Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 3-5 and 10 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.
Firstly, with respect to claims 3, 5, and 10, the language denoted by “preferably” and “more preferably”, renders the claims indefinite, because it is unclear if or to what extent the preferred language further limits or modifies the less preferred or non-preferred language.
Secondly, with respect to claim 4, within step (2), it is stated that the removed, refined solvent is returned to the reaction system in step (1); however, within step (3), it is stated that the removed solvent is used to purify the reaction product. These two limitations/requirements are in conflict and must be clarified.
Prior Art Rejections
4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
5. Claims 1, 3, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takamatsu et al. (US 2016/0046565 A1).
Takamatsu et al. disclose a xylylene diisocyanate composition produced from a xylylene dicarbamate composition further containing the impurity benzyl formyl carbamate, represented by disclosed Formula (1). Examples 1 and 2 and Comparative Examples 1 and 2 (Table 2) disclose that the impurity content, represented by Formula (1) to Formula (4) is 10 ppm, 40 ppm, 100 ppm, and 350 ppm. The reference further discloses that the dicarbamate compound is thermally decomposed to produce xylylene diisocyanate. The thermal decomposition also converts the impurity benzyl formyl carbamate into formyl benzyl isocyanate, corresponding to instantly claimed formula (1). Therefore, the disclosed thermal decomposition products contain xylylene diisocyanate and formyl benzyl isocyanate. Given the disclosed ppm contents of the impurities, the position is taken that the thermally decomposed compositions possess quantities of formyl benzyl isocyanate that meet the claimed content range of claim 1. Furthermore, regarding claim 6, allophanate modified products of xylylene diisocyanate are disclosed within paragraph [0098].
6. Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Takamatsu et al. (US 2016/0046565 A1).
As aforementioned within paragraph 5, Takamatsu et al. disclose a xylylene diisocyanate composition produced from a xylylene dicarbamate composition further containing the impurity benzyl formyl carbamate, represented by disclosed Formula (1). Examples 1 and 2 and Comparative Examples 1 and 2 (Table 2) disclose that the impurity content, represented by Formula (1) to Formula (4) is 10 ppm, 40 ppm, 100 ppm, and 350 ppm. The reference further discloses that the dicarbamate compound is thermally decomposed to produce xylylene diisocyanate. The thermal decomposition also converts the impurity benzyl formyl carbamate into formyl benzyl isocyanate, corresponding to instantly claimed formula (1). Therefore, the disclosed thermal decomposition products contain xylylene diisocyanate and formyl benzyl isocyanate. Given the disclosed ppm contents of the impurities, the position is taken that the thermally decomposed compositions possess quantities of formyl benzyl isocyanate that meet the claimed content range of claim 1. Furthermore, regarding claim 6, allophanate modified products of xylylene diisocyanate are disclosed within paragraph [0098]. Regarding claims 7-9, within paragraph [0004], the reference discloses the use of the diisocyanates of the reference to produce polyurethanes. Since polyurethanes are produced from the reaction of the diisocyanates with active hydrogen compounds, the position is taken that it would have been obvious to react the xylylene diisocyanate of the reference with the clamed active hydrogen compounds to produce the claimed polyurethane polymers.
7. Claims 1, 3, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawaguchi (US 2023/0340183 A1).
Kawaguchi discloses a xylylene diisocyanate composition containing xylylene diisocyanate and benzyl formyl isocyanate, corresponding to applicant’s formula (1), wherein the benzyl formyl isocyanate is present in an amount of 2000 ppm or less, preferably 10-1000 ppm. See paragraphs [0020]-[0080]. Regarding claim 6, the diisocyanate of the composition may be modified to contain the claimed groups. See paragraphs [0090]+. The composition may be used to produce two component curable compositions, reacted with active hydrogen compounds to produce polyurethanes, and specifically reacted with polythiols to produce optical materials. See paragraphs [0117]-[0150]. Though the disclosed upper endpoints of the benzyl formyl isocyanate exceed applicants’ claimed maximum endpoint, the position is taken that it would have been obvious to operate at virtually any point within the disclosed range with a reasonable expectation that viable compositions would result.
8. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Allowable Subject Matter
9. Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
10. Claims 4 and 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765