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Groups II-IC (claims 3-7 and 9) and species ii (formula (II)) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 4/14/2026 has been entered. Claim(s) 1 is currently amended. Claim(s) 2 and 8 has/have been cancelled. Claim(s) 1, 3-7 and 9 is/are pending with claim(s) 3-7 and 9 withdrawn from consideration. Claim(s) 1 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 4/14/2026, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 4/14/2026, with respect to 102 rejection has been fully considered and is persuasive. The 102 rejection is withdrawn.
Applicant's argument filed on 4/14/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the trimerization examples of Richter relied upon by the Examiner are limited to compositions containing a single ether group (See Richter [0084]-[0085] and Table 3), whereas Teng is directed to ether-bond diisocyanates containing two ether groups. (See Teng, 1, line 41). This structural difference is material and directly affects chemical behavior. Accordingly, Applicant submits that one of ordinary skill in the art would not have been motivated to select, nor reasonably expected success in using, a two ether diisocyanate from Teng in the trimerization reactions of Richter without undue experimentation. Neither Richter nor Teng provides any teaching or suggestion that diisocyanates containing two ether groups would successfully trimerize under Richter's conditions. This lack of reasonable expectation of success is compounded by the breadth of Teng's disclosure. Teng teaches ether-bond diisocyanates with n≤15 without any express preference, ranking, or guidance singling out the n=3 species. Further, Richter itself recognizes the unpredictability of substitution, expressly teaching that oxygen-for-methylene substitution can produce significantly different physical properties. (See Richter [0086]). Richter's acknowledgment of variability undermines the Examiner's assertion that Teng's materially different two-ether diisocyanates would have been a predictable substitute for Richter's single-ether examples.
In response, Richter does not teach away from ether-bond diisocyanates containing two ether groups. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Richter generally teaches ether isocyanate having an NCO functionality≥1, wherein 2 or 3 carbon atoms are present between at least one NCO group and at least one ether-oxygen atom [abstract]. This covers ether-bond diisocyanates containing two ether groups. In [0086], Richter teaches “the significantly increased reactivity of the specific open-chain, optionally branched, ether isocyanates and, on the other hand, that the replacement of a methylene group by an oxygen atom also in diisocyanate conversion products results in products having significantly different physical properties”. This simply suggest that one of ordinary skill in the art can modify reactivity and physical properties by trimerization of ether isocyanates, but does not teach away from doing so. One of ordinary skill in the art would be motivated to replace a methylene group by an oxygen atom in order to modify reactivity and physical properties. Richter’s ether isocyanates, bis(2-isocyanatoethyl) ether (OCNCH2CH2OCH2CH2NCO) and bis(3-isocyanatpropyl) ether (OCNCH2CH2CH2OCH2CH2CH2NCO) are structurally similar to Teng’s ether bond diisocyanate. Richter proved that the diisocyanates would successfully trimerize under Richter's conditions. 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, with reasonable expectation of success.
Teng teaches n≤15, which covers n=3; and 1 in 15 of Teng’s compounds reads on the claimed formula (I). However, a genus encompassing 20 species is sufficient to anticipate a single claimed species. See In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962); MPEP 2131.02(III). If 1 out of 20 is sufficient to establish anticipation, it seems reasonable to conclude that 1 out of 15 is sufficient to support a prima facie finding of obviousness. The examiner's position is further bolstered by MPEP 2144.07, which states that selection of a known material based on its suitability for its intended use is prima facie obvious. See also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives”).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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).
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richter et al (US 20230086342 A1) in view of Teng et al (CN110305041A, machine translation is referenced herein).
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.
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 teaches that trimerization of ether isocyanates can modify reactivity and physical properties [0086].
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
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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