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 .
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 19 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.
In claim 19, some of the solvents (E) are not aromatic nitrile containing compounds and thus are excluded from dependent claims 1 and 6.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2018/002871 to Muller et al.
As to claims 12 and 14, it is noted that claims 12 and 14 claim a polyoxazolidione all elected claims are recited in the product-by-process format by use of the language, “A thermoplastic polyoxazolidione formed from a method comprising…” Case law holds that: Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Claims 1-3, 5-8, 15-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable
over U.S. Patent No. 3,694,406 to D'Alelio et al.
As to claims 1-3, 5-8, 15-17 and 19-20, D'Alelio discloses a process for the synthesis of
polyoxazolidione compounds comprising copolymerizing 2,4-toluene diisocyanate and bis-
epoxide resins at a temperature between 25 and 150° using phosphonium bromide catalysts and N-methylpyrrolidinone as solvent that is added to the reaction before, during, or after polymerization to control viscosity (6:50-68, Examples I-II). D'Alelio further discloses additional solvents that can be used in the process including benzonitrile (6:37-40. At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute one known solvent N-methylpyrrolidinone with another known solvent used in analogous reactions (benzonitrile)) with a reasonable expectation of success that the substitution would result in the same reaction product, improve processing conditions (maintain stable viscosities) and based on the tenet wherein it is prima facie obvious to add a known ingredient to a known composition for its known function. In re Lindner 173 USPQ 356; In re Dial et al 140 USPQ 244. In this case, dissolve reactants and provide a process wherein a uniform reaction occurs within the desired reaction parameters.
Claims 4, 9-14, and 16-18 is rejected under 35 U.S.C. 103 as being unpatentable
over U.S. Patent No. 3,694,406 to D'Alelio et al. in view of U.S. Patent Pub. No. 2018/0022871 to Muller et al.
As to claims 4, 9, 13, and 18, D'Alelio discloses a process for the synthesis of polyoxazolidione compounds comprising copolymerizing 2,4-toluene diisocyanate and bis-epoxide resins using phosphonium bromide catalysts and N-methylpyrrolidinone as solvent that is added to the reaction before, during, or after polymerization to control viscosity (6:50-68,
Examples I-II). D’Alelio further teaches the use of benzonitrile.
D’Alelio does not expressly disclose the use of monofunctional epoxides.
However, within the same field of endeavor Muller discloses a process for the synthesis of polyoxazolidione compounds comprising copolymerizing diisocyanates and bisepoxides in the presence of chain regulators including monoisocyanates and monoepoxides (0038).
At the time of filing it would have been obvious to a person of ordinary skill in the art to add the monofunctional epoxide of Muller to the process of D’Alelio to improve thermal stability (0009).
As to claims 12 and 14, D’Alelio in view of Muller teach process that results in molecular weights that range from 1,000 to 50,000 g/mol (0078).
As to claims 16-17, D’Alelio in view of Muller teach suitable catalysts including tetraalklyphosphoniums (See examples in Muller).
Response to Arguments
Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
The applicant argued that D’Alelio teaches the addition of only a minor amount of benzonitrile to the process taught in the prior art and that benzonitrile would not dissolve the reactants.
Firstly, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., amounts of solvent) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The content of benzonitrile is not considered within the current claim set. Accordingly, the arguments will respect to the amounts are considered moot at this point.
Secondly, D’Alelio teaches benzonitrile as a non-solvent component, however, suitable solvents and additional components including benzonitrile were known as usable in analogous processes s such a prima facie case of obviousness exists over the combination. Though picked from a laundry list, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. See MPEP 2100. Applicant has failed to provide an unobvious difference through experimentation that results in unexpected results to overcome the prior art rejections.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763