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 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.
Claims 2 – 16 and 18 – 21 are 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 because:
Claims 2, 3, and 20 now set forth an esterified lignin. However, the original disclosure does not provide support for the genus of esterified lignins. The original disclosure does not contain a generic disclosure of esterified lignins and only discloses one species thereof, namely alkylated lignins prepared by esterification [0044]. Applicant has not then disclosed a “representative number of species” of the genus of esterified lignins (see MPPEP 2163.05(I)(B)). The recitation of “esterified lignin” therefore constitutes new matter;
the recitation that the esterified lignin “is soluble within the polyurethane elastomer” in newly independent Claim 20 also corresponds to new matter. The cited support is [0018] of the original specification. However, this paragraph does not specify that the alkylated lignin is soluble within the polyurethane elastomer. Instead, it sets forth “there is a need for compositions and processes for flexible polyurethane elastomer foams…that include as a component a biobased polyol polyester, biobased plasticizer…and biobased additives that are molecularly dispersed (soluble) such as alkylated lignins”. This section does not specify that this need has been met by the claimed invention, nor expressly set forth the alkylated lignin is soluble in the polyurethane elastomer specifically. It is additionally noted that [0025] of the disclosure does set forth “the present invention relates to the derivatization of lignin to an alkylated lignin…with…greater solubility in polyurethane derived components”. Thus, the disclosed alkylated lignins are taught to have greater solubility in the precursors which form the polyurethane elastomer, which is different from the presently claimed subject matter in which esterified lignins are set forth as soluble in the polyurethane elastomer product; and
as all other pending claims (Claims 4 – 16, 18, 19, and 21) ultimately depend on Claim 20, they also inherit both new matter issues described above with respect to Claim 20 and are therefore also rejected under this statute.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 2 – 16 and 18 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 10,934,385 to Robinson et al. (hereinafter Robinson) in view of US 10,414,852 to Chuang et al. (hereinafter Chuang), as evidenced by “2.8: Acid Halides for Ester Synthesis” to LibreTexts® Chemistry (hereinafter LibreTexts).
Regarding Claims 20 and 2. Robinson teaches a polyurethane elastomer composition comprising: (a) an organic diisocyanate; (b) a polyester resin; (c) a chain extender; (d) a crosslinker; (e) a surfactant; (f) a foaming agent; (g) a plasticizer; and from 1 – 10 weight percent of a bio-additive (Column 3, Lines 43 – 48; and Claim 2).
Robinson does not expressly teach the bio-additive is an esterified lignin. However, Chuang teaches the concept of providing a modified lignin as an additive in a polyurethane composition (Column 1, Lines 32 – 40). The lignin for preparing the modified lignin may specifically be a sulfonated lignin (Column 2, Lines 49 – 51). The modified lignin is formed by end-capping a functional group via an end-capping agent in the presence of a catalyst, such that the hydrogen atom of the hydroxyl group is replaced with the end-capping group. The end-capping agent may correspond to the formula X-R1, wherein X is halogen. R1 and the end-capping functional group may specifically correspond -C(O)R2 in which R2 may correspond to methyl (Column 3, Lines 14 – 32), thereby providing an alkylated lignin which is an acetylated lignin.
Robinson and Chuang are analogous art as they are from the same field of endeavor, namely bio-based polyurethanes. 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 select the modified lignin, e.g. acetylated lignin, taught by Chuang as the bio-additive in Robinson. The motivation would have been that Chuang teaches lignin can be extracted easily from agricultural waste and forest biomass (Column 1, Lines 21 – 23). Moreover, Chuang teaches the modified lignin prepared can enhance the mechanical strength and abrasion resistance of the polyurethane in which it is included (Column 1, Lines 60 – 67).
Chuang does not expressly characterize the above described acetylated lignin as an esterified lignin. However, acetylated lignin is set forth as a species of esterified lignin in instant Claim 2. Moreover, when R1 is acetyl in Chuang, the end capping agent in Robinson corresponds to an acetyl halide, which is a species of acid halide. LibreTexts provides evidence that the reaction of acid halides with alcohols, as in Robinson, forms esters (Page 1). The acetylated lignin of Chuang is therefore reasonably considered to be an esterified lignin.
Additionally, Chuang does not expressly characterize the above described acetylated lignin is soluble in the polyurethane elastomer. However, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Chuang and the instant claims both set forth products of identical chemical structure, namely acetylated lignin. The properties claimed by applicant, i.e. solubility in the claimed polyurethane elastomer, are thus also necessarily present in the acetylated lignin of Chuang.
Regarding Claims 3 – 6. Robinson teaches the polyurethane elastomer of Claim 20. As detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide the modified lignin, e.g. acetylated lignin which may be prepared from a sulfonated lignin and a catalyst, as taught by Chuang as the bio-additive in Robinson.
The references do not expressly teach this alkylated lignin is further obtained with an organic anhydride and also does not expressly teach the catalyst corresponds to one of the instantly claimed species. However, such limitations appear to be product-by-process limitations that are not further limiting in as so far as the structure of the product is concerned. "[E]ven 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) Though Chuang uses an end-capping agent and catalyst which do not correspond to the instantly claimed species, the product of the prior art is the same – namely a lignin in which the hydroxyl groups have been substituted with acetyl groups. Once a product appearing substantially identical is found, the burden shifts to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993) (MPEP 2113)
Regarding Claim 7. Robinson teaches the polyurethane elastomer of Claim 20 wherein the elastomer has a hardness value of about 15 to about 60 Asker C, a tensile strength of about 1 to about 10 MPa, a resilience of about 25 to about 60%, an elongation at break of from about 150 to 700 percent, and a tear strength of about 2 to about 4 N/mm2 (Column 3, Lines 43 – 55; and Claims 1 – 2).
Regarding Claim 8. Robinson teaches the polyurethane elastomer of Claim 20 wherein the elastomer may have a bio-content of from about 60 to about 90% (Column 3, Lines 30 -32).
Regarding Claim 9. Robinson teaches the polyurethane elastomer of Claim 20 may further comprise a colorant (Column 3, Line 48).
Regarding Claim 10. Robinson teaches the polyurethane elastomer of Claim 9 wherein the colorant may be a die, pigment, or mixture thereof. The colorant is provided in an amount of about 0.5 to about 5 weight percent (Column 5, Lines 4 – 5).
The polyester resin may be a semi-crystalline polyester resin having a melting point of less of about 10 to 49°C, such as a copoly(1,3-propylenesuccinate)-copoly(1,2-propylenesuccinate) (Column 8, Lines 40 – 59).
The foaming agent may be carbon dioxide or water (Column 12, Lines 1 – 2).
Regarding Claim 11. Robinson teaches the polyurethane elastomer of Claim 20 wherein the polyester resin is a semi-crystalline resin obtained by a polycondensation reaction of an organic diacid and an organic diol (Column 6, Lines 20 – 24). Suitable organic diacids include succinic acid, adipic acid, 1,12-dodedacendioic acid, and dimer diacids (Column 6, Lines 43 – 59). Suitable organic diacids include 1,5-petanediol, 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, ethylene glycol, diethylene glycol, and dipropylene glycol (Column 6, Line 63 – Column 7, Line). Both the organic diol and organic diacid may be obtained by fermentation of natural/bio-based sources (Column 6, Lines 43 – 46 and 63 – 65).
Regarding Claim 12. Robinson teaches the polyurethane elastomer of Claim 20 wherein the organic diisocyanate may be diphenylmethane 4,4’-diisocyanate (Column 12, Lines 10 – 22).
Regarding Claim 13. Robinson teaches the polyurethane elastomer of Claim 20 wherein the organic diisocyanate may be diphenylmethane 4,4’-diisocyanate (Column 12, Lines 10 – 22), i.e. a methylenediphenyl diisocyanate.
The polyester resin may be semi-crystalline polyester resin, such as a copoly(1,3-propylenesuccinate)-copoly(1,2-propylenesuccinate) (Column 8, Lines 40 – 59).
Regarding Claim 14. Robinson teaches the polyurethane elastomer of Claim 20 wherein the plasticizer may be tributyl citrate (Column 9, Lines 32 – 33).
Regarding Claim 15. Robinson teaches the polyurethane elastomer of Claim 20 wherein the surfactant may be a silicone surfactant (Column 10, Lines 44 – 46).
Regarding Claim 16. Robinson teaches the polyurethane elastomer of Claim 20 wherein the chain extender may be an alkylene glycol (Column 10, Lines 24 – 33).
The polyester resin may be a semi-crystalline polyester resin, such as a copoly(1,3-propylenesuccinate)-copoly(1,2-propylenesuccinate) (Column 8, Lines 40 – 59).
The plasticizer may be tributyl citrate (Column 9, Lines 32 – 33).
The crosslinker may be an amine compound (Column 10, Lines 1 – 7).
The foaming agent may be carbon dioxide or water (Column 12, Lines 1 – 2).
The polyurethane elastomer may also further comprise a colorant which is a dye (Column 5, Lines 4 – 5).
Regarding Claim 18. Robinson teaches the polyurethane elastomer of Claim 20 wherein the crosslinker may be diethanolamine (Column 10, Lines 1 – 3).
Regarding Claim 19. Robinson teaches the polyurethane elastomer of Claim 20 wherein the plasticizer may be present in an amount of about 0.1 to about 30% by weight (Column 9, Lines 32 – 64).
Regarding Claim 21. Robinson teaches a polyurethane elastomer foam comprising the polyurethane elastomer of Claim 20 (Column 5, Lines 22 – 32).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2 – 16 and 18 – 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 19 of U.S. Patent No. 12,124,675 in view of US 10,414,852 to Chuang et al. (hereinafter Chuang). The claims of U.S. Patent No. 12,124,675 do not expressly set forth the lignin included in the composition is esterified. However, Chuang teaches the concept of providing a modified lignin as an additive in a polyurethane composition (Column 1, Lines 32 – 40). The lignin for preparing the modified lignin may specifically be a sulfonated lignin (Column 2, Lines 49 – 51). Th modified lignin is formed by end-capping a functional group in the presence of a catalyst, such that the hydrogen atom of the hydroxyl group is replaced with the end-capping group. The end-capping functional group may specifically be -C(O)R2 in which R2 may correspond to methyl (Column 3, Lines 14 – 32), thereby providing an alkylated lignin which is acetylated lignin. 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 a modified lignin, e.g. acetylated lignin, taught by Chuang as the lignin in the composition set forth in the claims of U.S. Patent No. 12,124,67. The motivation would have been that Chuang teaches the modified lignin prepared can enhance the mechanical strength and abrasion resistance of the polyurethane in which it is included (Column 1, Lines 60 – 67).
Response to Arguments
Applicant's arguments filed October 3, 2025 have been fully considered. The Office responds as follows:
A) Applicant argues that at least [0018] and [0044] of the subject application as originally filed provide support for the amendments to newly independent Claim 20. However, the original disclosure was not found to provide sufficient support for the recitations of “esterified lignin” and “the esterified lignin being soluble within the polyurethane” for the reasons detailed in the new grounds of rejection under 35 U.S.C. 112(a) above.
B) The Office agrees that the present amendments to the claims are sufficient to overcome all outstanding objections to the claims and rejections under 35 U.S.C. 112(b). Accordingly, all objections and rejections under 35 U.S.C. 112(b) have been withdrawn.
C) Applicant argues that the applied references do not teach an “esterified lignin” which is “soluble within the polyurethane elastomer”, as is now claimed. The Office respectfully submits that these amendments to the claims raise issues of new matter which are detailed in the new grounds of rejection under 35 U.S.C. 112(a) above. Nonetheless, it remains the Office’s position that modified lignin disclosed by secondary reference Chuang is suitably relied upon to teach both limitations.
Applicant’s argument that Chuang uses a different process to modify the lignin is not found persuasive. 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113) In the instant case, Chuang teaches an identical product to that the instantly claimed. Namely, Chuang teaches acetylated lignin, which is set forth as a species of esterified lignin in instant Claim 2. Moreover, when R1 is acetyl in Chuang, the end capping agent in Robinson corresponds to an acetyl halide, which is a species of acid halide. LibreTexts provides evidence that the reaction of acid halides with alcohols, as in Robinson, forms esters (Page 1). The acetylated lignin of Chuang is therefore reasonably considered to correspond to an esterified lignin.
Additionally, while Chuang does not expressly characterize the above described acetylated lignin is soluble in the polyurethane elastomer, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Chuang and the instant claims both set forth products of identical chemical structure, namely acetylated lignin. The properties claimed by applicant, i.e. solubility in the claimed polyurethane elastomer, are thus also necessarily present in the acetylated lignin of Chuang.
D) Applicant’s arguments that Chuang is not suitably relied upon as a secondary reference in the outstanding obviousness-type double patenting rejection over U.S. Patent No. 12,124,675 is not persuasive. The alleged deficiencies of Chuang are addressed in section C) above.
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