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 Arguments
Applicant's arguments filed 07/23/2026 have been fully considered but they are not persuasive.
Applicants have argued that their unexpected results in a lower viscosity at room temperature of the composition rebut the prima facie case of obviousness. In response, the examiner has considered applicant's examples, and the position is taken that they are insufficient for the following reasons.
When looking to showings of results to overcome a rejection, the following must be considered:
Results must be Unexpected, commensurate in scope, and compare the closest prior art:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
***The alleged improvement in lower viscosity does not appear to be unexpected based on the teachings of the secondary reference that teach the addition of low molecular weight diols including those within the claimed scope to lower viscosity values of a composition containing a tertiary amine and a polyisocyanate component.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
Firstly, Applicant’s argument is not commensurate in scope with the claims which do not provide any connection between recited components and the properties, including viscosity values and which do not exclude additional components which could lead to improvements in the alleged unexpected results, solvents/diluents.
The showings are not commensurate in scope with very broad claims, which encompass hundreds of compounds, with respect to the isocyanate component, the compound of formula (I) and the diol with 3 to 12 carbon atoms. In the examples, only three specific types of diols were used in combination with only 1 type of polyisocyanate and 1 type of amine component corresponding to formula (I) within claim 1. Claim 1 recites a genus of each component and the the claims are open to any amount of each component and applicants allege that this results in the unexpected results. Any showing based on “compositions” must be reasonable commensurate in scope with both the kind and amount of reactant that results in the alleged unexpected viscosity values. The tables are clearly not reasonably commensurate given that applicants' have demonstrated a lower viscosity from such a small sample size pertaining to the polyisocyanate component, the amine component of formula (I), and the diol component.
Secondly, the applicant must compare the closest prior art. The closest prior art is compared.
Finally, although Applicant has provided comparative examples between a different composition (Meisenheimer) and that prepared according to Applicant, the examples do not test the full scope either of the prior art or of Applicant’s claim. It shows only that under some circumstances, a composition may demonstrate improved viscosity values. The specification does not provide sufficient objective data to show 1) that a person of ordinary skill in the art would not have optimized the concentrations of known and common components as evidenced by the prior art or 2) that inventor’s/ declarant’s conclusion of "unexpected results" by inventor/ declarant is supported by the evidence. An improvement made by obvious modifications, such as substituting a diol component that acts a solvent/diluent to lower viscosity is not an unexpected result.
Finally, applicants argue that the method steps of claim 10 are not taught in the references because the Slack reference is silent with respect to the content of oligomeric polyisocyanates. This is not found persuasive because Meisenheimer discloses wherein the content of the cured oligomeric polyisocyanates in the polyisocyanate composition using the adduct is at least 98% by weight (11:23-26).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO- 2019/197638 to Meisenheimer et al. in view of GB-2222161 to Slack.
As to claims 1-4 and 7-9, Meisenheimer discloses a catalyst composition comprising at adduct of a tertiary amine of compound of formula (I) and an isocyanate component, in particular the adduct comprises the reaction of I,N,N-trimethylaminoethylethanolamine or 2- (2-dimethylamionethoxy)ethanol and hexamethylene diisocyanate, isophorone diisocyanate or 2,4-diphenylmethane diisocyanate (Table 1). Meisenheimer discloses wherein the adducts are suitable for producing polyisocyanurate polymers (Abstract). Meisenheimer fails to teach or fairly suggest that the catalyst composition includes diol component b).
However, within the same field of endeavor Slack teaches production of polyisocyanate which contain isocyanurate groups comprising tertiary amines and low molecular diols such as 1,5-pentanediol, 1,3-propane diol, or 1,3-butanediol (Pg. 4, II. 13-14).
At the time of filing it would have been obvious to include the diol component taught in Slack to the catalyst composition of Meisenheimer to lower the viscosity of composition and to provide improved color (Pg. 5, II. 10-11) and based on the tenet wherein it is prima facie obvious to add a known component for its known function.
As to claim 5, Meisenheimer in view of Slack teach a catalyst composition comprising a amine (considered to be the adduct of Meisenheimer) and the low molecular weight wherein the amine and hydroxyl components are present is amounts of 0.01:1 to 10:1 (Pg. 4, II. 25-28).
As to claim 6, with regard to the glass transition temperature, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants' position that this would not be the case: (1) evidence would need to be provided to support the applicants' position; and (2) it would the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claims 10-14 and 16, Meisenheimer discloses a process of forming a polyisocyanurate plastic from the aliphatic isocyanurates comprising providing the adduct and in combination with the diol component of Slack mixing the composition with a polyisocyanate, a fibrous filler with as aspect ratio of greater than 1,000, and an isocyanate reactive component at ratio of NCO:OH of 5:1 (Pg. 22, II. 10, Pg. 20, II. 35-37) at temperatures of less than 40°C (Pg. 20, II. 15-20) and curing at temperature of 80 to 250°C for up to 24 hours (Pg. 21. II. 15-25). Meisenheimer discloses wherein the content of the cured oligomeric polyisocyanates in the polyisocyanate composition is at least 98% by weight (11:23-26).
As to claim 15, about the gel, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the combination of references teaches all the claimed ingredients and the same processes. Therefore, the claimed effects and physical properties, i.e. gel point would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants' position that this would not be the case: (1) evidence would need to be provided to support the applicants' position; and (2) it would the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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