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 .
Response to Arguments
Applicant's arguments filed 5-7-26 have been fully considered but they are not persuasive. Claim 13 is directed to a polyol composition produced according other process of claim 1 and is therefore “a product-by-process claim and is based on the product itself rather than the process by which it is made”. Thus, even if the process recited in claim 1 is patentably distinct from the prior art, claim 13 remains unpatentable if the claimed composition is identical to, or obvious over, a composition disclosed by the prior art. Applicants arguments regarding the combination of WO2018091568A1 in view of Kemona et. al. including the argument of teaching away from the use of water and peroxide limitations are directed to the process of producing the composition and do not identify any structural or other product characteristic that would distinguish the claimed polymer composition from the recycled polyol composition disclosed in WO2018091568A1.
Since the claim does not recite any structural limitations that would distinguish the resulting polyol composition from the prior art compositions and since applicant has not provided any evidence that the recited process produces a position different from those taught by the prior art, the rejection of claim 13 is maintained.
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 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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018091568A1 see abstract and pages 1-4.
With regard to claim 13, as stated in the previous rejection, claim 13 is directed to a polyol composition produced according to claim 1. Note that the claim is a product-by-process and thus the claim is not limited to the recited process steps, but rather to the structure of the implied by the steps. As such, if the product defined by the process steps is the same as or obvious from a product disclosed in the prior art, the claim is unpatentable regardless of the process by which it is made. In this instance, note WO2018091568A1 discloses recycled polymer compositions obtained from polyurethane waste that are isocyanate reactive and suitable for reuse in polyurethane production. See Abstract and pages 1-4. Since claim 13 does not recite any structural or compositional distinction that differentiates it from the claimed polyol composition in the reference, the claim product is obvious in view of the products of the reference.
THIS ACTION IS MADE FINAL. 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.
Note however, that claims 1-12 and 14-20 are allowable over the art of record in view of applicants arguments filed 5-7-26 as noted below:
Allowable Subject Matter for claims 1-12 and 14-20
The following is an Examiner's statement of reasons for the indication of allowable subject matter:
Applicant(s) claimed invention is directed to:
A process for producing a polyol composition containing polyols released from polyurethane waste, wherein, in a reaction mixture:(a) polyurethane waste is reacted with;(b) one or more reactant polyol compounds selected from the group consisting of;- polyether polyols having an average molar mass of 200 g/mol to 8000 g/mol and a hydroxyl functionality of 2 to 4, and- polyester polyols having an average molar mass of 250 g/mol to 8000 g/mol and a hydroxyl functionality of 2 to 4,(c) one or more compounds selected from the group consisting of dicarboxylic anhydrides and dicarboxylic acids; and(d) water, forming a polyol composition containing polyols released from the polyurethane waste and (b) the one or more reactant polyol compounds; and wherein peroxides are used in the reaction mixture in an amount of less than 0.05 wt% relative to the total mass of the reactants (a), (b), (c), (d) as 100 wt%.
The crux of the invention lies in the discovery that polyurethane waste can be depolymerized using water as a reactant with little or no peroxide radical initiator to produce a useful polyol composition while avoiding the safety and quality problems associated with peroxide processes. Such has neither been anticipated by nor made obvious from the prior art. applicants arguments filed 5-7-26 states that the amended claims require water based polyol recovery with little or no peroxide whereas the cited prior art relies on peroxide initiated processes and teaches away from the claimed invention. Thus, the art of record demonstrates other methods used in the art which do not however, result in the same product or contain the advantages as mentioned and neither avoid the problems as mentioned above.
Any comments considered necessary by applicant must be submitted no later
than the payment of the Issue Fee and, to avoid processing delays, should
preferably accompany the Issue Fee. Such submissions should be clearly
labeled "Comments on Statement of Reasons for Allowance."
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/ Primary Examiner, Art Unit 1765
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