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 11, 21, and 22 are objected to because of the following informalities: 6-dimethylamino-1-hexanol is misspelled in each claim.
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 1, 2, 6, 11 – 13, 16, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0 004 309 to Bayer (hereinafter Bayer). For the purposes of examination, citation for Bayer are taken from a machine translation of the document obtained from the European Patent Office website in November 2025, except where expressly noted.
Regarding Claims 1, 2, and 6. Bayer teaches a catalyst composition comprising:
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in which all R groups are C1 to C5 alkyl groups and particularly preferably methyl groups, m is an integer of 1 to 7, and n is 2 or 3 (see structure on page 3 of original document; and [0006] of the machine translation). The catalyst compound of Bayer may thus correspond to a compound of instantly claimed general formula I in which A is N-R3; R3 is a C1 or C2 group; X is 1 to 7; n and m are 2 or 3; and R1 – R5 may be -CH3/C1 alkyl groups.
The Office recognizes that, in the above described embodiment of Bayer, R1 and R2 correspond to C1 alkyl groups, rather than C3-C5 alkyl groups as instantly claimed. However, as detailed above, Bayer expressly envisions the moieties corresponding to instantly claimed R1 and R2 may be up to C5 alkyl [0006]. Moreover, the above described compound in Bayer differs from the instantly claimed at least one compound of general formula I only by the regular successive addition of -CH2- groups. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) (MPEP 2144.09 (II)) A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963)
It is then the Office’s position that, before the effective filing date of the instantly claimed invention, a person of ordinary skill in the art would have been motivated to make the instantly claimed compounds in which R1 and R2 correspond to C3-8 alkyl and R3 – R5 correspond to C1 alkyl, e.g. N,N”-dipropyl-N,N’,N”-trimethyl(diethylenetriamine) in which R1 and R2 correspond to C3 alkyl and R3 – R5 correspond to C1 alkyl, in light of the compounds disclosed by Bayer. As in In Re Wilder, the instantly claimed compounds of general formula I and the above described compounds of Bayer are of sufficiently close structural similarity (differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) and have the same utility (catalysts for polyurethane foams) such that there would be expectation such compounds would have similar properties.
Regarding Claims 12 and 13. Bayer teaches the catalyst composition of Claim 1 may be acid blocked with a carboxylic acid, such as formic acid [0009].
Regarding Claim 16. Bayer teaches a polyurethane composition of Claim 1 comprising the reaction/contact product of polyisocyanates, high molecular weight compounds having at least two hydrogen atoms which are reactive with isocyanates, blowing agents, and the catalyst composition of Claim 1 [0007] – [0009].
Regarding Claim 18. Bayer teaches the polyurethane composition of Claim 16 may further comprise a chain lengthening agent [0007], i.e. a chain extender.
Regarding Claim 19. Bayer teaches a method of preparing a cellular/foamed polyurethane comprising reacting/contacting polyisocyanates with high molecular weight compounds having at least two hydrogen atoms which are reactive with isocyanates, in the presence of blowing agents and the catalyst composition of Claim 1 [0007] – [0009].
Claims 1, 2, 6, 9 – 11, 14, 16 – 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,143,003 to Haas et al. (hereinafter Haas).
Regarding Claims 1, 2, and 6. Haas teaches a catalyst composition comprising:
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in which all R groups are C1 to C5 alkyl groups and particularly preferably methyl groups, m is an integer of 1 to 7, and n is 2 or 3 (Column 2, Lines 68 – 69; and Column 3, Lines 3 – 19). The catalyst compound of Haas may thus correspond to a compound of instantly claimed general formula I in which A is N-R3; R3 is a C1 or C2 group; X is 1 to 7; n and m are 2 or 3; and R1 – R5 may be -CH3/C1 alkyl groups.
The Office recognizes that, in the above described embodiment of Haas, R1 and R2 correspond to C1 alkyl groups, rather than C3-C5 alkyl groups as instantly claimed. However, as detailed above, Haas expressly envisions the moieties corresponding to instantly claimed R1 and R2 may be up to C5 alkyl [0006]. Moreover, the above described compound in Bayer differs from the instantly claimed at least one compound of general formula I only by the regular successive addition of -CH2- groups. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) (MPEP 2144.09 (II)) A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963)
It is then the Office’s position that, before the effective filing date of the instantly claimed invention, a person of ordinary skill in the art would have been motivated to make the instantly claimed compounds in which R1 and R2 correspond to C3-8 alkyl and R3 – R5 correspond to C1 alkyl, e.g. N,N”-dipropyl-N,N’,N”-trimethyl(diethylenetriamine) in which R1 and R2 correspond to C3 alkyl and R3 – R5 correspond to C1 alkyl, in light of the compounds disclosed by Haas. As in In Re Wilder, the instantly claimed compounds of general formula I and the above described compounds of Haas are of sufficiently close structural similarity (differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) and have the same utility (catalysts for polyurethane foams) such that there would be expectation such compounds would have similar properties.
Regarding Claims 9 – 11 and 14. Haas teaches the catalyst composition of Claim 1 may further comprise an organic metal compound as a catalyst (Column 9, Lines 19 – 26), i.e. a catalytic material other than the compound of instantly claimed general formula I. Based on the wording in Claim 9 of “a metal catalyst, a tertiary amine catalyst…or a combination thereof”, limitations directed to an additional tertiary amine catalyst do not further limit embodiments of the claims in which only the metal catalyst is provided.
Regarding Claim 16. Haas teaches a polyurethane composition comprising the reaction/contact product of polyisocyanates, high molecular weight compounds having at least two hydrogen atoms which are reactive with isocyanates, blowing agents, and the catalyst composition of Claim 1 (Column 1, Line 59 – Column 2, Line 19).
Regarding Claim 17. Haas teaches the polyurethane composition of Claim 16 may further comprise a tertiary amine compound other than the inventive linear polyamines (Column 8, Lines 3 – 5), i.e. the compound of instantly claimed general formula I.
Regarding Claim 18. Haas teaches the polyurethane composition of Claim 16 may further comprise a flame retarding agent (Column 8, Lines 45 – 51).
Regarding Claim 19. Haas teaches a method of preparing a polyurethane foam comprising the reacting/contacting polyisocyanates with high molecular weight compounds having at least two hydrogen atoms which are reactive with isocyanates, in the presence of blowing agents and the catalyst composition of Claim 1 (Column 1, Line 59 – Column 2, Line 19).
Regarding Claims 20 and 22. Haas teaches the method of Claim 19 wherein the catalyst composition may be present in combination with an organic metal compound as a catalyst (Column 9, Lines 19 – 26). Based on the wording in Claim 20 of “a metal catalyst, a tertiary amine catalyst…or a combination thereof”, limitations directed to an additional tertiary amine catalyst do not further limit embodiments of the claims in which only the metal catalyst is provided.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,143,003 to Haas et al. (hereinafter Haas), as applied to Claims 1 and 14 above, and further in view of US 2011/0303867 to Ling et al. (hereinafter Ling).
Regarding Claim 15. Haas teaches the catalyst composition of Claim 1 but does not expressly teach it further contains one of the instantly claimed species of catalytic material. However, Ling teaches the concept of further including potassium acetate or potassium octoate as a catalyst in the preparation of polyurethane foams [0053]. Haas and Ling are analogous art as they are from the same field of endeavor, namely polyurethane foams. 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 include potassium acetate or potassium octoate in the catalyst composition of Haas. The motivation would have been that such compounds function as trimerization catalysts in polyurethane compositions (Ling: [0053]), introducing isocyanurate groups which will increase the hardness and strength of the polyurethane product.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,143,003 to Haas et al. (hereinafter Haas), as applied to Claims 1 and 14 above, and further in view of US 2016/0046758 to Boehnke et al. (hereinafter Boehnke).
Regarding Claim 21. Haas teaches the catalyst composition of Claim 1 may further comprise an additional catalyst (Column 8, Lines 3 – 7) but does not expressly teach this additional catalyst corresponds to one of the instantly claimed species. However, Boehnke teaches the concept of further including dimethylethanolamine as a catalyst in the preparation of polyurethane foams [0036]. Haas and Boehnke are analogous art as they are from the same field of endeavor, namely polyurethane foams. 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 include dimethylethanolamine as an additional catalyst in the catalyst composition of Haas. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Boehnke shows that dimethylethanolamine is known in the art to be a suitable catalyst for the preparation of polyurethane foams [0036].
Response to Arguments
Applicant's arguments filed March 5, 2026 have been fully considered. The Office responds as follows:
Objections to the Claims
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding objections thereto. However, Claims 11, 21, and 22 are presently objected to a new objection for minor informality (typo).
Rejections under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejection under 35 U.S.C. 112(b). Accordingly, all rejections under 35 U.S.C. 112(b) have been withdrawn.
Rejections under 35 U.S.C. 102
A. The Office agrees that Bilke is not properly relied upon to anticipate the instant claims as amended, which now set forth a premix comprising the contact product of at least one active hydrogen-containing compound, at least one blowing agent, and a catalyst composition comprising at least one compound of general formula I. Accordingly, the rejections under 35 U.S.C. 102(a)(1) in view of Bilke have been withdrawn.
B. and C. The Office agrees that neither Bayer nor Haas is properly relied upon to anticipate the instant claims as amended, which now require R1 and R2 are C3 – C8 alkyl groups. Both references do not expressly teach an embodiment in which R1 and R2 are C3 – C8 alkyl groups, while R4 and R5 are -CH--3 groups.
Rejections under 35 U.S.C. 103
Applicant argues that Bayer and Haas do not expressly teach catalysts of formula I in which R1 and R2 are C3 – C8 alkyl groups, while R4 and R5 are -CH--3 groups. Applicant notes that each references teaches all R groups are preferably -CH3 groups. However, it has been held that prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. (MPEP 2143(I)) While it is noted that Bayer and Haas disclose -CH-3 groups to be preferred, both references allow for all R groups to have as many as 5 carbon atoms (Bayer: [0006] and Haas: Colum 2, Lines 14 - 15). Furthermore, it is the Office’s position that, before the effective filing date of the instantly claimed invention, a person of ordinary skill in the art would have been motivated to make the instantly claimed compounds for the reasons detailed in the new grounds of rejection in view of Bayer and Haas under 35 U.S.C. 103 above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764