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 .
DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction, 112d, and 103 rejections have been maintained, but the position has been modified due to the amendment.
New claims 21-23 necessitates a new election of species requirement. The applicant has elected the species of claim 21 without traverse via telephonic communication with Jeffrey R. Lomprey 4/3/26.
Election of Species
The previously elected Group I contains claims directed to the following patentably distinct species.
I1. claim 21, hydroxyl
I2. claim 22, carbonyl
I3. claim 23, thiol
The species (and subspecies) are independent or distinct because as disclosed the different species (and subspecies) have mutually exclusive characteristics for each identified species (and subspecies), because the resultant component X and processes materially differ from each other. In addition, these species and/or subspecies are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics, because the species have required a separate status in the art due to their recognized divergent subject matter. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election of the species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species.
Should applicant traverse on the ground that the species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Affirmation of this election must be made by applicant in replying to this office action. Applicant is advised that the reply to this requirement to be complete must include an election of the invention to be examined even through the requirement be traversed (37 CFR 1.143).
Claim Rejections - 35 USC § 112
Claim 3 is rejected under 35 U.S.C. 112(d), 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 3 fails to further limit claim 1, because the recited propane-1.3-diol is not a species of X having 3-6 hydroxyl groups.
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
Claim(s) 1, 3-4, 12, 18-19, and 21is (are) rejected under 35 U.S.C. 103 as being unpatentable over Peckermann et al. (US 20170096526, listed on IDS and ISR) in view of Klescewski et al. (US 20110230581).
As to claims 1, 3-4, 12, 18-19, and 21, Peckermann (abs., claims, examples, 18, 21-24, 57, 68-72, 78, 84-88, examples Table 1) discloses a process of producing polyoxymethylene-polyoxyalkylene block copolymer for producing polyurethane foam using DMC catalyst, polymeric formaldehyde HO(CH2O)H as a H-functional starter, another H-functional polyhydric alcohol starter, and alkylene oxide monomers such as ethylene or propylene oxides.
Peckermann is silent on the claimed component X.
In the same area of endeavor of producing polyurethane foam using polyoxyalkylene (ethylene or propylene oxide) polyols, Klescewski (abs., claims, examples, 31-32, 50-56) teaches using H-functional polyols having 3-6 hydroxyl functionality, such as glycerol, sorbitol, trimethylolpropane, and pentaerythritol (meets claims 18 and 21), mixed with other H-functional starters to obtain polyoxyalkylene polyol having functionality more than 2.
Therefore, as to claims 1, 3-4, 12, 18-19, and 21, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Peckermann and replaced H-functional polyhydric alcohol starter with glycerol, sorbitol, pentaerythritol, or trimethylolpropane in view of Klescewski, because the resultant process would yield a polyoxymethylene-polyoxyalkylene block copolymer having hydroxyl functionality more than 2. Particularly to claims 4 and 19, one of ordinary skill in the art would obviously recognize to using the mol% of glycerol, sorbitol, pentaerythritol, or trimethylolpropane at 10%, 20%, 30%, 40%, 50%, etc. as a routine laboratory or manufacturing procedure to control the degree to multi-functionality (10%, 20%, 30%, 40%, 50%, etc) of the resultant hydroxyl terminated polyoxymethylene-polyoxyalkylene block copolymer.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The applicant argued Peckermann and Klescewski (6:1-4, 7:2-6) are incompatible, because Peckermann teaches no separate starter is required and polymerization methods are different. The examiner disagrees. Peckermann (24) specifically teaches using additional H-functional polyhydric alcohol starters (polyols, polythiols, hydroxy esters, etc.), which indicates Klescewski’s H-functional polyols having 3-6 hydroxyl functionality, such as glycerol, sorbitol, pentaerythritol, or trimethylolpropane are compatible with Peckermann’s pFA as co-starters. Klescewski’s mere disclosure of not using pFA does not constitute a teaching away from any of these alternatives, because such disclosure does not criticize, discredit, or otherwise discourage the claimed invention. Klescewski is an analogous art, because Klescewski is in the same area of endeavor of producing polyurethane foam using polyoxyalkylene (ethylene or propylene oxide) polyols. Peckermann and Klescewski can be combined to meet the claims.
The applicant individually attacked Peckermann (6:5-7:1) for not teaching pFA. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP-2145. The primary reference, Peckermann, teaches pFA. Klescewski, as the secondary reference, is certainly different but does not teach away from Peckermann and this application.
Therefore, as to claims 1, 3-4, 12, 18-19, and 21-23, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Peckermann and replaced H-functional polyhydric alcohol starter with glycerol, sorbitol, pentaerythritol, or trimethylolpropane in view of Klescewski, because the resultant process would yield a polyoxymethylene-polyoxyalkylene block copolymer having hydroxyl functionality more than 2. Particularly to claims 4 and 19, one of ordinary skill in the art would obviously recognize to using the mol% of glycerol, sorbitol, pentaerythritol, or trimethylolpropane at 10%, 20%, 30%, 40%, 50%, etc. as a routine laboratory or manufacturing procedure to control the degree to multi-functionality (10%, 20%, 30%, 40%, 50%, etc) of the resultant hydroxyl terminated polyoxymethylene-polyoxyalkylene block copolymer.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766