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 .
Status of Claims
Claims 1-20 are pending in the current application.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14, for the purposes of formatting, requires a space after R-1. “R1_comprises ….”
Appropriate correction is required.
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 13 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.
Claim 13 depicts the variables “a” and “b” that render the claim indefinite. These variables are not defined by the claim, are not defined by claim 1 from which claim 13 depends, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Although claim 4 provides definitions for variables that are labeled as “a” and “b,” claim 13 does not directly or indirectly depend from claim 4. Therefore, it is unclear if the claim 13 variables of “a” and “b” should be interpreted as the same variables with the same values as set forth in claim 4, or if the claim 13 variables of “a” and “b” should be defined differently. For the purposes of examination, claim 13 is interpreted as reciting “a is between 0 and 30, inclusively, and b is between 0 and 20, inclusively.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 8, 9, 11, and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “n is between 0 and 30, inclusively, and m is between 0 and 20, inclusively.” Claim 4 directly depends from claim 1, where claim 1 recites “n is between 0 and 20, inclusively, and m is between 0 and 20, inclusively.” Claim 4 improperly broadens the scope of variable n, and therefore, is deficient under 35 USC 112(d). For the purposes of examination, Claim 4 is interpreted as instead reciting “n is between 0 and 20, inclusively, and m is between 0 and 20, inclusively.”
Claim 11 depicts variable R1 defined as “R1 comprises at least one of carbon, hydrogen, or oxygen.” Claim 11 directly depends from claim 10, where claim 10 depicts a structure that does not include R1, and the position where R1 would be present is implicitly defined as a single hydrogen atom due to conventional chemical structure nomenclature to yield a balanced electron valence. Claim 11 improperly broadens the scope of the claim 10 structure, and therefore, is deficient under 35 USC 112(d). For the purposes of examination, Claim 11 is interpreted as R1 being solely represented by a single hydrogen atom to yield a balanced electron valence structure. It is noted that Claim 12 also improperly depicts R1 as an ethylene group.
Claims 8, 9, and 12 are also rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claims 1-5, 8, 9, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Detrembleur et al. (WO 2022/128822 A1).
Regarding Claims 1, 2, 3, 4, and 16, Detrembleur teaches a curable isocyanate-free (non-isocyanate) formulation for preparing a polyurethane foam (a composition) by reacting a multifunctional amine (polyamine) in a composition comprising a compound F of multifunctional cyclic carbonates having at least two cyclic carbonate groups (Detrembleur, Abstract, Pgs 1, 14-16, 23-26). Detrembleur teaches the compound F includes compounds having structures represented by Formula (IX) and Formula (X), where both of these formulas render obvious the structure of claims 1, 2, 3, and Formula (IX) renders obvious claim 4 when R17, R19, R21, and R24 are linear hydrocarbon chains having 2 carbon atoms; n, o, and p are equal to 1-21; q is equal to 2-6; R16, R18, R20, and R23 are linear hydrocarbon chains having 2-20 carbon atoms; and R22 is a linear hydrocarbon chain having 1 carbon atom (Detrembleur, Pgs 25-26). It would have been obvious to one of ordinary skill in the art to have tried and to have selected compound F structures that render obvious the claimed structures from the finite number of configurations disclosed by Detrembleur with a predictable and reasonable expectation of success where any differences would be considered minor and obvious (MPEP 2143).
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Detrembleur Compound F – Formula (IX) & Formula (X)
Regarding Claims 5, 8, and 9, Detrembleur teaches compound F includes compounds having structures represented by Formula (IX) that render obvious the structures of claims 5, 8, and 9 when R17 and R21 are linear hydrocarbon chains having 2 carbon atoms; n and p are each equal to 3; R16 and R20 are each linear hydrocarbon chains having 7 carbon atoms; and the annotated group of R19 and R18 represents the claimed R group (Detrembleur, Pgs 25-26). It would have been obvious to one of ordinary skill in the art to have tried and to have selected compound F structures that render obvious the claimed structures from the finite number of configurations disclosed by Detrembleur with a predictable and reasonable expectation of success (MPEP 2143).
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Detrembleur Compound F – Formula (IX)
Regarding Claim 17, Detrembleur teaches the polyurethane foam has a Young’s (compression) modulus of 0.005 MPa to 1000 MPa (Detrembleur, Pgs 38, 47). Detrembleur’s range falls within the claimed range of 0-1500 MPa, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 18, Detrembleur teaches the polyurethane foam can exhibit a stress at break (tensile strength) of 1.6 to 2.4 MPa (Detrembleur, Pg 47). Detrembleur’s range falls within the claimed range of 0-30 MPa, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 19, Detrembleur teaches the polyurethane foam can exhibit a deformation (elongation) at break of 77-97% (Detrembleur, Pg 47). Detrembleur’s range falls within the claimed range of 0-500%, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 20, Detrembleur teaches the polyurethane foam has a glass transition temperature from -40oC to 200oC (Detrembleur, Pg 37). Detrembleur’s range encompasses the claimed range of 15-65oC, and therefore, renders obvious the claimed range (MPEP 2144.05).
Allowable Subject Matter
Claims 6, 7, 10, 14, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11 and 12 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 13 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art of record does not disclose or render obvious the structures of claims 6, 7, and 10-15. In view of the foregoing, claims 6, 7, and 10-15 are considered to contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782