DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
2. Applicants’ election without traverse of Group I (claims 3-14; “a method”) in the reply filed on 04/22/2026 is acknowledged.
3. Claim 2 is cancelled and thus, withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/22/2026.
Response to Claim Amendment filed 04/22/2026
4. New claims 3 (see paragraphs [0018]-[0019], [0049], [0068], [0077], [0080] and [0095]), 4 (see paragraph [0053]), 5 (see paragraph [0068]), 6 (see paragraphs [0072], [0075]-[0076] and [0096]), 7 (see paragraph [0087]), 8 (see paragraphs [0021] and [0090]), 9 (see paragraphs [0072], [0075]-[0076] and [0096]), 10 (see paragraph [0087]), 11 (see paragraphs [0021] and [0090]), 12 (see paragraph [0087]), 13 (see paragraphs [0021] and [0090]), and 14 (see paragraphs [0021] and [0090]) were added, which are supported by applicants’ published application, i.e., US PG PUB 2024/0309143.
Thus, no new matter is present at this time.
Claim Objections
5. Claims 1, 6, 8-9, 11 and 13-14 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed “A method” with the new phrase “A method for forming a crosslinked thermoset shape memory polymer (SMP)” as supported at paragraphs [0018]-[0019] and [0049] of applicants’ published application, i.e., US PG PUB 2024/0309143.
Moreover, as to claim 1, the applicants are advised to add the term “and” after the claimed phrase “wherein the at least one aliphatic hydroxyl monomer includes isocyanate groups to match and react with hydroxyl groups of the at least one aliphatic hydroxyl monomer”.
Additionally, the applicants are advised to replace the claimed phrase “(HPED) and triethanol amine (TEA)” with the new phrase “(HPED) and/or triethanol amine (TEA)”.
As to Claims 6 and 9: The applicants are advised to add “homologous” before the claimed n-alkane diisocyanates” to be consistent with paragraph [0072] of applicants’ published application, i.e., US PG PUB 2024/0309143.
As to Claims 8, 11 and 13-14: The applicants are advised to add the phrase “to form a foamed polyurethane polymer” after the claimed phrase “foaming the polyurethane polymer”.
Appropriate corrections are required.
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.
Double Patenting I
6. Claims 3-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,993,673 (hereinafter referred to as “the patent”).
The claims of the patent and the present application are directed to preparing a crosslinked polyurethane thermoset shape memory polymer (SMP) from reacting at least one aliphatic diisocyanate monomer and at least one aliphatic hydroxyl monomer with an average functionality greater than 3, followed by crosslinking, wherein the at least one aliphatic hydroxyl monomer includes N,N,N’,N’-Tetrakis(2-hydroxypropyl)ethylenediamine (HPED) and triethanol amine (TEA); wherein the at least one aliphatic diisocyanate monomer includes isocyanate groups to match and react with hydroxyl groups of the at least one aliphatic hydroxyl monomer, and wherein the HPED is present in an amount of 10.8-37.5 wt.% and TEA is present in an amount of 6.7-28.2 wt.%. The claims of the present application and the patent also recite that the SMP has a glass transition temperature of at least 35 degrees Celsius but no greater than 132 degrees Celsius, and the at least one aliphatic diisocyanate monomer includes hexamethylene diisocyanate in an amount of 55.9-61.0 wt.% and further includes methylene diisocyanate or octamethylene diisocyanate. The claims of the present and the patent further recite foaming the polyurethane polymer to form the crosslinked thermoset SMP.
However, the claims of the patent do not recite “a method” as required by the claims of the present application. Nevertheless, since the claims of the patent recite the same steps of reacting and crosslinking as those presently recite as explained above, the claims of the patent would also suggest the presently claimed method for forming a crosslinked polyurethane thermoset shape memory polymer (SMP).
Double Patenting II
7. Claims 3-6, 9, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-17 of U.S. Patent No. 11,453,7401 (hereinafter referred to as “the patent”).
The claims of the patent and the present application are directed to methods for preparing a crosslinked thermoset shape memory polymer (SMP) comprising reacting at least one aliphatic diisocyanate monomer and at least one aliphatic hydroxyl monomer, followed by crosslinking, wherein the at least one aliphatic hydroxyl monomer includes N,N,N’,N’-Tetrakis(2 hydroxypropyl)ethylenediamine (HPED) and triethanol amine (TEA) and the aliphatic diisocyanate monomer includes hexamethylene diisocyanate (HDI) and further ethylene diisocyanate; and wherein the at least one aliphatic diisocyanate monomer includes isocyanate groups to match and react with hydroxyl groups of the at least one aliphatic hydroxyl monomer. The claims of the patent also recite that their aliphatic hydroxyl monomer has an average functionality greater than 2, which is inclusive of the presently claimed average functionality greater than 3. The claims of the present and the patent further recite foaming the polyurethane polymer to form the crosslinked thermoset SMP.
While the claims of the patent do not specify the particular amount of HPED, TEA, and HDI as required by the claims of the present application, the claims of the patent do recite reacting HPED, TEA, and HDI in any amount so long as the crosslinked thermoset shape memory polymer (SMP) is formed. Thus, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the HPED, TEA, and HDI, inclusive of those presently claimed, in the method, with a reasonable expectation of successfully forming a desired crosslinked thermoset SMP.
Double Patenting III
8. Claims 3-6, 9, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 8-11, and 13-20 of U.S. Patent No. 10,526,4372 (hereinafter referred to as “the patent”).
The claims of the patent and the present application are directed to methods for preparing a crosslinked thermoset shape memory polymer (SMP) comprising reacting at least one aliphatic diisocyanate monomer and at least one aliphatic hydroxyl monomer, followed by crosslinking, wherein the at least one aliphatic hydroxyl monomer includes N,N,N’,N’-Tetrakis(2 hydroxypropyl)ethylenediamine (HPED) and triethanol amine (TEA) and the aliphatic diisocyanate monomer includes hexamethylene diisocyanate (HDI) and further ethylene diisocyanate; and wherein the at least one aliphatic diisocyanate monomer includes isocyanate groups to match and react with hydroxyl groups of the at least one aliphatic hydroxyl monomer. The claims of the patent also recite that their aliphatic hydroxyl monomer has an average functionality greater than 2, which is inclusive of the presently claimed average functionality greater than 3. The claims of the present and the patent further recite foaming the polyurethane polymer to form the crosslinked thermoset SMP.
While the claims of the patent do not specify the particular amount of HPED, TEA, and HDI as required by the claims of the present application, the claims of the patent do recite reacting HPED, TEA, and HDI in any amount so long as the crosslinked thermoset shape memory polymer (SMP) is formed. Thus, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the HPED, TEA, and HDI, inclusive of those presently claimed, in the method, with a reasonable expectation of successfully forming a desired crosslinked thermoset SMP.
9. For record purposes only, it is noted that there are no prior art rejections of present claims 3-14 at this time.
10. The prior art made of record, namely, Lau et al. (US 5,876,432)3, and not relied upon is considered pertinent to applicants’ disclosure. Specifically, Lau et al. only teach a shape memory polymer composition prepared from block polymers covalently bonded or crosslinked through urethane linkages (Col. 1, lines 9-30, Col. 5, lines 60-67, Col. 8, lines 36-65, and Col. 16, lines 7-65).
Correspondence
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/22/2024.
2 Cited in the IDS submitted by applicants on 05/22/2024.
3 Cited in the IDS submitted by applicants on 05/22/2024.
Prosecution Insights