DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 22 January 2026, in the matter of Application N° 18/282,974. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-14 are pending, where claims 1-3 and 6-14 remain withdrawn from consideration.
No claims have been added or canceled.
Claim 4 has been amended to recite that the resulting urethane resin retains the aliphatic group from the originating aliphatic isocyanate group. Support appears to be provided in the originally-filed disclosure. See e.g., ¶[0038].
No new matter has been added.
Thus, claims 4 and 5 continue to represent all claims currently under consideration.
Information Disclosure Statement
One new Information Disclosure Statement (IDS) filed 15 December 2025 is acknowledged and has been considered.
Withdrawn Rejections
Rejection under 35 USC 102
Applicants’ amendment to claim 4 is persuasive in overcoming the previously raised anticipation rejection over Archambault et al. Said rejection is withdrawn.
Rejection under 35 USC 102
Applicants’ amendment to claim 4 is persuasive in overcoming the previously raised anticipation rejection over Vakili et al. Said rejection is withdrawn.
Rejection under 35 USC 102
Applicants’ amendment to claim 4 is persuasive in overcoming the previously raised anticipation rejection over Xu vet al. Said rejection is withdrawn.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 27 October 2025 since the art which was previously cited continues to read on the amended and previously recited limitations.
Claim Rejections - 35 USC §103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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. Applicants are 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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as obvious over Xu et al. (Polymer; 2013; ISR reference) in view of Haruyuki (JP H07-53764(A); machine translation attached).
The limitations of claims 4 and 5 are previously discussed.
Xu discloses the production of polyethylene glycol-modified polyurethanes using PEG diglycidyl ether and PEG bis(amine) and that such attachments are accomplished through the reduction of H-bonded urea groups (see e.g., Abstract). Figure 1 discloses the reaction between polyhexamethylene carbonate diol (PCD) and 4,4’diphenylmethane diisocyanate (MDI) to produce an isocyanate-terminated prepolymer to which PEG is then grafted to the prepolymer.
The Examiner notes that the limitation directed to the claimed isocyanate is that it is “derived from an aliphatic isocyanate.” The broadest reasonable interpretation of this limitation is that while the isocyanate of the claimed invention is “derived from” an aliphatic isocyanate, that the final derived form of the isocyanate may not necessarily be aliphatic.
Based on this interpretation, the Examiner submits that Xu anticipates the claimed invention.
To the extent that the instantly claimed subject matter is not anticipated by the descriptive matter of the reference, it would be so recognized by persons of ordinary skill in the chemical arts. Of particular note, Haruyuki discloses producing polyurethane urea through the addition of diisocyanate groups to either end of the compound (R1). See e.g., ¶[0006]-¶[0008]. The reference further defines such diisocyanates as including hexamethylene diisocyanate (HMDI). See e.g., Reference Example 2 at ¶[0022].
Thus, one would have more than a reasonable expectation of successfully creating the instantly claimed composition, particularly since the compositions taught in the reference, at the very least, represent obvious variations which very closely read on those compositions which are instantly claimed. That is, both 4,4’-diphenylmethane diisocyanate and hexamethylene diisocyanate are considered to be obvious variants of one another in view of their both possessing isocyanate groups on either end of their respective structures:
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MPEP §2144.06(II) states that “[i]n order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on Applicants’ disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
In the instant case, both references disclose reacting a polycarbonate polyol compound with an isocyanate in order to produce a polyurethane urea compound. The overlapping disclosure leading to the reasonable expectation of success is that both isocyanate compounds are diisocyanates wherein the isocyanate groups flank the remainder of the structure.
Therefore, the invention as a whole would also have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, absent a clear showing of evidence to the contrary.
Response to Arguments
Applicants’ arguments with regard to the obviousness rejection of claims 4 and 5 under 35 USC 103(a) as being unpatentable over the combined teachings of Xu et al. and Haruyuki et al. have been fully considered, but they are not persuasive.
Regarding the obviousness rejection, Applicants allege that Xu does not contain urea bonds.
The Examiner disagrees. Figure 1 of Xu shows that the final polyurethane precursor contains urea bonds (circled):
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Thus, as discussed above, the Examiner respectfully maintains that applying the HMDI as disclosed by Haruyuki would present the ordinarily skilled artisan with a reasonable expectation of producing the instantly amended compound.
Applicants’ arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained.
All claims under consideration remain rejected; no claims are allowed.
Conclusion
THIS ACTION IS MADE FINAL. Applicants are 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615