6DETAILED 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 .
Drawings
The drawings filed 12/1/2022 are accepted.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 and 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rukavina (US 2020/071451).
Rukavina discloses a hard coat composition comprising a thermoplastic polyurethane having a hard segment content of 70-100wt% (0420-herien understood to read on a “hard coat composition”) wherein the thermoplastic polyurethane is a reaction product of:
a) a diisocyanate, such as 4,4’-methylene-bis-(cyclohexyl isocyanate (0014; 0020) ; alternatively, the polyurethane may comprise oligomeric or polymeric polyols having an average molecular with of at least 400g.mol (0547)
b) a polyol, such as cyclic polyols (0477+): said polyol may have a number average molecular weight of about 500g/mole or more (0484, 0494; 0505; 0509; 0578); said polyol also may be branched (throughout the disclosure including 0477; 0486; 0016; 008; 0371; herein understood to read on the claimed “side chain”) and
c) a chain extender, such as cyclohexane dimethanol (CHDM) (e.g. 0691),
wherein the at least one of the diisocyanate or the chain extender comprises a cyclic structure (the chain extender is cyclohexanedimethanol ).
With regard to claim 2, the hard segment content may be 90 percent by eight or greater (0420; table 1109).
With regards to claim 3, the diisocyanate may comprise 4,4’-methylene-bis-(cyclohexyl isocyanate.
With regards to claim 4, the diisocyanate may be 4,4’-methylene-bis-(cyclohexyl isocyanate.
With regards to claims 5 and 6, the chain extent may comprise cyclohexane dimethanol.
With regards to claims 7, the polyol comprises polyether polyols or polyolefin polyols (0694).
With regards to claims 7 and 9, Rukavina discloses (0508) that the diol may comprise polyester polyols including the esterification product of a dicarboxylic acid and a 2-10 carbon glycol such as 1, 2 propanediol or neopentyl glycol(herein understood to read on the “side chain” limitation of claim 1).
With regards to claims 10-14, Rukavina discloses also (see D1, pages 9-10, par. 0309 - 0315) that the above mentioned hard coat compositions are providing laminates by applying the composition on at least one layer of a substrate selected from the group consisting of paper, glass, ceramic, wood, masonry, textile, metal or organic polymeric material and combinations thereof. Rukavina additionally discloses (see pages 56-57, par. 0894- 0897) the possible use of adhesive layers: “the layers within the multilayered article can be laminated by heat and/ or pressure, bonded by one or more adhesive materials or one or more layers in between having adhering properties, have one or more interlayers in between layers, or merely placed adjacent to another layer”. The laminate may further comprise a color layer (0677; 0892).
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
Rejections Under 35 U.S.C. § 102
With regards to the rejection of claims 1-7 and 9-14 under 35 U.S.C. 102(a)(1) as purportedly being anticipated by US 2020/071451 to Rukavina (hereafter “Rukavina”), the Patent Office alleged that Rukavina discloses polyols with molecular weights of 500 g/mol or more and that Rukavina's "branched" polyols read on the claimed "side chain" limitation. While applicant concedes the reference teaches polyols with molecular weights of 500g/mol or more and polyols which may be “branched”, Applicants respectfully submit that Rukavina does not disclose a single polyol that simultaneously meets both of these requirements. Said argument is noted but is not persuasive and the examiner maintains the position that given the teachings of Rukavina with regards to molecular weight and branching, the skilled artisan could at once envisage a polyol meeting both requirements simultaneously.
Applicants further submit that the Patent Office's interpretation of "branched" as equivalent to "side chain" is overly broad. The as-filed specification defines "side chain" as "a group of two or more atoms that branch off from the straight chain of carbon atoms formed by polymerization." (Page 3, lines 29-30 of the present application (e.g., WO 2022/003447)). Applicant argues said definition contemplates a polymeric backbone with pendant groups branching therefrom, not small molecule branching agents like trimethylolpropane. However, it is not clear how applicant is reaching said conclusion. Specifically, a branch will “branch off” and comprise two or more atoms; thus, it is not clear why applicant would not consider a branch to be a side chain, as claimed.
Moreover, applicant argues the rejection should be withdrawn because it involves impermissible picking and choosing from disparate optional disclosures. Specifically, applicant argues the Patent Office must make multiple independent selections from Rukavina's “disparate disclosures” to arrive at the rejection of claim 1. Said argument is noted but is not persuasive as the examiner maintains a skilled artisan, given the disclosure of Rukavina, could at once envisage the invention as claimed. Specifically, applicant argues the Office makes multiple independent selections from Rukavina's disparate disclosures to arrive at the rejection of claim 1:
(1) hard segment content-the Office notes the narrowest (preferred) range disclosed in Rukavina is 70-100 wt. % from paragraph [0420]; which overlaps applicant’s claimed range of “at least 80wt%.” Since Rukavina points the skilled artisan to urethanes with such hard segment percentages (by narrowing the range so that it reads on applicant’s claimed range), the examiner maintains said selection does not require random selection from disparate disclosures.
(2 ) branched polyols—Rukavina teaches the polyols may be branched. Given the explicit teaching of the reference and the limited number of options (i.e., branched or unbranched), the skilled artisan could have easily at once envisaged both options;
(3) higher molecular weight polyols-again Rukavina explicitly teaches embodiments comprising polyols meeting the claimed molecular weight limitation; thus, the closest embodiment of the reference anticipates the claimed limitation;
(4) a chain extender-said reference teaches chain extenders form the are segments in the polyurethane (0418); since the reference teaches the polyurethane preferably comprises 70-100% hard segments, it is again unclear how many “disparate disclosures” applicant believes the skilled artisan would have to select from.
(5) an optional cyclic structure in the diisocyanate or chain extender from among the various options disclosed-the examiner notes said choice is again limited to two options-cyclic and acyclic. Thus, the skilled artisan could have easily at once envisaged both options
Additionally, with respect to claim 9, applicant’s arguments are noted but are considered moot based upon the rejection above. The examiner notes the same statutory grounds off rejection are maintained and the same evidence is relied upon in support of said rejection. As noted in MPEP 1207.03(a), such facts suggest the rejection does not constitute a new grounds of rejection. Furthermore, previous claim 9 did not require the polyol be branched, as such branching was optional previously. Thus, applicant’s amendment necessitates the new rationale cited above.
Thus, applicant’s arguments are not persuasive and the claims remain rejected for reasons of record.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 KEVIN R KRUER whose telephone number is (571)272-1510. 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, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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