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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-7 in the reply filed on 5/5/26 is acknowledged. Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/5/26.
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 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.
Claim 4 states “wherein the polyisocyanate is selected from (1)….; and (3) a mixture thereof”. This is incorrect Markush wording; the group is not clearly closed. Correct Markush wording is “wherein the polyisocyanate is selected from the group consisting of (1)…; and (3) a mixture thereof”.
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.
Claims 1, 2 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10428170. Although the claims at issue are not identical, they are not patentably distinct from each other. Instant claim 1 is obviated by patent claim 1 both describe a composition comprising a polyol, a polyisocyanate, a catalyst and a blowing agent with an isocyanate index greater than 200. The patent claim need not mention the instant “optional” components. Instant claim 1 is obviated by patent claims 2-8 as they are merely more specific than claim 1. Although the preamble is somewhat different in patented claim 1 vs. instant claim 1, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the patent composition is capable of being a reaction mixture for use in the production of polyurethane/polyisocyanate sandwich panels as in instant claim 1, the patent claim reads on the instant claim. Instant claim 2 is obviated by patent claim 8 as both describe the polyol comprising a polyether polyol. Instant claim 5 is obviated by patent claims 1 and 2 because the catalysts in patent claims 1 and 2 read on trimerization catalysts, for example carboxylate salt of alkaline earth metal (potassium acetate); see instant submitted specification paragraph 35.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/833019 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both describe a composition comprising a polyol, a polyisocyanate, a catalyst and a blowing agent with an overlapping isocyanate index. Although the preamble is somewhat different in copending claim 1 vs. instant claim 1, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the copending composition is capable of being a reaction mixture for use in the production of polyurethane/polyisocyanate sandwich panels as in instant claim 1, the copending claim reads on the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 17/928,558 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both describe a composition comprising a polyol, a polyisocyanate, a catalyst and a blowing agent with an overlapping isocyanate index. Although the preamble is somewhat different in copending claim 1 vs. instant claim 1, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the copending composition is capable of being a reaction mixture for use in the production of polyurethane/polyisocyanate sandwich panels as in instant claim 1, the copending claim reads on the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019236465 represented herein by US 20210189056 by Ogunniyi et al.
Ogunniyi describes a polyurethane/polyisocyanurate foam.
Regarding claim 1, Ogunniyi describes, for example, example 3, which comprises:
(i) a polyol: e.g. polyol D (paragraph 68 Table 3, paragraph 51-55)
(ii) a polyisocyanate (paragraph 63)
(iii) a catalyst, Trimerization catalyst and Urethane catalyst (paragraph 68 Table 3, paragraph 58-60)
(iv) a blowing agent, water and n-pentane (paragraph 68 Table 3; paragraph 26)
(vi) an additive, surfactant (paragraph 68 Table 3; paragraph 61)
The isocyanate index of Example 3 is 250 (paragraph 68 Table 3). This falls within the claimed range. Since Ogunniyi describes the claimed invention, Ogunniyi anticipates the claim.
Example 3 is cited for efficiency but applicant should consult the entirety of Ogunniyi’s disclosure, especially the examples, for overlapping content with the claims. See also Ogunniyi’s optional crosslinking agent (paragraph 19).
Regarding the preamble “for use in the production of polyurethane/polyisocyanurate sandwich panels…”, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the composition of Ogunniyi is capable of being used in the production of sandwich panels, Ogunniyi meets the claim.
Regarding claim 2 and 3, Ogunniyi describes polyether polyol in Example 3 (paragraph 68 Table 3, paragraph 51-55). Specifically for claim 3, Ogunniyi describes Polyol D in Example 3 (paragraph 68 Table 3) as a polyether made by homopolymerizing propylene oxide onto glycerin (paragraph 54).
Regarding claim 5, Ogunniyi describes trimerization catalysts in Example 3 (paragraph 68 Table 3).
Regarding claim 6, the instant claim does not require the presence of the chain extender or crosslinking agent, so Ogunniyi meets the claim at least when they are not present, for example in Ogunniyi Example 3 (paragraph 68 Table 3). Notably Ogunniyi also describes their presence in Example 5, which has the instantly claimed glycerin as a crosslinking agent (paragraph 70 Table 5).
Regarding claim 7, Ogunniyi describes the presence of a surfactant, for example in Example 3 (paragraph 68 Table 3).
Claims 1, 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6602927 by Rothacker.
Rothacker describes polyisocyanurate foams.
Regarding claim 1 Rothacker describes a composition comprising, for example, Example 1 (col 8 Table 1):
(i) a polyol, Rubinol F 455 (col 8 Table 1, col 3 ln 12-14)
(ii) a polyisocyanate, Rubinate 8700 (col 9 Table 1, col 3 ln 28-30)
(iii) a catalyst, Dabco K-15 (col 8 Table 1, col 2 ln 42-44)
(iv) a blowing agent, e.g. Unitol DSR (col 8 Table 1, col 3 ln 40-44)
(v) a chain extender/crosslinking agent glycerine (col 8 Table 1, col 6 ln 9-10)
(vi) an additive e.g. surfactant Tegostab B8465 (col 8 Table 1, col 3 ln 39-40)
Rothacker describes the isocyanate index as 200-1500 (col 7 ln 6-10).
Regarding the preamble “for use in the production of polyurethane/polyisocyanurate sandwich panels…”, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since Rothacker’s composition is capable of being used in the production of sandwich panels as claimed, Rothacker meets the claim.
Rothacker’s example 1 is cited herein for efficiency but applicant should consult the entirety of Rothacker’s disclosure, especially the examples, for overlapping content with the claims.
Regarding claim 5, in Example 1 Rothacker describes the trimerization catalyst Dabco K-15 (col 8 Table 1, col 2 ln 42-44).
Regarding claim 6, even though the chain extender or crosslinking agent is not required, in Example 1 Rothacker describes glycerine (col 8 Table 1, col 6 ln 9-10).
Regarding claim 7, even though the additive is not required, in Example 1 Rothacker describes Tegostab B-8465, a surfactant (col 8 Table 1, col 3 ln 39-40).
Claims 2, 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6602927 by Rothacker as evidenced by US 20020103289 by Sawitski et al.
Regarding claims 2 and 3, Rothacker Example 1 uses the polyol Rubinol F 455, which Sawitski describes as a 3,100 molecular weight polyoxypropylene-polyoxyethylene triol (Sawitski paragraph 34). In claim 3 the phrasing “obtained by the addition of propylene oxide to a di or trifunctional initiator” is product-by-process language, and Rothacker must merely meet the final structure, a triol with polyoxypropylene units.
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.
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(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019236465 represented herein by US 20210189056 by Ogunniyi as evidenced by “An overview of advances in methylene diphenyl diisocyanate (MDI) and toluene diisocyanate (TDI) based polyurethanes: Chemistry, properties, and applications” by Felekari.
Ogunniyi is described above.
Regarding claim 4, Ogunniyi describes “the various isomers of diphenylmethanediisocyanate” (paragraph 28) as the polyisocyanate. Felekari confirms that MDI “exists primarily as 4,4′-MDI, although 2,4′- and 2,2′-isomers also occur” (p.334 col 2 penultimate paragraph).
It would be obvious to one of ordinary skill to choose 4,4’-MDI because Ogunniyi describes the isomers of diphenylmethanediisocyanate as appropriate and 4,4’-MDI is the primary isomer among only three isomers.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 6602927 by Rothacker.
Rothacker is described above.
Regarding claim 4, Rothacker describes, for example, example 6K (col 9 Table 3, col 8 Table 1 “Example 6”). This includes:
(i) a polyol, for example Rubinol R-015 (col 8 Table 1), which is a triol from propoxylated glycerol (col 3 ln 3-5)
(ii) a polyisocyanate, in example 6K Rubinate 1680 (col 9 Table 3), a uretonimine-modified 4,4' MDI with an NCO content of 29.3% (col 3 ln 15-20)
(iii) a catalyst (col 5 ln 20-45)
(iv) a blowing agent (col 9 Table 3 “unitol DSR”; col 3 ln 40-43)
(v) a chain extender and/or crosslinker (col 5 ln 47-col 6 ln 11)
(vi) an additive, for example 6K Tegostab B8465 (col 8 Table 1, col 3 ln 39-40), a surfactant
Rothacker describes the isocyanate index as 200-1500 (col 7 ln 6-10).
Although example 6 does not explicitly use a catalyst (col 8 Table 1), it would be obvious to one of ordinary skill to add the catalyst because Rothacker states that the catalyst can be added in varied amounts to achieve desired processing and property characteristics (col 5 ln 20-25), and Rothacker emphasizes formulations containing a trimerization catalyst (col 6 ln 63-67).
Similarly, for the optional chain extender and/or crosslinker, Rothacker describes them as possible to be included in formulations (col 5 ln 47-51), thus adding them to example 6K would be obvious to one of ordinary skill because Rothacker describes their addition.
Also, for completeness of record, Rothacker describes other alternatives which read on instant claim 4’s alternatives for the diisocyanate (Rothacker col 3 ln 54-col 4 ln 15).
Alternatively, it would be obvious to one of ordinary skill to use Rubinate 1680 as the polyisocyanate instead of the exemplified polyisocyanate of Example 1 because Rothacker describes it as a possibility.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/ Examiner, Art Unit 1766
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