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 with traverse of Group I. in the reply filed on 7/2/2026 is acknowledged. The traversal is on the ground(s) that other bodies did not hold unity requirement. This is not found persuasive because response does not show, in fact, supposed errors in the holding.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15 & 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected grouping of invention, there being no allowable generic or linking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. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/2/2026.
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 8 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 is confusing as to intent because it can not be definitively determined what effect of a further limitation is intended through referring to the compound of formula 1 as being part of the “catalyst” when claim 1 does not refer to the compound of formula 1 “e)” as part of the catalyst “d)”.
Appropriate correction is required.
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) 1-10, 12-14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rister, Jr. et al.(2016/0200854).
Rister, Jr. et al. discloses methods for forming polyurethane by mixing and reacting, at Index values as claimed[note: claim 6], aromatic polyisocyanates, polyols, amine catalysts, including ZR-50[note: claims 9 & 10], water as blowing agent [note: claims 5 & 13], additional additives and cyclic ureas in overlap with those as defined by the claims in amounts meeting the requirements set forth by applicants’ claims, at a location sufficient to constitute a mold in the patentable sense [note: claim 14] in order to form a polyurethane product as claimed {See Abstract, Structures (I) & (II), paras [0021]-[0028] & [0043]-[0070], Examples and Tables}. Regarding claim 8, owing to the closeness of the make-up of amine catalysts and amounts employed, it is held that it would necessarily follow that resultant reactant mixes would have tertiary amine contents as claimed.
Claims differ in that overlap of cyclic urea compound selection is not exact. However, overlap is evident {paras [0021]-[0028] and Structures (I) & (II)}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized any of the cyclic ureas provided for by Rister, Jr. et al. in performing the polyurethane forming processes of Rister, Jr. et al. for the purpose of imparting their recognized aldehyde reduction effects 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) 11 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rister, Jr. et al.(2016/0200854) as applied to claims 1-10, 12-14 and 17 above, and further in view of Hamilton(6,433,032).
Claims differ in that metal/tin catalyst inclusion as claimed is not required. However, Hamilton discloses tin catalysts as claimed to be well known in polyurethane synthesis for their catalytic effect {column 5 lines 41-61}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized the metal/tin catalysts of Hamilton in performing the polyurethane forming processes of Rister, Jr. et al. for the purpose of imparting their recognized catalytic function 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.
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
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