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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-3) in the reply filed on 8/5/2025 is acknowledged. The traversal is on the ground(s) that although the claimed subject matter may be classified in different classes, the inventions are not independent, as all the claims are connected by at least the subject matter of independent claim 1. This assertion is further supported for the WO Search report that did not require any such election under the same standards required in the US for national stage PCT applications. If the Examiner is aware of another method to make the product as claimed, using a process which is materially different from that set forth in the restricted claims, applicant respectfully requests the Examiner to substantiate his position in greater detail.
This is not found persuasive because the restriction is based on Group I-VI lacking unity of invention as stated in the office action of 6/5/2025. A practice from an international office has no bearing on the practice of an application in the US. The lacking unity of invention is due to the fact that the shared technical feature is not a special technical feature. The shared technical feature is not a method to make the product as claimed. Therefore, the examiner does not need to provide another method to make the product. The shared technical feature is an aromatic polyester polyol composition according to claim 1. The examiner has pointed out that this technical feature does not make a contribution over the prior art in view of Kaneda et al (US 6069222 A) and Jimenez et al (US 20160200856 A1).
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/5/2025.
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.
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 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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaneda et al (US 6069222 A) and Jimenez et al (US 20160200856 A1).
Regarding claims 1-3, Kaneda teaches a polyester made by polycondensation reaction from a diol of formula (9) and a dicarboxylic acid [col.4 lines 38-67, col.6 lines 8-13].
The diol includes tricyclodecanedimethanol [col.4 line 34], which reads on the claimed polyhydric alcohol with Structure (II) in claim 2 as specified in claim 3.
The dicarboxylic acid includes terephthalic acid [col.5 lines 41-42], which reads on the claimed aromatic dicarboxylic acid in claim 2, as evidenced by the applicant [p.6 line 17-18 spec.].
A polyester with the claimed Structure (I) in claim 1 is expected from the polycondensation reaction of the above reactants.
Kaneda teaches that the hydroxyl group value (OH value) is 108.2 [col.19 lines 22-23], falling within the claimed range of 100-500.
Kaneda is silent about the claimed viscosity. However, Kaneda teaches that if the polyester is used as a raw material for polyurethane foam, its weight average molecular weight should be lower than 3000 [col.2 lines 36-38, col.7 lines 11-20]. Example 3 teaches a polyester having number average molecular weight Mn of 2,350 [col.13 lines 8-9]. Viscosity is related to molecular weight. Compared to the number average molecular weight of <2000 in the instant invention [p.15 lines 1-4 spec.], Kaneda’s polyester is expected to have similar viscosity.
In the same field of endeavor, Jimenez teaches a polyester polyol formed in a polycondensation reaction between an aromatic dicarboxylic acid and a polyol, as a raw material for making polyurethane foam [abstract]. The polyester polyol has a viscosity of 25,000 mPa.s at 25° C [0091] (equivalent to 25 Pa-s).
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a polyester polyol according to Kaneda having a viscosity of 25 Pa-s, as Jimenez demonstrates this viscosity to be suitable for similar polyester polyol. This represents the use of a suitable viscosity for a polyester polyol which is compositionally similar to those of Jimenez and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The viscosity of 25 Pa-s meets the claimed range of no greater than 100 Pa-s.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762