Detailed Office 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
2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claims 1-3, 5-16, and 18-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the examiner has reviewed the specification, as originally filed, and has not found support for both condition (1), as amended, and condition (2) being satisfied.
4. 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.
5. Claims 1-3, 5-16, and 18-21 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.
With respect to claim 1, the examiner is unable to reconcile condition (1) with condition (2), because condition (1) requires that the polycarbonate diol comprises a diol-derived structure having 10 carbon atoms and condition (2) requires that the polycarbonate diol contains a diol-derived structure having 3-10 carbon atoms. It is unclear how to interpret these conditions, especially when the structure with respect to each condition contains 10 carbon atoms.
Prior Art Rejections
6. 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.
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.
7. Claims 1, 3, 5, 6, and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/098771 A1.
WO 2016/098771 A1 discloses a polyurethane composition comprising, as reactants, 1,5-pentamethylene diisocyanate, polycarbonate polyol which may be plant derived and further derived from a diol structure having applicants’ claimed carbon atom number and a molecular weight of 250-5,000, with the preferred molecular weight being 400-2,000, and further including low molecular weight diols, meeting applicants’ aliphatic diol. The composition is useful for producing coatings, coated substrates, and artificial leather. See abstract and pages 3, 4, 6, 8, 9, and 24 within the provided translation. Regarding applicants’ condition (1) of claim 1 as amended, it is disclosed within page 6 of the translation that the polycarbonate polyol may be derived from the “above low molecular weight polyol”, and this low molecular weight is disclosed within page 4 as including an alkane (C10) diol (note the “alkane (C7-20) diol”. Since applicants’ claimed reactants and the preferred reactants of the reference encompass each other, the position is taken that the properties of claims 8-11 are intrinsic characteristics of the disclosed polyurethane compositions. Regarding claim 13, the reference discloses within pages 11 and 18 of the translation the use of trimerized polyisocyanates and blocked polyisocyanates, respectively, which are considered to correspond to applicants’ claimed isocyanate-based crosslinking agents.
8. Though the reference discloses that 1,5-pentamethylene diisocyanate is used to produce the composition, the reference fails to specifically disclose that 10 mol% to 80 mol% of the isocyanate component is a linear aliphatic isocyanate having 5 carbon atoms (1,5-pentamethylene diisocyanate). However, the reference discloses within the last two paragraphs of page 11 through paragraph 7 of page 12 of the translation that trimer and allophanate modified pentamethylene diisocyanate may be used to produce the composition, which are considered to be outside the scope of the claimed linear aliphatic isocyanate component having 5 carbon atoms, wherein contents of these modified products are disclosed that clearly allow for the composition to be derived from unmodified pentamethylene diisocyanate in combination with the modified isocyanate. Furthermore, the reference discloses within paragraph 9 of page 13 of the translation that the presence of trimers and allophanates improve chemical resistance and self-healing properties. Accordingly, in view of the disclosed content amounts of these modified isocyanates and the teachings with respect to their benefits, the position is taken that one would have been motivated to incorporate these modified isocyanates in combination with 1,5-pentamethylene diisocyanate in quantities such that the claimed mol% range of 1,5-pentamethylene diisocyanate would have been realized. Applicants have failed to provide showings commensurate in scope with the claims that demonstrate unexpected results attributable to the claimed limitations.
9. Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/098771 A1.
WO 2016/098771 A1 discloses a polyurethane composition comprising, as reactants, 1,5-pentamethylene diisocyanate, polycarbonate polyol which may be plant derived and further derived from a diol structure having applicants’ claimed carbon atom number and a molecular weight of 250-5,000, with the preferred molecular weight being 400-2,000, and further including low molecular weight diols, meeting applicants’ aliphatic diol. The composition is useful for producing coatings, coated substrates, and artificial leather. See abstract and pages 3, 4, 6, 8, 9, and 24 within the provided translation. Regarding applicants’ condition (1) of claim 1 as amended, it is disclosed within page 6 of the translation that the polycarbonate polyol may be derived from the “above low molecular weight polyol”, and this low molecular weight is disclosed within page 4 as including an alkane (C10) diol (note the “alkane (C7-20) diol”.
10. Though the reference discloses that 1,5-pentamethylene diisocyanate is used to produce the composition, the reference fails to specifically disclose that 10 mol% to 80 mol% of the isocyanate component is a linear aliphatic isocyanate having 5 carbon atoms (1,5-pentamethylene diisocyanate). However, the reference discloses within the last two paragraphs of page 11 through paragraph 7 of page 12 of the translation that trimer and allophanate modified pentamethylene diisocyanate may be used to produce the composition, which are considered to be outside the scope of the claimed linear aliphatic isocyanate component having 5 carbon atoms, wherein contents of these modified products are disclosed that clearly allow for the composition to be derived from unmodified pentamethylene diisocyanate in combination with the modified isocyanate. Furthermore, the reference discloses within paragraph 9 of page 13 of the translation that the presence of trimers and allophanates improve chemical resistance and self-healing properties. Accordingly, in view of the disclosed content amounts of these modified isocyanates and the teachings with respect to their benefits, the position is taken that one would have been motivated to incorporate these modified isocyanates in combination with 1,5-pentamethylene diisocyanate in quantities such that the claimed mol% range of 1,5-pentamethylene diisocyanate would have been realized. Applicants have failed to provide showings commensurate in scope with the claims that demonstrate unexpected results attributable to the claimed limitations.
11. Though the reference fails to disclose the claimed acid value of claim 2, the reference discloses within pages 19 and 20 of the translation that aqueous compositions can be produced by incorporating a hydrophilic group-containing active hydrogen compound into the composition. Since acid group-containing active hydrogen compounds were conventionally employed as such hydrophilic group-containing reactants to incorporate water dispersible groups into aqueous polyurethane compositions, the position is taken that it would have been obvious to incorporate such reactants into the composition in sufficient quantity as to arrive at an acid value, as claimed, so as to provide adequate water dispersibility.
12. Though the reference fails to specifically recite the use of the claimed molar ratio of claim 7, the reference discloses within page 8 of the translation that in the active hydrogen group-containing compound, the high molecular weight polyol (polycarbonate polyol) is preferably 50% by mass or more of the total amount of the active hydrogen group-containing compound. Accordingly, this disclosure provides for a 50% or less amount of the low molecular weight compound (aliphatic diol), and the position is taken that it would have been obvious from this teaching to operate within the claimed molar ratio of claim 7.
13. Claims 5 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/098771 A1 in view of JP 2016-125155 A.
WO 2016/098771 A1 discloses a polyurethane composition comprising, as reactants, 1,5-pentamethylene diisocyanate, polycarbonate polyol which may be plant derived and further derived from a diol structure having applicants’ claimed carbon atom number and a molecular weight of 250-5,000, with the preferred molecular weight being 400-2,000, and further including low molecular weight diols, meeting applicants’ aliphatic diol. The composition is useful for producing coatings, coated substrates, and artificial leather. See abstract and pages 3, 4, 6, 8, 9, and 24 within the provided translation. Regarding applicants’ condition (1) of claim 1 as amended, it is disclosed within page 6 of the translation that the polycarbonate polyol may be derived from the “above low molecular weight polyol”, and this low molecular weight is disclosed within page 4 as including an alkane (C10) diol (note the “alkane (C7-20) diol”.
14. Though the reference discloses that 1,5-pentamethylene diisocyanate is used to produce the composition, the reference fails to specifically disclose that 10 mol% to 80 mol% of the isocyanate component is a linear aliphatic isocyanate having 5 carbon atoms (1,5-pentamethylene diisocyanate). However, the reference discloses within the last two paragraphs of page 11 through paragraph 7 of page 12 of the translation that trimer and allophanate modified pentamethylene diisocyanate may be used to produce the composition, which are considered to be outside the scope of the claimed linear aliphatic isocyanate component having 5 carbon atoms, wherein contents of these modified products are disclosed that clearly allow for the composition to be derived from unmodified pentamethylene diisocyanate in combination with the modified isocyanate. Furthermore, the reference discloses within paragraph 9 of page 13 of the translation that the presence of trimers and allophanates improve chemical resistance and self-healing properties. Accordingly, in view of the disclosed content amounts of these modified isocyanates and the teachings with respect to their benefits, the position is taken that one would have been motivated to incorporate these modified isocyanates in combination with 1,5-pentamethylene diisocyanate in quantities such that the claimed mol% range of 1,5-pentamethylene diisocyanate would have been realized. Applicants have failed to provide showings commensurate in scope with the claims that demonstrate unexpected results attributable to the claimed limitations.
15. Though the primary reference is silent regarding the use of diamines as a low molecular weight reactant, the use of diamines encompassing those claimed as low molecular weight reactants for polyurethanes comprising the reaction product of linear aliphatic diisocyanates and polycarbonate polyols, corresponding to those claimed, suitable for the production of coatings and artificial leather, was known at the time of invention as evidenced by the disclosure within page 4, last paragraph and page 5, paragraph 5 of the translation of JP 2016-125155 A. Accordingly, since it has been held that it is prima facie obvious to use a known compound for its known function, the position is taken that it would have been obvious to incorporate diamines as a low molecular weight reactant within the analogous composition of the primary reference, so as to arrive at the instant invention.
Response to Applicants’ Argument
16. Applicants’ amendment and argument that the reference fails to disclose a polycarbonate diol having a diol-derived structure having 10 carbon atoms has been considered; however, they fail to overcome the prior art rejections, because the argument fails to address the fact that the reference discloses that the disclosed polycarbonate diol may be derived from a diol-derived structure having 10 carbon atoms. Furthermore, applicants have referred to the improved “Oleic acid resistance” within the Tables. The examiner has considered these showings; however, they are unsuitable to rebut the prima facie case of obviousness, because the claims are not commensurate in scope with the examples in terms of component species, such as the polycarbonate diol, the isocyanate component, and the aliphatic diol component. It is especially noted that the polycarbonate diol of the argued examples employs a polycarbonate diol having a more limited/specific structure, as compared to the claimed polycarbonate diol. Accordingly, it has not been established that the argued showings hold for the full scope of the claims. This position is in keeping with the tenets established with respect to In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978).
Conclusion
17. 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765