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 .
Withdrawn Rejections
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent
Pub. No. 2021/0246255 to Hocke et al. (Cited on ISR and IDS).
Hocke teaches a trimerization reaction temperature of 100 to 200°C process when trioctlyphosphine is used as the sole catalyst.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent
Pub. No. 2021/0246255 to Hocke et al. (Cited on ISR and IDS).
It is noted that claims 12-13 claim a polyisocyanurate plastic and coatings comprising the polyisocyanurate plastic, all elected claims are recited in the product-by-process format by use of the language, “Polyisocyanurate plastic obtainable by a the process…” Case law holds that: Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
As to claims 12-13, Hocke discloses a polyisocyanurate solid plastic (0010, 0156) prepared by catalytically trimerizing an isocyanurate based on hexamethylene diisocyanate with trioctylphosphine as the sole catalyst. (Example 8, Table 1) as the sole trimerization catalyst. The limitation controlling the optical transparency is an inherently met by a reference that teaches the same polyisocyanate and trimerization catalyst.
As to claims 14-15, Hocke discloses a process for producing a polyisocyanurate solid plastic (0010, 0156) comprising catalytically trimerizing an isocyanurate based on hexamethylene diisocyanate that has an NCO functionality of 3.2, an NCO content of 22.9%, comprising at least 80% by weight of oligomeric polyisocyanates (0084-0085), and less than 0.1% by weight of monomeric diisocyanate (0055, 0227-0281) in the presence of 0.5% by weight of trioctylphosphine (Example 8, Table 1) as the sole trimerization catalyst.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2019/0202963 to Mager et al.
As to claims 1-2, 5, 7, 12, and 14-16, Mager discloses a process for producing polyisocyanurate plastics by means of phosphine catalysts (Abstract) comprising providing a polyisocyanate composition based on hexamethylene diisocyanate (0126-0127) which comprises oligomeric polyisocyanate and is low (not more than 20% by weight) in monomeric diisocyanate, catalytically trimerizing using trioctyl phosphine to prepare a solid (0104, 0110, 0115) colorless, completely clear, and blister-free polyisocyanurate bodies (0173). Mager discloses a catalyst content of 0.0015% to 2.0% by weight (0084). Mager discloses a trimerization temperature between 0 and 80°C.
The content of catalyst overlaps the claimed range of 0.005-0.85 wt%. Accordingly, prima facie of obviousness is present with respect to the amount of catalyst employed. It is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05.
The trimerization reaction temperature overlaps the claimed temperature range. At the time of filing it would have been obvious to select a temperature including those claimed based on desired reaction times that can range from a few hours up to a few days (0110).
As to claims 3 and 6, Mager discloses the polyisocyanate composition contains at least 90 mol% of oligomeric structures selected from uretdione, isocyanurate, allophanate, biuret, and oxadiazinetrione structures (0052). As to claim 4, Mager discloses only trioctylphosphine as the trimerization catalyst (Examples 4-5, 0170-0173). As to claim 8, Mager discloses a process for producing polyisocyanurate plastics by means of phosphine catalysts (Abstract) comprising providing a polyisocyanate composition based on the isocyanurate of hexamethylene diisocyanate (0126-0127) and is low (not more than 20% by weight) in monomeric diisocyanate (<0.1% by weight (0139-0142), catalytically trimerizing using trioctyl phosphine to prepare a solid (0104, 0110, 0115) colorless, completely clear, and blister-free polyisocyanurate bodies (0173). Mager discloses a catalyst content of 0.0015% to 2.0% by weight (0084). The content of catalyst overlaps the claimed range of 0.005- 0.85 wt%.
As to claim 9, Mager discloses a polyisocyanate composition having NCO functionality of 3.4 or 3.2 and NCO contents of 21.8% or 23% (0126-0147).
As to claims 10-11, Mager discloses the addition of phosphine catalysts at temperatures that range from 10 to 160° and air humidity of at least 20% (0105, 0108) up to a conversion level of cyclotrimerization of greater than 80% (0074). As to claim 13, Mager discloses optical applications and components consisting of the blister-free transparent polyisocyanurate plastics (0019).
Response to Arguments
Applicant's arguments filed 07/17/2026 have been fully considered but they are not persuasive.
The applicant argues that Hocke does not disclose using trioctylphosphine to control optical transparency. However, the method of controlling transparency would inherently be a design of the process of using trioctylphosphine to trimerize hexamethylene diisocyanate. In response to applicant's argument that trioctylphosphine allegedly controls transparency of the trimerization product, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With regards to the Mager reference, a prima facie case of obviousness over the temperature range and the content of catalyst has been established. Mager teaches a content of catalyst overlaps the claimed range of 0.005- 0.85 wt%. Mager discloses a trimerization temperature between 0 and 80°C. Mager further teaches that the selection of catalyst (triocytylphosphine), catalyst concentration and reaction temperature are selected based on desired reaction times. Accordingly, the selection, concentration, and temperature are variables that may be selected through routine experimentation.
Lastly, applicant argues the unexpected improvement in optical transparency rebuts the prima facie case of obviousness.
When looking to showings of results in order to overcome a rejection, the following must be considered:
Results must be Unexpected:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
***Mager teaches an already transparent completely clear polyisocyanurate plastic prepared from 2.0 wt% of trioctyl phosphine and hexamethylene diisocyanate. Mager does not expressly disclose measuring the absorbance for light having a wavelength of 600 nm while adjusting the catalyst content to within the claimed levels. However, one of ordinary skill would conclude that lower levels of catalyst would result in longer reaction times and a more complete reaction. A more complete reaction would provide an improved transparency. The results do not appear to be unexpected or in line with applicants conclusion that only the catalyst concentration affects the transparency of the polyisocyanurate plastic
Further, the results only show a trend of gradual increase in transparency as the catalyst content is gradually increased. A trend is not an unexpected result.
The applicants arguments with respect to trioctylphosphine vs. tributylphosphine are moot. Trioctylphosphine is the preferred catalyst in Mager.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
***Firstly, Applicant’s argument is not commensurate in scope with the claims which do not provide any connection between recited components and the properties, including transparency; which do not exclude additional components which could lead to improvements in the alleged unexpected results, i.e. light absorbers.
The showings are not commensurate in scope with very broad claims, which encompass hundreds of compounds, in particular with respect to the polyisocyanate component while only one for each is used in the examples. Claim 1 recites a genus of oligomeric polyisocyanate which includes aromatic polyisocyanates and the claims are open to any amount of this component and applicants allege that this results in the unexpected results. However, any showing based on “compositions” must be reasonable commensurate in scope with both the kind and amount of oligomeric polyisocyanate. The results are clearly not reasonably commensurate in given that applicants' have demonstrated an upward trend of improved transparency as the catalyst levels decrease. A trend that can be found in the prior art is not an unexpected result.
Lastly, the applicant must compare the closest prior art. The closest prior art is compared.
Although Applicant has provided comparative examples between a different polyisocyanurate plastic and that prepared according to Applicant, the examples do not test the full scope either of the prior art or of Applicant’s claim. It shows only that under some circumstances, a polyisocyanurate plastic may show improved transparency. The specification does not provide sufficient objective data to show 1) that a person of ordinary skill in the art would not have optimized the concentrations of known and common components as evidenced by the prior art or 2) that inventor’s/ declarant’s conclusion of "unexpected results" by inventor/ declarant is supported by the evidence. An improvement made by obvious modifications, such as decreasing the content of a known catalyst s is not an unexpected result.
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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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