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 Objections
Claims 1 and 2 are objected to because of the following informalities:
Claim 1 sets forth “(i) ethylene oxide at a time-average concentration…(ii) a substituted alkylene oxide…(i) ethylene oxide feed rated and (ii) the ratio of ethylene oxide feed rate to the substituted alkylene oxide feed rate”. There are consequently two instances of (i) and (ii) in the claim. It is suggested that the latter two recitation of (i) and (ii) be replaced with, for example, (1) and (2); and
Claim 2 should be amended to recite “from
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 1 – 12 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:
There is a lack of antecedent bas for “the” ethylene oxide feed rate and “the” ratio of this feed rate to “the” substituted alkylene feed rate in Claim 1. The claim does not set forth separate feed rates for the ethylene oxide and substituted alkylene oxide, or a ratio thereof, prior to these recitations in the claim. For the purposes of examination, Claim 1 will be interpreted as setting forth an ethylene oxide feed rate and a ratio of this feed rate to a substituted alkylene feed rate.
As all other pending claims ultimately depend on Claim 1, they incorporate the subject matter thereof and are also consequently rejected under this statute.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 6, and 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 3 and 6 set forth increasing the ratio of the ethylene oxide feed rate to the substituted alkylene oxide feed rate. The claims do not then appear to incorporate all limitations of independent Claim 1 which requires the ratio of ethylene oxide feed rate to the substituted alkylene oxide feed rate be constant.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0230581 to Klescewski et al. (hereinafter Klescewski) in view of WO 2004/029131 to Harre et al. (hereinafter Harre). For the purposes of examination, citations for Harre et al. are taken from the machine translation of the document obtained from the European Patent Office website in September 2021.
Regarding Claims 1, 4, 7 – 9, 11, and 12. Klescewski teaches a process for preparing a polyether polyol comprising:
providing a reactor which contains a mixture of a double metal/composite metal cyanide (DMC) catalyst and a poly(oxyalkylene polyol) or polyether polyol obtainable by the disclosed process [0015];
continuously feeding starting materials into the reactor to produce the polyether polyol [0014], the starting materials comprising:
ethylene oxide [0016];
a substituted alkylene oxide [0016], wherein preferred substituted alkylene oxides are propylene oxide, 1,2-butylene oxide, and 2,4-butylene oxide [0035]; and
a starter compound having a hydroxyl functionality of from 1.0 to 8.0 [0016].
Klescewski teaches the ratio between the ethylene oxide and substituted alkylene oxide can be kept constant over the entire length of the mixed block [0036] and also contains no disclosure of adjusting the continuous metering rate, from which a person of ordinary skill in the art would readily envision both the ethylene oxide feed rate and ratio of ethylene oxide feed rate to substituted alkylene oxide feed rates are constant over a time period corresponding to instantly claimed time period T.
The alkylene oxide component of Klescewski comprises 73 to 80 parts by weight ethylene oxide and 20 to 27 parts by weight of the substituted alkylene oxide (Paragraph 0016). As the ethylene oxide and alkylene oxide are provided in the aforementioned amounts as a mixture (Paragraph 0016), they must necessarily be provided simultaneously and such that the obtained polyether polyol comprises an epoxide mixed block having a weight ratio of ethylene oxide to substituted alkylene oxide ranging from 73:27 to 80:20.
In the above described embodiment of Klescewski, the composite metal cyanide is not fed continuously in the reactor but rather introduced into the reactor in a first step, prior to continuously feeding the starting materials [0015] – [0016].
Klescewski does not expressly teach the primary hydroxyl content of the obtained polyether polyol. However, Klescewski also provides a general teaching that polyether polyols with a content of primary OH groups of in particular more than 50 mol% have proven to be particularly suitable for the production of cold-cure molded foams (Paragraph 0069). Consequently, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide a weight ratio between ethylene oxide and substituted alkylene oxide such that the obtained polyether polyol has a content of primary OH groups more than 50 mol%. The motivation would have doing so would prepare polyether polyols which could advantageously be used in the production of cold-cure, or high resiliency, polyurethane foams.
Klescewski also does not expressly quantify the ethylene oxide concentration in the reactor relative to the total weight of the reactor contents during the entire period of feeding of continuously feeding the starting materials. However, differences in concentration or temperature generally will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Secondary reference Harre additionally discloses the concept of minimizing the content of free alkylene oxide content during the course of the reaction to levels particularly preferably below 0.5% by weight, based on the total amount of starting materials and reaction products in the reactor (Page 3, Lines 92 - 97), which may be alternatively expressed as 5,000 ppmw alkylene oxide based on the total amount of starting materials and reaction products in the reactor. Harre further teaches the content of free alkylene oxide – which would include ethylene oxide - is controlled by parameters including metering rate (Page 2, Line 78 – Page 3, Line 81). Klescewski and Harre are analogous art as they are from the same field of endeavor, namely methods of making polyether polyols employing DMC catalysts. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the metering rate during the entire period of feeding of continuously feeding the starting materials, i.e. the time-averaged concentration (C2) at which the ethylene oxide is continuously fed, to minimize the amount of free alkylene oxide in the reactor of Klescewski in light of Harre. The motivation would have been that Harre. teaches low amounts of free alkylene oxide in the reactor provides advantages including polyols with a narrow molecular weight distribution (Page 2, Line 72 – Page 3, Line 97), which would be provide advantages such as products with well-balanced physical properties.
Regarding Claim 2. Klescewski et al. teaches the process of Claim 1 wherein a polyether polyol obtainable by the disclosed process may be provided initially in the reactor (Paragraphs 0015 – 0019). The polyols obtained by the process have OH numbers of 15 to 120 mgKOH/g and functionalities of from 2.2 to 6.0 (Paragraph 0040); using these values, the polyols obtained by the process can be calculated to have molecular weights in the range of roughly 1029 – 22,440 g/mol. When such polyethers are used to prepare a further polyether, they can be calculated to constitute roughly at least 4.5 weight percent and less than 100 weight of the total weight of the final product.
Regarding Claim 3. Klescewski et al. teaches the process of Claim 1 wherein the ratio of ethylene oxide and substituted alkylene oxide may be increased during said process (Paragraph 0036), which necessarily comprises increasing the feed rate during a continuous process.
Regarding Claim 5. Klescewski et al. teaches the process of Claim 1 wherein the substituted alkylene oxide is preferably propylene oxide (Paragraph 0035).
Regarding Claims 6 and 10. Klescewski et al. teaches the process of Claims 1 and 3 wherein the ratio of ethylene oxide and substituted alkylene oxide may be varied during said process (Paragraph 0036), which would include embodiments in which the ethylene oxide is increased in an initial part of the process.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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