DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Election/Restrictions
Claims 23-27 and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/15/25.
Applicant's election with traverse of Group I, claims 16-22, 28, and 29, in the reply filed on 12/15/25 is acknowledged. The traversal is on the ground(s) that the European Examiner had not found lack of unity between inventions in a previous and separate examination. This is not found persuasive because as described below and in the Requirement for Restriction of 11/4/25, the denoted groups do not possess unity of invention because they do not make a contribution over the art and thus do not constitute a shared special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
Claim(s) 16 – 22, 28, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haubennestel et al. (US 2002/011822, “Haubennestel”) in view of Kou et al. (WO 2009/096611, “Kou”).
Regarding claim 16, Haubennestel teaches a urea urethane which is used as rheology modifier (e.g., [0050], [0051]). The urea urethane is obtained by reacting two structurally different alcohols of formula R-OH with toluene diisocyanate (TDI) as diisocyanate to form a mono adduct thereof which is subsequently reacted with a diamine ([0006], [0009], [0015] – [0018]). In example 7, an equimolar mixture of MPEG 350 and MPEG 50 (i.e., methoxypolyethylene glycols, thus monohydroxy alcohols corresponding to claimed b1 and b2) are reacted with TDI to form a mono adducts F. The molar ratio of alcohol: unreacted toluene diisocyanate is 1:2 and unreacted TDI is removed by distillation. In example 14, said mixture F is reacted with xylylene diamine (XDA) in presence of LiCl as Catalyst in presence of N-methyl pyrrolidine (NMP) to form the final urea urethane compound. The urea urethane offers a good storage stability and compatibility with polar solvents, and is preferably used as rheology modifier for instance in coating composition, varnishes or paints ([0001], [0006] - [0010], [0014], [0020]; claims; example 7). Haubennestel fails to specifically teach the claimed ratio of monohydroxyl compound to toluene diisocyanate (i.e., the molar ratio of alcohol: TDI is less than 1:1 contrary to the requirement of claim 16). However, in the same field of endeavor Kou teaches that providing total ratio of monohydroxyl compound to toluene diisocyanate in a range of from ≥1.0:1 to ≤ 1.5:1 leads to the formation of a urea-urethane polymer without necessitating a further distillation step of the diisocyanate, and therefore improves economy of such production (see Kou, p. 3). Therefore, it would have been obvious to the person of ordinary skill in the art at the time of filing to have adjusted the ratio of monohydroxyl compound to toluene diisocyanate to within the above range in order to improve the economy of the process of making a urea-urethane compound (Kou, p. 3).
Regarding claim 17, Haubennestel additionally teaches that toluene diisocyanate may be a mixture of 2,4-toluene diisocyanate and 2,6-toluene diisocyanate ([0026]).
Regarding claim 18, Haubennestel additionally teaches that at least one monohydroxy alcohol may be, for example, butyl triglycol ([0024]).
Regarding claim 19, Haubennestel additionally teaches that a monohydroxy alcohol may be a methoxy polyethylene glycol (e.g., [0024], [0032]).
Regarding claim 20, modified Haubennestel additionally teaches that the ratio monohydroxyl compound to toluene diisocyanate may be on the range of from > 1.0:1 to < 1.5:1 (see Kou, p. 3).
Regarding claim 21, Haubennestel additionally teaches that the diamine may be of the form of, for example that of claimed formula (IIIb) (see Haubennestel, [0014]).
Regarding claim 22, modified Haubennestel (Kou) additionally teaches that the urethane compound should have a weight average molecular weight on the range of from ≥ 500 g/mol to ≤ 3000 g/mol and that such a molecular weight provides a product suitable for use in varnishes, coating formulations, and the like (see Kou, p. 14, 17-18). Therefore, in the absence of a specific teaching regarding molecular weight by Haubennestel, the ordinarily skilled artisan would have found it obvious to have adjusted the molecular weight of the composition to within the range described by Kou to provide a urethane suitable for use in varnishes, coating formulations, and the like (see Kou, p. 14, 17-18).
Regarding claim 28, modified Haubennestel (Kou) additionally teaches that the liquid composition may be on the range of from ≥ 0.1 wt. % to ≤ 10 wt. % (see Kou, p. 17-18) and that providing the liquid composition on this range allows for dispersion of additives and use in various applications such as varnish, coating formulations, and the like (Kou, pp. 17-18).
Regarding claim 19, Haubennestel additionally teaches that the composition may be, for example, a water based coating formulation ([0007]; and see Kou p. 18).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782