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 without traverse of Group I (claims 1-2) and species i (formula (I)) in the reply filed on 12/19/2025 is acknowledged.
Groups II-IC (claims 3-7 and 9) and species ii (formula (II)) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/19/2025.
Response to Amendment
The amendment filed on 12/19/2025 has been entered. Claim(s) 2-3 and 5 is/are currently amended. Claim(s) 8 has/have been cancelled. Claim(s) 1-7 and 9 is/are pending with claim(s) 3-7 and 9 withdrawn from consideration. Claim(s) 1-2 is/are under examination in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “each R is independently of one another selected from a combination of linear, branched, saturated, unsaturated, cyclic and/or non-cyclic aliphatic hydrocarbons containing at least one ether group, and mixtures thereof” which renders the claim indefinite because it is not clear if R requires a combination of the recited hydrocarbons or not. If R requires a combination, then it must contain at least two of the recited hydrocarbons. However, claim 2 recites “R is a linear aliphatic hydrocarbon containing two ether groups” which apparently requires R containing only one hydrocarbon (the linear aliphatic hydrocarbon). For the purpose of further examination, based on the broadest reasonable interpretation, this limitation is interpreted as --each R is independently selected from a linear, branched, saturated, unsaturated, cyclic and/or non-cyclic aliphatic hydrocarbons containing at least one ether group, and mixtures thereof--. This interpretation allows R to be a single hydrocarbon or a mixture of multiple hydrocarbons.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Richter et al (US 20230086342 A1).
Regarding claim 1, Richter teaches trimerization of bis(2-isocyanatoethyl) ether (OCNCH2CH2OCH2CH2NCO, Example 3a) and bis(3-isocyanatpropyl) ether (OCNCH2CH2CH2OCH2CH2CH2NCO, Example 3b) [0084-0085, Table 3], which will yield the claimed polyfunctional isocyanate of formula (I), wherein R is CH2CH2OCH2CH2 and CH2CH2CH2OCH2CH2CH2, respectively.
Claim Rejections - 35 USC § 103
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richter et al (US 20230086342 A1) as applied to claim 1 above, further in view of Teng et al (CN110305041A, machine translation is referenced herein).
Regarding claim 2, Richter teaches the polyfunctional isocyanate composition comprising a polyfunctional isocyanate compound having the formula (I) in claim 1. Richter teaches that trimerization of ether isocyanates can modify reactivity and physical properties [0086].
Richter does not teach wherein R is linear aliphatic hydrocarbon containing two ether groups.
Teng teaches an ether bond diisocyanate having the formula
OCN(CH2)nO(CH2)2O(CH2)nNCO, n≤15 [P1L41].
The examiner submits that when n=3, the above structure becomes
OCNCH2CH2CH2OCH2CH2OCH2CH2CH2NCO
and is identical to the either isocyanate ISO 228 with formula (III) in the instant application [P9L1 spec.], the trimerization product of which is the claimed polyfunctional isocyanate compound having the formula (I), according to the applicant [P9L5-12 spec.]. This ether bond diisocyanate meets the claimed polyfunctional isocyanate composition wherein R is linear aliphatic hydrocarbon containing two ether groups.
Teng and Richter are in the same field of endeavor such as polyurethane coating application (Teng [P1L23-29], Richter [0017, 0043, 0047, 0050]).
Richter’s ether isocyanates, bis(2-isocyanatoethyl) ether (OCNCH2CH2OCH2CH2NCO) and bis(3-isocyanatpropyl) ether (OCNCH2CH2CH2OCH2CH2CH2NCO) are structurally similar to Teng’s ether bond diisocyanate. It would have been obvious to one of ordinary skill in the art at the time of filing to conduct trimerization with Teng’s ether bond diisocyanate in order to modify reactivity and physical properties for polyurethane coating application.
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