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 .
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.
Claims 8 and 10 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 8 recites the limitation "the cyclic carbonate group". There is insufficient antecedent basis for this limitation in the claim. The claim does not previously recite a cyclic carbonate group nor does claim 1 on which claim 8 depends. The claim could be clarified by removing “group”.
Claim 10 recites the number of amino groups in the foamable curing agent (A). There is insufficient antecedent basis for this limitation in the claim. Additionally, it is noted that foamable curing agent (A) is the reaction product of an amine and carbon dioxide. An amino group in the amine is no longer present in (A) as it has reacted with carbon dioxide. Therefore, it is unclear how an amino group can be present in (A) when the amine group has reacted with the carbon dioxide.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu (CN 104945599). As the CN document is not in English, citations are made to the attached translation.
Zhu teaches an example where m-xylene diamine is reacted with carbon dioxide (¶ 48).
Zhu teaches the product is a ‘cure-whipping agent’ which is a foaming agent (¶ 5) and meets the claimed ‘foamable curing agent’ limitation of instant claim 13.
While Zhu teaches use in epoxy resins and not polyhydroxyurethane resins, the limitation ‘for molding a polyhydroxyurethane resin’ is an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this situation, there is no structural distinction between the reaction product in Zhu and the claimed reaction product. Therefore, the reaction product in Zhu is capable of being used as a foamable curing agent for molding a polyhydroxyurethane resin foam.
Zhu does not explicitly recite the percentage increase of mass when the amine compound is left to stand in air for a week. However, Zhu teaches using xylene diamine (¶ 48) which necessarily has a percentage increase of mass when the amine compound is left to stand in air for a week of 24.1 as indicated by pg. 25, Table 1 of the instant specification. This meets instant claim 14.
Xylene diamine has a 6-carbon ring (a cyclic structure) and amino groups bound to primary carbon atoms which meets claims 15-17. Xylene diamine has two amine groups which meets instant claim 18. M-xylene diamine meets instant claim 19.
Claims 1-9, 11, and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xue (CN 113121863) as evidenced by Mazo, Carbonation of Epoxidized Soybean Oil Improved by the Addition of Water, J. Am. Oil Chem. Soc. (2013)90:725-730. As the CN document is not in English, citations are made to the attached translation. It is noted that Xue is published on 7/16/2021, which is before the foreign priority filing date of 9/30/2021 and therefore qualifies as a 102(a)(1) reference.
Xue teaches an example where mXDA is reacted with carbon dioxide to form a carbamate (¶29) where mXDA is m-xylenediamine (¶11). The carbamate is a foamable curing agent (¶8).
Xue teaches an example where the carbamate of mXDA is blended with CSBO and CA-TETA (¶ 68), where CSBO is a carbonate of epoxidized soybean oil (¶ 10). The carbonate of epoxidized soybean oil has two or more 5-membered cyclic carbonate groups as evidenced by Fig. 8 of Mazo (pg. 729). This meets instant claims 1 and 8.
Xue teaches the materials are foamed (¶ 1) and undergoes a ring opening reaction (¶ 17) which forms a hydroxyurethane polymer, which meets instant claims 1 and 11. Regarding “foam molding,” this is a product-by-process of instant claim 11. 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, Xue 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. Xue teaches a polyhydroxyurethane foam produced by a ring opening reaction (¶ 17) using a carbamate (the reaction product of an amine and carbon dioxide) which is blended with CSBO and CA-TETA (¶ 68), where CSBO is a carbonate of epoxidized soybean oil (¶ 10). The carbonate of epoxidized soybean oil has two or more 5-membered cyclic carbonate groups as evidenced by Fig. 8 of Mazo (pg. 729). Thus, the same foam structure is being formed in Xue as the polyhydrdoxyurethane of instant claim 11. The foaming agent of Xue also meets instant claim 13.
While Xue teaches a foamable curing agent which is the reaction product of an amine product and carbon dioxide (the carbamate formed in Xue), the limitation ‘for molding’ in instant claim 13 is an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this situation, there is no structural distinction between the reaction product in Xue and the claimed reaction product. Therefore, the reaction product in Xue is used as a foamable curing agent and is capble of the intended use of “for molding” a polyhydroxyurethane resin foam. This meets instant claim 13.
Xue teaches other examples of carbonates include butanediol glycidyl ether cyclic carbonate (¶ 10).
Xylene diamine has a 6-carbon ring (a cyclic structure) and amino groups bound to primary carbon atoms which meets instant claims 15-17. Xylene diamine has two amine groups which meets instant claim 18. M-xylene diamine meets instant claim 19.
Xue does not explicitly recite the percentage increase of mass when the amine compound is left to stand in air for a week. However, Xue teaches using xylene diamine (¶ 11, 29), which necessarily has a percentage increase of mass when the amine compound is left to stand in air for a week of 24.1 as indicated by pg. 25, Table 1 of the instant specification. This meets instant claim 2 and 14.
Xylene diamine has a 6-carbon ring (a cyclic structure) and amino groups bound to primary carbon atoms which meets instant claims 3-5 and 15-17. Xylene diamine has two amine groups which meets instant claims 6 and 18. M-xylene diamine meets instant claims 9 and 19.
Xue does not teach any other blowing agents are present in the example (¶68) meaning the content of other blowing agents is 0 mass% which meets instant claim 7.
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.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Xue (CN 113121863) as evidenced by Mazo, Carbonation of Epoxidized Soybean Oil Improved by the Addition of Water, J. Am. Oil Chem. Soc. (2013)90:725-730. As the CN document is not in English, citations are made to the attached translation. It is noted that Xue is published on 7/16/2021, which is before the foreign priority filing date of 9/30/2021 and therefore qualifies as a 102(a)(1) reference.
The discussion with respect to Xue and Mazo above is hereby incorporated by reference.
Regarding instant claim 10, Xue does not explicitly recite the ratio of the amount of amino groups to the amount of cyclic carbonate groups is 0.5-1.5. However, it would have been obvious to use about an equal amount of amine groups and carbonate groups because the amine groups react with the carbonate groups in a 1:1 molar ratio in order to optimize the efficiency of the reaction. Furthermore, when faced with a mixture of two components, a 50/50 mixture is obvious to one of ordinary skill in the art to ensure all components react.
Regarding claim 12, Xue does not explicitly recite a step of foam molding. However, it would have been obvious to one of ordinary skill in the art to mold the foam in order to provide a desired shape of the foam for a desired product article. Xue teaches lightweight foam applications and products formed from polyurethane (¶2). It would have been obvious to one of ordinary skill in the art to mold the compositions of Xue as recited in instant claim 12, in order to produce a particular shape of a desired product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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