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
Claims 4-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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.
Response to Amendment
The amendment filed on 12/9/2025 has been entered. Claims 11-13 are new. Claim(s) 1-13 is/are pending with claim(s) 4-10 withdrawn from consideration. Claim(s) 1-3 and 11-13 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 12/9/2025, with respect to restriction requirement has been fully considered but is not persuasive.
Applicant argued that the Office action asserts that there is no "special technical feature" for all of the claims, but applicants are confused as the subject matter of the independent claim 1 is a specific technical feature that ties all the claims together (including independent claim 4).
In response, the office did not assert that there is no "special technical feature" for all of the claims. Instead, the office states that Group I-VI lack unity of invention as stated in the office action of 6/5/2025. The lacking unity of invention is due to the fact that the shared technical feature is not a special technical feature because it 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).
Applicant's argument filed on 12/9/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the Kaneda reference generally teaches a polyester made from a diol and a dicarboxylic acid. Further, the Jimenez teaches a polyester polyol with a viscosity suitable for polyurethane foam. The Office action appears to assert it would have been obvious to combine to arrive at a polyol with the claimed structure and features including viscosity, as the combination yields predictable results. Though, it is unclear how that is an appropriate legal rejection of claims and not based on hindsight reasoning, when the viscosity is descriptive of the novel polyol composition applicant produced and not merely just chosen from a broad known range suitable for the technology area. Also, the same reasoning applies to applicant's claimed hydroxyl value and number average molecular weight, as they are descriptive of the produced material as now claimed in claim 1. As such, it is asserted that the claimed descriptions of the specific type of polyol compositions (as a whole) are not explicitly disclosed or rendered obvious by the cited references.
In response, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argued that this specifically claimed polyol composition that is different from the cited references, is even more particularly distinguished by the subject matter of dependent claim 2. Though it seems the subject matter of claim 2 is also rejected in parts and not considered as a whole, in which the claimed parameters also appear to be rejected under the same reasoning as above. In particular, it is noted claim 2 expressly claims a specific combination of an aromatic dicarboxylic acid and a polyhydric alcohol with Structure (II), which subject matter is not disclosed or suggested in the cited references.
In response, the 103 rejection clearly states that Kaneda teaches the diol tricyclodecanedimethanol [col.4 line 34], which reads on the claimed polyhydric alcohol with Structure (II) in claim 2 as specified in claim 3; and the dicarboxylic acid of 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.].
Applicant argued that claims are specifically tailored to a novel polyol composition with improved processability and performance. In contrast, the cited references do not actually point the skilled person towards the claim language. Only by a careful, non-preferred selection of properties could the skilled person select some of the features proposed by the Office action. Even using this hindsight approach does not result in the claimed invention as the polyacyclic structure would still be pendant and not in line with the requirements of independent claim 1, much less dependent claim 2.
In response, the 103 rejection has addressed each and every one of the claim limitations. Applicant failed to point out specifically which limitation is not addressed in the office action.
Claim Rejections - 35 USC § 112
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.
Claims 11-13 are 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. Claim 11 recites “n is equal to 1, 2, 3, 4 or 5”; whereas the independent claim 1 recites “n is an integer number equal to 0, 1, 2, 3, or 4”. Claim 11 exceeds the limitation 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.
Claims 12-13 are rejected likewise as depending on claim 11 (claims 12 and 13 seem repetitive).
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 and 11-13 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 and 11-13, 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, because the Structure (I) is obtained from the polycondensation reaction of the above reactants as stated in claim 2.
Kaneda teaches that the polyesterpolyol preferably has a hydroxyl group value of from 10 to 200 [col.10 lines 43-45], overlapping the claimed range of 100-500 in claims 1-2, and 200-400 in claim 11. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
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.
The recited “the aromatic polyester polyol composition is a clear liquid at room temperature” in claim 1 and the glass transition temperature recited in claims 12-13 are properties of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited properties are expected to be present.
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 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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