CTNF 18/282,281 CTNF 90246 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Status Claims 1-16 were filed on 9/15/2023. In a preliminary amendment filed on the same day, claims 1-16 were canceled and claims 17-32 were newly added. Priority The instant application was filed on 9/15/2023 and claims the benefit of priority to: PNG media_image1.png 154 1010 media_image1.png Greyscale See filing receipt dated 2/6/2024. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Specification 07-29 AIA The disclosure is objected to because of the following informalities: the structures and schemes in the following locations are objected to because they are difficult to read. The scheme on p. 1, between lines 15-20 because the atomic labels are too small to read. The structures on p. 11, between lines 5-end of page because the atomic labels are not in the correct positions and all appear to be offset by the same amount . Appropriate correction is required. Claim Objections 07-29-01 AIA Claim s 17, 28, and 29 are objected to because of the following informalities: In claim 17 , the limitation “m is 1or 2 when X’ is S” under formula (I) should have a space between the number “1” and the word “or”. In lines 2-3 of claim 28 , the limitation “1,3-dichloro-5,5-dimethylhydantoin” is misspelled as “1,3-dichloro-5,5-dimethyl imi hydantoin”. Also see structures on p. 11 of the specification as filed. In line 4 of claim 28 , none of the limitations should be capitalized (N-chlorosaccharin, N-bromosaccharin, saccharin). In lines 3 and 4 of claims 29 , the limitation “Dichloro” should not be capitalized in both instances . Appropriate correction is required. Claim Rejections - 35 USC § 112(b) 07-30-02 AIA 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. 07-34-01 Claims 22, 27, and 29 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. 07-34-08 AIA Regarding claim 22 , the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). 07-34-08 Regarding claim 27 , the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). There is an instance in line 2 and one in line 3. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 29 recites the broad recitation “and a heterocyclic compound (ii) wherein R 1 is halogen”, and the claim also recites “and 1,3-Dichloro-5,5-dimethylhydantoin as heterocyclic compound (ii)” which is the narrower statement of the range/limitation. 1,3-Dichloro-5,5-dimethylhydantoin is a heterocycle of formula (I), wherein R 1 is Cl, a halogen. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim Rejections - 35 USC § 112(d) 07-36 AIA 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. 07-36-01 AIA Claim 18 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. Claim 17 lists that variables X and X’ are S or C, therefore there are only four combinations possible (CC; SS; CS; and SC) though they are not explicitly recited. Claim 18 fails to further limit claim 17 because the only thing it does is explicitly recite all of the combinations . 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 § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 17-19, 22-28, and 30-32 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Gong ( CN108478061A , published 9/4/2018, of record in the IDS filed on 10/4/2023, including an English translation) . Regarding claims 17-19 and 22-28, Gong teaches examples comprising liquefied MDI (4,4’-MDI, diphenylmethane diisocyanate, see lines 114-115 of translation) and succinimide, maleimide, or phthalimide. See examples 1-3 and comparative examples 1-3 in lines 162-296. Succinimide and phthalimide are exemplified on p. 11 of the specification as filed: PNG media_image2.png 146 154 media_image2.png Greyscale and PNG media_image3.png 178 160 media_image3.png Greyscale , and maleimide corresponds to a derivative of succinimide wherein there is a double bond between the two methylene groups (-CH=CH-). Succinimide, maleimide, and phthalimide (the imide compounds) are all unsubstituted heterocyclic compounds comprising 1 structure of formula (I) wherein Y-R 1 is N-H; X and X’ are both C; and n and m are both 1, and having no other heteroatoms as ring members. Succinimide and maleimide are 5 membered monocyclic heterocycles and phthalimide is a 9 membered bicyclic heterocycle. With respect to claim 30 , the weight percentages of the imide compounds range between 1.8 to 2.2 wt% : 5-6 wt% of the MDI, where % is based on the total weight of the composition. Based on MDI, the weight ratio is imide: MDI of 0.3:1 to 0.44:1. Based on the wt% of the inhibitors in Table 1 of the specification as filed, the imide compounds are present in an effective amount of stabilizing 4,4’-MDI. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Gong necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Regarding claim 32 , Gong teaches providing the heterocyclic compound in amounts sufficient to stabilize/preserve the 4,4’-MDI. Therefore, the examples of Gong appear to meet the limitations of the process. Also see MPEP 2131 . 07-15-aia AIA Claim(s) 17-19, 22-28, and 30-32 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Wang ( CN108641572A , published 10/12/2018, of record in the IDS filed on 10/4/2023, including an English translation) . Regarding claims 17-19 and 22-28, Wang teaches examples comprising diphenylmethane diisocyanate (4,4’-MDI) and N-bromosuccinimide (NBS). See examples 1-4 in lines 107-172. NBS is exemplified on p. 11 of the specification as filed: PNG media_image4.png 132 164 media_image4.png Greyscale . NBS is an unsubstituted heterocyclic compound comprising 1 structure of formula (I) wherein Y-R 1 is N-Br; X and X’ are both C; and n and m are both 1, and having no other heteroatoms as ring members. NBS is a 5 membered monocyclic heterocycle. With respect to claim 30 , the examples teach that 5 kg of NBS are used with 15kg of MDI; 8 kg of NBS are used with 20 kg MDI; and 7 kg of NBS are used with 18 kg. These correspond to weight ratios of NBS: MDI of 0.3 to 0.4:1. Based on the wt% of the inhibitors in Table 1 of the specification as filed, the imide compounds are present in an effective amount of stabilizing 4,4’-MDI. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Wang necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Regarding claim 32 , Wang teaches providing the heterocyclic compound in amounts sufficient to stabilize/preserve the 4,4’-MDI. Therefore, the examples of Wang appear to meet the limitations of the process. Also see MPEP 2131 . 07-15-aia AIA Claim(s) 17-19, 22-28, and 30-32 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Ni ( CN109438906A , published 3/8/2019, of record in the IDS filed on 10/4/2023, including an English translation) . Regarding claims 17-19 and 22-28, Ni teaches examples comprising diphenylmethane diisocyanate (4,4’-MDI) and succinimide. See examples 1-4 in lines 120-247. Succinimide is exemplified on p. 11 of the specification as filed: PNG media_image2.png 146 154 media_image2.png Greyscale . Succinimide is an unsubstituted heterocyclic compound comprising 1 structure of formula (I) wherein Y-R 1 is N-H; X and X’ are both C; and n and m are both 1, and having no other heteroatoms as ring members. Succinimide is a 5 membered monocyclic heterocycle. With respect to claim 30 , the examples the weight ratio of succinimide to MDI is 1:1, 3:4, 4:6, and 5:7. This corresponds to a weight range of succinimide to MDI of 0.67-1:1. Based on the wt% of the inhibitors in Table 1 of the specification as filed, the imide compounds are present in an effective amount of stabilizing 4,4’-MDI. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Ni necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Regarding claim 32 , Ni teaches providing the heterocyclic compound in amounts sufficient to stabilize/preserve the 4,4’-MDI. Therefore, the examples of Ni appear to meet the limitations of the process. Also see MPEP 2131 . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA 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. 07-21-aia AIA Claim(s) 17-19, 22-28, and 3 0-32 is/are rejected u nder 35 U.S.C. 103 as being unpatentable over Esbelin ( US 2014/ 0371406 , published on 12/18/2014). Applicant claims : PNG media_image5.png 582 1072 media_image5.png Greyscale Regarding claims 17-19 and 22-28 , Esbelin teaches a stable polyisocyanate composition comprising a compound comprising a group having the structure –CO—NH—CO—in such an amount that the ratio of -CO—NH—CO—groups to the number of isocyanate groups is at most equal to 1. Esbelin also teaches a curable composition comprising the polyisocyanate composition, lithium halide, urea, and an epoxy resin. See abstract and claims. Esbelin teaches that the polyisocyanate preferably includes 4,4-diphenylmethane diisocyanate (4,4’-MDI). See [0058-0059]. Esbelin teaches that the compound comprising a group having the structure –CO—NH—CO—includes heterocycles, including succinimide, a 5-membered unsubstituted monocyclic heterocycle wherein comprising 1 structure of formula (I) wherein Y-R 1 is N-H; X and X’ are both C; and n and m are both 1, and having no other heteroatoms as ring members. See [0044-0045]. With respect to claims 30 and 32 , Esbelin teaches that enough of the group having the structure –CO—NH—CO—is used in an amount effective to stabilize/preserve MDI. See [0042], [0064], and examples. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Esbelin necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Esbelin does not explicitly teach an example using 4,4’-MDI and a cyclic compound comprising a –CO—NH—CO—group. It would have been prima facie obvious to arrive at the instantly claimed composition based on the teachings of Esbelin with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to combine 4,4’-MDI with one of the claimed compounds because Esbelin explicitly suggests doing so to stabilize the polyisocyanate . 07-21-aia AIA Claim (s) 17-28 and 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okoda ( JP2021014571A , published on 2/12/2021, of record in the IDS filed on 10/4/2023, including an English translation) . Applicant claims: PNG media_image5.png 582 1072 media_image5.png Greyscale Regarding claims 17-28 , Okoda teaches an adhesive set which can secure a sufficient pot life and has a high curing rate. The adhesive set comprises a first liquid containing an oxidizing agent (component c) containing an organic peroxide; and a second liquid containing a reducing agent (component d). At least one of the first liquid and the second liquid further contains a compound represented by the following general formula (I): PNG media_image6.png 172 324 media_image6.png Greyscale (component e), wherein R represents an alkyl group having 1 to 5 carbon atoms, and n represents an integer of 0 to 4. At least one of the first liquid and the second liquid further contains a compound having a (meth)acryloyl group (component a). At least one of the first liquid and the second liquid further contains an elastomer (component b) soluble in the compound having a (meth)acryloyl group. See abstract of translation and original patent and lines 97-102 of the translation. The compound of formula (I) is a 9-membered unsubstituted bicyclic heterocycle comprising 1 structure of formula (I) wherein Y-R 1 is N-H; one of X(=O)n and X’(=O)m is C(=O), wherein n or m is 1; and the other is S(=O)2, wherein n or m is 2, and having no other heteroatoms as ring members. When n is 0 in compound (I) of Okoda, the compound corresponds to Saccharin. The compound of formula (I) of Okoda, also referred to as “component (e)” is included in the adhesive set as a stabilizer. See lines 312-332 of the translation. Okoda teaches that the component (e)/compound of formula (I) can be present in the first or second liquid of the set and that the first or second liquid can further contain components (a) or (b). Component b, the elastomer, includes polyisocyanates, including 4,4’-MDI (diphenylmethanediisocyanate). See lines 160-268 of the translation. Therefore, when components b and e are in the same liquid (first and/or second), then the composition corresponds to that of claim 17 , wherein the MDI is component b of Okoda and the heterocyclic compound is component e of Okoda. With respect to claims 30 and 32 , Okoda teaches that enough of component e is used in an amount effective to stabilize/preserve MDI. See lines 312-332 of the translation. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Okoda necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Okoda does not explicitly teach an anticipatory composition comprising the heterocyclic compound of instant formula (I) and 4,4’-MDI. It would have been prima facie obvious to arrive at the instantly claimed composition based on the teachings of Okoda with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to provide a composition comprising 4,4’-MDI (component b) and a heterocyclic compound comprising instant formula (I) (component e) because such is suggested by Okoda. Okoda teaches that the stabilizer component e can be present with the elastomer component b, which preferably includes 4,4’-MDI, in either of the first or second liquids to stabilize said liquids. Therefore, including component e in the liquid comprising the elastomer, when the elastomer is 4,4’-MDI, will predictably lead to a stabilized composition comprising both components in the adhesive set of Okoda . 07-21-aia AIA Claim (s) 17-19 and 22-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang ( CN108641572A , published 10/12/2018, of record in the IDS filed on 10/4/2023, including an English translation) and Ni ( CN109438906A , published 3/8/2019, of record in the IDS filed on 10/4/2023, including an English translation) . Regarding claims 17-19 and 22-28, Wang teaches examples comprising diphenylmethane diisocyanate (4,4’-MDI) and N-bromosuccinimide (NBS). See examples 1-4 in lines 107-172. NBS is exemplified on p. 11 of the specification as filed: PNG media_image4.png 132 164 media_image4.png Greyscale . NBS is an unsubstituted heterocyclic compound comprising 1 structure of formula (I) wherein Y-R 1 is N-Br; X and X’ are both C; and n and m are both 1, and having no other heteroatoms as ring members. NBS is a 5 membered monocyclic heterocycle. With respect to claim 30 , the examples teach that 5 kg of NBS are used with 15kg of MDI; 8 kg of NBS are used with 20 kg MDI; and 7 kg of NBS are used with 18 kg. These correspond to weight ratios of NBS: MDI of 0.3 to 0.4:1. Based on the wt% of the inhibitors in Table 1 of the specification as filed, the imide compounds are present in an effective amount of stabilizing 4,4’-MDI. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Wang necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Regarding claim 32 , Wang teaches providing the heterocyclic compound in amounts sufficient to stabilize/preserve the 4,4’-MDI. Therefore, the examples of Wang appear to meet the limitations of the process. Regarding claims 17-19 and 22-28, Ni teaches examples comprising diphenylmethane diisocyanate (4,4’-MDI) and succinimide. See examples 1-4 in lines 120-247. Succinimide is exemplified on p. 11 of the specification as filed: PNG media_image2.png 146 154 media_image2.png Greyscale . Succinimide is an unsubstituted heterocyclic compound comprising 1 structure of formula (I) wherein Y-R 1 is N-H; X and X’ are both C; and n and m are both 1, and having no other heteroatoms as ring members. Succinimide is a 5 membered monocyclic heterocycle. With respect to claim 30 , the examples the weight ratio of succinimide to MDI is 1:1, 3:4, 4:6, and 5:7. This corresponds to a weight range of succinimide to MDI of 0.67-1:1. Based on the wt% of the inhibitors in Table 1 of the specification as filed, the imide compounds are present in an effective amount of stabilizing 4,4’-MDI. Regarding claim 31 , this is a product-by-process claim. See MPEP 2113. Regardless, the teachings of Ni necessarily meet the limitation because both options cover all processes of preparing 4,4’-MDI (with or without phosgene). Regarding claim 32 , Ni teaches providing the heterocyclic compound in amounts sufficient to stabilize/preserve the 4,4’-MDI. Therefore, the examples of Ni appear to meet the limitations of the process. Neither Wang nor Ni explicitly teach embodiments wherein the composition comprises two heterocyclic compounds, wherein R 1 is H in one and R 1 is halogen in the other ( claim 29 ). It would have been prima facie obvious to combine the teachings of Wang and Ni to arrive at the instantly claimed composition with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to use a combination of NBS (N-Br succinimide) and succinimide (N-H succinimide) because Wang and Ni teach the use of NBS and succinimide have similar utilities in analogous compositions comprising MDI. Therefore, replacing one with another, or using both in the same composition, would predictably produce compositions having the same utility as Wang or Ni alone. Also see MPEP 2143(I)(A) and MPEP 2144.06(I). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7. 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, Scarlett Goon can be reached at 571-270-5241. 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. /AMY C BONAPARTE/Primary Examiner, Art Unit 1692 Application/Control Number: 18/282,281 Page 2 Art Unit: 1692 Application/Control Number: 18/282,281 Page 3 Art Unit: 1692 Application/Control Number: 18/282,281 Page 4 Art Unit: 1692 Application/Control Number: 18/282,281 Page 5 Art Unit: 1692 Application/Control Number: 18/282,281 Page 6 Art Unit: 1692 Application/Control Number: 18/282,281 Page 7 Art Unit: 1692 Application/Control Number: 18/282,281 Page 8 Art Unit: 1692 Application/Control Number: 18/282,281 Page 9 Art Unit: 1692 Application/Control Number: 18/282,281 Page 10 Art Unit: 1692 Application/Control Number: 18/282,281 Page 11 Art Unit: 1692 Application/Control Number: 18/282,281 Page 12 Art Unit: 1692 Application/Control Number: 18/282,281 Page 13 Art Unit: 1692 Application/Control Number: 18/282,281 Page 14 Art Unit: 1692 Application/Control Number: 18/282,281 Page 15 Art Unit: 1692
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