at the time the invention was filed to adjust the viscosity of the prepolymer component of Li et. al. to 1,000 mPa-s or less to prevent instrument pipes from being blocked and prevent instruments from breaking down.
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 HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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