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
Applicant’s election without traverse of Group I, claims 1-18 in the reply filed on 4/7/2026 is acknowledged.
Claims 19-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/7/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, International Application PCT/EP2022/075171, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically, the subject matter of “at least one epoxide compound (compound I)” and “the epoxide groups from compound I when present in the formulation is in the range 0.5 to 1.25” of claim 1 is not found within the international application. Rather, written support is only found for the further inclusion of generic polyepoxides. Any relation between epoxide compound and the 0.5-1.25 ratio is not found. Claims 2-18 depend from claim 1 and therefore contain all of the limitations of claim 1.
Further, the limitations of claims 2, 4-7, 12, and 13 are not found within the international application. Written support for the 1 to 99 wt% range of claim 10 is not found within the international application.
Consequently, claims 1-18 are construed as having a filing date corresponding with 18/240,579: 8/31/2023.
Drawings
The drawings are objected to because the axis labels/numbers of Figure 9 are illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Applicant’s definition within Page 7, Lines 30-33 is acknowledged, particularly: “By water provided by the water source is here meant water contained in the water source and/or generated or released by the water source during the curing conditions to obtain a self-blowing foam from a formulation of the invention.”
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.
Claims 1-18 are 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 1 refers to “at least two cyclic carbonate groups at the end of the chain”. The terminology “the chain” lacks antecedent basis. Therefore, the intended scope of the claim is unclear.
Claim 1 recites “the molar ratio of compound B towards the cyclic carbonate groups from compound A and optionally the epoxide groups from compound I when present”. It is generally unclear whether the inclusion of epoxide groups in the denominator itself is optional or if “optionally” and “when present” are redundant (i.e. epoxy must be used in the calculation when epoxy compound is present). Accordingly, the intended scope of the claim is unclear. In the interest of compact prosecution, the latter interpretation is taken. Removal of “optionally” is suggested to resolve this issue.
As claims 2-18 depend from claim 1, they are rejected for the same issue discussed above.
Claims 2-13 and 15-18 recite the phrases “preferably”, “in particular”, “more particularly”, “more in particular”, “even more particularly”, “more preferably”, and “most preferably”. The phrases render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 5, 12, and 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th 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 5 recites “wherein compound I is selected from a compound comprising one epoxide group and/or polyepoxide compound comprising more than one epoxide group”. Any feasible “epoxide compound” falls within the scope of a compound comprising one epoxide group and/or polyepoxide compound comprising more than one epoxide group. Therefore, claim 5 fails to further limit the subject matter of the claim upon which it depends.
Claim 12 recites “wherein compound B is selected from at least one polyamine having at least 2 primary amine groups and at least one polyamine having at least 3 primary amine groups”. Claim 1 already requires the presence of an amine having at least 2 primary amine groups. Therefore, claim 12 fails to further limit the subject matter of the claim upon which it depends.
Claim 13 recites “wherein compound B is selected from at least one polyamine having at least 2 primary amine groups”. Claim 1 already requires the presence of an amine having at least 2 primary amine groups. Therefore, claim 13 fails to further limit the subject matter of the claim upon which it depends.
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
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) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Detrembleur (WO 2021/004993 A1) in view of Zeller (US 2021/0261772 A1).
Regarding Claims 1 and 3, Detrembleur teaches curable isocyanate-free formulations for preparing polyurethane foams (Abstract; Examples) and describes examples comprising at least one multifunctional cyclic carbonate having at least two cyclic carbonate groups at the end of the chain, multifunctional amine having at least two primary amine groups, and catalyst whereby a NH2:carbonate molar ratio of B to A is roughly 2.5 : 3 = 0.83 (Example 11 of Pages 37-38; Materials of Page 32). Foaming is achieved via addition of thiol (Page 26, Lines 1-7) whereby other physical/chemical blowing agents can be added (Page 24, Lines 26-28). Therefore, Detrembleur differs from the subject matter claimed with respect to the further inclusion of water blowing agent.
Zeller teaches it was known in the art carbonate-based chemical blowing agents can be used for NIPU foams (Abstract; ¶ 33-36). Such blowing agents have advantages in terms of favorable cost and procuring mold resistance (¶ 35). Zeller also indicates the acid component of the blowing agent can be used to generate amide linkages in the foam network, thus allowing for improved and/or tailored material properties (¶ 36). It would have been obvious to one of ordinary skill in the art to utilize the carbonate blowing agents of Zeller as additional chemical blowing agent of Detrembleur because such blowing agents are favorable in terms of cost and can procure mold resistance and tailored material properties as taught by Zeller.
Zeller teaches the carbonate system uses carbonate, acid, and water as an accelerant (¶ 34-36). Zeller describes embodiments where 3.34 pbw of water is used relative to 79.3 pbw of carbonated linseed oil with an equivalent weight of 222.3 g/mol (¶ 45; Table 1), equivalent to a water:carbonate ratio of 0.52. Alternatively, to the extent Zeller does not describe a specified range of water with respect to cyclic carbonate, Zeller nevertheless indicates the quantity of water needs to be adjusted so as quicken carbonate decomposition and to account for amines lost owing to amide/carbamate formation (¶ 36). Thus, Zeller teaches the quantity of water used is a known result effective variable subject to routine optimization by one of ordinary skill in the art. 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 quantities of water within the scope of the present claims so as to produce desired end results.
Regarding Claim 2, Detrembleur teaches Example 11 can further include epoxy compound E-Si2330 in amounts of 0.02 epoxy equivalents (Page 37, Lines 18-20; Page 32). Detrembleur differs from the subject matter claimed with respect to the amount of epoxy compound included. In this regard, Detrembleur teaches the amount of epoxy compound ranges widely, from 0-50 wt% (Page 24, Lines 16-19) for various epoxy compounds such as bisphenol A diglycidyl ether (Page 23, Lines 1-4; equiv weight = 170.2 g/mol). Accordingly, Detrembleur is seen to be suggestive of overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Detrembleur suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Detrembleur. See MPEP 2123.
Regarding Claims 4-7, Detrembleur teaches various epoxy compounds such as bisphenol A diglycidyl ether (Page 23, Lines 1-4), consistent with formula (X) of claim 4. Various linear and aromatic epoxide compounds are described (Page 23, Lines 1-4).
Regarding Claim 8, Detrembleur teaches A compounds such as Tricc (Page 32), which falls within the scope of Formula (I).
Regarding Claim 9, Detrembleur teaches the use of DBU amine catalyst (Page 37, Line 20).
Regarding Claims 10 and 11, Detrembleur teaches 18-80 wt% of compound A and 10-80 wt% of compound B (Page 23, Lines 5-12).
Regarding Claims 12 and 13, Detrembleur teaches the use of DiA as a polyamine having 2 primary amine groups (Page 32). Detrembleur 10-80 wt% of compound B (Page 23, Lines 5-12). The disclosed range overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Detrembleur suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Detrembleur. See MPEP 2123.
Regarding Claim 14, Zeller describes embodiments where 3 wt% of water is used (Table 1). Alternatively, while not describing a specified range of water with respect to cyclic carbonate, Zeller nevertheless indicates the quantity of water needs to be adjusted so as quicken carbonate decomposition and to account for amines lost owing to amide/carbamate formation (¶ 36). Thus, Zeller teaches the quantity of water used is a known result effective variable subject to routine optimization by one of ordinary skill in the art. 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 quantities of water within the scope of the present claims so as to produce desired end results.
Regarding Claim 15, Zeller teaches the use of 5.1 wt% of ammonium bicarbonate (Table 1) and Detrembleur describes the use of 1.5 wt% of clay (Page 37). While not indicating the materials are hydrated materials, the combination of references nevertheless suggest formulations that ultimately include water. The formulations obtained are seen to be no different in structure than what would be obtained should such materials be hydrated.
Regarding Claim 16, Detrembleur teaches 0.1-15 wt% of catalyst compound D (Page 24, Lines 1-3).
Regarding Claim 17, Detrembleur teaches the use of DiTh multifunctional thiol compound (Page 32; Example 11), which falls within the scope of (XII). The content of polythiol compound C can range from 2-40 wt% (Page 23, Lines 13-15).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Detrembleur (WO 2021/004993 A1) in view of Zeller (US 2021/0261772 A1) and Detrembleur-2 (WO 2022/128822 A1).
The discussion regarding Detrembleur and Zeller within ¶ 26-38 is incorporated herein by reference.
Regarding Claim 18, Detrembleur differs from the subject matter claimed in that masked thiol precursor is not described. Detrembleur-2 teaches it was known in the art masked thiol precursors can be included in NIPU foams alone or in combination with thiols (Abstract; Page 4, Lines 21-26). Detrembleur-2 teaches the masked thiols alleviate bad smells and provide better viscosity control (Page 3, Line 24 to Page 4, Line 18). It would have been obvious to one of ordinary skill in the art to utilize the masked thiol precursors of Detrembleur-2 within the compositions of Detrembleur because doing so would alleviate bad smells and provide better viscosity control as taught by Detrembleur-2. Detrembleur-2 teaches the content of masked thiol precursor compound C can range from 1-60 wt% (Page 31, Lines 10-12).
Claim(s) 1 and 3-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeller (US 2021/0261772 A1) in view of Grignard (Green Chem. 2016, 18, 2206; cited 11/29/2023).
Regarding Claims 1 and 3, Zeller teaches curable isocyanate-free formulations to create polyurethane foams (Abstract; Examples) and describes embodiments where the formulation comprises 79.3 pbw of carbonated linseed oil with an equivalent weight of 222.3 g/mol, 20.7 pbw of hexamethylenediamine (equivalent weight 58.1 g/mol), and 3.34 pbw of water (Table 1), eqivalent to a molar ratio of water:carbonate of 0.52 and a NH2:carbonate ratio of 1. The particular formulation of Zeller differs from the subject matter claimed in that the cyclic carbonate groups are not “at the end of the chain”.
In this regard, it was known in the art that NIPU foams can be prepared using various cyclic carbonate monomers, inclusive of those where cyclic carbonate functionality is “at the end of the chain” and “within the chain”. See for instance Schemes 1-3 and Examples of Grignard. Zeller teaches the selection of cyclic carbonate compound is made depending on cost and property targets, whereby non-sterically hindered cyclic carbonates exhibit faster reaction rates (¶ 24). It would have been obvious to one of ordinary skill in the art to utilize compounds whose cyclic carbonate groups are “at the end of the chain” such as those taught by Grignard because doing so would promote faster reaction rates as taught by Zeller.
Regarding Claims 4-7, as epoxide compound is optional in claim 1, any further limitations regarding the identity of the epoxide compound is met by the disclosure of Zeller.
Regarding Claim 8, Grignard teaches cyclic carbonate compounds such as PEG100 dicarbonate (Scheme 2), which is within the scope of Formula (I).
Regarding Claims 9 and 16, Zeller teaches the use of DBU amine catalyst at 0.3 wt% (Table 1).
Regarding Claims 10-14, Zeller teaches 70.4 wt% of compound A, 18.4 wt% of compound B, and 3 wt% water, compound B being a polyamide having at least 2 primary amine groups.
Regarding Claim 15, Zeller teaches the use of 5.1 wt% of ammonium bicarbonate (Table 1). While not indicating the materials are hydrated materials, the combination of references nevertheless suggests formulations that ultimately include water. The formulations obtained are seen to be no different in structure than what would be obtained should such materials be hydrated.
Related Art
Monie (Angew. Chem. Int. Ed. 2020, 59, 17033-17041) is cited as relevant, but cumulative with respect to the Detrembleur WO reference above. Monie was published 6/29/2020.
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, Curtis Mayes can be reached at (571)272-1234. 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
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