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 .
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered but they are not persuasive.
The Applicant has amended claim 1 to include the limitations of alicyclic diisocyanate and polyether polyol as the isocyanate and polyol. The Applicant has noted that Wenzel is a broad disclosure that does not limit the polyol to a polyether polyol or the isocyanate to an alicyclic diisocyanate and Wenzel alone does not have motivation for combining the type polyols or isocyanates listed defined the amended claim 1. The Applicant has noted in the Declaration, the examples taught by Wenzel which included different polyisocyanates and polyols results in a lower oil resistance and worse product.
While potentially compelling evidence, the limitation of the polyurethane consisting of a reaction of only polyether polyol, an alicyclic diisocyanate, and a chain extender is not shown in claim 1. Claim 1 merely recites that the composition must comprise a polyether polyol and an alicyclic diisocyanate which is not necessarily limiting the composition to only comprise those components. The composition of Wenzel does teach both a polyether polyol and an alicyclic diisocyanate and therefore reads on the limitations of claim 1.
Further, the evidence shown in the declaration is not reasonably commensurate in scope with the claims. None of the inventive examples contain (A1) or a combination of (A1) and (A2), both of which are permitted by claim 1. In the claims A2 allows for any chain extender, any polyether polyol of undefined molecular weight, and any alicyclic diisocyanate. The declaration includes one chain extender (dimethylolbutanoic acid), one polyol (Polycerin DCB-2000), and one alicyclic diisocyanate (isophorone diisocyanate). Therefore, these results are not commensurate in scope with the claims and are not sufficient to establish nonobviousness.
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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wenzel 4306998.
Regarding claims 1 and 4, Wenzel teaches an aqueous dispersion of oligourethanes and polyurethanes (Abstract). This reads on the claimed “water based.”
Wenzel teaches that paraffin wax is a suitable auxiliary agent to the composition. (Col. 5, Lines 37-40). It would have been obvious to select paraffin wax from the list of possible auxiliary agents based on its art-recognized suitability for its intended use. See MPEP 2144.07.
Example 3 teaches a polyurethane formed from a reaction between polypropylene glycol ether, DMPA, and isophorone diisocyanate (Col. 8 Lines 25-45). This reads on the claimed “urethane resin” which is a polymer containing “a polyol, a polyisocyanate, and a chain extender as essential reaction components.” Isophorone diisocyanate reads on the claimed “alicyclic diisocyanate” and the chain extender is DMPA. Polypropylene glycol ether reads on the claimed polyether polyol.
While example 3 does not teach the incorporation of paraffin wax, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the polyurethane of Wenzel’s Example 3 with paraffin wax, as it is shown to be suitable for use in combination with other auxiliaries recited in parallel with waxes.
The proportion of the auxiliary agent is about 0.3-50% based on total solids content (col. 6, lines 16-22), indicating that the polyurethane will be present in amounts of about 50-99.7%. This is equivalent to an (A)/(B) ratio of 50/50 to 99.7/0.3. This overlaps the claimed range of 10/90 to 90/10 establishing a prima facie case of obviousness.
While not expressly taught Wenzel’s composition is substantially identical to the composition of claim 1 and will necessarily possess the claimed “oil-resistant” properties.
Regarding claims 2 and 3, these claims are rejected over Wenzel because they relate to an optional component of claim 1 and therefore need not be taught by prior art since an alternative embodiment within the scope of the claim is disclosed. These claims would be allowable if they were amended to positively recite that component (A1) is present and has the indicated characteristics.
Regarding claim 6, the dispersions are suitable for use as coating compounds for flexible substrates such as paper (col. 6, line 64 – col. 7, line 2). This reads on the limitations of claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762