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 .
Claim Rejections - 35 USC § 103
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.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Komiya (EP-0761779 A1).
Regarding claims 1-3 and 5-6
Komiya discloses a diurethane compound made by reacting a diisocyanate such as isophorone diisocyanate with an monovalent hydroxy compound having the R3 as preferably and 8 to 36 carbons which can be straight or branched and aliphatic; and having preferably 10 to 200 alkylene oxide groups, which can be ethylene oxide (page 2, line 44- page 3, line 43).
As the degree of polyethoxylation, the number of ethoxy groups and the number of carbons in the alcohol of the reference overlaps the claimed ranges, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
With respect to the limitation on being made by reacting two molar equivalents of the polyethoxylated compound to one molar equivalent of the diisocyanate compound, it is noted that this is a product-by-process limitation, and applicants have not shown that the claimed diurethane compound would only be formed if a two to one molar ratio of reagents is used. Further, the skill artisan would find it obvious to react two molar equivalents of the monohydric alcohol to one molar equivalent of the diisocyanate to balance and complete the reaction.
It is noted that the compounds taught by Komiya are all from short finite list with predictable results, making the selection of the claimed components obvious.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Komiya does not teach one of the claimed diisocyanates. This is not persuasive as Komiya discloses the use of isophorone diisocyanate.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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