DETAILED ACTION
Response to Amendment
The response dated 11/20/25 has been entered. This amendment overcomes the previous prior art rejections. As such the following new grounds of rejection are being made.
For claim interpretation purposes the Examiner is considering the language in
claim 1 “at least two soft segment monomers exhibit thermodynamical incompatibility with each other” to mean that two soft segment monomers must be different.
Claim Rejections - 35 USC § 112
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. This claim only limits the ratio “in case” there are two kinds of soft segments. Claim 1 requires soft monomers that are thermodynamically incompatible such that they will necessarily be different. Since “in case” allows for the option of the monomers that are not different, this is not further limiting of claim 1.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being antici-pated by Rega 2011/0086940.
Rega teaches a silicone-urethane copolymer that is prepared from a combination
of a polycarbonate diol and a polysiloxane diol, both meeting the claimed soft segments in claim 1. It is also prepared from diisocyanates, meeting the claimed soft segments. See paragraph 13.
The polycarbonate and polysiloxane both have Mn values within the claimed number average molecular weight range. See paragraphs 16, 18 and 32. The molecular weight of the polymers in the working examples are measured as number average (in which Desmophen C2200 has an Mn of 2000 and Silmer OH DI-50 has an Mn of 4,000 and can easily be found during a quick internet search). These specific polymers meet the claimed Mn range as do the teachings in paragraphs 16 and 18. In view of the fact that these have significantly different backbones, they meet the require-ment of being thermodynamically incompatible.
Particular attention is directed to paragraph 28. This teaches a multi-step process in which the polycarbonate and polysiloxane diols are first reacted with a diisocyanate. This meets the method step A) in claim 1. The prepolymer from this step is then reacted with chain extenders. This meets the method step B) in claim 1. The result is a thermo-plastic elastomer. See paragraphs 2 to 4. In this manner claim 1 is anticipated.
For claim 3 see paragraphs 15 and 32 which teach (and use) diisocyanates that meet this claim.
For claim 7, note that butanediol is used in paragraph 32. This and other antici-patory chain extenders are also taught in paragraph 17.
For claim 9, see the polymers prepared in paragraph 33 and the entirety of the teachings in Rega.
For claim 10, note that the polymers in Rega meet every requirement of claim 1 and claim 9. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art.
Claims 4 to 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Rega.
With regard to the molar ratios found in claims 4 and 5, see paragraph 19 which
teaches adjusting the molar ratios to product polymers having specific properties. For instance, a molar ratio excess of polyol to polyisocyanate is preferred such that the polyols can function as terminal groups. A molar ratio excess of polysiloxane to poly-carbonate is also disclosed, as it results in terminal siloxane units. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
For claim 6, note that a catalyst is disclosed in paragraph 14. While this does not specifically teach a dibutyltin dilaurate, the Examiner notes that this is an extremely well known and commonly used catalyst in the preparation of polyurethanes. Given the fact that obviousness is based on that which is known to one having ordinary skill in the art, the selection of such a known and conventional catalyst would have been obvious. In addition, adjusting the amount in an effort to optimize the catalytic properties while not using more catalyst than necessary or to the product’s detriment would have been with-in routine optimization for one having ordinary skill in the art.
For claim 8, the Examiner notes that paragraphs 27 to 29 teach reaction times and conditions. Since Rega does not provide specific times/conditions for each step as is claimed the skilled artisan would have found it obvious to work within the disclosed conditions to determine the operable and most efficient times and temperatures. In this manner the skilled artisan would have found the selection of temperature ranges and times within these claimed ranges to have been obvious.
Claims 1 and 3 to 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawaguchi et al. 2017/0130094 (cited in previous office action).
The teachings in Kawaguchi et al. and how they apply to each of the specific
claim limitations was noted in the previous office action. As such this will not be repeat-ed. Applicants have amended claim 1 to require that the soft segment monomers be thermodynamically incompatible with each other, i.e. that they are different, and to limit the selection thereof. While these limitations are not anticipated by Kawaguchi et al. but it is the Examiner’s position that they are obvious over the teachings therein.
Specifically paragraph 50 teaches that combinations of the polyols can be used. In addition specific diols including polycaprolactone, polytetrahydrofuran, polyethylene glycol, polypropylene glycol and polydimethylsiloxane are disclosed (paragraphs 55, 60, 70). Given the specific teaching in Kawaguchi et al. that combinations can be used, the skilled artisan would have found it obvious to use a combination of the specific diols that are taught by Kawaguchi et al. with the expectation of obtaining useful polymers. In this manner the newly added limitation in claim 1 is rendered obvious.
For reasons noted in the previous office action, the remaining claims 3 to 10 are also rendered obvious by Kawaguchi et al. The limitations therein have already been addressed, with the exception of claim 5. To this end, note that the skilled artisan would have found it obvious of adjust molar ratio of different polyols in an effort to adjust and optimize the properties and physical attributes of each.
Response to Arguments
Applicants addressed the anticipation rejections in their remarks as they applied to the previous prior art such that these remarks to not lend any novelty to the claims over the teachings in Rega. In addition, arguments attempting to establish unexpected results are not sufficient as the claimed are significantly broader than anything shown in the specification and there is nothing that would lead the skilled artisan to consider the results in the specification to be representative of the entirety of the claim limitations.
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
2/9/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765