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 .
Rejections
Claim Rejections - 35 USC § 112
1. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
2. Claims 1-3, 5-8, and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A. The cancellation of the amounts of the various components of the instant claims causes the claims to read on amounts which were not encompassed by the originally filed specification. The examiner notes that the originally filed specification limits the chain extender to 0-40%, the plasticizer to 0-50%, and the catalyst to 0-5% in component A. See the originally filed specification, paragraph [0007], and the entirety of the specification. The examiner notes that the originally filed specification limits the plasticizer to 0-50% in component B. See the originally filed specification, paragraph [0008], and the entirety of the specification.
The newly amended claims encompass amounts of chain extender, plasticizer, and catalyst in component A which are outside the amounts disclosed in the originally filed specification. The newly added scope is new matter because it is not disclosed in the originally filed specification.
The newly amended claims encompass amounts of plasticizer in component B which are outside the amounts disclosed in the originally filed specification. The newly added scope is new matter because it is not disclosed in the originally filed specification.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1, 3, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1197506 Kometani et al.
The instant claims recite “A two-component polyurethane composition, comprising component A and component B”. The recitation “A two-component polyurethane composition” contains the indefinite article “A” and the recitation of “composition”, both of which indicate that the claim is directed to a single composition in which components A and B have already been mixed. The claim is therefore take as reading on the single composition containing all of the ingredients required by the instantly claimed components A and B.
Regarding claims 1, 3, and 5-7:
Kometani discloses a polyurethane forming composition which may contain polyether polyol, curing agent, i.e. cross-linking agent, chain extender, plasticizer, catalyst, and diphenylmethane diisocyanate and derivative thereof. See Kometani, paragraphs [0001], noting the polyol, polyisocyanate and/or isocyanate prepolymer, catalyst, and cross-linking agent, [0012], which falls within the scope of the catalyst of the instant claims 1 and 7 because it is an amine catalyst, [0022], [0026], noting the polyether polyol, [0027], noting the polyether polyols, [0030], noting the preference for bifunctional polyether polyols, [0032], noting the diphenylmethane diisocyanates, derivatives of diphenylmethane diisocyanate, mixtures of MDI and its polymers, noting that MDI is diphenylmethane diisocyanate, and noting the particular preference for MDI, [0033], noting the urethane prepolymers, [0034], noting the ethylene diamine which is typically referenced as a chain extender in the polyurethane arts, [0036], noting the cross-linking agents and chain extenders including the low molecular weight polyols, including glycerol, which fall within the scope of the instant claims 1, 3, and 5 and the low molecular weight diols, including 1,4-butanediol, which falls within the scope of the instant claims 1 and 6. The isocyanate index of Kometani, paragraph [0035] is noted which affects the amounts of polyol and polyisocyanate when coupled with the molecular weights of each of them. Kometani does not otherwise limit the amounts of the ingredients of their polyurethane forming composition.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to combine the above discussed polyether polyol, cross-linking agent, chain extender, plasticizer, catalyst and diphenylmethane diisocyanate and derivative thereof, such as the prepolymer or polyphenyl polymethylene polyisocyanate and/or terminal isocyanate group-containing diphenylmethane diisocyanate derivative in amounts such that the composition of Kometani could be divided into portions which equate to the instantly claimed mass ratios of component A to component B because such amounts of these ingredients are encompassed by Kometani’s broad disclosure and would have only given predictable results to the composition of Kometani such as predictable degrees of cross-linking, chain extension, and plasticization. It is noted that it would not be possible to identify where the components of Kometani came from in the final composition of Kometani and the final composition, singular, which is the subject of the instant claims. The instantly claimed references to components A and B therefore do not distinguish the final composition of the instant claims over that of Kometani. See MPEP 2113.
No unexpected result is seen which stems from any difference between the instant claims and the cited prior art which is demonstrate in a manner that is commensurate in scope with the instant claims and which compares to the closest prior art. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
5. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1197506 Kometani et al., as applied to claims 1, 3, and 5-7 in paragraph 4 above, in view of CN 108084394 Liu et al., the machine English translation provided by the examiner being referenced unless otherwise noted.
The entire discussion of paragraph 4 above is repeated here.
The instant claims recite “A two-component polyurethane composition, comprising component A and component B”. The recitation “A two-component polyurethane composition” contains the indefinite article “A” and the recitation of “composition”, both of which indicate that the claim is directed to a single composition in which components A and B have already been mixed. The claim is therefore take as reading on the single composition containing all of the ingredients required by the instantly claimed components A and B.
Regarding claim 2:
Kometani does not disclose the polyether polyols of the instant claim 2. Their broad recitation of “polyether polyol” encompasses these polyether polyols.
Liu discloses using polytetrafuran glycol in their component B of a similar polyurethane forming composition to that of Kometani, which falls within the scope of the instant claim 2.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the polytetrafuran glycol of the instant claim 2 as the polyether polyol of Kometani because it is encompassed by Kometani’s broad recitation of “polyether polyol”, Liu shows its use in similar polyurethane forming compositions, and polytetrafuran glycol would have been expected to contribute the properties it gives to Liu’s compositions to the compositions of Kometani.
6. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1197506 Kometani et al., as applied to claims 1, 3, and 5-7 in paragraph 4 above, in view of US Pat. Application Publication No. 2011/0308730 Walther et al.
The entire discussion of paragraph 4 above is repeated here.
The instant claims recite “A two-component polyurethane composition, comprising component A and component B”. The recitation “A two-component polyurethane composition” contains the indefinite article “A” and the recitation of “composition”, both of which indicate that the claim is directed to a single composition in which components A and B have already been mixed. The claim is therefore take as reading on the single composition containing all of the ingredients required by the instantly claimed components A and B.
Regarding claim 8:
Kometani does not disclose the plasticizers of the instant claim 8. Their broad recitation of “plasticizer” encompasses these plasticizers.
Walther, paragraph [0097], discloses using di-2-ethylhexyl sebacate, which is dioctyl sebacate, triethyl citrate, acetyl tri-n-butyl citrate, which is acetyl tributyl citrate, and dibutyl phthalate, which fall within the scope of the plasticizers of the instant claim 8, in similar polyurethane forming compositions as those of Kometani.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the plasticizers of the instant claim 8 as the plasticizers of Kometani because they are encompassed by the recitation of “plasticizer” of Kometani, Walther shows the use of plasticizers of the instant claim 8 in similar polyurethane forming compositions as those of Kometani, and the plasticizers of Walther, which fall within the scope of the instant claim 8, would have been expected to plasticize the similar polyurethane forming compositions of Kometani.
Objections
7. Claim 11 is not the subject of a prior art rejection.
The prior art does not describe the invention of the instant claim 11 and does not provide proper rationale to modify the closest prior art into the invention of the instant claim 11.
Conclusion
8. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762