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 .
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.
3. Claim 1 has been amended, claims 8-9,11 have been cancelled, and claims 1-7, 10, 12-22 are pending as amended on 08/29/25.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/26/25 has been entered.
Priority
This application is a DIV of 17/715,495 04/07/2022 PAT 11939517; 17/715,495 has PRO 63/180,978 04/28/2021.
Response to Amendment
8. Applicant's amendment filed on 08/29/25, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 1-7, 10, 12-22 under 35 U.S.C. 103 as being unpatentable over David (D. David et al, Porous polyurethanes synthesized within high internal phase emulsions, Journal of Polymer Science: Part A: Polymer Chemistry, 2009, 47, 5806-5814) in view of Kukkala (US 5859111) filed on 08/29/25, have been fully considered but are moot in view of amendment. Applicants arguments are respectfully considered but are not persuasive. Regarding the claim 1 amended features, even though David teaches catalyst such as DBTDL was added following the addition of aqueous phase, which is different from the claim 1 amended feature “the water-in-oil emulsion is prepared by adding the catalyst to the aqueous phase before mixing the aqueous phase into the oil phase,” the instant claim 1 finally require the catalyst in an aqueous phase of the water-in-oil emulsion. Similar to instant claim 1 requirement of the catalyst in an aqueous phase of the water-in-oil emulsion, David expressly discloses catalyst DBTDL in an aqueous phase of the water-in-oil emulsion (table 1; page 5806, para 1). Further, the instant claims are composition claims and not process claims.
Thus, the difference between instant claim and prior art is the addition of
catalyst into aqueous liquid before (or after) adding and/or mixing the aqueous liquid into oil to make water-in-oil emulsion where the aqueous phase contains the catalyst in the emulsion.
However, the water-in-oil emulsion is formed and David and instant claim discloses same ingredients to form the water-in-oil emulsion where the
aqueous phase contains the catalyst in the emulsion, wherein the purpose of the inventions are same consolidated polyurethane polymer network formation; the only difference is the changes in sequence of adding ingredients.
It has been noted that no such differential effects have been discussed in applicants specification based on difference in the addition of catalyst into aqueous liquid before (or after) adding and/or mixing the aqueous liquid into oil to make water-in-oil emulsion. Further, the instant claims are composition claims and not process claims. The recited new feature “the water-in-oil emulsion is prepared by adding the catalyst to the aqueous phase before mixing the aqueous phase into the oil phase” is considered product-by process. Product-by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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 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.
Claims 1-7, 10, 12-22 are rejected under 35 U.S.C. 103 as being unpatentable over David (D. David et al, Porous polyurethanes synthesized within high internal phase emulsions, Journal of Polymer Science: Part A: Polymer Chemistry, 2009, 47, 5806-5814) in view of Kukkala (US 5859111).
Regarding claims 1-6, 10, 12-18, David discloses a water-in-oil emulsion comprises an oil phase comprising in an amount 25.76 wt% (fall into instant claimed range of less than 50% by volume; wt. approx. vol.) of the water-in-oil emulsion, wherein the oil phase comprises: a polyol compound such as polycaprolactone triol PCL-T (Mn = 900); a polyisocyanate compound such as hexamethylene diisocyanate (ISO); an oil soluble emulsifier such as PGPR, and solvent such as THF; and an aqueous phase comprising in an amount of 74.24 wt% (fall into instant claimed range of greater than 50% by volume; wt. approx. vol.) of the water-in-oil emulsion, wherein the aqueous phase comprises: water; a catalyst such as dibutyltin dilaurate (DBTL), and a salt such as NaCl (table 1, scheme 1, abstract, experimental). David does not disclose the emulsifier comprising 2 to 30 wt% of a block copolymer of ethylene oxide and propylene oxide.
However, Kukkala discloses a polyisocyanate, a polyol, and an emulsifier used for synthesis of polyurethane foams (abstract, experimental). Kukkala further discloses the emulsifier comprising 2 to 8 wt% of a block copolymer of ethylene oxide and propylene oxide (column 4, lines 44-64, column 5, lines 20-, column 7, lines -25, column 11, lines 14-15). David and Kukkala are pertinent to a synthesis of polyurethane foams using polyisocyanate, polyols and emulsifier.
At the time of invention, it would have been obvious to one of ordinary skill in the art to have modified David with the aforementioned teachings of Kukkala to provide an emulsifier such as 2 to 8 wt% of a block copolymer of ethylene oxide and propylene oxide in order to use such emulsifier in the synthesis polyurethane foams. Since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use. See MPEP 2144.06(11) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair& Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc vAg-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988). In the instant case, an emulsifier for mixing two substances that typically separate when they are combined (e.g., oil and water).
Since the composition is obvious over the prior arts, the properties of the composition, e.g. to provides the subterranean formation a permeability of from 0.010 Darcy to 10 Darcy would necessarily be the same as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
In claim 1, the recitation “A composition for treating an unconsolidated subterranean formation” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In the instant case, the preamble in claim 1 merely recites the intended use of the composition, wherein the prior art can meet this future limitation by merely being capable of such intended use.
Regarding the claim 1 amended features, even though David teaches catalyst such as DBTDL was added following the addition of aqueous phase, which is different from the claim 1 amended feature “the water-in-oil emulsion is prepared by adding the catalyst to the aqueous phase before mixing the aqueous phase into the oil phase,” the instant claim 1 finally require the catalyst in an aqueous phase of the water-in-oil emulsion. Similar to instant claim 1 requirement of the catalyst in an aqueous phase of the water-in-oil emulsion, David expressly discloses catalyst DBTDL in an aqueous phase of the water-in-oil emulsion (table 1; page 5806, para 1). Further, the instant claims are composition claims and not process claims.
Thus, the difference between instant claim and prior art is the addition of
catalyst into aqueous liquid before (or after) adding and/or mixing the aqueous liquid into oil to make water-in-oil emulsion where the aqueous phase contains the catalyst in the emulsion.
However, the water-in-oil emulsion is formed and David and instant claim discloses same ingredients to form the water-in-oil emulsion where the
aqueous phase contains the catalyst in the emulsion, wherein the purpose of the inventions are same consolidated polyurethane polymer network formation; the only difference is the changes in sequence of adding ingredients.
It has been noted that no such differential effects have been discussed in applicants specification based on difference in the addition of catalyst into aqueous liquid before (or after) adding and/or mixing the aqueous liquid into oil to make water-in-oil emulsion. Further, the instant claims are composition claims and not process claims. The recited new feature “the water-in-oil emulsion is prepared by adding the catalyst to the aqueous phase before mixing the aqueous phase into the oil phase” is considered product-by process. Product-by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 7, David discloses a composition comprises a polyisocyanate compound such as hexamethylene diisocyanate used for synthesis of the biodegradable polyurethane foams (abstract, experimental). David does not disclose isophorone diisocyanate.
However, Kukkala discloses a polyisocyanate such as hexamethylene diisocyanate (hexane-1,6-diisocyanate) or functionally equivalent isophorone diisocyanate and polyols, and an emulsifier used for synthesis of polyurethane foams (abstract, experimental; column 4, lines 44-64, column 5, lines 20-, column 7, lines -25, column 11, lines 14-15). David and Kukkala are pertinent to a synthesis of polyurethane foams using polyisocyanate and polyols and emulsifier.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the isophorone diisocyanate of the claims in the composition of David because Kukkala teaches that the claimed isophorone diisocyanate and hexamethylene diisocyanate of David are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Regarding claim 19, David discloses salt such as NaCl in an amount of 1.45 wt% out of 74.24 wt% of aqueous phase (table 1) results in ~1.95 wt% which is close enough to claimed 2 wt% that is prime facie obvious. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 20, David discloses isocyanate to hydroxy groups of at least 1.2 (page 5807; column 2, lines 46-48; XOH/XNCO =0.30).
Regarding claim 21, David includes the features of claims 1, 10 above, David further discloses salt such as NaCl in an amount of 1.45 wt% out of 74.24 wt% of aqueous phase (table 1) results in ~1.95 wt% which fall into claimed range of 1 to 10 wt%. David further discloses 0.18 wt% DBTL catalyst, 14.18 wt% isocyanate, and 3.97 wt% polyol (table 1), results in 0.99 wt% of catalyst based on total weight of polyol and isocyanate, fall into claimed range of 0.005 to 4 wt%.
Regarding claim 22, David includes the features of claims 1, 4, 7, 17-18 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766