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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
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.
Claim Objections
Claim 13 is objected to because of the following informalities: “and or” should be “and/or”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 recites “wherein compound B is selected from xylylenediamine (XDA), 1,3-cyclohexanebis(methylamine) and/or triethyleneglycoldimaine and optionally selected from diethylenetriamine (DETA) and/or tris(2-aminoethyl)amine (TREN)”. The first part requires that compound B be XDA, 1,3-cyclohexanebis(methylamine) and/or triethyleneglycoldimaine, but the second part appears to indicate such a selection is optional. Therefore, the intended scope of the claim is unclear.
Claim Rejections - 35 USC § 103
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). Various diamines such as xylylenediamine is taught (Page 13, Lines 18-28). Detrembleur teaches 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 ¶ 13-25 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, 3-12, and 14-16 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 and 11, Zeller teaches 70.4 wt% of compound A, 18.4 wt% of compound B, and 3 wt% water, compound B being a polyamine having at least 2 primary amine groups (Table 1).
Regarding Claim 12, Zeller teaches embodiments where diamine is sole polyamine used (Table 1).
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.
Claim(s) 13 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) and Detrembleur (WO 2021/004993 A1).
The discussion regarding Zeller and Grignard within ¶ 30-37 is incorporated herein by reference.
Regarding Claim 13, Zeller teaches rigid or flexible foams can be made (¶ 22) whereby diamines such as hexamethylenediamine can be used (Table 1). Zeller differs from the subject matter claimed in that diamines of claim 13 is not described.
Detrembleur also pertains to isocyanate-free polyurethane foams from multifunctional cycle carbonate and multifunctional amine compound (Abstract) and notes hexamethylenediamine and xylylenediamine are both suitable diamines, particularly for achieving relatively rigid foams (Page 13, Line 18 to Page 14, Line 3). Accordingly, it would have been obvious to one of ordinary skill in the art to substitute diamines such as hexamethylenediamine with xylylenediamine, thereby predictably affording the workable creation of isocyanate-free polyurethane foams in accordance with the teachings of Detrembleur.
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Applicant argues the examiner has failed to provide a motivation for Detrembleur/Zeller. This is not found persuasive. As set forth within the rejection above, 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. The examiner remains of the position that such is sufficient motivation to support the combination of references.
Applicant admits Zeller describes water-to-cyclic carbonate molar ratios consistent with what is claimed, but argues the reference does not suggest formulation principles surrounding the ratio. Applicant also urges the inclusion of epoxide is an important formulation feature. This is not found persuasive. The combination of references suggests the limitations at issue. Therefore, the limitations are met. The prior art need not recognize the criticality of a limitation, but rather the prior art needs to only teach that limitation. The rejections of record have shown that the claimed limitation is present in the prior art. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See MPEP 2144(IV).
Applicant argues the cited water-to-cyclic carbonate ratio pertains to an internal carbonate material rather than carbonate groups at the end of the chain. This is not found persuasive. 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). Thus, Zeller provides no indication that such a water to carbonate ratios are only applicable toward certain carbonate materials.
With respect to Zeller/Grignard, Applicant argues the examiner’s reasoning for combining assumes that internal and external cyclic carbonates are interchangeable. This is not found persuasive. Applicant is referred to the rejections above. 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. Therefore, contrary to what is stated within Applicant’s arguments, no such assumption is made. The examiner maintains the position that the teachings of the prior art provide sufficient motivation to support the combination of references.
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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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