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.
Claim 9 is 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. The claim recites, “The process of claim 2, wherein the reaction mixture has a hydroxyl content of 4.25 to 20 wt%, especially 4.25 to 15 wt%, based on the total weight of the reaction mixture, during at least a portion of step II,” the term “especially” renders the claim to be indefinite because it is unclear to what extent the more preferred language further limits the less preferred language.
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 non-obviousness.
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.
Claim 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/209069 (hereinafter, STEELMAN) in view of LAEMMERHOLD et al. (U.S. Publication No. 2016/0208080, hereinafter, LAEMMERHOLD).
Regarding claim 1, STEELMAN teaches a polyether polyol prepared using the batch, semi-batch, or continuous manufacturing process that includes providing the modified double metal cyanide complex (Abstract). Polyethers are prepared by (1) combining the catalyst complex with an alcoholic or carboxyl-containing starter compound; (2) adding an alkylene oxide to form a polymerization mixture, and then (3) subjecting the polymerization mixture to the polymerization conditions (p. 17). The starter compound includes a hydroxyl-containing starter that contain(s) 1 or more hydroxyl groups and as many as 12 or more hydroxyl groups (p. 18).
A method for producing a catalyst complex, the method comprising:
a) forming a starting solution comprising i) a solvent that includes at least one water and a liquid aliphatic alcohol, the solvent having a dissolved therein ii) a cyanometallate compound having a M2 metal cyanometallate group and iii) a M1 metal salt which reacts with the cyanometallate compound to form a water- insoluble M1 metal cyanometallate, which starting solution further contains 0.01 to 10 moles per mole of cyanometallate compound, of iii) at least one M3 metal compound different from the M1 metal salt, the M3 metal compound being a compound of a M3 metal which is selected from one or more of magnesium, a Group 3-Group 15 metal (other than titanium), or a lanthanide series metal which M3 metal is bonded to at least one alkoxide, aryloxy, carboxylate, acyl, pyrophosphate, phosphate, thiophosphate, dithiophosphate, phosphate ester, thiophosphate ester, amide oxide, siloxide, hydride, carbamate or hydrocarbon anion, and the M3 metal compound is devoid of halide anions (Note: M3 reads on M5 of the present invention);
b) reacting the cyanometallate compound and M1 metal salt to form a catalyst complex that includes a water- insoluble M1 metal cyanaometallate,
The water-insoluble catalyst complex which corresponds to the formula (pp. 3-4) (Note: M5 reads on M3 of the present invention):
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However, STEELMAN does not teach a method for producing a polyether, the method forming a reaction mixture comprising an additive wherein the additive is selected from the group consisting of alkali metal, ammonium and quaternary ammonium salts of monocarboxylic acids having up to a 24 carbon atoms; monobasic potassium phosphate, monobasic ammonium and quaternary ammonium phosphates, dibasic ammonium and quaternary ammonium phosphate and phosphoric acid.
In the same field of endeavor of producing polyether in the presence of a double metal cyanide catalyst (Abstract), LAEMMERHOLD teaches the reaction mixture containing (ii) at least one component K selected from at least one compound that contains a phosphorus-oxygen bond or a compound of phosphorus that can form one or more P-O bonds by reaction with OH-functional compounds (Abstract [0021-0032 and 0131]). It is preferred the component K is selected from at least one compound from the group consisting of phosphoric acid and (NH4)2HPO4 ([0034 and 0147]; Claim 16) ( also known as diammonium hydrogen phosphate). The object of the invention is to provide a product which has a very low dioxanes content after thermal exposure [0008].
It would have been obvious to a person of ordinary skill in the art to have provided component K (e.g., phosphoric acid) of LAEMMERHOLD with the double metal cyanide (DMC) of STEELMAN for the benefit of obtaining desired properties in the final product (i.e., very low dioxanes content after thermal exposure) as taught by LAEMMERHOLD. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 2, STEELMAN teaches the water-insoluble catalyst complex as discussed in paragraph 8 above. More specifically, M3 represents at least one magnesium and Group 3 to 15 metal (p. 3). The M3 metal compound include hafnium, aluminum, gallium, manganese and indium (pp. 7 and 8).
Regarding claim 3, STEELMAN teaches the water- insoluble catalyst complex as discussed in paragraph 8 above. The mole ratio of M3 metal to M2 and M5 metals combined is 0.002 to 10 (p. 16). Note: M3 reads on M5 of the present invention and M5 reads on M3 of the present invention.
Regarding claim 4, STEELMAN teaches the water- insoluble catalyst complex as discussed in paragraph 8 above. More specifically, M1 metal includes Zn2+ and the cyanometallate compound is potassium hexacyanocobaltate (p. 7).
Regarding claim 7, STEELMAN teaches the water- insoluble catalyst complex as discussed in paragraph 8 above. More specifically, the alkylene oxide includes ethylene oxide (p. 19).
Regarding claim 8, STEELMAN teaches a semi-batch process, the vessel should have one or more inlets through which the alkylene oxide and additional starter compound and catalyst complex can be introduced during the reaction. In a continuous process, the reactor vessel should contain at least one outlet through which a portion of the partially polymerized reaction mixture can be withdrawn. In a semi-batch operation, alkylene oxide (and optionally additional starter and catalyst complex) is added during the reaction, but the product usually is not removed until the polymerization is completed (pp. 19-20).
Regarding claim 9, STEELMAN teaches during the polymerization, the hydroxyl content of the reaction mixture decreases from about 20% by weight to about 4.25% by weight ( (p. 21 and Examples 1-4); p. 22).
Regarding claim 10, STEELMAN teaches the starter compound will have a hydroxyl equivalent weight of from 30 to 500 or more. The equivalent weight may be up to 100 (p. 18).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, and 7-9 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 3-10 of co-pending Application No. 18/695, 916 in view of WO 2018/209069 (hereinafter, STEELMAN).
The claims of Application ‘916 teach a method for producing a polyether, the method comprising:
I. forming a reaction mixture comprising a) a hydroxyl-containing starter, b) at least one alkylene oxide, c) a water insoluble polymerization catalyst complex that include at least one double metal cyanide compound and d) an additive selected from the group consisting of alkali metal, ammonium and quaternary ammonium salts of monocarboxylic acids having up to 24 carbon atoms; monobasic ammonium phosphate, and monobasic quaternary ammonium phosphates.
II. polymerizing the alkylene oxide onto the hydroxyl-containing starter in the presence of the water insoluble polymerization catalyst complex and the additive to produce the polyether.
However, the claims of Application ‘916 does not teach the catalyst complex selected from the group consisting of catalyst complexes I and II.
STEELMAN teaches a polyether polyol prepared using the batch, semi-batch, or continuous manufacturing process that includes providing the modified double metal cyanide complex (Abstract). Polyethers are prepared by (1) combining the catalyst complex with an alcoholic or carboxyl-containing starter compound; (2) adding an alkylene oxide to form a polymerization mixture, and then (3) subjecting the polymerization mixture to the polymerization conditions (p. 17). The starter compound includes a hydroxyl-containing starter that contain(s) 1 or more hydroxyl groups and as many as 12 or more hydroxyl groups (p. 18).
A method for producing a catalyst complex, the method comprising:
a) forming a starting solution comprising i) a solvent that includes at least one water and a liquid aliphatic alcohol, the solvent having a dissolved therein ii) a cyanometallate compound having a M2 metal cyanometallate group and iii) a M1 metal salt which reacts with the cyanometallate compound to form a water- insoluble M1 metal cyanometallate, which starting solution further contains 0.01 to 10 moles per mole of cyanometallate compound, of iii) at least one M3 metal compound different from the M1 metal salt, the M3 metal compound being a compound of a M3 metal which is selected from one or more of magnesium, a Group 3-Group 15 metal (other than titanium), or a lanthanide series metal which M3 metal is bonded to at least one alkoxide, aryloxy, carboxylate, acyl, pyrophosphate, phosphate, thiophosphate, dithiophosphate, phosphate ester, thiophosphate ester, amide oxide, siloxide, hydride, carbamate or hydrocarbon anion, and the M3 metal compound is devoid of halide anions;
b) reacting the cyanometallate compound and M1 metal salt to form a catalyst complex that includes a water- insoluble M1 metal cyanaometallate,
The water-insoluble catalyst complex which corresponds to the formula (pp. 3-4)
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Given the application ‘916 and STEELMAN are within the same field of endeavor of producing a polyether, it would have been obvious to a one of ordinary skill in the art to have provided the catalyst complex to the method as recited in the claims of Application ‘916 for the benefit of obtaining properties including fast-activating and perform very well even in the presence of high concentrations of hydroxyl groups as taught by STEELMAN. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
This is a provisional non-statutory double patenting rejection.
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. STEELMAN in view of LAEMMERHOLD do not teach the claim limitations of the present invention.
Pertinent Art
WO 2020/176278 (herein after, SHI) does not teach the catalyst complex I is a catalyst complex produced in a method comprising steps a) and b) as claimed. Therefore, SHI is not relied upon as prior art.
SHI teaches a method for producing a polyether, the method comprising: I. forming a reaction mixture comprising a) a hydroxyl-containing starter, b) at least one alkylene oxide, c) a water insoluble polymerization catalyst complex that includes at least one double metal cyanide compound wherein the compound has the formula:
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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