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
Applicant’s election without traverse of Group 1, claims 1-9 in the reply filed on 12/12/2025 is acknowledged.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Schafheutle US 6414079B1 as evidenced by Sulfonic Acids Libre Texts Chemistry (retrieved from: https://chem.libretexts.org/Bookshelves/Organic_Chemistry/Map%3A_Organic_Chemistry_(Smith)/17%3A_Carboxylic_Acids_and_the_Acidity_of_the_OH_Bond/17.04%3A_Sulfonic_Acids on: 9/9/2025).
Regarding claims 1 and 6, Schafheutle teaches a polyester urethane (Abstract). Schafheutle teaches that one of the reactants is a polyisocyanate (Abstract). A polyisocyanate that has not had all isocyanate groups reacted with the isocyanate reactive groups will have some residual isocyanate groups remaining. Therefore this reads on the claimed “isocyanate functions.” Schafheutle teaches the polyester urethane comprises a polyester. This polyester comprises ester bonds (Abstract). This reads on the claimed ester bonds. The reaction of the polyisocyanate and the hydroxyl groups of the polyester reads on the claimed “polyurethane bonds.” Schafheutle teaches that the polymer can be formed from a reactant A3 to form a urea bond with the isocyanate (Col. 3 Lines 49-53). This reads on the claimed “urea bond.” Schafheutle also teaches that the reactant A3 can comprise an acid group like sulfonic acid groups (Col. 3 Lines 55-57).
It would have been obvious to select sulfonic acid groups because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Sulfonic acids typically have a pka of -7 (Sulfonic Acids page 1). This reads on the claimed “acid groups having a pKa of less than 3.” It would have been obvious to one of ordinary skill in the art at the time of filing for the sulfonic acid groups of Schafheutle to have the same pKa as the sulfonic acid group of “Sulfonic Acids” because that pKa is well known in the art for sulfonic acids. This reads on the limitation of sulfonylated group where R = H.
Regarding claim 2, Schafheutle teaches that the OH number of the polyester urethane is from 10-120 mg/g KOH (claim 1). This falls within the claimed range of less than 20 KOH.
Regarding claim 3, Schafheutle teaches the composition polyester urethane comprises oils such as safflower oil and preferentially castor oil (Col. 3 Line 66). The oils listed by Schafheutle are fatty acid derivatives, while are not typically under the category of fatty acids. However, Applicant acts as his own lexicographer to state fatty acids can include fatty acid derivatives (Specification, Page 16 Line 35). Therefore Schafheutle teaches on the claimed unsaturated fatty acid chain.
Regarding claim 4, as stated above, Schafheutle is silent on the weight percent of fatty acid derivatives in the polyester urethane. In Schafheutle a fatty acid dimer and second carboxylic acid are recited in parallel as equally suitable alternatives (Col. 2 Lines 54-56). In Example 1, Schafheutle teaches a polyester synthesized using adipic acid. The adipic acid comprises 61% of the total weight of polyester. In Example 1, the polyester polyol comprises 68% of the polyester polyurethane. This means the percent of adipic acid in the polyester polyurethane is 41.48%. This overlaps with the claimed range of at least 5%.
Because the fatty acid dimer and the second carboxylic acid are recited in parallel as equally suitable alternatives and Example 1 shows a suitable amount of adipic acid that can be used in the polyester urethane, it would have been obvious to one of ordinary skill in the art at the time of filing to use the amount of adipic acid as a guideline when adding the equally suitable alternative of fatty acid dimer instead to the polyester polyol. Therefore, Schafheutle reads on the limitations of claim 4.
Regarding claim 5, Schafheutle teaches the amount of oil A4 in the composition is optional (Col. 2 Lines 25-26). Component A11 may comprise a dimerized fatty acid but not necessarily (Col. 2 Lines 50-55). Therefore, this reads on the claimed 0%.
Regarding claim 7, claim 7 is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
The product-by-process limitation in question contributes the limitation on structure of a polyurethane obtained by reacting a polyisocyanate with the polyol of claim 1. As stated above, this is taught by Schafheutle (Col. 5 Lines 40-45).
Schafheutle teaches the reaction of a polyester with a carboxylic acid, a fatty acid derivative and a diisocyanate (Col. 5 Lines 40-65).
Regarding claim 8, claim 8 is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
The presence or absence of solvent during polymerization does not appear to contribute additional structure to the claimed product and therefore need not be taught by the prior art in order to be taught by Schafheutle.
Regarding claim 9, the limitations of claim 9 are optional. Therefore, Schafheutle reads on the limitations of claim 9.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/MARK KOPEC/Primary Examiner, Art Unit 1762