DETAILED ACTION
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 with the Y group species per claim 5 in the reply filed on June 15, 2026 is acknowledged. The traversal is on the ground(s) that all of the claims of groups I and II share the common subject matter of an aldimine preparation and, therefore, a priori unity of invention exists between all the claims. This is not found persuasive because US 2013/0130039 discloses a process of manufacturing an aldimine preparation comprising reacting an aldimine, a diisocyanate an water. Moreover, applicants have not submitted evidence or identified such evidence now of record showing the inventions to be obvious variants or clearly admitted on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6 and 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species or group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 15, 2026.
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.
Claims 1, 3, 4, 7, 8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0130039 (Schlumpf).
Schlumpf discloses dialdimines of formula (I) [0012]
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prepared by reacting:
a dialdimine of formulae (IV-IV”) [0087]
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(embrace Applicants’ aldimine of formula (I));
a diisocyanate (DI) (embrace Applicants’ monomeric diisocyanate of formula (II)); and
water (meets Applicants’ water),
wherein the molar ratio of diisocyanate (DI) to dialdimine (IV-IV”) is ˂ 1 [0088], i.e., an excess initial amount of aldimine groups relative to isocyanate groups is used (e.g., abstract, [0008], [0012-0014], [0057-0058], [0064-0066], [0087-0092], examples, claims).
Schlumpf expressly sets forth [0243] a dialdimine of formula (I) prepared from a dialdimine of formula (IV) [0240-0242] obtained from 2,2-dimethyl-3-lauroyloxpropanal (meets Applicants’ Y monovalent group Y) and a polyetherdiamine (does not does not meet Applicants’ divalent group A), a polyurethane polymer (does not meet Applicants’ isocyanate divalent group B) and water (meets Applicants’ water).
As to claim 1, it would have been within the purview of Schlumpf’s inventive disclosure, and obvious to one having ordinary skill in the art, to prepare a dialdimine of formula (I) wherein the dialdimine of formula (IV-IV’) is obtained from a C2-20 (cyclo)aliphatic diamine [0058] (meeting Applicants’ divalent group A) instead of the exemplified polyether diamine and a monomeric diisocyanate [0065-0066] (meeting Applicants’ divalent group B) is used in lieu of the exemplified polyurethane polymer. Given that Schlumpf discloses that the molar ratio of diisocyanate (DI) to dialdimine (IV-IV”) is ˂ 1 [0088], it would be expected that at least 95% of the initial isocyanate groups would be consumed. Moreover, since an excess initial amount of aldimine groups relative to isocyanate groups is used, it would have been within the purview of one having ordinary skill in the art to use a molar ratio of aldimine groups to isocyanate groups of least 2/1 with the reasonable expectation of success. Notably, Schlumpf clearly teaches that i) C2-20 (cyclo)aliphatic diamines can be used as functional alternatives to polyether diamines [0058], ii) monomeric diisocyanates having a C4-15 hydrocarbon can be used as functional alternatives to polyurethane polymers [0066], iii) the molar ratio of diisocyanate/dialdimine (IV-IV”) is ˂ 1 [0088] and iv) the molar ratio of dialdimine/diisocyanate is ˃ 1.
As to claim 3, Schlumpf discloses the molar ratio of dialdimine/diisocyanate is ˃ 1. Thus, it would have been obvious to one having ordinary skill in the art to use a molar ratio as presently claimed with the reasonable expectation of success.
As to claim 4, Schlumpf discloses, and renders obvious to one having ordinary skill in the art, the presently claimed (cyclo)aliphatic diamines as suitable diamines.
As to claim 7, Schlumpf discloses, and renders obvious to one having ordinary skill in the art, the presently claimed monomeric diisocyanates as suitable diamines.
As to claim 8, it would have been within the purview of one having ordinary skill in the art to use a (cyclo)aliphatic diamine and a monomeric diisocyanate having the same divalent radicals with the reasonable expectation of success.
As to claim 10, Schlumpf discloses that in the preparation of the dialdimine of formula (I), at least one aldehyde of formula R-CHO is liberated [0092]. Thus, Schlumpf’s process will necessarily generate the dialdimine oligomer of formula (I) and free aldehyde. As to the water content, given that Schlumpf prefers the absence of water, or trace amounts thereof [0145], it would have been within the purview of one having ordinary skill in the art to minimize the water content, e.g., via drying to less than 0.5 wt.% with the reasonable expectation of success.
As to claim 11, Schlumpf discloses dialdimines of formula (I) [0012]
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which embrace, and render obvious to one having ordinary skill in the art, the presently claimed oligomer.
Allowable Subject Matter
Claims 2, 5 and 9 are 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.
As to claim 2, Schlumpf discloses the amount of water/diisocyanate is ≥ 2 and, as such, does not disclose or suggest the presently claimed amount.
As to claim 5, Schlumpf’s aldehydes [0021-00356] do not meet the presently claimed Y group.
As to claim 9, Schlumpf does not disclose or suggest the use of aprotic organic liquids.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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, Heidi Kelley can be reached at 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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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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