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 .
Claim Objections
Claims 19, 23, 25 – 28, 35, and 37 are objected to because of the following informalities:
it is suggested “comprised between” be substituted simply with “between” in each instance in Claims 19, 23, 25 – 27, and 37;
Claim 28 should be amended to recite “(a1) mixing…the solvent
“a foam obtainable” in Claim 35 should be substituted with “a polyurethane foam obtained by”.
Claim Rejections - 35 USC § 112
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.
Claims 19 – 37 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.
There is insufficient antecedent basis for the “polyphenol” recited in the final line of Claim 19, as well as in each instance in Claims 20, 23, 26, and 27. It is unclear to which of the initially recited at least one polyphenol the “polyphenol” refers. For the purposes of further examination, the “polyphenol” in the aforementioned claims will be interpreted as referring to the at least one polyphenol.
As Claims 21, 22, 24, 25, and 28 – 37 ultimately depend on Claim 19, they inherit the deficiencies thereof and are also therefore rejected under this stature.
Additionally, the metes and bounds of Claim 22 are not clearly defined by the phrase “alternating or statistical obtained from these monomers”. It is unclear what this phrase intends to set forth and to what monomers are being referred by this phrase. For the purposes of examination, Claim 22 will be interpreted as setting forth the polyether is selected from all other recited species set forth and mixtures thereof.
Claim 31 refers to “a mixture of alkoxylated polyphenols produced in step (a) of the manufacturing method as defined in claim 19 or a mixture of alkoxylated polyphenols as defined in claim 12”. However, Claim 12 has been canceled. Additionally, if Claim 31 is interpreted to depend on Claim 19, applicant is advised that Claim 31 as written would not incorporate all limitations of Claim 19. Consequently, for the purposes of examination, Claim 31 will be interpreted as setting forth “A method of manufacturing a polyurethane and/or polyisocyanurate material wherein the mixture of alkoxylated polyphenols according to Claim 30 is brought into contact with a polyisocyanate compound.”
Similarly, Claim 36 sets forth “a mixture of alkoxylated polyphenols produced in step (a) of the manufacturing method as defined in claim 30 or a mixture of alkoxylated polyphenols as defined in claim 30”. However, in embodiments in which Claim 36 depends on Claim 19, Claim 36 as written would not incorporate all limitations of Claim 19. Consequently, for the purposes of examination, Claim 31 will be interpreted as setting forth as simply setting forth “a mixture of alkoxylated polyphenols as defined in claim 30”.
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.
Claims 19 – 25 and 28 – 36 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/099405 to Maiorana et al. (hereinafter Maiorana).
Regarding Claims 19 – 22. Maiorana teaches a method for manufacturing an alkoxylated lignin dispersion [0013]. Lignin is set forth as species of polyphenol in instant Claim 20. Therefore, the method of Maiorana is reasonably considered to be a method for manufacturing a mixture of alkoxylated polyphenols.
In Example 1, the method comprises dispersing 50 grams of sodium lignosulfonate, i.e. a polyphenol, in 125 grams of diethylene glycol as a solvent, followed by reacting said polyphenol with 50 grams of ethylene carbonate [0048]. The polyphenol and ethylene carbonate are thus brought into contact in the presence of a solvent. Ethylene carbonate is set forth as a cyclic carbonate ester in instant Claim 21. Using the reported amounts of cyclic carbonate and polyphenol, the mass ratio of cyclic carbonate to polyphenol can be calculated to be 1:1 in Example 1.
The Office recognizes that the diethylene glycol solvent utilized in Example 1 has a molecular weight outside the instantly claimed range of 150 to 600 g/mol. However, in the general disclosure, Maiorana teaches both diethylene glycol and triethylene glycol are suitably used as solvents in the disclosed method [0008]. Triethylene glycol is a polyether solvent and specifically a polyethylene glycol having a known molecular weight of roughly 150.17 g/mol. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute triethylene glycol for the diethylene glycol solvent utilized in Example 1 of Maiorana. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Maiorana teaches both diethylene glycol and triethylene glycol are suitably used as solvents in the disclosed method [0008], thus providing obviousness of substituting one for the other in this method.
Regarding Claim 23. Maiorana teaches the method of Claim 19. In Example 1, 50 grams of sodium lignosulfonate and 125 grams of solvent are provided [0048], which can be calculated to correspond to a polyphenol:solvent mass ratio of 0.4:1.
Regarding Claim 24. Maiorana teaches the method of Claim 19. In Example 1, potassium carbonate is provided as a catalyst [0048].
Regarding Claim 25. Maiorana teaches the method of Claim 19. In Example 1, 6 grams of sodium lignosulfonate and 50 grams of ethylene carbonate are provided [0048], which can be calculated to correspond to a catalyst:cyclic carbonate ester mass ratio of 0.12:1.
Regarding Claim 28. Maiorana teaches the method of Claim 19. In Example 1, the method comprises the sub-steps of mixing the sodium lignosulfonate/cyclic carbonate ester/polyphenol and solvent; followed by mixing with ethylene carbonate as the cyclic carbonate ester into this mixture; and then mixing to obtain a reaction mixture which corresponds to the alkoxylated polyphenol mixture [0048].
While Maiorana does not teach adding the catalyst after adding the cyclic carbonate ester, this is set forth as an optional step and is therefore not required to meet the instant claim.
Regarding Claim 29. Maiorana teaches the method of Claim 19. The steps performed in Example 1 and described in the rejection of Claim 19 provide an intermediate mixture of alkoxylated polyphenols prior to distillation and in which no viscosity adapter compound is added thereto [0048], and thus corresponds to a method which does not comprise steps of purifying the mixture of alkoxylated polyphenols and/or a step of adding a viscosity adapter compound.
Regarding Claim 30. Maiorana teaches a mixture of alkoxylated phenols obtained by the method of Claim 19 ([0013] and [0048]).
Regarding Claims 31 and 32. Maiorana teaches a method for manufacturing a polyurethane material wherein the mixture of alkoxylated phenols of Claim 30 is brought into contact with RUBINATE® 9257, which is a polymeric MDI/polymethylene polyphenylisocyanate ([0063], [0077], and Table 3).
Regarding Claims 33 and 34. Maiorana teaches the method of Claim 31 wherein the polyurethane material is a polyurethane foam [0063].
Regarding Claim 35. Maiorana teaches the method of Claim 34 but does not expressly characterize the polyurethane foam produced therefrom as acoustic and/or thermal insulation. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the Maiorana, when modified in the manner proposed, teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. an acoustic and/or thermal insulating polyurethane foam product, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claim 36. Maiorana teaches a kit for manufacturing a polyurethane foam comprising the mixture of alkoxylated phenols and the polyisocyanate compound RUBINATE® 9257 ([0063], [0077], and Table 3).
Claims 19 – 37 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/099405 to Maiorana et al. (hereinafter Maiorana) in view of US 2017/0002129 to Grünbauer et al. (hereinafter Grünbauer).
Regarding Claims 19 – 22 and 37. Maiorana teaches a method for manufacturing an alkoxylated lignin dispersion [0013]. Lignin is set forth as species of polyphenol in instant Claim 20. Therefore, the method of Maiorana is reasonably considered to be a method for manufacturing a mixture of alkoxylated polyphenols.
In Example 1, the method comprises dispersing 50 grams of sodium lignosulfonate, i.e. a polyphenol, in 125 grams of diethylene glycol as a solvent, followed by reacting said polyphenol with 50 grams of ethylene carbonate [0048]. The polyphenol and ethylene carbonate are thus brought into contact in the presence of a solvent. Ethylene carbonate is set forth as a cyclic carbonate ester in instant Claim 21. Using the reported amounts of cyclic carbonate and polyphenol, the mass ratio of cyclic carbonate to polyphenol can be calculated to be 1:1 in Example 1.
The Office recognizes that the diethylene glycol solvent utilized in Example 1 of Maiorana has a molecular weight outside the instantly claimed range of 150 to 600 g/mol. However, Grünbauer teaches both diethylene glycol and polyethylene glycol having a molecular weight of roughly 400 g/mol (PEG 400) are suitably used as solvents for lignin [0039]. Maiorana and Grünbauer are analogous art as they are from the same field of endeavor, namely methods for manufacturing alkoxylated polyphenols. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute PEG400 for the diethylene glycol solvent utilized in Example 1 of Maiorana. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Grünbauer teaches both diethylene glycol and triethylene glycol are known solvents in methods of manufacturing alkoxylated polyphenols [0039], thus providing obviousness of substituting one for the other in such methods.
Regarding Claim 23. Maiorana teaches the method of Claim 19. In Example 1, 50 grams of sodium lignosulfonate and 125 grams of solvent are provided [0048], which can be calculated to correspond to a polyphenol:solvent mass ratio of 0.4:1.
Regarding Claim 24. Maiorana teaches the method of Claim 19. In Example 1, potassium carbonate is provided as a catalyst [0048].
Regarding Claim 25. Maiorana teaches the method of Claim 19. In Example 1, 6 grams of sodium lignosulfonate and 50 grams of ethylene carbonate are provided [0048], which can be calculated to correspond to a catalyst:cyclic carbonate ester mass ratio of 0.12:1.
Regarding Claim 28. Maiorana teaches the method of Claim 19. In Example 1, the method comprises the sub-steps of mixing the sodium lignosulfonate/cyclic carbonate ester/polyphenol and solvent; followed by mixing with ethylene carbonate as the cyclic carbonate ester into this mixture; and then mixing to obtain a reaction mixture which corresponds to the alkoxylated polyphenol mixture [0048].
While Maiorana does not teach adding the catalyst after adding the cyclic carbonate ester, this is set forth as an optional step and is therefore not required to meet the instant claim.
Regarding Claim 29. Maiorana teaches the method of Claim 19. The steps performed in Example 1 and described in the rejection of Claim 19 provide an intermediate mixture of alkoxylated polyphenols prior to distillation and in which no viscosity adapter compound is added thereto [0048], and thus corresponds to a method which does not comprise steps of purifying the mixture of alkoxylated polyphenols and/or a step of adding a viscosity adapter compound.
Regarding Claim 30. Maiorana teaches a mixture of alkoxylated phenols obtained by the method of Claim 19 ([0013] and [0048]).
Regarding Claims 31 and 32. Maiorana teaches a method for manufacturing a polyurethane material wherein the mixture of alkoxylated phenols of Claim 30 is brought into contact with RUBINATE® 9257, which is a polymeric MDI/polymethylene polyphenylisocyanate ([0063], [0077], and Table 3).
Regarding Claims 33 and 34. Maiorana teaches the method of Claim 31 wherein the polyurethane material is a polyurethane foam [0063].
Regarding Claim 35. Maiorana teaches the method of Claim 34 but does not expressly characterize the polyurethane foam produced therefrom as acoustic and/or thermal insulation. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the Maiorana, when modified in the manner proposed, teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. an acoustic and/or thermal insulating polyurethane foam product, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claim 36. Maiorana teaches a kit for manufacturing a polyurethane foam comprising the mixture of alkoxylated phenols and the polyisocyanate compound RUBINATE® 9257 ([0063], [0077], and Table 3).
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to methods of preparing alkoxylated polyphenols.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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, Arrie Lanee Reuther can be reached at (571)270-7026. 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.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
Prosecution Insights