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 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.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP5208379A see column 1, lines 5-10; column 1, line 41 - column 2, line 4; column 3, lines 10-16; column 7, lines 18-31; claims; examples; in view of GB1455454A see page 2 lines 17-30, page 3 lines 55-64 and claims and examples EP3819323 see page 1 lines 35-36, page 6 lines 32-36, page 8 lines 5-21, and claims 8 and 12.
Claim 1 is directed to a process for producing aromatic and/or aliphatic di- and/or polyisocyanates, comprising:
a) depolymerizing a polyurethane by hydrolysis in the presence of a base and a catalyst selected from the group consisting of quaternary ammonium salts containing an ammonium cation comprising 6 to 30 carbon atoms and organic sulfonates containing at least 7 carbon atoms to produce di- and/or polyamines,
b) separating the di- and/or polyamines obtained from step a) from a reaction mixture by extraction, distillation and/or other separation processes,
c) phosgenating the di- and/or polyamines obtained from
b) to afford di- and/or polyisocyanates, wherein di- and/or polyamines not deriving from process step a) may optionally also be added in c).
USP5208379A discloses a method for degrading polyurethanes, in which method in particular polyurethane foam waste as a starting material is hydrolytically split in the presence of basic catalysts, wherein, at the end of the method, high- molecular weight polyols are obtained, as well as polyamines and optionally low molecular weight polyols. In the examples, a polyether-based polyurethane flexible foam is hydrolytically split into the corresponding polyols and polyamines such as toluene diamine (TDA) in the presence of tetrabutylammonium hydrogen sulphate with 16C atoms. Subsequently, the polyol thus obtained is isolated, purified, and characterized in more detail. Polyamines which arc obtained from the hydrolytic splitting of polyurethanes can be converted into the corresponding polyisocyanates by means of established methods and can be used again as the starting material for the preparation of polyurethanes See USP5208379A column 1, lines 5-10; column 1, line 41 - column 2, line 4; column 3, lines 10-16; column 7, lines 18-31; claims; examples.
USP5208379A does not disclose phosgenating the obtained polyamines into polyisocyanates.
GB1455454A (as noted in applicants IDS filed 1-1-24) discloses a method in which polyurethane foam waste is hydrolytically split. In addition to polyols, polyamines are also produced which can be reacted with phosgene to produce the corresponding isocyanates. The polyisocyanates thus obtained can be used for the preparation of new polyurethane foams. In the examples, the polyurethanes are hydrolyzed at an elevated pressure and temperature, and TDA can be isolated from the hydrolysate by means of distillation. see GB1455454A column 1, lines 1-12; column 2, line 50; column 3, lines 24-30; claims; examples).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane hydrolysis process of USP5208379A by separating the resulting polyamines and reacting the polyamines with phosgene to produce di or polyisocyanates as taught by GB1455454A since GB1455454A teaches that diamines recovered from polyurethane hydrolysis may be reacted with phosgene to produce diisocyanates for reuse in polyurethane processing.
Claim 2 is directed to the process according to Claim 1, wherein the resulting di- and/or polyisocyanates comprise aromatic and/or aliphatic di- and/or polyisocyanates.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce an aromatic and/or aliphatic di- and/or polyisocyanates as taught by GB1455454A since the reference teaches reacting diamines recovered from polyurethane hydrolysis with phosgene to produce diisocyanates and specifically describes toluene diisocyanate for polyurethane production. See page 2 lines 17-30, page 3 lines 55-64 and claims and examples.
Claim 3 is directed to the process according to Claim 1 wherein the depolymerization of the polyurethane in a) is effected using a base having a pKb at 25°C of 1 to 10 and also a catalyst selected from the group comprising quaternary ammonium salts containing an ammonium cation comprising 6 to 30 carbon atoms and organic sulfonates containing at least 7 carbon atoms.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).One would have been motivated to employ particular parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 4 is directed to the process according to Claim 1 wherein the depolymerization of the polyurethane in a) is carried out using a base having a pKb at 25°C of< 1 and a catalyst selected from the group consisting of quaternary ammonium salts containing an ammonium cation having 6 to 14 carbon atoms when the ammonium cation does not comprise a benzyl substituent or else and quaternary ammonium salts containing an ammonium cation having 6 to 12 carbon atoms when the ammonium cation does comprise a benzyl substituent.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).One would have been motivated to employ particular parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 5 is directed to the process according to Claim 1, wherein the polyurethane to be depolymerized in a) comprises a polyurethane foam.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ polyurethane foam as the polyurethane to be depolymerized since USP5208379A teaches hydrolytic splitting polyurethane foam waste to recover polyols and polyamines. See USP5208379A col. 1 lines 5-10, line 41 to col.2 line 4, col. 3 lines 10-16, examples.
Claim 6 is directed to a process for producing polyurethane, comprising: further reacting the di- and/or polyisocyanate obtainable by a process according to Claim 1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the diisocyanates to produce polyurethane since GB1455454A teaches reacting diamines recovered from polyurethane hydrolysis with phosgene to produce diisocyanates which may be used in the preparation of polyurethane. See col. 2 lines 17-30, col. 3 lines 55-64, claims and examples.
Claim 7 is directed to a process for producing polyurethane, comprising: reacting (a) at least one polyol component with (b) at least one isocyanate component in the presence of (c) one or more catalysts that catalyze the isocyanate-polyol and/or isocyanate-water and/or isocyanate trimerization reactions, (d) at least one foam stabilizer, and also (e) optionally one or more chemical or physical blowing agents, wherein the at least one isocyanate component comprises recycled isocyanate obtained by the process according to Claim 1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the recycled isocyanate obtained from the process of USP5208379A modified by GB1455454A since GB1455454A teaches that diamines obtained from polyurethane foam hydrolysis can be reacted with phosgene to produce diisocyanates and that the diisocyanates can be used as reactants in the preparation of polyurethane foam or other useful products. See GB1455454A page 2 lines 17-30.
Claim 8 is directed to the process according to Claim 7, wherein the at least one isocyanate component contains more than 30% by weight of recycled isocyanate based on the total isocyanate component.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use more than 30% by weight of recycled isocyanate based on the total isocyanate component since GB1455454A discloses recovering diamines from polyurethane hydrolysis, reacting diamines with phosgene to produce diisocyanates and using the resulting diisocyanates in the preparation of polyurethane foam or other useful products. See page 2 lines 17-30.
Claim 9 is directed to the process according to Claim 7 wherein the at least one polyol component comprises a recycled polyol.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5208379A discloses hydrolytically splitting polyurethane foam to obtain polyols and polyamines and recovering the resulting polyol for reuse in preparing polyurethane. See col. 1 lines 5-10, 41 to col. 2 line 4, col. 3 lines 10-16, col. 7 lines 18-31 and examples.
Claim 10 is directed to the process according to claim 7. characterized in that wherein the at least one foam stabilizer is selected from the group as shown.
EP3819323A1 discloses a method for preparing flexible polyurethane foams, in which method a polyol component is reacted with a polyisocyanate component containing TDI, the reaction mixture containing a specific polysiloxane as a foam stabilizer. See paragraphs [0007] - [0009], [0050] [0052], [0067], [0086]; claims 10, 14; examples).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the polysiloxane foam stabilizer taught by EP3819323A1 in the polyurethane foam process of the combined reference because EP3819323A1 teaches the use of polysiloxane as a foam stabilizer in preparing polyurethane foams.
Claim 11 is directed to the process according to Claim 7, wherein the catalyst for producing PU foam is selected from triethylenediamine, 1,4-diazabicyclo[2.2.2]octane-2-methanol, diethanolamine, N-[2-[2- (dimethylamino)ethoxy]ethyl]-N-methyl-1,3-propanediamine, 2-[[2-(2- (dimethylamino)ethoxy)ethyl]methylamino]ethanol, 1,1'-[(3-{bis[3- (dimethylamino)propyl]amino}propyl)imino]dipropan-2-ol, [3-(dimethylamino)propyl]urea, 1,3-bis[3-(dimethylamino)propyl]urea and/or amine catalysts having the general structure (la) and/or the structure (b): i X comprises oxygen, nitrogen, hydroxyl, amines having the structure (NR"i or NRIRV) or urea groups (N(Rv)C(O)N(RvI) or N(RW)C(O)NRIRI), Y comprises amines NRVnIRIX or ethers ORIX,R"" comprise identical or different, linear or cyclic, aliphatic or aromatic hydrocarbons having 1-8 carbon atoms that are optionally functionalized with an OH group and/or comprise hydrogen, R11x comprise identical or different, linear or cyclic, aliphatic or aromatic hydrocarbons having 1-8 carbon atoms that are optionally functionalized with an OH group, an NH group or an NH2 group and/or comprise hydrogen, m = 0 to 4, , n = 2 to 6, i = 0 to 3, RX(1b)RX comprises identical or different radicals consisting of hydrogen and/or linear, branched or cyclic, aliphatic or aromatic hydrocarbons having 1-18 carbon atoms, which may be substituted with 0-1 hydroxyl groups and 0-1 NH2 groups, Z comprises oxygen, N-Rx or CH2, and/or metal compounds including organometallic metal salts, organic metal salts, inorganic metal salts and also organometallic compounds of the metals Sn, Bi, Zn, Al or K..
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the recited amine and or metal catalyst for producing polyurethane foam since these catalysts were known catalyst in the reaction between polyol and isocyanate polyurethane foam production.
Claim 12 is directed to a composition suitable for producing polyurethane foam, comprising; at least one polyol component, at least one isocyanate component, a catalyst, a foam stabilizer, a blowing agent and optionally auxiliaries, wherein the at least one isocyanate component comprises recycled isocyanate obtained by a process according to Claim 1.
Claim 12 is a product-by-process and thus the claim is not limited to the manipulations of the recited steps of claim 1, only the structure of the implied by the steps. As such GB1455454A discloses that diamines obtained from polyurethane hydrolysis may be reacted with phosgene to produce diisocyanates for reuse in polyurethane production. EP3819323 discloses producing polyurethane foam using recycled polyol as a part of the polyol moiety. See abstract, page 1 lines 35-36, page 3 line 16-18, specifically page 11 lines 1-18. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the recycled isocyanate taught by the combined references in the known polyurethane foam composition. Applicants have not shown that the recycled isocyanate obtained by the process of claim 1 imparts a difference to the claimed composition. See GB1455454A page 2 lines 17-30 and EP3819323 an abstract, page 1 lines 35-36, page 3 line 16-18, specifically page 11 lines 1-18.
Claim 13 is directed to a polyurethane foam wherein it is obtained by a process according to Claim 7.
Claim 13 is a product-by-process and thus the claim is not limited to the manipulations of the recited steps of claim 1, only the structure of the implied by the steps. As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare a polyurethane foam using the recycled isocyanate of the combine references since GB1455454A teaches reuse of recovered diisocyanates in preparing polyurethane and EP3819323 shows polyurethane foams from polyol and polyisocyanate components. See GB1455454A page 2 lines 17-30 and EP3819323 abstract, page 1 lines 35-36, page 3 line 16-18, specifically page 11 lines 1-18.
Claim 14 is directed to the process for manufacturing goods, comprising: installing of the PU foam according to Claim 13 as at least one selected from the group consisting of refrigerator insulation, insulation panels, sandwich elements, pipe insulation, spray foam, 1-component can foam, 1.5-component can foam, imitation wood, modelling foam, packaging foam, mattresses, furniture cushioning, automotive seat cushioning, headrests, instrument panels, automotive interior trim, automotive headlining, sound absorption material, steering wheels, shoe soles, carpet backing foam, filter foam, sealing foam, sealants, adhesives, coatings, and for production of corresponding products.
See EP3819323 page 1 lines 35-36, page 6 lines 32-36, page 8 lines 5-21, and claims 8 and 12.
Claim 15 is directed to the process according to Claim 1, wherein the resulting di- and/or polyisocyanates comprise at least one aromatic and/or aliphatic di- and/or polyisocyanate selected from the group consisting of methylene diphenyl diisocyanate, polyethylene polyphenylene polyisocyanate, toluene diisocyanate, and isophorone diisocyanate.
GB1455454A specifically describes polyurethane foam prepared from toluene diisocyanate. See page 3 , Example 1, page 4 Example 7.
Claim 16 is directed to the process according to Claim 1, wherein the resulting di- and/or polyisocyanates comprise toluene diisocyanate.
GB1455454A specifically describes polyurethane foam prepared from toluene diisocyanate. See page 3 , Example 1, page 4 Example 7.
Claim 17 is directed to the process according to Claim 1, wherein the polyurethane to be depolymerized in a) comprises at least one polyurethane foam selected from the group consisting of rigid PU foam, flexible PU foam, hot-cure flexible PU foam, viscoelastic PU foam, HR PU foam, hypersoft PU foam, semirigid PU foam, thermoformable PU foam and integral PU foam.
USP5208379A col. 1 lines 5-10, line 41 to col. 2 line 4, col. 3 lines 10-16 and examples.
Claim 18 is directed to a process for producing PU foams, comprising: reacting (a) at least one polyol component with (b) at least one isocyanate component in the presence of (c) one or more catalysts that catalyze the isocyanate-polyol and/or isocyanate-water and/or isocyanate trimerization reactions, (d) at least one foam stabilizer, and also (e) optionally one or more chemical or physical blowing agents, wherein the at least one isocyanate component comprises recycled isocyanate obtained by the process according to Claim 1.
See discussion for claim 1 aobve. GB1455454A page 2 lines 17-30 and EP3819323 page 1 lines 35-36, page 6 lines 32-36, page 8 lines 5-21, and claims 8 and 12.
Claim 19 is directed to the process according to Claim 7, wherein the at least one polyol component comprises a recycled polyol obtained by depolymerization of a polyurethane by hydrolysis in the presence of a base and a catalyst selected from the group consisting of quaternary ammonium salts containing an ammonium cation comprising 6 to 30 carbon atoms and organic sulfonates containing at least 7 carbon atoms.
See discussion for claims 1 and 7 above.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of copending Application No.18575870.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains dependent claims which, when read as a whole, contain the same subject as claim 1 of the present application, respectively and thus would have been obvious over the claimed invention. Note that the claims of the related application ‘870 recite producing polyurethane foam using recycled polyol obtained by hydrolysis of polyurethane in the presence of a specific base catalyst. The present claims recited polyurethane hydrolysis using a base catalyst stem and recovery of the resulting di or polyamines, conversion of the amines to di or polyisocyanates and the use of the recycled isocyanate in polyurethane production.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to recover the di or polyamines product during the polyurethane hydrolysis of the related application ‘870 and convert them to the di or polyisocyanates and reuse them in polyurethane production. Note also that claim 19 further recites a recycled polyol obtained by polyurethane hydrolysis using the base and a quaternary ammonium salt and organic sulfone catalyst system which corresponds to that which is recited in the related application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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