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 .
Election/Restrictions
2. Applicant's traversal of the restriction requirement filed on June 08, 2026 is persuasive and, as such, the restriction requirement has been withdrawn.
Claim Rejections - 35 USC § 112
3. Claims 1-9, 15, 18-20, 22, 23, 25 and 38-41 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.
In claim 1, line 10, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 1, line 14, it is unclear how the “a second polyol with hydroxyl groups” distinguishes over the antecedently-recited “first diol” or “second diol”.
In claim 1, the conditions under which the recited properties were determined are not apparent.
In claim 2, line 5, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 3, there is no express antecedent basis for the “second isocyanate-terminated” prepolymer.
In claim 4, line 7, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 5, line 6, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 7, line 4, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 15, lines 3, 5 and 7, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 20, line 2, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 25, the language “second chain extender” is indefinite in that there is no express antecedent for a “first chain extender”.
In claim 25, line 4, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 38, line 10, “or mixtures thereof” is redundant to the antecedently-recited “at least one”.
In claim 38, given the “at least one” (line 2), it is unclear whether the surface modifier comprises both a fluorinated polymer and a silicone polymer, as opposed to at least one thereof.
In claim 39, “PTMEG” is not defined.
In claim 39, the term “Desmodur N3800”, which is a trade name or a mark used in commerce, is not accompanied by the generic terminology. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
In claim 40, given that “about 0” includes zero, it is unclear whether the presence of the surface modifier is required.
Allowable Subject Matter
4. The prior art of record neither anticipates nor renders obvious a polyurethane composition governed by all the presently claimed features. US 2019/0367667 (Aoki), the closest prior art of record, discloses a polyurethane elastomer composition comprising (i) an isocyanate-terminated prepolymer component obtained from 1,4-bis(isocyanatomethyl) cyclohexane (A1) and a polyetherdiol (A2) and (ii) a polyol component comprising a macropolyol (B1) and two low molecular weight alkane diols (B2) (e.g., Tables 1-3). Aoki, however, is silent regarding the NCO/OH molar ratio governing the polyurethane composition or mechanical strength/tensile set properties of the resultant cured polyurethane composition. Thus, Aoki fails to disclose, suggest or provide any motivation to arrive at the presently claimed subject matter.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
Prosecution Insights