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 .
DETAILED ACTION
Claim Status
Claims 1-2, 4-5, and 8-23 are pending. Claims 1-2, 4-5, and 8-23 are under examination in their entirety. Claims 1-2, 4-5, and 8-23 are rejected. No claims allowed.
Filing Receipt
PNG
media_image1.png
142
935
media_image1.png
Greyscale
PNG
media_image2.png
99
938
media_image2.png
Greyscale
PNG
media_image3.png
79
938
media_image3.png
Greyscale
PNG
media_image4.png
68
934
media_image4.png
Greyscale
Response to Amendments/Arguments
Applicant's amendments and arguments filed 08/28/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
Withdrawn/Modified Objections/Rejections
The objection to claim 16 in the non-final mailed 08/05/2026 is withdrawn. The claim amendments have overcome the objection.
The 103(a) rejection of claims 1-3 and 7-20 over Vedage et al. (US Patent 5,360,934, Patent date 11-1994) and Yang et al. (US Patent 5,208,379, Patent date 05-1993) in the non-final mailed 08/05/2026 has been modified to address the claim amendments.
The 103(a) rejection of claims 4-6 over Vedage et al. (US Patent 5,360,934, Patent date 11-1994) and Yang et al. (US Patent 5,208,379, Patent date 05-1993) as applied to claims 1-3 and 7-20 and in further view of Ding et al. (CN1331839, 08-2007) in the non-final mailed 08/05/2026 has been modified to address the claim amendments.
The nonstatutory double patenting over 18/575,595 in the non-final mailed 08/05/2026 has been withdrawn. The claims of 18/575,595 do not pertain to the current claims.
The following newly applied 112(a), 112(b), and 103 rejections and the modified 103(a) and nonstatutory double patenting rejections constitute the complete set of rejections and/or objections presently being applied to the instant application.
Response to Arguments
Applicant's arguments filed 08/28/2026 have been fully considered but they are not persuasive.
Applicant argues:
Claim 1 is amended to recite “the catalyst is ruthenium”. The art does not
teach a process as claimed using such a catalyst. Rather the art describes Rh/Ru mixed
catalyst.
Examiner’s response:
The examiner agrees the prior art teaches a mixed Rh/Ru catalyst. However, the limitation of “the catalyst is ruthenium” in original claim 18 was rejected in the non-final mailed 08/05/2026 page 4.
The claims utilize comprising language.
Concerning newly added claims and/or claim limitations, these will be addressed in the below rejections.
The double patenting rejections are likewise being maintained/modified.
For the reasons stated above the obviousness rejection is maintained/modified as set forth below.
Newly Applied Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection. This rejection was necessitated by amendment.
Claim 21 is directed towards the phrase “comprising the polyurethane decomposition process, wherein the decomposition process includes the aromatic amines and contains impurities from this decomposition process”.
This phrase is new matter. Originally filed, the amines/input product result from the polyurethane decomposition process, and the impurities are contained in the amines/input product. Nowhere in the original disclosure does the process include the aromatic amines and contain impurities.
Page 1 original disclosure.
PNG
media_image5.png
146
1014
media_image5.png
Greyscale
PNG
media_image6.png
143
1027
media_image6.png
Greyscale
PNG
media_image7.png
197
972
media_image7.png
Greyscale
PNG
media_image8.png
186
1013
media_image8.png
Greyscale
Page 2.
PNG
media_image9.png
152
971
media_image9.png
Greyscale
PNG
media_image10.png
72
1003
media_image10.png
Greyscale
Page 5.
PNG
media_image11.png
124
1040
media_image11.png
Greyscale
Nowhere in the original disclosure does the decomposition process include the aromatic amines and contains impurities from this decomposition process.
The decomposition process containing impurities from this decomposition process is a circular argument and does not have support in the original disclosure.
“The input product comprising aromatic amines results from a polyurethane
decomposition process and contains impurities from this decomposition process”. Page 5 of the original disclosure.
Moreover, the aromatic amines are a result of the decomposition product. If the aromatic amines were included in the decomposition process… the amines could be included in the beginning of the process or added to the process midway or at the end.
Likewise, the impurities contained in the decomposition process may be contained in the beginning of the decomposition process with the reactants or added midway during the process.
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 21 and 22 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. This rejection was necessitated by amendment.
Claim 21 is directed to “comprising the polyurethane decomposition process, wherein the decomposition process includes the aromatic amines and contains impurities from this decomposition process”.
Claim 21 allows for the aromatic amines and impurities in the decomposition process to be a result of the decomposition process as originally claimed in current claim 1 (see immediately below).
PNG
media_image12.png
164
958
media_image12.png
Greyscale
or claim 21 allows for the aromatic amines and impurities to be included in the beginning of the decomposition process or at a midway point in the process.
The decomposition process may include the impurities and the amines, or the impurities and the amines result from the decomposition process. Yes, the process has an ending, all products/impurities are obtained. However, the process has a beginning and this too can include the amines and contain the impurities as well as the reactants per claim 21. Additionally claim 21 lacks antecedent basis for the process including amines and containing impurities.
With compact persecution in mind, claim 21 is being interpreted as is recited in claim 1, wherein “an input product, which comprises the aromatic amines and up to 25% by weight of impurities” and “the input product comprising aromatic amines results from a polyurethane decomposition process and contains impurities from this decomposition process”.
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.
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.
Newly Applied Rejections
Claim(s) 1-2, 4-5 and 8-23 is/are rejected under 35 U.S.C. 103 as being
unpatentable over Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). This rejection were necessitated by amendment.
Scope of the Prior Art
Vedage et al. teach catalytic hydrogenation of the aromatic amine methylene dianiline (MDA), to afford the ring-hydrogenated equivalent bis(paraaminocyclohexyl)
methane (PACM) via contacting the MDA (98%) with hydrogen in the presence of a ruthenium (Ru) catalyst applied to a lithium aluminate (LiAl5O8) or alumina (Al2O3) support (p. 20 example 7).
Vedage et al. teach the aromatic amines that can be hydrogenated and specifically teach 2,4-diaminotoluene (TDA) (p. 9-10, more specific par. 32).
The Ru LiAl5O8 or Al2O3 catalysts read on current claims 2, 4, and 8.
The MDA and TDA read on claim 16. The Ru catalysts taught by Vedage et al. read on claims 1-2, 4-5, and 8-9, and 18.
Concerning rhodium (Rh), Vedage et al. teach page 5,
PNG
media_image13.png
249
911
media_image13.png
Greyscale
Concerning claim 5, Vedage et a. teach 5% Ru on 5 g of LiAl5O8. This overlaps the claimed 2 to 8 parts by weight Ru per 100 parts LiAl5O8.
Concerning claim 9 and the 4 to 25 parts per wt. of Ru to Al2O3, Vedage et a. teach 5% Ru on 5 g of Al2O3 (Table II, p.21). The 5% overlaps the current range of 4 to 25.
Concerning claim 10 and 19-20, Vedage et al. teach solvents can be used at 50,
75, to 200 and as high as 2000% per weight of the aromatic amine (column 3, lines 58-
65). This overlaps the claimed range.
Concerning claim 11 and the pressures, Vedage et al. teach 50 to 2000 psig (page 15 top). 50 to 2000 psig is 0.34 to 13.78 MPa. This overlaps the claimed range.
Concerning the current impurities, Vedage et al. teach catalytic hydrogenation
using MDA at 98% (p. 20 example 7) and containing small amounts of water preferably less than 0.5% by weight (p. 16, par. 46). The 98% suggests a less than 100% purified composition.
Ascertain the Differences
Vedage et al. does not teach the source of the MDA being from a polyurethane decomposition process having the claimed impurities.
Secondary References
Yang et al. teach the decomposition of polyurethane foam with tetrabutyl ammonium hydrogen sulfate and NaOH to produce TDA (Example 1 and 23, column 10). The TDA taught by Yang et al. overlaps with the TDA taught by Vedage et al.
The tetrabutyl ammonium hydrogen sulfate contains 12 carbon atoms, current claim 12 step a). Concerning step b) of claim 12, Yang et al. teach extracting with cyclohexane when separating the polyols from the THF soluble product (Example 23).
Concerning claim 12 and 13 and the organic sulfonate having at least 7 carbons, Yang et al. teach the following (column 5).
PNG
media_image14.png
255
486
media_image14.png
Greyscale
Concerning claim 13 and 14 and the base having a pKb of 1 to 10 or <1, Yang et al. teach calcium and sodium hydroxides respectively (column 5).
PNG
media_image15.png
310
465
media_image15.png
Greyscale
Concerning claim 14 and the 6 to 12 carbon atom cation comprising a benzyl radical, Yang et al. teach benzyltriethyl ammonium column 9, Table III. The benzyltriethyl ammonium is a 13 carbon atom cation. Yang et al. teach quaternary ammonium salts that overlap within the 6 to 12 carbon atom cation. See Yang et al. column 5, lines 1-10. Wherein a C8 alkyltrimethyl ammonium salt can be selected. This is a 11 carbon cation.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have tried/utilized the polyamine product from the decomposition of polyurethane foams taught by Yang et al. as a source of polyamines in the hydrogenation reactions taught by Vedage et al. with a reasonable expectation of success. The ordinary artisan would have done so to satisfy a source for polyamines. A reasonable expectation of success being from the fact that polyamines containing TDA that can contain impurities were taught by Vedage et al. to be hydrogenated.
Concerning the claimed up to 0.01 to 25% by weight of the current impurities and current claim 17, 21-23 the aromatic amines, and the presences of impurities and the impurities in new claim 22, substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The claimed process involves the hydrolysis of polyurethane using a base and tetrasubstituted amine cation and sulfate anion with a subsequent hydrogenation of the extracted product. See current claim 12. The prior art was argued above to render the current method obvious. Thus, the methods of the prior art are substantially identical to those of the prior art. Therefore, the product of the decomposition of polyurethane arrived at by the ordinary artisan would have the impurities as currently claimed.
Concerning claim 5 and 9-11, MPEP 2144.05 I.: “In the case where the
claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie
case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
1976).”
Modified Rejections
Claim(s) 1, 8-17 and 19-23 is/are rejected under 35 U.S.C. 103 as being
unpatentable over Vedage et al. (US Patent 5,360,934, Patent date 11-1994) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Scope of the Prior Art
Vedage et al. teach a rhodium/ruthenium (Rh/Ru) kappa Al2O3/Al2O3 LiOH catalysts used to hydrogenate bis(para-aminophenyl)methane (MDA, methylenediamine) and toluenediamines (TDA) to produce the hydrogenated counterparts (columns 9-10 Table 3, column 2, lines 15 to the bottom). The counterparts being the claimed ring-hydrogenated equivalents. The MDA and TDA are interpreted to be polyamines.
The rhodium/ruthenium (Rh/Ru) kappa Al2O3/Al2O3 LiOH catalysts read on the current catalyst is ruthenium.
The MDA and TDA read on claim 16. The Rh/Ru catalysts taught by Vedage et al. read on claims 1-9, and 18. Concerning claim 1 and the support, the Al2O3 reads on this limitation.
Concerning claim 9 and the 4 to 25 parts per wt. of Ru to Al2O3, Vedage et al. 0.3g 5% Ru/Al2O3. The 5% overlaps the current range of 4 to 25.
Concerning claim 10 and 19-20, Vedage et al. teach solvents can be used at 75
to about 500% by weight of the starting compound (column 3, lines 58-65). This overlaps the claimed range.
Concerning claim 11 and the pressures, Vedage et al. teach 200 to 1500 psig (column 4, lines 1-10). 200 to 1500 psig is 1.38 to 10.34 MPa. This overlaps the claimed range.
Concerning the claimed impurities, Vedage et al. teach “systems containing impurities such as oligomers of MDA can be used thus providing for lower equipment costs and operating costs” (column 4, lines 1-10). This teaching of impurities is interpreted to be open ended and not limited to oligomers of MDA.
Ascertain the Differences
Vedage et al. does not teach the source of the aromatic amines is from a polyurethane decomposition process.
Secondary References
Yang et al. teach the decomposition of polyurethane foam with tetrabutyl ammonium hydrogen sulfate and NaOH to produce TDA (Example 1 and 23, column 10). The TDA taught by Yang et al. overlaps the polyamines taught by Vedage et al. The tetrabutyl ammonium hydrogen sulfate contains 12 carbon atoms, current claim 12 step a). Concerning step b) of claim 12, Yang et al. teach extracting with cyclohexane when separating the polyols from the THF soluble product (Example 23).
Concerning claim 12 and 13 and the organic sulfonate having at least 7 carbons, Yang et al. teach the following (column 5).
PNG
media_image14.png
255
486
media_image14.png
Greyscale
Concerning claim 13 and 14 and the base having a pKb of 1 to 10 or <1, Yang et al. teach calcium and sodium hydroxides respectively (column 5).
PNG
media_image15.png
310
465
media_image15.png
Greyscale
Concerning claim 14 and the 6 to 12 carbon atom cation comprising a benzyl radical, Yang et al. teach benzyltriethyl ammonium column 9, Table III. The benzyltriethyl ammonium is a 13 carbon atom cation. Yang et al. teach quaternary ammonium salts that overlap within the 6 to 12 carbon atom cation. See Yang et al. column 5, lines 1-10. Wherein a C8 alkyltrimethyl ammonium salt can be selected. This is a 11 carbon cation.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the polyamine product from the decomposition of polyurethane foams taught by Yang et al. as a source of polyamines in the hydrogenation reactions taught by Vedage et al. with a reasonable expectation of success. The ordinary artisan would have done so to satisfy a source for polyamines. A reasonable expectation of success being from the fact that polyamines containing TDA and impurities were taught by Vedage et al. to be hydrogenated.
Concerning the claimed up to 25% by weight of impurities and current claim 17, the aromatic amines, and the presences of impurities and the impurities in new claim 22, substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The claimed process involves the hydrolysis of polyurethane using a base and tetrasubstituted amine cation and sulfate anion with a subsequent hydrogenation of the extracted product. See current claim 12. The prior art was argued above to render the current method obvious. Thus, the methods of the prior art are substantially identical to those of the prior art. Therefore, the product of the decomposition of polyurethane arrived at by the ordinary artisan would have the impurities as currently claimed.
Concerning claim 9-11, MPEP 2144.05 I.: “In the case where the
claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vedage et al. (US Patent 5,360,934, Patent date 11-1994) and Yang et al. (US Patent 5,208,379, Patent date 05-1993) as applied to claims 1, 8-17 and 19-23 and in further view of Ding et al. (CN1331839, 08-2007). The modifications to this rejection were necessitated by amendment.
Scope of the Prior Art
The teachings of Vedage et al. and Yang et al. are in the above 103 rejection and
are incorporated by reference. Concerning claim 5 and the amount of Ru to general support, Vedage et al. teach 5% Ru to Al2O3 (Table 3, columns 9 and 10). The 5% overlaps the current range of 2 to 8.
Ascertain the Differences
Vedage et al. does not teach the lithium aluminate (LiAlO2) support.
Secondary References
Ding et al. teach hydrogenation catalysts for hydrogenating methylenedianiline can be alumina or lithium aluminate (claim 4 of Ding et al.).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have substituted and/or tried the lithium aluminate support taught by Ding et al. in place of the alumina taught by Vedage et al. and/or Ding et al. in the hydrogenation reactions taught by Vedage et al. with a reasonable expectation of success.
The ordinary artisan would have done so to substitute one known method for another to obtain predictable results. See MPEP 2141 III (B). MPEP 2141 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
A reasonable expectation of success from the fact that catalytic supports of
alumina or lithium aluminate are used in the hydrogenation of polyamines that overlap in scope taught by methylenedianiline.
Concerning claim 5, MPEP 2144.05 I.: “In the case where the
claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie
case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
1976).”
The ordinary artisan in need of catalyst support weight ranges of claim 5 would have looked to Vedage et al. (Table 3, columns 9 and 10) and found 5% Ru to Al2O3. The 5% overlaps the current range of 2 to 8.
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 1-2, 4-5, and 8-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,612,503 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 503’ claims the following.
PNG
media_image16.png
299
508
media_image16.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed hydrogenation, which 503’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/839,569 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 569’ claims the following.
PNG
media_image17.png
130
827
media_image17.png
Greyscale
PNG
media_image18.png
130
851
media_image18.png
Greyscale
PNG
media_image19.png
30
839
media_image19.png
Greyscale
PNG
media_image20.png
187
847
media_image20.png
Greyscale
PNG
media_image21.png
134
848
media_image21.png
Greyscale
Concerning the base in the current claims, Yang et al. teach the current bases and also teach “While the strong base used may be any base having a high pkb” (column 3, lines 14-20). Thus going from an amine base as claimed in 569’ to the current bases would have been obvious.
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 569’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/839,819 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 819’ claims the following.
PNG
media_image22.png
132
848
media_image22.png
Greyscale
PNG
media_image23.png
127
847
media_image23.png
Greyscale
PNG
media_image24.png
130
844
media_image24.png
Greyscale
PNG
media_image25.png
133
849
media_image25.png
Greyscale
PNG
media_image26.png
82
844
media_image26.png
Greyscale
PNG
media_image27.png
304
862
media_image27.png
Greyscale
Concerning the base in the current claims, Yang et al. teach the current bases and also teach “While the strong base used may be any base having a high pkb” (column 3, lines 14-20). Thus going from an amine base as claimed in 819’ to the current bases would have been obvious.
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 819’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/839,078 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment..
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 078’ claims the following.
PNG
media_image28.png
230
833
media_image28.png
Greyscale
PNG
media_image29.png
190
849
media_image29.png
Greyscale
PNG
media_image30.png
286
848
media_image30.png
Greyscale
PNG
media_image31.png
77
852
media_image31.png
Greyscale
PNG
media_image32.png
176
855
media_image32.png
Greyscale
Concerning the base in the current claims, Yang et al. teach the current bases and also teach “While the strong base used may be any base having a high pkb” (column 3, lines 14-20). Thus going from an amine base as claimed in 078’ to the current bases would have been obvious.
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 078’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/575,864 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment..
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 864’ claims the following.
PNG
media_image33.png
299
839
media_image33.png
Greyscale
... .
PNG
media_image34.png
298
849
media_image34.png
Greyscale
PNG
media_image35.png
239
854
media_image35.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 864’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/575,869 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 869’ claims the following.
PNG
media_image36.png
291
855
media_image36.png
Greyscale
….. .
PNG
media_image37.png
183
863
media_image37.png
Greyscale
PNG
media_image38.png
181
836
media_image38.png
Greyscale
PNG
media_image39.png
189
843
media_image39.png
Greyscale
PNG
media_image40.png
77
827
media_image40.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 869’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/575,873 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 873’ claims the following.
PNG
media_image41.png
294
845
media_image41.png
Greyscale
…. .
PNG
media_image42.png
352
856
media_image42.png
Greyscale
PNG
media_image43.png
247
860
media_image43.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 873’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/706,399 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 399’ claims the following.
PNG
media_image44.png
401
871
media_image44.png
Greyscale
PNG
media_image45.png
187
785
media_image45.png
Greyscale
PNG
media_image46.png
94
842
media_image46.png
Greyscale
PNG
media_image47.png
283
770
media_image47.png
Greyscale
PNG
media_image48.png
344
810
media_image48.png
Greyscale
…. .
PNG
media_image49.png
256
877
media_image49.png
Greyscale
PNG
media_image50.png
197
851
media_image50.png
Greyscale
PNG
media_image51.png
299
899
media_image51.png
Greyscale
PNG
media_image52.png
98
831
media_image52.png
Greyscale
PNG
media_image53.png
139
838
media_image53.png
Greyscale
PNG
media_image54.png
181
785
media_image54.png
Greyscale
PNG
media_image55.png
206
829
media_image55.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 399’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/042,566 (Now US Patent 12,698,376) in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment. A notice of allowability was mailed 05/08/2026.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 566’ claims the following.
PNG
media_image56.png
260
501
media_image56.png
Greyscale
PNG
media_image57.png
132
481
media_image57.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 566’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/575,871 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 871’ claims the following.
PNG
media_image58.png
246
876
media_image58.png
Greyscale
PNG
media_image59.png
238
865
media_image59.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 871’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/575,876 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 876’ claims the following.
PNG
media_image60.png
499
843
media_image60.png
Greyscale
… .
PNG
media_image61.png
397
852
media_image61.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 876’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by
reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/575,870 in view of Vedage et al. (US Patent 5,360,934, Patent date 11-1994), Yang et al. (US Patent 5,208,379, Patent date 05-1993) and Ding et al. (CN1331839, 08-2007) and/or Vedage et al. (CA2559787, Published 03/22/2007) and Yang et al. (US Patent 5,208,379, Patent date 05-1993). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 870’ claims the following.
PNG
media_image62.png
390
857
media_image62.png
Greyscale
PNG
media_image63.png
389
849
media_image63.png
Greyscale
PNG
media_image64.png
189
865
media_image64.png
Greyscale
Concerning the claimed limitations pertaining to the currently claimed
hydrogenation, which 870’ does not claim and or any remaining limitations on the decomposition of polyurethane (hydrolysis), see the teachings of Vedage et al., Yang et al. and/or Ding et al. as written in the above 103 rejection and incorporated by
reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Additionally, the combinational teachings of Vedage et al. and Yang et al. written in the above 103 rejection of claims 1-2, 4-5 and 8-23 incorporated by reference were successfully argued to render the current claims obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at (571)270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.G.D/Examiner, Art Unit 1692
/Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
