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 1, 3-4, 7, 9, 10, 12-19 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 1, Claim 1 recites the limitation " wherein the polvol component comprises 80 mol% or more of a polvol having a molecular weight of 500 g/mol or less" in line 5.
There is insufficient antecedent basis for this limitation in the claim, wherein, the Claim 1 recites “a polyol component bifunctional polyol and multifunctional polyol having trifunctionality or more”. As such, it cannot be clearly ascertained if the polvol component refers to which specific type of polyol between bifunctional polyol and multifunctional polyol.
Claim 1 recites the limitation " the isocyanate component comprises 80 mol% or more of an isocyanate compound having a molecular weight of 180 to 1,000 g/mol" in line 10.
There is insufficient antecedent basis for this limitation in the claim, wherein, the Claim 1 recites “isocyanate component comprising a bifunctional non-aromatic isocyanate compound and a multifunctional non-aromatic isocyanate compound having trifunctionality or more”. As such, it cannot be clearly ascertained if the isocyanate component refers to which specific type of isocyanate compound between bifunctional non-aromatic isocyanate compound and multifunctional non-aromatic isocyanate compound.
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.
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.
Claims 1, 3-4, 7, 9, 10, 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over GMBH (DE29824513, herein GMBH, a machine translation is being used for citation purpose), in the view of Hideteru (JP2017057349, herein Hideteru, a machine translation is being used for citation purpose), as evidenced by DURANATE TLA-100 datasheet.
Regarding claims 1, 7, 15, 16, 17, GMBH teaches artificial stone [0012] which is cured product [0097] comprising: the polyisocyanate component, including: 1,6-diisocyanato-2,2,4-trimethylhexane [0025] reads on the bifunctional non-aromatic isocyanate compound; 1-Isocyanatomethyl-3-isocyanato-1,5-S-trimethylcyclohexane (IPDI); polyisocyanate components are by trimerization of the above-mentioned isocyanates or a mixture of two or more thereof. [0027-28] reads on the multifunctional non-aromatic isocyanate compound, the polyol component including: hexanediol [0032], reads on bifunctional polyol; and butanetriol-1,2,4, [0032] reads on multifunctional polyol;
GMBH explicitly teaches the selection of a polyisocyanate [0025] such as 4,4'-
diphenylmethane diisocyanate (MDI) [0027], mw=250.25 g/mol, which indicates solo selection of the 100 mol% isocyanate component, with mw=250.25 g/mol, lies in the claimed range of the isocyanate component comprises 80 mol% or more of an isocyanate compound having a molecular weight of 180 to 1,000 g/mol; and a single polyol can be used as the polyol component [0030], such as propylene glycol, mw=76.09 g/mol [0032], which indicates the solo selection of the 100 mol% polyol component, with mw=76.09 g/mol, lies in the claimed range of the polvol component comprises 80 mol% or more of a polvol having a molecular weight of 500 g/mol or less.
Regarding the molar ratio of bifunctional and trifunctional polyol, GMBH does not expressly disclose the claimed ratio. GMBH discloses the polyol component including: hexanediol [0032], reads on bifunctional polyol; and butanetriol-1,2,4, [0032] reads on multifunctional polyol as equally suitable alternatives to one another and therefore recognizes the equivalence of the two as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine hexanediol [0032], and butanetriol-1,2,4, [0032] in equal amounts (i.e. in a 1:1 molar ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 molar ratio falls within the claimed ratio, as 50 mol% of hexanediol [0032], and 50 mol% of butanetriol-1,2,4, [0032], hence, lies in the claimed ranges of i) wherein the polvol component comprises 80 mol% or more of a polvol having a molecular weight of 500 g/mol or less; and ii) the ratio (P2/PM) of the mole number (P2) of the bifunctional polyol to the mole number (PM) of the multifunctional polyol in the curable composition is in a range of 0.2 to 1.5.
It would have been further obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the range of the hexanediol [0032], and butanetriol-1,2,4, [0032], which can be further applied into the “reaction mixture containing the polyol component is reacted with filler and polyisocyanate at a temperature between 30 to 120 oC and compressed at a pressure of 7 MPa to 14 MPa” [0019], as the safe and optimized molding process, can lead to the molded parts with desired spatial shapes including plate or tub shape [0020] with advantageous weight and mechanical properties [0019].
GMBH teaches the filler, namely quartz [0005] in the range of polyisocyanate component or a polyol component, or a mixture of both, 1 wt.% to 99 wt.% (based on the final mass of the finished polyurethane) of a filler [0018], encompasses the claimed ranges of filler, polyol and polyisocyanate.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the range of the filler and utilize 1 wt.% to 99 wt.% (based on the final mass of the finished polyurethane) of a filler [0018] further yield the desired properties including: filler, namely quartz, for the production of supporting cores for composite panels [0005], and optical property with coloration from the black, red or grey coloured quartz powders, so that the moulded bodies can be coloured to suit the desired colour [0066] and further lead to manufacturing sustainability as of the inexpensive and practically available as "waste materials" can be used as fillers, examples of suitable recycled materials include quartz powder [0059], as collectively taught by GMBH.
GMBH does not teach an isocyanate component comprising 55 to 80 mol% of a bifunctional non-aromatic isocyanate compound and 20 to 45 mol% of a multifunctional non-aromatic isocyanate compound having trifunctionality or more, however, Hideteru teaches “(0.20 mol) of TLA-100 manufactured by Asahi Kasei Chemicals Corporation
was added as a polyisocyanate compound having three or more isocyanate groups, and
88.92 g (0.40 mol) of isophorone diisocyanate was added as a diisocyanate compound” [0075] wherein, the TLA-100 is hexamethylene diisocyanate (HDI) isocyanurate trimer, reads on the multifunctional isocyanate compound, Mw=504 g/mol [as evidenced by DURANATE TLA-100 datasheet]; isophorone diisocyanate reads on the bifunctional isocyanate compound, Mw=222.3 g/mol, hence, the bifunctional isocyanate to the multifunctional isocyanate is 0.4/0.2=2, lies in the ratio based on the claimed 55 to 80 mol% of a bifunctional non-aromatic isocyanate compound and 20 to 45 mol% of a multifunctional non-aromatic isocyanate compound having trifunctionality or more. GMBH and Hideteru are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyurethane composition development via polyfunctional isocyanate selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified GMBH to add the teachings of Hideteru and provide wherein said the ratio range of the bifunctional isocyanate to the multifunctional isocyanate into the composition preparation. Doing so would lead to the desired property of “polyurethane compound of the present invention is useful for optical members because it has excellent adhesiveness, flexibility, weather resistance, light resistance and transparency. Furthermore, the cured product of the photosensitive resin composition of the present invention is useful as an adhesive for bonding transparent display substrates.” [0090] as taught by Hideteru.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claims 3-4, GMBH teaches a single polyol can be used as the polyol component [0030], such as glycerin [0041], which is non-aromatic, acyclic polyol, further indicates the 100 mol% polyol component, lies in the claimed range of the polvol component comprises 80 mol% or more of a non-aromatic polyol.
Regarding claim 9, GMBH teaches the selection of a polyisocyanate [0025] such as trimethylhexamethylene diisocyanate [0025], MW=210.27 mol/g, which indicates the 100 mol% non-aromatic isocyanate compound, lies in the claimed range of the isocyanate component comprises 80 mol% or more of non-aromatic isocyanate compound.
Regarding claim 10, GMBH teaches bifunctional isocyanate compound, as of 1-isocyanatomethyl-S-isocyanato-1,5-S-trimethylcyclohexane (IPDI) [0027] matches the claimed formula 1, as evidenced by EC Number: 223-861-6, structure see below: [Sigma Aldrich], wherein, the L1 is -CH2-; L2 is (CH3)2-C-(CH2)2-; L3 is -CH2-; L4 is single bond;
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Regarding Claims 18, 19, GMBH and Hideteru collectively teach the claimed composition and the amounts, GMBH further teaches stone slab [0101] via after foaming and curing the mixture [0097].
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts as taught by GMBH and Hideteru, and GMBH teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., Ab* and absolute value of the change amount ΔE of the color change index before and after exposure to ultraviolet rays, would necessarily arise from a composition with all the claimed ingredients and the amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 9, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over GMBH (DE29824513, herein GMBH, a machine translation is being used for citation purpose) and Hideteru (JP2017057349, herein Hideteru, a machine translation is being used for citation purpose) as applied in claim 1 set forth above, in the further view of Wamprecht (US20130102723, herein Wamprecht).
Regarding claims 9, 12, GMBH and Hideteru teach the artificial stone as set forth in claim 1 above. GMBH teaches polyisocyanate component [0025], but silent on the specific ranges, however, Wamprecht teaches 50 to 100 mol % 1,6-hexamethylene diisocyanate [0011] which is bifunctional non-aromatic isocyanate compound, wherein the Mw of 1,6-hexamethylene diisocyanate is 168.2 g/mol, which lies in the claimed mol% range. Wamprecht further teaches the stated diisocyanates may find application individually or in the form of mixtures with one another. They may also be used together with up to 15 mol % of a polyisocyanate; Polyisocyanates are products with an isocyanate functionality of ≧2, such as, for example, trimers, biurets. [0108] wherein, the N2/NM range is 85/15=3.33 to 100/15=6.67, hence, overlap the claimed range.
GMBH and Wamprecht are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyurethane functional composition development via polyfunctional polyol and polyisocyanate selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified GMBH to add the teachings of Wamprecht and provide wherein said the 50 to 100 mol % 1,6-hexamethylene diisocyanate [0011]; the stated diisocyanates may find application individually or in the form of mixtures with one another. They may also be used together with up to 15 mol % of a polyisocyanate; Polyisocyanates are products with an isocyanate functionality of ≧2, such as, for example, trimers, biurets. [0108], into the composition preparation. Doing so would lead to the desired property of producing heat-resistant, large-area mouldings with very good mechanical and chemical surface resistance, in particular high scratch resistance, very high resistance to light and weather, and very good resistance to solvents and chemicals. [0138] as taught by Wamprecht.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 13, GMBH and Hideteru teach the artificial stone as set forth in claim 1 above. GMBH does not explicitly teach wherein in the curable composition, the ratio (P/N) of the mole number (P) of the polyol compound in the polyol component to the mole number (N) of the isocyanate compound in the isocyanate component is in a range of 0.4 to 1.5. However, Wamprecht teaches the composition development of “Production of an Aliphatic TPU (TPU-2):” [0163] wherein the two diols are “1029.4 g Desmophen® C XP 2613, 202.5 g DDO” [0164] wherein the diol mole number is (1029.4/2000+202.5/202.33)=0.51+1=1.51 mole; The diisocyanate is “252.0 g HDI” [0164] wherein the diisocyanate mole number is 252.0/168.2=1.50, hence the P/N=1.51/1.5=1 lies in the claimed range. Accordingly, the OH/NCO=1 (diol/ diisocyanate) also lies in the claimed range. GMBH and Wamprecht are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyurethane functional composition development via polyfunctional polyol and polyisocyanate selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified GMBH to add the teachings of Wamprecht and provide wherein said “Production of an Aliphatic TPU (TPU-2):” [0163] wherein the two diols are “1029.4 g Desmophen® C XP 2613, 202.5 g DDO” [0164] wherein the diol mole number is (1029.4/2000+202.5/202.33)=0.51+1=1.51 mole; The diisocyanate is “252.0 g HDI” [0164], into the composition preparation. Doing so would lead to the desired property of producing heat-resistant, large-area mouldings with very good mechanical and chemical surface resistance, in particular high scratch resistance, very high resistance to light and weather, and very good resistance to solvents and chemicals. [0138] as taught by Wamprecht.
Regarding claim 14, GMBH and Hideteru teach the artificial stone as set forth in claim 1 above. GMBH does not explicitly teach wherein in the curable composition, the ratio (OH/NCO) of the mole number (OH) of the total hydroxyl groups in the polyol component to the mole number (NCO) of the total isocyanate groups in the isocyanate component is in a range of 0.8 to 1.2. However, Wamprecht teaches the composition development of “Production of an Aliphatic TPU (TPU-2):” [0163] wherein the two diols are “1029.4 g Desmophen® C XP 2613, 202.5 g DDO” [0164] wherein the diol mole number is (1029.4/2000+202.5/202.33)=0.51+1=1.51 mole; The diisocyanate is “252.0 g HDI” [0164] wherein the diisocyanate mole number is 252.0/168.2=1.50, hence the P/N=1.51/1.5=1 lies in the claimed range. Accordingly, the OH/NCO=1 (diol/ diisocyanate) also lies in the claimed range. GMBH and Wamprecht are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyurethane functional composition development via polyfunctional polyol and polyisocyanate selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified GMBH to add the teachings of Wamprecht and provide wherein said “Production of an Aliphatic TPU (TPU-2):” [0163] wherein the two diols are “1029.4 g Desmophen® C XP 2613, 202.5 g DDO” [0164] wherein the diol mole number is (1029.4/2000+202.5/202.33)=0.51+1=1.51 mole; The diisocyanate is “252.0 g HDI” [0164], into the composition preparation. Doing so would lead to the desired property of producing heat-resistant, large-area mouldings with very good mechanical and chemical surface resistance, in particular high scratch resistance, very high resistance to light and weather, and very good resistance to solvents and chemicals. [0138] as taught by Wamprecht.
Response to Arguments
Applicant’s arguments, filed 1/20/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection by GMBH (DE29824513, herein GMBH, a machine translation is being used for citation purpose) and Hideteru (JP2017057349, herein Hideteru, a machine translation is being used for citation purpose).
In this case, the applicant’s arguments are directed toward the amendment to independent claim 1, which has been addressed by the rejection set forth above, wherein GMBH and Hideteru collectively all claimed ingredients and amounts as set forth 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 extension fee 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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