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
The second permutation of a diamine disclosed in claim 4, N,N-bis-(1,4-dimethylpentyl)-p-phenylenediamine, because it appears to have both 1,4-dimethylpentyl attached to the same amine nitrogen atom would not be a diamine wherein at least one amine group is a secondary amine but, rather, a diamine compound with a tertiary amine and a secondary amine compound.
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.
Claim 9 is 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.
Upon initial inspection, claim 9 appears to be a duplicate of claim 8 but it is not clear how the polyoxyalkylene amine and alkyldiamine are to be linked insofar as they are joined with the word “an”. Thus, it is not clear that they are supposed to be used in concert, in which case “an” should be replaced with “and an” or, instead, in the alternative in which case “an” should be replaced with “or an”. The Examiner will assume for the sake of evaluating this claim against the prior art that the former had been intended.
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.
Claim 4 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. Both of the sebacate derivatives do not comply with the structural limitations of formula (I) in claim 1. 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
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.
Claims 1-4, 6-8, 10, 13-15, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al., U.S. Patent Application Publication No. 2008/0004406.
Applicant is directed to Example 16 where an isocyanate-terminated, MDI-based prepolymer, is combined with an amine-terminated polyether, the aromatic primary diamine Ethacure® 100, and, relevant to the present discussion, N,N’-di-sec-butyl-1,3-benzenediamine, which correlates with formula (I) of claim 1 where R1 and R2 are sec-butyl groups, R3 and R4 are hydrogen atoms, and R5 and R6 are direct bonds. The materials are mixed together and reacted at a temperature of around 60° C or above according to Table 5.
As for claim 6, it is appreciated that this example deviates from formula (1) to the extent that the substitution pattern of the amine groups bound to the aromatic rings is 1,3-disubstituted, as opposed to 1,4-disubstituted. On the other hand, various aromatic amines bearing secondary amine groups at the 1,4- positions are contemplated in [0085] and it is the Examiner’s position that a polyurea in which N,N’-di-sec-butyl-1,3-benzenediamine is substituted by one of these would be at once envisaged by a skilled practitioner of the prior art invention.
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 1, 3, 10-12, 15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over the article entitled “Thermal Degradation of Polyureas” authored by Fedotova et al. and published in Vysokomolekulyarnye Soedineniya, Seriya A (1973) 15(9), 2036-2041.
The abstract indicates that the thermal degradation behavior of several polyureas, including one obtained from the polymerization of 4,4’-diphenylmethane diisocyanate and N,N’-diethyl-4,4’-diaminodiphenylmethane. The polymerization conditions are not expressly indicated but one of ordinary skill is familiar with the notion that the reaction of isocyanate compounds and amine compounds are promoted with heating.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Brandt et al., U.S. Patent Application Publication No. 2008/0004406.
Among the alkyl groups bound to the aromatic amine moieties in [0083] are isopropyl groups, sec-butyl groups, hexyl groups, pinacolyl groups, etc. In other words, secondary aromatic diamines with various alkyl groups with 3-7 carbon atoms attached at the amine moiety are contemplated. Given that 1,4-dimethylpentyl groups are similar in carbon count and, like sec-butyl groups, as one example, are branched alkyls, it is the position of the Office that aromatic diamines containing these would be regarded as obvious alternatives to those espoused in the aforementioned passage. According to MPEP 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Allowable Subject Matter
Claims 9, 16 and 17 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. It will be emphasized here that there are several parallels between the systems from which an exemplified polyurea of the instant Specification and those set forth in Examples 16 and 17 are prepared. Both involve MDI-based prepolymers although the reference does not make clear what other compounds are involved in the production of the prepolymer. Both are also derived from a polyoxyalkylene diamine. Instant Example 1 uses as a curative diethyltoluenediamine, which seems to be a suitable naming convention for the Ethacure 100 product used in the prior art preparation. However, instant Example 1 uses alongside diethyltoluenediamine a polyether triol and another secondary amine. The impact that these additional components have on the magnitude of the Shore D hardness and lap shear modulus are not entirely clear. Certainly, the Examiner could not confidently state that the polymers obtained in prior art Examples 16 and 17 would inherently be in possession of these properties, though they possibly may.
It should be emphasized that the Examiner’s opinion regarding the patentability of claim 9 could evolve depending on how claim 9 is amended to address the rejection under 35 U.S.C 112(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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June 14, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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