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 .
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.
Claims 1 – 5 and 7 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over CA 2 742 538 to Nefzger et al. in view of US 2016/0053058 to Tabor et al. (hereinafter Tabor).
Regarding Claims 1 – 4 and 9. Nefzger teaches a method of making a polyester polyol by reacting at esterification reaction conditions a reaction mixture comprising at least one carboxylic anhydride and diethylene glycol (see last paragraph of Page 2, paragraph spanning Pages 5 – 6, and first full paragraph of Page 6). The at least one carboxylic anhydride is preferably aromatic (see second full paragraph of Page 3); in such embodiments, the polyester polyol corresponds to an aromatic polyester polyol prepared from an aromatic acid compound.
Diethylene glycol corresponds to an aliphatic diol compound. The reaction mixture which forms the polyester polyol may also further comprise dimethylolpropionic acid/2,2-bis(hydroxymethyl)propionic acid(see fifth full paragraph of Page 5). Dimethylolpropionic acid corresponds to a dialkylol alkanoic acid compound of Formula I in which R is a C1 alkyl (methyl) group and R1 and R2 are each hydrogen.
Nefzger does not expressly teach the polyester polyol has a hydroxyl number in the range of 340 to 600 mgKOH/g. However, secondary reference Tabor teaches the concept providing polyester polyols with a hydroxyl number as high as 500 mgKOH/g [0236]. Nefzger and Tabor are analogous art as they are from the same field of endeavor, namely polyester polyols. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the aromatic polyester polyol of Nefzger with a hydroxyl number as high as 500 mgKOH/g, as taught by Tabor. The motivation would have been that Nefzger teaches the aromatic polyester polyol may be used in the preparation of rigid foams (see paragraph spanning Pages 8 – 9), while Tabor teaches rigid foams generally require higher hydroxyl numbers [0008].
Nefzger does not expressly teach that the aromatic polyester polyol is liquid at 25°C and is silent regarding its viscosity in comparison to a corresponding polyol compound made to the same hydroxyl number, aromatic content, and calculated functionality but without the use of component (iii). Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nefzger, when modified in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. an aromatic polyester polyol that is liquid at 25°C and has a viscosity in comparison to a corresponding polyol compound made to the same hydroxyl number, aromatic content, and calculated functionality but without the use of component (iii) - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 5. Nefzger teaches the method of Claim 1 wherein the aromatic polyester polyol compound is made from at least one carboxylic acid anhydride (A) and diethylene glycol (B), in a combined weight of 66 – 95 weight percent. The remainder of the composition, i.e. 5 to 34 weight percent, may comprises component (F) (see paragraph spanning Pages 2 – 3). Component (F) is particularly preferably succinic acid (see second full paragraph of Page 4).
Nefzger does not expressly teach the succinic acid is bio-based. However, Tabor teaches the concept of using bio-based succinic acid in the preparation of polyester polyols [0267]. Nefzger and Tabor are analogous art as they are from the same field of endeavor, namely polyester polyols. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide bio-based succinic acid as the succinic acid component in Nefzger. 5 to 34 weight percent of aromatic polyester polyol would then comprise a bio-based material. The motivation would have been that Tabor teaches the use of bio-renewable materials is desirable in the art as a sustainable replacement for petroleum-based materials [0005].
Regarding Claim 7. Nefzger teaches the method of Claim 1 wherein the viscosity of the aromatic polyester polyol ranges from preferably 400 to 3000 mPa∙S (see first full paragraph of Claim 5), i.e. 400 to 3000 centipoise.
Regarding Claim 8. Nefzger teaches the method of Claim 1 wherein the acid value of the aromatic polyester polyol ranges from 0.5 to 3.5 mgKOH/g (see fourth full paragraph of Claim 5).
Regarding Claim 10. Nefzger teaches the method of Claim 1 wherein the aromatic polyester polyol has an average functionality of 1.9 to 3 (see fourth full paragraph of Page 5). The aromatic polyester polyol is further indicated to have an acid value of from 0.5 to 3.5 mgKOH/g (see fourth full paragraph of Claim 5) and a viscosity of from preferably 400 to 3000 mPa∙S (see first full paragraph of Claim 5), i.e. 400 to 3000 centipoise.
Regarding Claims 11 and 12. Nefzger teaches the method of Claim 1 wherein the aromatic polyester polyol is prepared under esterification reaction conditions including a temperature of 100 to 230°C. Esterification may occur in the presence of an esterification catalyst (see first full paragraph of Page 6).
Nefzger does not provide a general teaching with respect to reaction time period and quantity of esterification catalyst. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the reaction time period and quantity of esterification catalyst to ensure a complete and efficient reaction of the components of the reactive mixture. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05)
Claims 13 – 17 and 19 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over CA 2 742 538 to Nefzger et al. in view of US 2016/0053058 to Tabor et al. (hereinafter Tabor).
Regarding Claims 13 – 16 and 21. Nefzger teaches a polyester polyol that is the reaction product of a reaction mixture comprising at least one carboxylic anhydride and diethylene glycol (see last paragraph of Page 2, paragraph spanning Pages 5 – 6, and first full paragraph of Page 6). The at least one carboxylic anhydride is preferably aromatic (see second full paragraph of Page 3); in such embodiments, the polyester polyol corresponds to an aromatic polyester polyol prepared from an aromatic acid compound.
Diethylene glycol corresponds to an aliphatic diol compound. The reaction mixture which forms the polyester polyol may also further comprise dimethylolpropionic acid/2,2-bis(hydroxymethyl)propionic acid(see fifth full paragraph of Page 5). Dimethylolpropionic acid corresponds to a dialkylol alkanoic acid compound of Formula I in which R is a C1 alkyl (methyl) group and R1 and R2 are each hydrogen.
Nefzger does not expressly teach the polyester polyol has a hydroxyl number in the range of 340 to 600 mgKOH/g. However, secondary reference Tabor teaches the concept providing polyester polyols with a hydroxyl number as high as 500 mgKOH/g [0236]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the aromatic polyester polyol of Nefzger with a hydroxyl number as high as 500 mgKOH/g, as taught by Tabor. The motivation would have been that Nefzger teaches the aromatic polyester polyol may be used in the preparation of rigid foams (see paragraph spanning Pages 8 – 9), while Tabor teaches rigid foams generally require higher hydroxyl numbers [0008].
Nefzger does not expressly teach that the aromatic polyester polyol is liquid at 25°C and is silent regarding its viscosity in comparison to a corresponding polyol compound made to the same hydroxyl number, aromatic content, and calculated functionality but without the use of component (iii). Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nefzger, when modified in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. an aromatic polyester polyol that is liquid at 25°C and has a viscosity in comparison to a corresponding polyol compound made to the same hydroxyl number, aromatic content, and calculated functionality but without the use of component (iii) - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 17. Nefzger teaches the aromatic polyester polyol of Claim 13 wherein the aromatic polyester polyol compound is made from at least one carboxylic acid anhydride (A) and diethylene glycol (B), in a combined weight of 66 – 95 weight percent. The remainder of the composition, i.e. 5 to 34 weight percent, may comprises component (F) (see paragraph spanning Pages 2 – 3). Component (F) is particularly preferably succinic acid (see second full paragraph of Page 4).
Nefzger does not expressly teach the succinic acid is bio-based. However, Tabor teaches the concept of using bio-based succinic acid in the preparation of polyester polyols [0267]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide bio-based succinic acid as the succinic acid component in Nefzger. 5 to 34 weight percent of aromatic polyester polyol would then comprise a bio-based material. The motivation would have been that Tabor teaches the use of bio-renewable materials is desirable in the art as a sustainable replacement for petroleum-based materials [0005].
Regarding Claim 19. Nefzger teaches the aromatic polyester polyol of Claim 13 wherein the viscosity of the aromatic polyester polyol ranges from preferably 400 to 3000 mPa∙S (see first full paragraph of Claim 5), i.e. 400 to 3000 centipoise.
Regarding Claim 20. Nefzger teaches the aromatic polyester polyol of Claim 13 wherein the acid value of the aromatic polyester polyol ranges from 0.5 to 3.5 mgKOH/g (see fourth full paragraph of Claim 5).
Regarding Claim 22. Nefzger teaches the aromatic polyester polyol of Claim 13 wherein the aromatic polyester polyol has an average functionality of 1.9 to 3 (see fourth full paragraph of Page 5). The aromatic polyester polyol is further indicated to have a hydroxyl value in the range of 150 to 320 mgKOH/g (see last full paragraph of Page 4); an acid value of from 0.5 to 3.5 mgKOH/g (see fourth full paragraph of Claim 5); and a viscosity of from preferably 400 to 3000 mPa∙S (see first full paragraph of Claim 5), i.e. 400 to 3000 centipoise.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over CA 2 742 538 to Nefzger et al. in view of US 2016/0053058 to Tabor et al. (hereinafter Tabor).
Regarding Claim 23. Nefzger teaches a polyurethane foam composition comprising:
an isocyanate compound;
a polyester polyol;
a blowing agent; and
optionally auxiliary substances and additives (see last two paragraphs of Page 6 and lines 1 – 3 of Page 7).
The polyester polyol is the esterification product of at least one carboxylic anhydride and diethylene glycol (see last paragraph of Page 2). The at least one carboxylic anhydride is preferably aromatic (see second full paragraph of Page 3); in such embodiments, the polyester polyol corresponds to an aromatic polyester polyol based on an aromatic acid component. Diethylene glycol corresponds to an aliphatic diol compound. The reaction mixture which forms the polyester polyol may also further comprise dimethylolpropionic acid (see fifth full paragraph of Page 5). Dimethylolpropionic acid corresponds to a dialkylol alkanoic acid compound of Formula I in which R is a C1 alkyl group and R1 and R2 are each hydrogen. The polyester polyol is indicated to have a hydroxyl value in the range of 150 to 320 mgKOH/g (see last full paragraph of Page 4).
Nefzger does not expressly teach the polyester polyol has a hydroxyl number in the range of 340 to 600 mgKOH/g. However, secondary reference Tabor teaches the concept providing polyester polyols with a hydroxyl number as high as 500 mgKOH/g [0236]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the aromatic polyester polyol of Nefzger with a hydroxyl number as high as 500 mgKOH/g, as taught by Tabor. The motivation would have been that Nefzger teaches the aromatic polyester polyol may be used in the preparation of rigid foams (see paragraph spanning Pages 8 – 9), while Tabor teaches rigid foams generally require higher hydroxyl numbers [0008].
Nefzger does not expressly teach that the aromatic polyester polyol is liquid at 25°C. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nefzger, when modified in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. an aromatic polyester polyol that is liquid at 25°C - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 5, 7 – 17, and 19 – 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 4, 6 – 8, and 11 – 20 of copending Application No. 18/039,319 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variation upon each other.
With respect to Claims 1 – 5, 7 – 17, and 19 – 22, Claims 1 – 4, 6 – 8, and 11 – 20 of Application No. 18/039,319 differ from the instant claims in that they are directed to a polyurethane foam composition and method of making a polyurethane foam, rather than the aromatic polyester polyol itself. However, it is the Office’s position that it would have been obvious to provide the aromatic polyester polyol set forth in Claims 1 – 4, 6 – 8, and 11 – 20 of Application No. 18/039,319 apart from a polyurethane foam composition and method of making a polyurethane foam. The motivation would have been that the aromatic polyester polyol could find utility in additional applications, e.g. the production of non-cellular polyurethanes.
With respect to Claim 23, Claim 1 of Application No. 18/039,319 differs from instant Claim 23 in that it sets forth one or more isocyanate reactive compounds comprising the aromatic polyester polyol, rather than simply the aromatic polyester polyol. However, instant Claim 23 is an open claim in which the reaction mixture “comprises” the recited components. Thus, Claim 23 would encompass embodiments in which the one or isocyanate reactive compounds correspond to the aromatic polyester polyol, as well as embodiments in which additional, unrecited components including unrecited additional isocyanate-reactive compounds.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections to the claims. Accordingly, all claims objections have been withdrawn.
Rejections of Claims 1 – 5, 7 – 17, and 19 – 23 under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the aforementioned claims under 35 U.S.C. 112(b). Accordingly, all outstanding rejections under 35 U.S.C. 112(b) have been withdrawn.
Rejections of Claims 1 – 4, 7 – 16, and 19 – 23 under 35 U.S.C. 102
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the aforementioned claims under 35 U.S.C. 102 in view of Nefzger, as the reference does not expressly teach the polyester polyol has a hydroxyl value in the claimed range. Accordingly, all outstanding rejections under 35 U.S.C. 102 in view of Nefzger have been withdrawn.
Rejections of Claims 5 and 17 under 35 U.S.C. 103
Applicant refutes the rejection in view of Nefzger and Tabor under 35 U.S.C. 103 in light of the amendments to the independent claims. However, it is the Office’s position that Nefzger and Tabor are suitably combined to render obvious all pending claims.
With respect to new limitation in the independent claims setting forth a hydroxyl value of 340 to 600 mgKOH/g: though the Office does note that Nefzger teaches the hydroxyl value of the disclosed polyester polyol is “preferably” from 150 to 320 mgKOH/g, this disclosure does not amount to a requirement that the polyester polyol have a hydroxyl value in the claimed range. Further, as detailed in the new grounds of rejection of the independent claims above, secondary reference Tabor teaches the concept providing polyester polyols with a hydroxyl number as high as 500 mgKOH/g [0236]. It is consequently the Office’s position that, before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the aromatic polyester polyol of Nefzger with a hydroxyl number as high as 500 mgKOH/g, as taught by Tabor. The motivation would have been that Nefzger teaches the aromatic polyester polyol may be used in the preparation of rigid foams (see paragraph spanning Pages 8 – 9), while Tabor teaches rigid foams generally require higher hydroxyl numbers [0008].
Double Patenting
Applicant argues that a terminal disclaimer is no longer necessary to obviate the provisional obviousness-type double patenting rejection over co-pending Application No. 18/039,319, as a terminal disclaimer has been filed in Application No. 18/039,319 with respect to the instant application.
The Office respectfully submits that MPEP 804 (I)(B)(1) states that a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Further, MPEP 804.02(VI) which states: “as a terminal disclaimer is only effective in the application in which it is filed, it is necessary to require that the terminal disclaimer be filed in each application and/or patent that is subject to the common ownership requirement in order to provide complete notice to the public of this obligation.” Thus, to overcome the outstanding obviousness-type double patenting rejection in this application via a terminal disclaimer, it is necessary to file a terminal disclaimer in this application.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764