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
The species election requirement is withdrawn. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See Page 13, Lines 16-17. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it merely refers to purported merits or speculative applications of the invention. The process steps and bases/catalysts associated with hydrolysis are not set forth. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
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) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (U.S. Pat. No. 5,208,379).
Regarding Claim 15, The limitation “the active hydrogen containing polyether and/or the organic polyamine obtained from the method according from claim 1” is a product-by-process limitation embedded within a process claim. There does not appear to be a requirement that the active method steps of claim 1 be performed within the process of claim 15.
Yang teaches methods of producing polyurethanes with polyether polyols and/or organic polyamines obtained from hydrolyzing polyurethanes in the presence of base and catalysts (Abstract; Examples; Col. 7, Lines 25-31). Yang teaches it was known polyurethanes are versatile materials useful in the production of foams (Col. 1, Lines 20-21). The polyol/polyamine materials taught by Yang are seen to be no different in structure than what would be “obtained from” the process of claim 1.
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 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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (U.S. Pat. No. 5,208,379) in view of Scott (GB 858127A).
Regarding Claims 1-7, 17, and 18, Yang teaches methods of hydrolyzing polyurethanes to recover polyether polyols and organic polyamines via contacting polyurethane with water, base, and quaternary ammonium catalyst with at least 15 carbons (Abstract) such as tetrabutylammonium hydrogen sulfate (Example 1), which has 16 carbons. Yang teaches various bases such as sodium hydroxide (Col. 3, Lines 17-32). Yang differs from the subject matter claimed in that an alkali metal / ammonium base with a pKb from 1-10 is not described. Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of sodium hydroxide, ammonium hydroxide, and trisodium phosphate (Page 6, Lines 39-49). In view of the teachings of Scott, it would have been obvious to one of ordinary skill in the art to substitute bases such as sodium hydroxide with others such as ammonium hydroxide or trisodium phosphate, thereby predictably affording hydrolysis of polyurethane foam substrates. Ammonium hydroxide has a pKb ~ 4.75 and triphosphate has a pKb ~ 1.77 as indicated within the specification (Table 1).
Regarding Claim 8, Yang teaches organic sulfonate catalysts such as alpha-olefin sulfonates (Col. 5, Line 35 to Col. 6, Line 45).
Regarding Claim 9, Yang teaches separating and recovering organic polyamine and polyether polyols (Col. 7, Lines 10-31).
Regarding Claims 10 and 16, Yang teaches polyurethanes formed from polyether polyols and organic polyisocyanates (Col. 2, Lines 53) such as foams (Col. 2, Lines 63-66).
Regarding Claim 11, Yang teaches examples where reaction occurs at 150 degrees C (Example 1).
Regarding Claims 12-14, Yang teaches embodiments where 50 mL of aqueous base solution and 0.5 g of catalyst is used relative to 50 g of polyurethane foam (Example 1), equivalent to roughly 1:1 base:polyurethane and 1 wt% catalyst relative to polyurethane.
Regarding Claim 15, Yang teaches methods of producing conventional polyurethanes with the resulting polyether polyols / organic polyamines (Col. 7, Lines 27-31). Yang teaches it was known polyurethanes are versatile materials useful in the production of foams (Col. 1, Lines 20-21).
Regarding Claim 19, Yang teaches the anion of the catalyst can be species such as chloride, bromide, or acetate (Col. 4, Lines 20-22).
Regarding Claim 20, Yang teaches embodiments where 50 mL of aqueous base solution and 0.5 g of catalyst is used relative to 50 g of polyurethane foam (Example 1), equivalent to roughly 1:1 base:polyurethane. Yang differs from the subject matter claimed in that saturated concentrations is not described. In this regard, Yang teaches the amount of base (i.e. concentration) is not particularly critical so long as it promotes hydrolysis at a practicable rate (Col. 3, Lines 25-28). Scott teaches it was known base can be provided either dilute or concentrated, whereby favorable reaction temperatures and results can be achieved depending on the degree of alkalinity and pH of the mixture (Page 6, Lines 39-62). Moreover, since the reaction being performed is hydrolysis (reacting with water), the overall quantity of water present would also influence reaction parameters. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable base/water contents within the scope of the present claims, inclusive of saturated aqueous base mixtures, so as to produce desired end results.
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 1-7 and 9-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/042,595. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, the copending application claims methods of hydrolyzing polyurethanes using base with alkali metal and quaternary ammonium catalyst with 6-14 carbon atoms to yield active hydrogen containing polyether and organic polyamine (Claims 1-3).
The copending claims require that the base exhibit a pKb below 1 whereas the instant claims require 1 to 10. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America V. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the present case, it would have been obvious to one of ordinary skill in the art that bases with pKb's just outside the ranges of the copending application (e.g. pKb = 1.00 or 1.05) are close to the extent that there would be an expectation that the same features (yielding a polyether polyol / polyamine) would result. The remaining limitations claimed are found within the claims of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 9, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7, 9, 13, and 17-19 of copending Application No. 18/575,871 in view of Scott (GB 858127A).
Specifically, the ‘871 application claims a process of producing organic polyamine comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 (Claims 1 and 3). Although the application does not indicate the base contains alkali metal cation and/or ammonium cation, Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of ammonium hydroxide and trisodium phosphate (Page 6, Lines 39-49). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize workable bases such as ammonium hydroxide and trisodium phosphate within the protocols of the ‘871 claims, thereby predictably affording the hydrolysis/depolymerization of polyurethanes. The remaining limitations are found within the ‘871 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 9, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7, and 9 of copending Application No. 18/575,876 in view of Scott (GB 858127A).
Specifically, the ‘876 application claims a process of producing polyether polyol comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 (Claims 1 and 7). Since the same materials/protocols is described, it stands to reason organic polyamine would also result. Although the application does not indicate the base contains alkali metal cation and/or ammonium cation, Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of ammonium hydroxide and trisodium phosphate (Page 6, Lines 39-49). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize workable bases such as ammonium hydroxide and trisodium phosphate within the protocols of the ‘871 claims, thereby predictably affording the hydrolysis/depolymerization of polyurethanes. The remaining limitations are found within the ‘876 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 9, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 11 of copending Application No. 18/575,870.
Specifically, the ‘870 application claims a process of producing polyether polyol comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 and alkali metal (Claims 1 and 2). Since the same materials/protocols is described, it stands to reason organic polyamine would also result. Therefore, the copending claims anticipate the instant claims. The remaining limitations are found within the ‘870 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 9, 10, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 13, and 15-17 of copending Application No. 18/575,878 in view of Scott (GB 858127A).
Specifically, the ‘878 application claims a process of producing organic polyamine comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 (Claims 1 and 3). Although the application does not indicate the base contains alkali metal cation and/or ammonium cation, Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of ammonium hydroxide and trisodium phosphate (Page 6, Lines 39-49). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize workable bases such as ammonium hydroxide and trisodium phosphate within the protocols of the ‘878 claims, thereby predictably affording the hydrolysis/depolymerization of polyurethanes. The remaining limitations are found within the ‘871 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 9, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 11 of copending Application No. 18/575,864 in view of Scott (GB 858127A).
Specifically, the ‘864 application claims a process of producing polyether polyol comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 (Claims 1 and 9). Since the same materials/protocols is described, it stands to reason organic polyamine would also result. Although the application does not indicate the base contains alkali metal cation and/or ammonium cation, Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of ammonium hydroxide and trisodium phosphate (Page 6, Lines 39-49). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize workable bases such as ammonium hydroxide and trisodium phosphate within the protocols of the ‘871 claims, thereby predictably affording the hydrolysis/depolymerization of polyurethanes. The remaining limitations are found within the ‘864 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 9, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9, 11, and 13 of copending Application No. 18/575,869 in view of Scott (GB 858127A).
Specifically, the ‘869 application claims a process of producing polyether polyol comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 (Claims 1 and 9). Since the same materials/protocols is described, it stands to reason organic polyamine would also result. Although the application does not indicate the base contains alkali metal cation and/or ammonium cation, Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of ammonium hydroxide and trisodium phosphate (Page 6, Lines 39-49). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize workable bases such as ammonium hydroxide and trisodium phosphate within the protocols of the ‘871 claims, thereby predictably affording the hydrolysis/depolymerization of polyurethanes. The remaining limitations are found within the ‘869 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 9, 14, 15, 16, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, and 12 of copending Application No. 18/575,873 in view of Scott (GB 858127A).
Specifically, the ‘873 application claims a process of producing polyether polyol comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 (Claims 1 and 11). Since the same materials/protocols is described, it stands to reason organic polyamine would also result. Although the application does not indicate the base contains alkali metal cation and/or ammonium cation, Scott also pertains to the hydrolysis of polyurethane foams (Page 1; Page 5, Lines 83-112). Scott teaches various bases are known to be suitable, inclusive of ammonium hydroxide and trisodium phosphate (Page 6, Lines 39-49). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize workable bases such as ammonium hydroxide and trisodium phosphate within the protocols of the ‘871 claims, thereby predictably affording the hydrolysis/depolymerization of polyurethanes. The remaining limitations are found within the ‘873 claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1-7, 9, 11, 12, and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 9, 10, 13-20 of copending Application No. 18/706,399.
Specifically, the ‘399 application claims a process of producing polyether polyol comprising hydrolyzing polyurethanes with the same catalysts using a base having a pKb ranging from 1-10 and alkali metal (Claims 1 and 2). Since the same materials/protocols is described, it stands to reason organic polyamine would also result. Therefore, the copending claims anticipate the instant claims. The remaining limitations are found within the ‘399 claims.
This is a provisional nonstatutory double patenting rejection.
Amendment Suggestions
The anticipation rejection with respect to claim 15 can be overcome by explicitly requiring the process steps of claim 1, for example:15. [[A]] The method of claim 1, further comprising:
producing a polyurethane foam with the active hydrogen containing polyether and/or the organic polyamide
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571)272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759