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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-8, 29, 33, and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over GB-2,342,654 to Harrison et al. (Cited on IDS) with support from U.S. Patent No. 4,195,148 to Hagen et al.
As to claims 1, 3-4, 6-8, 29, and 33, Harrison discloses a sprayable polyurethane elastomer comprising an isocyanate functional prepolymer prepared from diphenylmethane diisocyanate with an NCO content of 9.0 wt% and a polyol component that comprises 93.98% by weight of polyol D that is a linear poly(ethylene glycol 1,4-butanediol adipate ester) with an hydroxy number of 55, and 5% of ethylene glycol. The content of the first polyol component 93.9% by weight in sample 4. Harrison discloses wherein each of the processing parameters used for spraying the polyurethane work best for elastomeric compositions having viscosities up to 4,000 cps @ 25°C (Pg.15, 1.15-17). The disclosure of up to 4,000 cps sits overlaps the claimed range of 2500-6800 cps at the same temperature. Accordingly, the skilled artisan when applying the elastomeric polyurethane of Harrison would select reaction parameters and reactants that meet the claimed viscosities with the intent on providing the most efficiency and quality during application (Pg. 15, II.1-15).
Further, with regards to the viscosity of the prepolymer, the components used to prepare the NCO- terminated prepolymer in Harrison are the same as those within the instant specification and the prepolymer has NCO contents within the same range. Therefore, based on similar spray applications the NCO-terminated prepolymer would desirably have the claimed viscosity values to improve efficiency, to reduce use of solvents and to reduce the use of heat during application. This is supported by Hagen that teaches sprayable polyurethanes comprising the same prepolymers as Harrison that have a viscosity of 1,000 cps at room temperature (See Part A, 5:1-11).
With regards to the density of the polyurethane, the sample 4 is Harrison discloses a density of 1086 kg/m3 which sits outside of the claimed range. However, Harrison discloses densities can be adjusted based on the intended use of the resulting decorative layer including values below 1000 kg/m3 (Pg. 14, II. 25-30). Accordingly, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the properties desired. Because, Harrison teaches use levels of reactants and desired values of densities the Examiner asserts that the density values is an art recognized result-effective variable. Thus, it would be obvious in the optimization process to optimize the concentration of polyester polyol to achieve the physical properties desired. Note that the prior art provides the same effect desired by the Applicant, the formation of a polyester spray polyurethane comprising a NCO-terminated polyester urethane and a curative component comprising 60 to 98 parts of a polyester polyol.
As to claim 36, Harrison discloses the addition of 1 and 1.5% by weight of Dabco 33- LV as catalyst (sample 1 and 4).
As to claims 37-38, Harrison discloses additives are included such as moisture scavengers, anti-foam agents, and pigments (Samples 1 and 4).
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Firstly, the applicant argues that Harrison fails to teach a prepolymer derived from monomeric diphenylmethane diisocyanate. In particular, applicants point to isocyanate B used in sample 4 that has carbodiimide groups. The claimed isocyanate component is not limited to just monomeric diphenylmethane diisocyanate as alleged by applicants. Harrison teaches a prepolymer derived from a polyisocyanate component comprising 56% by weight of monomeric diphenylmethane diisocyanate and 6% by weight of carbodiimide modified MDI. The limitation derived from monomeric diphenylmethane diisocyanate does not exclude additional diisocyanate components including modified product thereof. Further, it is noted that the use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments (MPEP 2121(II)). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (MPEP 2123 (II)). Harrison teaches the use of monomeric diphenylmethane diisocyanate as a suitable alternative to the preferred mixture of MDI and carbodiimide modified MDI.
Secondly, the applicant argues that Harrison fails to teach wherein the isocyanate-reactive component has a viscosity that ranges from 2500-6800. This is not found persuasive because applicants have failed to show how polyol 4 which is the same as polyols 1 and 2 used in the instant specification in combination with ethylene glycol chain extender (also the same chain extender used in the instant specification) would not possess the claimed viscosity values.
Thirdly, the applicant argues that Harrison fails to teach the claimed density of the polyurethane. The applicant specifically cites sample 4 of Harrison which is the closest example to the claimed invention. It should be noted that the use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments (MPEP 2121(II)). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (MPEP 2123 (II)). Harrison discloses density values can be adjusted based on the intended use of the resulting decorative layer including values below 1000 kg/m3. Therefore, because the density can be adjusted based on desired end applications the property is a variable that can easily be adjusted to a person skill in the art based on desired end uses.
Applicant’s argument of unexpected excellent mechanical properties even at reduced densities is not commensurate in scope with the claims which do not provide any connection between recited components and the properties, including tensile strengths and elongation at break; and which do not exclude additional components which could lead to improvements in such properties which Applicant argues is the result of his invention. Applicant points to sample 4 of Harrison (closest prior art) to show that the prior art does not possess the claimed density. The example is a single test case which does not test the full scope either of the prior art or of Applicant’s claim. It shows only that under some circumstances, a polyurethane may not demonstrate the claimed density values. Because the inventor is the declarant and has an interest in the application and because there is a single test based solely on Harrison, the argument does not provide sufficient objective data to show 1) that a person of ordinary skill in the art would not have optimized the concentrations of known and common components as evidenced by the prior art or 2) that inventor’s/ declarant’s conclusion of "unexpected results" by inventor/ declarant is supported by the evidence. An improvement made by obvious modifications, such as optimized branching associated with an improvement, is not an unexpected result.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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