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 .
DETAILED ACTION
Response to Amendment
The previous 112 rejection has been overcome by amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 103 rejections have been maintained and repeated.
Claim Rejections - 35 USC § 103
Claim(s) 25 and 29-35 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Najad et al. (US 20220064363) in view of December et al. (US 5961802 listed on IDS).
As to claims 25 and 37-35, Najad (abs., claims, examples, figures, table 2, 3, 12, 14, 79, ) discloses a crosslinkable polyurethane prepolymer for coating process and adhesives comprising lignin (1-30 wt%) and a cyclic alkyl carbonate (10-80 wt%):
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The lignin is isolated via Kraft, soda process. The disclosed wt% would yield a ratio overlapping with the claimed one of instant claim 25, It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Najad is silent on the claimed multifunctional cyclic carbonate.
In the same area of endeavor of producing coating comprising crosslinkable polyurethane, December (abs., claims, examples, 1:5-10, 2:24-25, 6:45-20,7:35-8:45, 9:1-65) discloses multifunctional cyclic carbonates that meet the claimed ones (product by process rationale may apply) in instant claims 30-35:
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Therefore, as to claims 25 and 29-35, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Najad and replaced the cyclic alkyl carbonate with the multifunctional cyclic carbonate, because the resultant process would yield a composition with high crosslinking density due to the multifunctionality (crosslinking location) of December’s multifunctional cyclic carbonates.
Claim(s) 25, 27-28, and 30-35 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Dupre et al. (US 20030071393) in view of December et al. (US 5961802 listed on IDS).
As to claims 25, 27-28, and 30-35, Dupre (abs., claims, examples, figures, 2-3, 11-12, 7-8, 17-19, 29) discloses a crosslinkable phenolic resin for coating process and adhesives with accelerated curing rate comprising Novolac (phenol/cresol-formaldehyde, 0.1-30 wt%) and two or more cyclic carbonates (0.1-10 wt%). The disclosed wt% would yield a ratio overlapping with the claimed one of instant claim 25, It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Dupre is silent on the claimed multifunctional cyclic carbonate.
Disclosure of December is adequately set forth in ¶1 and is incorporated herein by reference.
Therefore, as to claims 25, 27-28, and 30-35, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Dupre and replaced the cyclic alkyl carbonate with the multifunctional cyclic carbonate, because the resultant process would yield a composition with high crosslinking density and improved acceleration rate due to the multifunctionality (crosslinking location) of December’s multifunctional cyclic carbonates.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
In response to applicant's argument (pg7-8) that December and Najad/Dupre are non-analogous arts, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Najad discloses a crosslinkable polyurethane prepolymer for coating process; Dupre discloses a crosslinkable phenolic resin for coating process and adhesives with accelerated curing rate comprising Novolac and two or more cyclic carbonates. December discloses multifunctional cyclic carbonates that meet the claimed ones for producing polyurethane coating comprising. Thus, Najad/Dupre and December are in the same area of endeavor of producing crosslinkable polymeric coating, and they solve the same problem of crosslinking polymers. The technical difference in Najad/Dupre and December does not render them teaching away from each other, so they can be combined with the motivation implied by December (increasing crosslinking density due to the multifunctionality) to meet the claims.
Furthermore, prior art that is in a field of endeavor other than that of the applicant (as noted by the Court in KSR, “when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one”, 550 U.S. at ___, 82 USPQ2d at 1396 (emphasis added)), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. See MPEP § 2141(c).
Therefore, as to claims 25 and 29-35, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Najad and replaced the cyclic alkyl carbonate with the multifunctional cyclic carbonate, because the resultant process would yield a composition with high crosslinking density due to the multifunctionality (crosslinking location) of December’s multifunctional cyclic carbonates.
Therefore, as to claims 25, 27-28, and 30-35, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Dupre and replaced the cyclic alkyl carbonate with the multifunctional cyclic carbonate, because the resultant process would yield a composition with high crosslinking density and improved acceleration rate due to the multifunctionality (crosslinking location) of December’s multifunctional cyclic carbonates.
Therefore, the previous restriction and 103 rejections have been maintained and repeated.
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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766