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 § 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.
Claims 1-3, 9-11, 14-17, 20, 23-32 are rejected under 35 U.S.C. 103 as being unpatentable over Coury et. al., (US20180016380, herein Coury), in the view of Onder et. al., (US20030139509, herein Onder).
Regarding Claims 1-3, 9, 14-17, Coury teaches comprising the reaction product of: (a) a polyol component comprising a mixture of a polyether polyol and polybutadiene polyol, “polyurethane comprising a first component comprising polytetramethylene ether glycol (PTMEG)” [0029] and “aliphatic hydrocarbon soft segment to be a hydrogenated polybutadiene diol (HPBD)” [0012] separately.
Coury does not explicitly teach the mixture of a polyether polyol and polybutadiene polyol, wherein the polyol component comprises at least 50% by weight polyether polyol. However, Onder teaches “PTMEG 67.808%; DPG Dipropylene Glycol 1.338%; Butane diol (chain extender) 5.032%” [0051] as mixture, and lie in the claimed range of the polyether polyol.
Coury and Onder are both considered to be analogous to the claimed invention because they are in the same field of polyurethane material development and preparation via polyols selection. Therefore, 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 Coury to add the teachings of Onder and provide wherein the “PTMEG 67.808%; DPG Dipropylene Glycol 1.338%; Butane diol (chain extender) 5.032%” [0051] as mixture into the composition development.
Doing so would further achieve the desired property as of “The test clearly shows that the complex melt viscosity is flatter and does not rise significantly during the course of the test. This indicates good extrusion processibility” [0052] as taught by Onder.
Coury further teaches (b) a diisocyanate component “MDI diisocyanate” [0029] wherein MDI is 4,4′-methylenebis(phenyl isocyanate), which is aromatic diisocyanate.
(c) a chain extender component, “butane diol (BDO) chain extender” [0115] wherein the BDO is 1,4-butanediol.
Hence, matches all claimed reaction ingredients, ranging from (a) to (c).
Coury teaches polyurethane composition of hard segment of “MDI+MOCA+TEOA=15.64+6.904+0.311” [Table 12, 0175] and the “MDI+Diol+MOCA+HMDA+TEOA=15.64+18.281+6.904+0.726+0.311” [Table 6, 0131]; wherein the MDI, MOCA, TEOA are the composition of hard segment of diisocyanate component and the chain extender component, hence, the hard segment content is 22.855/41.862=54.60% lies in the claimed range.
Regarding Claims 10, 11, Coury does not explicitly teach the ratio between polyether polyol and unsaturated polybutadiene polyol. However, Onder teaches “PTMEG 45.530%; Butane diol (chain extender) 9.693%; Dipropylene Glycol DPG 1.984%” [0070] as mixture, the ratio of PTMEG:BDO is 45.530:9.693=4.70, and lie in the claimed ranges.
Coury and Onder are both considered to be analogous to the claimed invention because they are in the same field of polyurethane material development and preparation via polyols selection. Therefore, 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 Coury to add the teachings of Onder and provide wherein the “PTMEG 45.530%; Butane diol (chain extender) 9.693%; Dipropylene Glycol DPG 1.984%” [0070] as mixture into the composition development.
Doing so would further achieve the desired property as of “responsible for formation of crystalline hard blocks leading to thermoplastic polyurethanes with desirable mechanical properties.” [0034] as taught by Onder.
Regarding Claims 20, 23-26, 28-30, Coury teaches polyurethane composition via reaction of “polyurethane comprising a first component comprising an MDI diisocyanate and polytetramethylene ether glycol (PTMEG), and a second component comprising a combination of BDO” [0029] and “Hydroxy terminated hydrogenated polybutadiene HPBD” [0076], wherein the “butane diol (BDO) chain extender” [0115] matches all claimed reaction ingredients, ranging from (a) to (c).
Coury further teaches the PTMEG is 100% as the solo polyether polyol. [Table 11, 0161].
Coury teaches polyurethane composition of hard segment of “MDI+MOCA+TEOA=15.64+6.904+0.311” [Table 12, 0175] and the “MDI+Diol+MOCA+HMDA+TEOA=15.64+18.281+6.904+0.726+0.311” [Table 6, 0131]; wherein the MDI, MOCA, TEOA are the composition of hard segment of diisocyanate component and the chain extender component, hence, the hard segment content is 22.855/41.862=54.60% lies in the claimed range.
Regarding Claim 27, Coury does not explicitly teach the ratio between polyether polyol and unsaturated polybutadiene polyol. However, Onder teaches “PTMEG 45.530%; Butane diol (chain extender) 9.693%; Dipropylene Glycol DPG 1.984%” [0070] as mixture, the ratio of PTMEG:BDO is 45.530:9.693=4.70, and lie in the claimed ranges.
Coury and Onder are both considered to be analogous to the claimed invention because they are in the same field of polyurethane material development and preparation via polyols selection. Therefore, 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 Coury to add the teachings of Onder and provide wherein the “PTMEG 45.530%; Butane diol (chain extender) 9.693%; Dipropylene Glycol DPG 1.984%” [0070] as mixture into the composition development.
Doing so would further achieve the desired property as of “responsible for formation of crystalline hard blocks leading to thermoplastic polyurethanes with desirable mechanical properties.” [0034] as taught by Onder.
Regarding Claim 31, Coury teaches “thermoplastic elastomer” [0050].
Regarding Claim 32, Coury teaches “using solution based processing (such as dip-coating and spraying) of the polymer into an article” [0119].
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Coury et. al., (US20180016380, herein Coury), and Onder et. al., (US20030139509, herein Onder) as applied to claim 1 above, and in the further view of Yang et. al., (US5994466, herein Yang).
Regarding Claims 12-13, Coury does not explicitly teach the molecular weight of polyether polyol. However, Yang teaches “PTMEG molecular weight of between 250 and 1,500 glmol” [P3; L65] which overlaps the claimed ranges.
Coury and Yang are both considered to be analogous to the claimed invention because they are in the same field of polyurethane material development and preparation via utilizing the PTMEG. Therefore, 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 Coury to substitute the teachings of Yang and provide wherein the specified PTMEG with the molecular weight range into the composition development.
Doing so would further lead to the desired property as of “exhibits dynamic load-bearing properties, hydrolytic stability, low water vapor transmission, and low hysteresis to make it a useful material in paper machine rolls. In addition, the composition can be employed in articles for which such properties are desirable, such as other types of rolls, industrial piping and valves, protective coatings for elevated temperature and/or humidity environments, washing machine components, and the like.” [P6; L26] as taught by Yang.
It would have been obvious to one having ordinary skill in the art to have determined the
optimum values of the relevant process parameters through routine experimentation in
the absence of a showing of criticality. In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235.
Claims 18, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Coury et. al., (US20180016380, herein Coury), and Onder et. al., (US20030139509, herein Onder) as applied to claim 1 above, and in the further view of Wokurek et. al., (WO2013153141, herein Wokurek, a machine translation is being used for citation purpose).
Regarding Claims 18, 19, Coury does not explicitly teach the polyether polyol mixture. However, Wokurek teaches “All hot water-resistant polyurethane types as mixtures of a prepolymer with a hardener can be used as polyurethanes, in particular mixtures of methylene diphenyl diisocyanate (MDI) with polypropylene glycol (PPG), polytetramethylene ether glycol (PTMEG), polycarbonate (PC) or PBD (polybutadiene).” [0029] which indicates the mixing range of PTMEG and PBD can be flexible, hence, match the claimed range.
Coury and Wokurek are both considered to be analogous to the claimed invention because they are in the same field of polyurethane material development and preparation via polyols selection. Therefore, 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 Coury to substitute the teachings of Wokurek and provide wherein the range of the polyols into the composition development.
Doing so would further achieve the desired property as of “The particular advantage of a foam lies on the one hand in the cost savings and on the other hand in the causal separation of hardness and other material properties of the functional layer 12, such as.
B. Damping, hydrolysis and swelling resistance, etc. It is thus possible to combine certain advantageous properties of harder polyurethane materials in a softer functional layer.” [0027] as taught by Wokurek.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “Onder does not disclose a mixture of polyether polyol and polybutadiene polyol, and thus does not teach or suggest how to use such a blend in the composition of Coury”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this case, Coury teaches comprising the reaction product of: (a) a polyol component comprising a mixture of a polyether polyol and polybutadiene polyol, “polyurethane comprising a first component comprising polytetramethylene ether glycol (PTMEG)” [0029] and “aliphatic hydrocarbon soft segment to be a hydrogenated polybutadiene diol (HPBD)” [0012] separately, which lead to the enhanced mechanical property [0119], as analogous art, Onder teaches “PTMEG 67.808%; DPG Dipropylene Glycol 1.338%; Butane diol (chain extender) 5.032%” [0051], which lead to the desired property as of “The test clearly shows that the complex melt viscosity is flatter and does not rise significantly during the course of the test. This indicates good extrusion processibility” [0052] as taught by Onder, who explicitly teach the concentration of PTMEG 67.808% [0051] respect to the whole reactive polyurethane composition. Hence, Onder does not teach away the instant application.
In response to the applicant’s argument that “the present subject matter results in a synergistic effect which is wholly unexpected based on the disclosures of Coury and Onder” is not persuasive. In this case, the data is not a direct comparison with the closest prior art. Coury teaches hard segment (BDO+MDI) concentration present in an amount of (1.697+6.031)/(6.031+15.079+1.697+0.089+0.00304)=34.65% [P6; Table 2]; (15.63+2.934)/(15.63+20.96+2.934+0.326)=46.58% [P11; Table 13]. The instant application examples all use larger amounts of hard segment (BDO+MDI) concentration than disclosed in Coury, and thus are not indicative of the hard segment weight of the composition of the closes prior art. A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e).
Conclusion
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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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767