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. in the reply filed on 12/9/2025 is acknowledged.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected grouping of invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/9/2025.
Claim Objections
Claim 1 is objected to because of the following informalities: In setting forth component C) of this claim, the term “weight” is missing between “molecular” and “diisocyanate” and needs to be inserted. 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.
Claims 1-11 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.
In regards to the respective alternatives of polyurethane foam and polyurethane hydrogel, the claims are confusing as to intent because it can not be definitively ascertained how a polyurethane foam can be formed from the materials as claimed without foaming and curing or how a polyurethane hydrogel can be formed from the materials as claimed without curing as is expressed as an option through the recitation “optionally foamed and cured” in the third from last line of claim 1.
Appropriate correction is required.
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.
Claim 9 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. This claims through its recitation as optional Step IV) which is concerned with the introduction of component B), a required component of claim 1 from which it depends, fails to include all the limitations 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
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schonberger et al.(2013/0136785).
Schonberger et al. discloses methods for producing polyurethane foams by mixing foaming and curing (i.) isocyanate functional prepolymers prepared from A1) aliphatic diisocyanates and A2) polyoxyalkylene polyols as claimed, (ii.) water in amounts as claimed, wherein prepolymers of preferred NCO contents of 1.5-3% are disclosed and good polyurethane foams for wound dressing are obtained (see paragraphs [0011]-[0037] , [0040], [0139], [0140] and Examples).
Regarding claim 8, though viscosities as claimed are not particularly expressed for the prepolymers of Schonberger et al., owing to the closeness of the make-up of the prepolymers formed during the processes it is held that these features would have necessarily followed from the formation of the prepolymers of Schonberger et al.
Schonberger et al. differs from applicants’ claims in that it does not particularly require component A3 of the claims. However, it does identify that polyhydric alcohols inclusive of the diols as claimed may be utilized in the preparations of their disclosure (see para [0046]). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized these diols of Schonberger et al. in any amount withing the preparations of Schonberger et al. for the purpose of imparting their recognized chain building and lengthening, isocyanate reactive effects to the developing prepolymers of Schonberger et al. in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sutterlin et al.(WO 2019/137,879) {hereon reference will be made to the equivalent US2019/0218329}.
Sutterlin et al. discloses methods for producing polyurethane foams by mixing foaming and curing (i.) isocyanate functional prepolymers prepared from A1) aliphatic diisocyanates and A2) polyoxyalkylene polyols as claimed, (ii.) water in amounts as claimed, wherein prepolymers of preferred NCO contents of 1.5-3% are disclosed and good polyurethane foams for wound dressing are obtained (see paragraphs [0014]-[0045] ,[0070], [0096] and the Examples).
Regarding claim 8, viscosities as claimed are disclosed {see para [0097]}.
Sutterlin et al. differs from applicants’ claims in that it does not particularly require component A3 of the claims. However, it does identify that polyhydric alcohols inclusive of the diols as claimed may be utilized in the preparations of their disclosure (see para [0041]). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized these diols of Sutterlin et al. in any amount withing the preparations of Sutterlin et al. for the purpose of imparting their recognized chain building and lengthening, isocyanate reactive effects to the developing prepolymers of Sutterlin et al. in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sutterlin et al.(‘330) is cited for its closely related and relevant subject matter to the instant concern.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/Primary Examiner, Art Unit 1765