Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objection
2. Objection is made to claims 12 and 13 due to the use of the terminology, “second end-capping agent”, because a first end-capping agent has not been definitively set forth within the claims. Clarification is required.
Prior Art Rejections
3. 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.
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.
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. Applicant is 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.
4. Claims 1-7, 9, 10, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/176919 A1 (US 2021/0009512 A1 being an English language equivalent).
WO 2019/176919 A1 discloses a composition (see Example 7) comprising tetramethylxylylene diisocyanate (TMXDI) (a tertiary isocyanate meeting instant claims 1, 6, and 7), tetrabutylammonium-2-ethylhexanoate (a catalytic compound meeting instant claims 1-5), and potassium tert-butoxide, having 1.1 mol-% of elemental alkali metal based on 100 mol-% of the tertiary isocyanate (calculated from the given amounts and the MW of both TMXDI and potassium tert-butoxide). The composition is used in a process for the preparation of a carbodiimide comprising no or 1 ppm or less phospholene oxides (compound comprising a phosphorous oxygen double bond), meeting instant claim 3 (see paragraphs [0198-0200] within US 2021/0009512 A1). The exemplified process further comprises a reaction step under nitrogen gas flow at 175°C for 20 h. Regarding instant claim 10, the calculated amount of catalyst within Example 7 is 0.63 mol% per 100 mol%of the isocyanate. The reference further discloses the use of the carbodiimide as a stabilizer, meeting instant claim 15 (see paragraphs [0001] and [0002] within the US 2021/0009512 A1).
5. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/176919 A1 (US 2021/0009512 A1 being an English language equivalent).
WO 2019/176919 A1 discloses a composition (see Example 7) comprising tetramethylxylylene diisocyanate (TMXDI) (a tertiary isocyanate, tetrabutylammonium-2-ethylhexanoate (a catalytic compound), and potassium tert-butoxide, having 1.1 mol-% of elemental alkali metal based on 100 mol-% of the tertiary isocyanate (calculated from the given amounts and the MW of both TMXDI and potassium tert-butoxide). The exemplified process further comprises a reaction step under nitrogen gas flow at 175°C for 20 h. Though the example fails to specifically disclose a ratio range as set forth within instant claim 8, the position is taken given the disclosure within the example and the relationship of quantity of catalyst to the production of the product or conversion of the isocyanate that it would have been obvious to determine viable molar quantities of the catalyst relative to the isocyanate, so as to arrive at the clamed invention. It has not been established that the claimed ratio range yields an unexpected result.
6. Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/176919 A1 (US 2021/0009512 A1 being an English language equivalent) in view of Feldman et al. (US 4,419,294).
WO 2019/176919 A1 discloses a composition (see Example 7) comprising tetramethylxylylene diisocyanate (TMXDI) (a tertiary isocyanate, tetrabutylammonium-2-ethylhexanoate (a catalytic compound), and potassium tert-butoxide, having 1.1 mol-% of elemental alkali metal based on 100 mol-% of the tertiary isocyanate (calculated from the given amounts and the MW of both TMXDI and potassium tert-butoxide). The exemplified process further comprises a reaction step under nitrogen gas flow at 175°C for 20 h. The reference further discloses the use of an end-capping agent, corresponding to that claimed (see paragraphs [0131-0142] withn US 2021/0009512 A1); however, the reference fails to disclose claimed step (iii), wherein the excess or non-converted isocyanates are removed under distillation conditions. Still, the use of distillation to remove unreacted isocyanate monomer from carbodiimide compositions produced from tertiary isocyanates was known at the time of invention as evidenced by the abstract and column 2, lines 17-21 of Feldman et al. Accordingly, the position is taken that it would have been obvious to remove excess or non-converted isocyanate by such operations as distillation prior to end-capping the polycarbodiimide products of the primary reference, so as to limit the content of non-reactive, non-stabilizing, non-carbdiimide-containing products which would otherwise result from the end-capping of the non-carbodiimide species, within the polycarbodiimide composition. This practice would further be beneficial due to not wasting end-capping agent and non-converted isocyanate, which could be recycled/reused.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 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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/RABON A SERGENT/Primary Examiner, Art Unit 1765