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 1 – 3, 7, 9, 10, and 16 are objected to because of the following informalities:
it is suggested the word “and” be inserted after the phrase “recycled polyol,” in Claim 1;
it is suggested Claims 2 and 16 be amended to delete the recitation “likewise”;
it is suggested Claim 3 be amended to recite “rigid polyurethane (PU),” as this is the first time this abbreviation of polyurethane appears in the claims;
it is suggested “based on a total employed polyol component” in Claim 7 be substituted with “based on all polyols provided in said process”;
Claim 9 should be amended to recite “and where (II) comprises”; and
Claims 9 and 10 should be amended to recite “the recycled polyol is obtained”.
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 2, 4 – 6, 8, 10 – 12, and 16 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 a lack of antecedent basis for “said further polyols” recited in line 4 of Claim 2 and in line 3 of Claim 16. It is unclear to which of the previously recited “one or more further polyols” this phrase refers. For the purposes of further examination, “said further polyols” will be interpreted as referring to “said one or more further polyols”.
It is unclear what polyol(s) are being referred to be “total polyol” in Claims 2 and 16. For the purposes of further examination, “total polyol” will be interpreted as referring to “total polyol provided in said process”.
Claim 4 is indefinite, as it merely recites “using” without any active, positive steps delimiting how this use is actually practiced (see MPEP 2173.05(q)). For the purposes of further examination, Claim 4 will be interpreted as setting forth the process further comprises providing the recited ingredients during said reacting.
There is a lack of antecedent basis for “the” foam stabilizer in Claim 5. It is unclear to which of the previously recited at least one foam stabilizer this phrase refers. For the purposes of further examination, “the” foam stabilizer will be interpreted as referring to “the at least one foam stabilizer”.
Use of the word “preferably” in the definitions of R4 and R7 in Claim 5 renders the claim indefinite, as it is unclear whether limitations following this word are required or optional. For the purposes of examination, limitations following the word “preferably” will be interpreted as being optional.
Use of the phrase “such as” in the definition of R2 in Claim 5 also renders the claim indefinite, as it is unclear whether limitations following this phrase are required or optional. For the purposes of examination, limitations following the phrase “such as” will be interpreted as being optional.
Use of the word “potentially” in each instance in Claim 5 renders the claim indefinite, as it is unclear in what instances the recited substitutions occur. For the purposes of examination, “potentially” will be interpreted as “optionally”.
There is a lack of antecedent basis for “the” catalyst in Claim 6. It is unclear to which of the previously recited “one or more catalysts” this phrase refers. For the purposes of further examination, “the” catalyst will be interpreted as referring to “the one or more catalysts”.
Use of parentheses in Claim 6 renders the scope of the claim indefinite, as it is unclear whether the recited urea groups enclosed in parentheses must have one the specifically recited structures. For the purposes of examination, Claim 6 will be interpreted as requiring the urea groups correspond to one of the two recited structures in parentheses.
There is a lack of antecedent basis for “the…recycled polymer” in Claim 8. The claims do not set forth a recycled polymer prior to this recitation. Additionally, the limitations that the recycled polyol is produced from polyurethane waste and the recycled polyol is obtained by solvolysis appear to conflict in scope. For the purposes of further examination, Claim 8 will be interpreted as simply setting forth the recycled polyol is produced from solvolysis of polyurethane waste.
There is a lack of antecedent basis for “the” original polyols of “the” original polyurethane recited in Claim 10. The claims do not recite these components prior to aforementioned recitations. For the purposes of examination, Claim 10 will be interpreted as setting forth the recycled polyol is obtained from recycling a polyurethane, wherein the polyurethane is obtained from one or more polyols having a dispersity which is not more than 0.5 less than the recycled polyol.
There is a lack of antecedent basis for “the polyol component” and “a total polyol component” recited in line 4 of Claim 11 and in Claim 12. It is unclear to which of the previously recited “at least one polyol component” these phrases refer. For the purposes of further examination, these phrases will be interpreted as referring to “the at least one polyol component”.
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, 6, 7, 13 – 15, and 17 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0238798 to McDaniel et al. (hereinafter McDaniel) in view of JPH05163342 to Ozawa et al. (hereinafter Ozawa) and WO 2006/080743 to Kim et al. (hereinafter Kim), as evidenced by US 2018/0036704 to Lai et al. (hereinafter Lai). For the purposes of examination, citations for Ozawa are taken from a machine translation of the document obtained from the European Patent Office in July 2026.
Regarding Claims 1 and 15. McDaniel teaches a process for producing polyurethane foams comprising reacting:
at least one polyol component corresponding to a vegetable oil alkoxylated in the presence of a double metal cyanide catalyst; and
at least one isocyanate component;
in the presence of
catalysts (Claim 10), wherein the catalysts are suitable for the flexible foam-forming process [0040] and thus must be reasonably expected to catalyze isocyanate-polyol and/or isocyanate-water and/or isocyanate trimerization reactions;
surfactants/foam stabilizers; and
a blowing agent (Claim 10). A person of ordinary skill in the art would readily recognize that a blowing agent in a process for producing polyurethane foams necessarily corresponds to either a chemical or physical blowing agent.
McDaniel teaches the vegetable-oil based polyol is preferably based on castor oil [0018] but does not expressly teach it is a recycled polyol. However, Kim teaches the concept of providing waste castor oil used in a household or shop as the precursor for a polyol (Page 4, [33]). McDaniel and Kim are analogous art as they are from the same field endeavor, namely processes of producing polyurethanes. 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 provide waste castor oil as the castor oil in McDaniel, thereby providing a recycled polyol. The motivation would have been that doing so would provide for the recycling of a common waste material (Kim: Page 2, [4]), thereby further enhancing the eco-friendliness of the product of McDaniel.
Additionally, McDaniel is silent regarding the polydispersity of its vegetable oil based polyol. However, McDaniel teaches its vegetable oil is produced in the presence of a double metal cyanide (DMC) catalyst [0021] and expressly discussed JPH05163342 to Ozawa et al. as teaching polyether polyols produced with DMC catalysts provides polyols with lower polydispersities [0011]. Ozawa specifically teaches the concept of providing castor oil-based polyols via DMC catalysis with polydispersities (Mw/Mn) of 1.3 or less [0026]. McDaniel and Ozawa are analogous art as they are from the same field endeavor, namely polyol compositions for the preparation of polyurethanes. 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 provide the vegetable oil based polyol of McDaniel with a polydispersity of 1.3 or less. The motivation would have been that McDaniel is focused on the preparation of flexible polyurethane foams (Claim 10) and Lai provides evidence that DMC-catalyzed polyols having low polydispersities are particularly desirable especially in the manufacture of flexible polyurethane foams [0002].
Regarding Claim 3. McDaniel teaches the process of Claim 1, wherein the polyurethane foam is a flexible polyurethane foam.
Regarding Claims 4 and 19. McDaniel teaches the process of Claim 1, wherein water is provided during said reacting (Table 1).
Regarding Claim 6. McDaniel teaches the process of Claim 1, wherein the one or more catalysts may correspond to 1,4-diazabicyclo[2.2.2]octane [0040], which is alternatively known in the art as triethylenediamine.
Regarding Claim 7. McDaniel teaches the process of Claim 1 wherein it is the Office’s position that it would have been obvious to prepare the disclosed vegetable oil polyol with recycled castor oil and a polydispersity of 1.3 or less for the reasons detailed in the rejection of Claim 1.
McDaniel teaches other polyols are optionally provided [0037]. When such polyols are not provided, the vegetable oil/recycled polyol will then correspond to 100 weight percent of all polyols used during said process.
Regarding Claim 13. McDaniel teaches a polyurethane obtained by the process of Claim 1 (Claims 1 and 10).
Regarding Claim 14. McDaniel teaches a process of manufacturing goods, comprising incorporating the polyurethane foam of Claim 13 into an automotive seat [0001] – [0002].
Regarding Claims 17 and 18. McDaniel teaches the process of Claim 1 but does not expressly teach the polyurethane foam produced corresponds to one of the instantly claimed species. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teach 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, e.g. a hot-cure flexible foam, 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.
Claims 2 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0238798 to McDaniel et al. (hereinafter McDaniel) in view of JPH05163342 to Ozawa et al. (hereinafter Ozawa) and WO 2006/080743 to Kim et al. (hereinafter Kim), as evidenced by US 2018/0036704 to Lai et al. (hereinafter Lai) – as applied to Claim 1 above – and further in view of US 5,700,847 to Thompson.
Regarding Claims 2 and 16. McDaniel teaches the process of Claim 1 wherein the at least one polyol component may further include one or more non-vegetable oil based polyols, which are preferably made in the presence of double metal cyanide (DMC) catalysts (Claim 10 and [0037]). In inventive Examples 1 and 2, a non-vegetable oil based polyol is provided in an amount of 50 parts by weight per 100 parts by weight of the polyol component.
McDaniel is silent regarding the polydispersity of the non-vegetable oil based, DMC catalyzed polyols. However, Thompson teaches the concept of providing DMC catalyzed polyols with polydispersities of less than 1.2 (Column 3, Lines 23 – 34). McDaniel and Thompson are analogous art as they are from the same field of endeavor, namely processes of producing polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to select a DMC catalyzed polyol having a polydispersity of less than 1.2, as taught by Thompson, as the non-vegetable oil based, DMC-catalyzed polyol in McDaniel. The motivation would have been that McDaniel is focused on the preparation of flexible polyurethane foams (Claim 10) and Lai provides evidence that DMC-catalyzed polyols have low polydispersities are particularly desirable especially in the manufacture of flexible polyurethane foams in [0002].
When McDaniel is modified with Ozawa, Kim, and Thompson as proposed in the rejection of Claims 1 and 2, the polydispersity of the recycled polyol is 1.3 or less and the polydispersity of the further polyol is less than 1.2. A person of ordinary skill in the art would readily recognize that all polymers have a minimum polydispersity of 1. Therefore, the polydispersity of the recycled polyol will be 0 to at most 0.3 greater than the polydispersity of the further polyol, when McDaniel is modified in the manner proposed.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0238798 to McDaniel et al. (hereinafter McDaniel) in view of JPH05163342 to Ozawa et al. (hereinafter Ozawa) and WO 2006/080743 to Kim et al. (hereinafter Kim), as evidenced by US 2018/0036704 to Lai et al. (hereinafter Lai) – as applied to Claim 1 above – and further in view of US 2006/0084710 to Meyer-Ahrens et al. (hereinafter Meyer-Ahrens).
Regarding Claim 5. McDaniel teaches the process of Claim 1 wherein foam stabilizers such as polyethersiloxanes, i.e. silicon compounds that include carbon atoms, may be provided [0039].
McDaniel is silent regarding the particular structure of these foam stabilizers. However, Meyer-Ahrens teaches the concept of providing TEGOSTAB® BF 2370 as the foam stabilizer in a flexible polyurethane foam [0025] – [0028]. As TEGOSTAB® BF 2370 is the same foam stabilizer used in the inventive examples of the instant application, it would then be reasonably expected that it would have a structure encompassed by instantly claimed Formula (1c). McDaniel and Thompson are analogous art as they are from the same field of endeavor, namely process of producing polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to provide TEGOSTAB® BF 2370 as the foam stabilizer in McDaniel. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Meyer-Ahrens shows that TEGOSTAB® BF 2370 is known in the art to be a suitable foam stabilizer for the production of flexible polyurethane foams [0025] – [0028].
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0238798 to McDaniel et al. (hereinafter McDaniel) in view of JPH05163342 to Ozawa et al. (hereinafter Ozawa) and WO 2006/080743 to Kim et al. (hereinafter Kim), as evidenced by US 2018/0036704 to Lai et al. (hereinafter Lai). For the purposes of examination, citations for Ozawa are taken from a machine translation of the document obtained from the European Patent Office in July 2026.
Regarding Claim 11. McDaniel teaches a composition suitable for the production of a polyurethane foam comprising:
at least one polyol component corresponding to a vegetable oil alkoxylated in the presence of a double metal cyanide catalyst;
at least one isocyanate component;
a catalyst;
surfactants/foam stabilizers;
a blowing agent;
and optionally other auxiliaries, such as a flame retardant (Claim 1).
McDaniel teaches the vegetable-oil based polyol is preferably based on castor oil [0018] but does not expressly teach it is a recycled polyol. However, Kim teaches the concept of providing waste castor oil used in a household or shop as the precursor for a polyol (Page 4, [33]). 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 provide the waste castor oil as the castor oil in McDaniel, thereby providing a recycled polyol. The motivation would have been that doing so would provide for the recycling of a common waste material (Kim: Page 2, [4]), thereby further enhancing the eco-friendliness of the product of McDaniel.
Additionally, McDaniel is silent regarding the polydispersity of its vegetable oil based polyol. However, McDaniel teaches its vegetable oil is produced in the presence of a double metal cyanide (DMC) catalyst [0021] and expressly discussed JPH05163342 to Ozawa et al. as teaching polyether polyols produced with DMC catalysts provides polyols with lower polydispersities [0011]. Ozawa specifically teaches the concept of providing castor oil-based polyols via DMC catalysis with polydispersities (Mw/Mn) of 1.3 or less [0026]. 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 provide the vegetable oil based polyol of McDaniel with a polydispersity of 1.3 or less. The motivation would have been that McDaniel is focused on the preparation of flexible polyurethane foams (Claim 10) and Lai provides evidence that DMC-catalyzed polyols having low polydispersities are particularly desirable especially in the manufacture of flexible polyurethane foams [0002].
Regarding Claim 12. McDaniel teaches the composition of Claim 11 wherein it is the Office’s position that it would have been obvious to prepare the disclosed vegetable oil polyol with recycled castor oil and a polydispersity of 1.3 or less for the reasons detailed in the rejection of Claim 11.
McDaniel teaches other polyols are optionally provided [0037]. When such polyols are not provided, the vegetable oil/recycled polyol will then correspond to 100 weight percent of all polyols in said composition.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of copending Application No. 18/575,864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/575,864 do not expressly set forth the polydispersity of the recycled polyol. However, the claims of Application No. 18/575,864 do set forth a process of obtaining the recycled polyol 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. a recycled polyol having a polydispersity in the instantly claimed range, 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of copending Application No. 18/575,870 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/575,870 do not expressly set forth the polydispersity of the recycled polyol. However, the claims of Application No. 18/575,870 do set forth a process of obtaining the recycled polyol 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. a recycled polyol having a polydispersity in the instantly claimed range, 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 19 of copending Application No. 18/575,871 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/575,871 do not expressly set forth the polydispersity of the recycled polyol. However, the claims of Application No. 18/575,871 do set forth a process of obtaining the recycled polyol 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. a recycled polyol having a polydispersity in the instantly claimed range, 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of copending Application No. 18/575,873 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/575,873 do not expressly set forth the polydispersity of the recycled polyol. However, the claims of Application No. 18/575,873 do set forth a process of obtaining the recycled polyol 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. a recycled polyol having a polydispersity in the instantly claimed range, 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of copending Application No. 18/575,876 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/575,876 do not expressly set forth the polydispersity of the recycled polyol. However, the claims of Application No. 18/575,876 do set forth a process of obtaining the recycled polyol 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. a recycled polyol having a polydispersity in the instantly claimed range, 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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