DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
On page 6, the word phophotungstic appears misspelled as phosphotungstnic.
On page 7 in the paragraph following Hydrolysis step (step 2), there is a comma between ester and by-products that appears to be unnecessary.
On pages 16-18, the applicant describes comparative examples. Comparative example 1 states that it was conducted using the same parameters as example 1 except that the solvent (IPA in this case) was not added. In subsequent comparative examples (3-6), the applicant refers back to comparative example 1 to note solvent changes, but since no additional solvent was used in comparative example 1, no substitution to a different solvent would occur as this would be the addition of a component not present in the referenced method.
Further, comparative examples 8-10 reference back to comparative examples 3-5 and state a parameter change between the two, however the parameters are identical to those of the referenced comparative examples and it is unclear as to what difference there is between the comparative examples or what compositional difference is meant to be inferred from the change made.
Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities: The applicant refers to a compound as “phosphotungstnic acid”, however there is no compound by this name. The examiner believes this to be a typo of “phosphotungstic acid”. Appropriate correction is required.
Claim Interpretation
Claims 8 and 12-17 are product-by-process claims and as such, the patentability of these claims is determined based upon the final product and not the method by which it was prepared unless the applicant can demonstrate that the processes do not result in the same material.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 and 14 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.
Claim 4 recites the limitation "the organic acid" of the method of claim 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 only refers to an acid catalyst with no mention of the type. Based upon the listed compounds, the claim will be read to mean “organic solvent”.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Okoshi (US 20050272911, US Patent Document #5 from IDS dated 3/04/2026).
Regarding Claims 1 and 2,
Okoshi teaches a method of synthesizing a polyether polyol (Abstract) which is demonstrated as 1,3-propanediol (Paragraph 52) in which the diol is polymerized though a dehydration procedure using an acid catalyst which reads on a condensation polymerization (Paragraph 52), after which an organic solvent and water are added to hydrolyze any acid esters formed (Paragraph 52). The aqueous layer and organic layer are then separated (Paragraph 52), a basic additive is added to the organic layer (Paragraph 53) which is followed by distillation of any remaining water and solvent (Paragraph 53) which can be filtered and then distilled (Paragraph 53). While Okoshi reverses the order of steps 3 and 4 of the instant claims, Okoshi teaches that the base is added to remove any remaining acid in the product (Paragraph 35), which is identical to the purpose stated in the instant claims. As the purpose is to remove any acidic compounds from the desired product, one of ordinary skill in the art would recognize that whether this step was performed prior to separation of the layers or after the aqueous layer was removed the same function would be accomplished. This renders the order of these steps to have been obvious to have been performed in any order. See MPEP 2144.04.IV.C.
With regard to the use of dimers and trimers, Okoshi teaches that oligomers of the diols may be used up to nonamers (Paragraph 28).
Regarding Claim 3,
Okoshi teaches that the acid used for the polymerization can be acids such as sulfuric acid, phosphoric acid, phosphotungstic acid, trifluoromethanesulfonic and benzenesulfonic acid (Paragraph 17).
Regarding Claim 4,
Okoshi teaches that during the hydrolysis step an organic solvent that has affinity for both water and the polyol is used to promote the reaction (Paragraph 35) and demonstrates the use of tetrahydrofuran (Paragraph 52).
Regarding Claim 5,
Okoshi does not teach a range for the amount of water or the amount of organic solvent. However, one of ordinary skill in the art would recognize that the water is used to hydrolyze any acid esters present. Further, Okoshi teaches that the organic solvent can also be used to reduce the viscosity of the polyether polyol in order to facilitate separation from the aqueous layer (Paragraph 35). From this teaching, one of ordinary skill in the art would recognize that modification of viscosity would necessarily involve a variable amount of additive to obtain the desired viscosity value. As such, the ordinarily skilled artisan would use an amount of solvent that achieved this desired viscosity. It would therefore have been obvious prior to the effective filing date of the instant application to have used any amount of organic solvent relative to the amount of water in order to obtain an organic phase that easily separates from the aqueous layer.
Regarding Claim 6,
Okoshi teaches the use of bases such as calcium hydroxide (Paragraph 35).
Regarding Claim 7,
Okoshi teaches that water and solvents may be removed by distillation following layer separation and neutralization (Paragraph 53).
Regarding Claims 8 and 12-17,
Okoshi teaches the synthesis of poly(trimethylene ether) glycol (Paragraph 53).
Regarding Claim 9,
Okoshi teaches that the preferred number average molecular weight of the polymer is between 1,000 and 5,000 (Paragraph 37).
Regarding Claims 10 and 11,
Okoshi teaches the molecular weight as discussed above in regard to claim 9. With regard to the amount of base and metal ion content of the final polymer, Okoshi is silent. However, Okoshi teaches filtration and distillation steps (Paragraph 53) that are conducted in a similar manner to those of the instant application. As such, the ordinarily skilled artisan would expect that the impurities present in the isolated polymer of Okoshi would be broadly similar in both amount and type to those of the instant application given the overlap in components utilized as well as in process steps used as it would logically follow that these steps would have similar efficiency in removing unwanted components. As a result, the ordinarily skilled artisan would expect that the polymer of Okoshi would meet the requirements of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Taniguchi (WO 2007083519) teaches a method for the manufacture of polyether polyols that utilizes the required acids as well as solvent in the hydrolysis step to aid in the hydrolysis reaction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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