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 4-5 and 8-19 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.
Regarding claim 4, the claim is modified by the adverb “preferably”, which renders the claim indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of “head to tail linkages”, “CO2 pressure of first reaction” and “CO2 pressure of second reaction” and the claim also recites narrower limitations of the range/limitation of the “head to tail linkages”, “CO2 pressure of first reaction” and “CO2 pressure of second reaction”, respectively.
Regarding claim 5, the claim is modified by the adverb “preferably”, which renders the claim indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Regarding claim 8, the claim is modified by the adverb “preferably”, which renders the claim indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Additionally, the phrase “such as”, render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 9, recites the limitation “the total epoxide”. There is insufficient antecedent basis for this limitation in the claims.
Claim is confusing as to intent because it can not be determined what aspect of the epoxide is intended to be further defined through reference back to “the total epoxide” which has not been previous set forth or identified as opposed to reference back to “the total amount of epoxide” which is previously set forth in line 1 of the claim.
Further, the claim is modified by the adverb “preferably” and “preferred”, which render the claim indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Additionally, the phrase “such as”, render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase “such as”, render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 11, 12 (and dependent claims 13-18) and 19, the claim language is not clear. The claim requires a polycarbonate block, A (-A’-Z’-Z-(Z’-A’)n-, which suggests that A is part of the required structure. In order to make the claim language more clear the following change to the sentence structure is recommended:
….. a polycarbonate block, A, (-A’-Z’-Z-(Z’-A’)n-, wherein A’ is a polycarbonate……
Additionally, the starter residue Z’-Z-(Z’)n is left undefined.
Regarding claim 15, the phrase “such as”, "for example" and “the like” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 16, the phrase “typically” renders the claim language indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of “Mn”, “carbonate linkages in A block”, “carbonate linkages in B block”, “ether linkages in B block” and “ether linkages in A block” and the claim also recites narrower limitations of the range/limitation of “Mn”, “carbonate linkages in A block”, “carbonate linkages in B block”, “ether linkages in B block” and “ether linkages in A block”, respectively.
Regarding claim 17, the phrase “typically” renders the claim language indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of “the epoxide residues of block A” and “the epoxide residues of block B” and the claim also recites narrower limitations of “the epoxide residues of block A” and “the epoxide residues of block B”, respectively.
Regarding claim 18, the phrase “such as”, render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Applicant is encouraged to remove the phrases “such as”, “for example”, “e.g.”, “the like”, “typically”, and “preferably”, present in any claim.
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.
Claim 17 is 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. Claim 17 requires the mol/mol ratio of block A to block B in the range of 25:1 to 1:250, which fails to further limit the subject matter of the claim upon which it depends in that from claim 12’s formula the minimum ratio of “B” blocks to “A” blocks is 1:1 .
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
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Braun et al. US 2017/0198092 A1 (present on IDS) in view of Allen et al US 2011/0230580 A1.
Regarding claims 1 and 3, Braun teaches (abstract and reference claims 1 and 6-7), a method of producing polyether carbonate polyol by addition of alkylene oxide (epoxide) and carbon dioxide to a H-functional starter in the presence of a DMC catalyst, where the reaction is conducted in a dual reactor system which consists of a main reactor and a tubular reactor. The DMC catalyst, the H-functional starter substance, the alkylene oxide (epoxide), and carbon dioxide are reacted in the main reactor at a temperature of 90 to 135° C.
Braun notes (para [0058]) that H-functional starter can be selected to be a polycarbonate polyol which can be prepared beforehand in a separate step (para [0064]), however Braun does not address the synthesis of the required polycarbonate polyol. Analogous reference Allen (abstract) teaches a polycarbonate polyol and its synthesis method. Advantageously Allen, discusses the motivation to create the specific polycarbonate polyols, since they combine features of high carbonate linkage content, high percentage of hydroxyl end groups and low molecular weight (para [0217]). Allen adds that the hydroxyl groups serve as reactive sites on which other blocks of a co-polymer can be constructed (para [0003]).
Allen discloses (Example 8, paras [0395]-[0403]), polycarbonate polyol synthesized in a glass reactor which is derived from 1,3-propanediol (initiator or starter), propylene oxide and carbon dioxide in the presence of a carbonate catalyst, resulting in in mainly carbonate linkages and greater than 98% -OH end groups, which corresponds to applicant’s polycarbonate polyol of the first reaction conducted in a first reactor.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized the polycarbonate polyol as a H-functional starter as taught by Allen in the synthetic method of Braun for the same application of creating polycarbonate polyether polyol, where the polycarbonate block has high carbonate linkages.
Utilization of Allen’s polycarbonate polyol as the H-functional starter (produced separately in the first glass reactor) in Braun’s method of producing polyether carbonate polyol, where the H-functional starter, epoxide and CO2 are reacted in the main reactor in the presence of DMC catalyst (which corresponds to applicant’s second reaction in a second reactor), would generate the required polycarbonate ethercarbonate polyol block copolymer.
Regarding claim 4, Braun teaches (para [0041]) activation of the DMC catalyst by using a portion of epoxide to abate hot spots, making the claimed requirement obvious.
Regarding claim 5, as discussed when addressing claim 1, creation of the polycarbonate polyol in Allen’s glass reactor, corresponds to the batch process of the first reaction.
Regarding claim 6, Allen’s polycarbonate diol (para [0402]), is generated as a crude polymer which has greater than 98% -OH end groups, which can serve as reactive sites for building the subsequent polyethercarbonate block (Allen para [0003]). It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized the polycarbonate polyol without the need for additional purification, due to the presence of high -OH group which can be quantitative utilized to build the polyethercarbonate block. As discussed, when addressing 4, Braun discusses the pre-activation of the DMC catalyst.
Regarding claim 7, Allen teaches (para [0402]) quenching the reaction mixture with an acid, to yield the crude polycarbonate diol with -OH end groups to be used as a H-starter for Braun’s reaction with epoxide, CO2 and DMC catalyst.
Regarding claim 8, Allen teaches (para [0402]) the reaction temperature of 30 oC, meeting applicant’s first reactor temperature.
Regarding claim 9, Allen’s Example 8 (para [0402]) utilizes propylene oxide, meeting the claimed requirement.
Regarding claim 10, Braun (para [0113]) teaches DMC catalyst zinc hexacyanocobaltate, meeting the claimed requirement.
Regarding claim 11, as discussed when addressing claim 1, Allen’s Example 8 (para [0402]) utilizes propylene oxide as the epoxide, Braun’s inventive examples (para [0199] and Table 1) also use propylene oxide. Thus, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized the same propylene oxide for both the first and second reactions.
Regarding claims 2,12-13 and 15-17, Braun (para [0172]) teaches reaction of polyisocyanates with the inventive polyether carbonate polyols to generate a polyurethane. As discussed, when addressing claim 1, Allen teaches required the polycarbonate diol (corresponding to polycarbonate block, A) which is utilized as the H-starter from which Braun’s polyethercarbonate are initiated (corresponding to applicant’s B block). The polycarbonate diol as taught by Allen meets the structural requirement of polycarbonate block A, where the starter residue Z’-Z-Z’, with n=1 and is 1,3-propanediol, where A’ (and block A) is a polycarbonate chain having ~100% carbonate linkages (instant claim 16) (Allen, Example 8, para [0402]). Starter 1,3-propanediol meets the starter formula (III) where Z is a propylene, with a=2, Z’ corresponds to Rz and Rz group are -OH (instant claim 15) and propylene oxide corresponds to 100% of the epoxide residues (instant claim 17)
Braun discloses the preparation of polyether carbonate polyol (Example 3, para [0200]) with a H functional starter, propylene oxide and carbon dioxide in the presence of a DMC catalyst. Obvious composition of Braun would be where the H-functional starter is Allen’s polycarbonate diol, which would result in a polycarbonate (A) block polyethercarbonate (B) with the structure corresponding to B-A’-Z’-Z-Z’-A’-B, where n=1, t=2. Braun notes that weight fraction of the repeat carbonate units in the polyether carbonate is converted to proportion by weight of carbon dioxide which does not include the starter (para [0188]). Braun provides the (Table 1, Ex 3) CO2 content of 19.7 wt% which is consistent with the examples provided in the instant application, where the B blocks are generated in a similar fashion by utilizing a DMC catalyst (instant specification Table 3, Reaction 2, such as example 8). Braun’s obvious composition would be reasonably expected to possess the desired percentage of ether and carbonate linkages in the polyethercarbonate B blocks.
Regarding claim 14, as discussed when addressing claim 12, Allen’s polycarbonate block derived from propylene oxide corresponding to the -A’- meets the required structure (I) where Re1 is methyl and Re2 is H, where the ratio of p:q is 10:0. The second block built per Braun’s disclosure, also generated by propylene oxide, would result in block B with structure (II) with Re3 as methyl and Re4 as hydrogen, and where the ratio of w:v is greater than 1:1 due to the presence of higher ether linkages as noted in Ex 3 (Table 1), where the utilization of DMC catalyst results in higher ether content in the polyethercarbonate block.
Regarding claim 18, Braun teaches (para [0172]) the polyurethane to be a flexible foam.
Regarding claim 19, as discussed, when addressing claims 1 and 12, the required block copolymer residue having a polycarbonate block A, and polyethercarbonate blocks B, is rendered obvious by Braun and Allen. Reference Allen (para [0340]) teaches formation of an isocyanate terminated polyurethane prepolymer by reacting a stoichiometrically excess amount of a polyisocyanate to the polyol composition, to create humidity curable composition which can be cured by a reaction with moisture in air (para [0341]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized the block copolymer derived from the teaching of Braun and Allen to create an isocyanate terminated polyurethane prepolymer for the application of creating a curable composition which can be cured by moisture in air.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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