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 .
The amendment filed 11/14/2025 has been entered. Claims 1-19 have been canceled. Claims 20-38 are pending in the application. Claims 20-25 and 34-38 have been withdrawn from consideration as being drawn to nonelected inventions. Applicant timely traversed the restriction requirement in the reply filed 7/9/2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 30 is objected to because of the following informalities: as noted in the prior office action, a comma is needed after "group" on line 8. Appropriate correction is required.
Claim 31 is objected to because of the following informalities: the comma before “(2i)" on line 18 (after the deleted “[[(1)]]”) should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
Claim 31 is 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. Claim 31 has been amended to recite that the polyurethane (2) carrying at least one keto-type C=O group comprises units in the weight percentage ranges as previously recited but now based on the sum of (2i), (2ii), (2iii), (2iv), (2v), (2vi) and (2vii), however, the original disclosure at the time of filing does not provide support for the amended basis given that the original disclosure clearly recites that the weight percentages are based upon the sum of the polyester polyol (1) and (2i) (2ii), (2iii), (2iv), (2v), (2vi) and (2vii), and not just the sum of (2i)-(2vii) as currently amended.
Claim Rejections - 35 USC § 112(b)
Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention for the reasons recited in the prior office action and restated below.
As discussed in the prior office action, claim 30 recites that the polyurethane “comprises units derived from at least one polyester polyol, at least one polymeric polyol (2i) different from the at least one polyester polyol, at least one polyol (2ii) having a molecular weight below 400 g/mol, at least one polyol (2iii) carrying at least one acidic acid group or a salt thereof, optionally at least one alcohol or polyol (2iv) carrying at least one olefinically unsaturated group[,] at least polyisocyanate (2v), at least one polyamine (2vi) carrying at least two amino groups independently selected from the group consisting of primary and second amine groups, and optionally at least one compound carrying at least on olefinically unsaturated group and no NCO reactive groups (2vii),” however, given that the “at least one polymeric polyol (2i) different from the at least one polyester polyol” and/or the ”at least one polyol (2ii) having a molecular weight of below 400 g/mol” may carry at least one acidic group or a salt thereof; and/or that the “at least one polymeric polyol (2i)” and/or the “at least one polyol (2ii)” and/or the “at least one polyol (2iii) carrying at least one acidic group or a salt thereof” may also carry at least one olefinically unsaturated group, such that the compounds from which the units are derived are so broadly defined that one compound may read upon another, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 31 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 31 recites, “wherein the polyurethane (2) carrying at least one keto-type C=O group comprises units derived from 1 to 40 weight% of the at least one polyester polyol, 5 to 70 weight% of at least one polymeric polyol (2i) different from the at least one polyester polyol, 1 to 30 weight% of at least one polyol (2ii) having a molecular weight of below 400 g/mol, 0.5 to 20 weight% of at least one polyol (2iii) carrying at least one acidic groups or a salt thereof, 0 to 30 weight% of at least one alcohol or polyol (2iv) carrying at least one olefinically unsaturated group, 10 to 80 weight% of at least one polyisocyanate (2v), 0.1 to 10 weight% of at least one polyamine (2vi) carrying at least two amino groups independently selected from the group consisting of primary and secondary amino groups, and 0 to 20 weight% of at least one compound (2vii) carrying at least one olefinically unsaturated group and no NCO reactive groups, based on the weight of the sum of , (2i) (2ii), (2iii), (2iv), (2v), (2vi) and (2vii);” however, given that (2i), (2ii), (2iii), and (2iv), based upon their recited descriptions, are not necessarily mutually exclusive (as discussed in the prior office action) such that a single polyol may read upon more than one of (2i), (2ii), (2iii) and/or (2iv), one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Rejections - 35 USC § 102
Claims 26 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tabor (US2017/0335057A1). Tabor discloses polyester polyols, processes for making them, and applications for the polyols, particularly in formulating a variety of polyurethanes and related products including polyurethane dispersions, coatings, adhesives, and sealants (Abstract, Paragraph 0018). Tabor discloses that the polyester polyol comprises recurring units derived from a digested thermoplastic polyester (Paragraph 0013), preferably digested recycled polyethylene terephthalate (rPET) (Paragraphs 0020-0021); a glycol such as ethylene glycol, propylene glycol, pentaerythritol, sorbitol, polyethylene glycol having a number average molecular weight of about 200, or others as recited in Paragraph 0025, and mixtures thereof or mixtures of compounds having two or more hydroxyl groups (reading upon the instantly claimed at least one diol (1iv) and/or at least one polyol (1v) carrying at least three OH groups with pentaerythritol and sorbitol being polyols (1v) carrying at least three OH groups); and a hydroxy-functional ketal acid, ester or amide, such as levulinic acid (reading upon the instantly claimed 1i and providing the keto-type C=O group of the polyester polyol and resulting polyurethane; Paragraphs 0026-0039), wherein the amount of hydroxy-functional ketal acid, ester or amide incorporated into the polyester polyol may be within the range of 5 to 60 wt%, 10 to 50 wt%, or 20 to 40 wt% (reading upon the claimed 5 to 50wt% of (1i) or derivative thereof as in instant claim 26; Paragraph 0062). Tabor discloses that an aromatic polyacid source may be used as an alternative to the thermoplastic polyester, wherein the aromatic polyamide source is a compound or mixture of compounds having at least one carbocyclic or heterocyclic aromatic ring and two or more carboxylic acid functional groups, in the form of acids, esters, or anhydrides; with suitable aromatic polyacid sources recited in Paragraph 0024 including isophthalic acid, 2,5-furandicarboxylic acid, trimellitic acid, and pyromellitic acid (with the two former reading upon the claimed “at least one diacid (1ii) or derivative thereof” and the two latter reading upon the claimed “at least one polyacid (1iii) carrying at least three COOH groups or derivative thereof”; Paragraphs 0023-0024). Tabor discloses that the molar ratio of glycol to thermoplastic polyester or aromatic polyacid is at least 1.5, preferably 1.5 to 6.0; the molar ratio of the ketal to the polyester or aromatic polyacid is within the range of 0.5 to 2.0; and the polyol has a hydroxyl number within the range of 25 to 800 mg KOH/g (Paragraphs 0016 and 0059).
Tabor discloses that when a thermoplastic polyester is used, the digested intermediate can be a mixture of glycol reactant, glycol(s) generated from the thermoplastic polyester (reading upon the claimed diol (1iv) and/or polyol (1v) carrying at least three OH groups), terephthalate oligomers (reading upon the claimed diacid (1ii) or derivative thereof), and other glycolysis products; for example, when PET or rPET is the thermoplastic polyester, the digested intermediate can include a mixture of glycol reactant, ethylene glycol (generated from the PET or rPET, reading upon the claimed diol), bis(2-hydroxyalkyl) terephthalate (“BHAT”), higher PET oligomers such as dimers and trimers, and other glycolysis products (Paragraphs 0055-0056). Tabor discloses that in some aspects, the polyester polyol may further incorporate recurring units from one or more hydrophobes, wherein example hydrophobes “include dimer fatty acids, oleic acid, ricinoleic acid, tung oil, corn oil, canola oil, soybean oil, sunflower oil, triglycerides or alkyl carboxylate esters having saturated or unsaturated C6-C36 fatty acid units, castor oil, alkoxylated castor oil, saturated or unsaturated C6-C18 dicarboxylic acids or diols, cardanol-based products, recycled cooking oil, branched or linear C6-C36 fatty alcohols, hydroxy-functional materials derived from epoxidized, ozonized, or hydroformylated fatty esters or fatty acids, and mixtures thereof” with further examples discussed in Paragraphs 0042-0053 (wherein the C6-C18 dicarboxylic acids or diols read upon the claimed diacid (1ii) or diol (1iv), and the epoxidized fatty esters or fatty acids read upon the claimed “at least compound (1vi) comprising at least one epoxy group”; Paragraphs 0014 and 0042-0053). Tabor also discloses that the polyester polyol may incorporate one or more anhydrides, diesters, or dicarboxylic acids outside the C9-C18 range with suitable dicarboxylic acid including glutaric acid, adipic acid, and succinic acid, wherein a mixture thereof can be used and is commercially available as a “DBA” composition (Paragraph 0063; also reading upon the instantly claimed “at least one diacid (1ii) or derivative thereof”). Tabor discloses that in some aspects, the polyols will have a bio-renewable content as a result of the presence of bio-renewable hydroxy-functional ketal acids, esters, or amides, such as, for example, levulinate glycerol ketal; and that the polyester polyols will have bio-renewable contents greater than 10wt%, preferably greater than 25wt%, and more preferably greater than 40wt%, wherein most of the optional hydrophobes as noted above are bio-renewable (Paragraph 0070, thus reading upon the claimed content(s) of (1ii), (1iv) and/or (1vi), given that Tabor discloses that the amount of hydroxy-functional ketal acid, ester or amide incorporated into the polyester polyol may be within the range of 5 to 60 wt% as noted above).
Tabor discloses that the polyester polyols can be used to formulate a wide variety of polyurethane products, and that by adjusting the proportion of hydroxy-functional ketal acid, ester or amide and any optional hydrophobe, a desired degree of polyol hydrophobicity can be “dialed in,” wherein the ability to control hydrophobicity is particularly valuable in the coatings industry (Paragraph 0074). Tabor discloses that the “polyols can be used alone or in combination with other polyols to produce cellular, microcellular, and non-cellular materials including flexible foams, rigid foams (including polyisocyanurate foams), polyurethane dispersions, coatings (including one- or two-component polyurethanes), adhesives, sealants, and elastomers;” wherein the “resulting polyurethanes are potentially useful for automotive and transportation applications, building and construction products, marine products, packaging foam, flexible slabstock foam, carpet backing, appliance insulation, cast elastomers and moldings, footwear, biomedical devices, and other applications” (Paragraph 0074); wherein the polyurethane dispersions are aqueous polyurethane dispersions comprising water and the polyurethane(s) made by emulsifying an isocyanate-terminated prepolymer in water with the aid of an emulsifying agent, followed by chain extension of the prepolymer with water, a water-soluble polyamine, or a combination thereof, wherein the prepolymer is made by reacting the polyester polyol of the invention, a hydroxy-functional emulsifier, one or more auxiliary polyols, and one or more polyisocyanates (Paragraph 0078, Claim 25). Tabor specifically discloses working examples for the preparation of ethyl levulinate glycerol ketal (LGK)-modified rPET polyols by reacting ethyl levulinate glycerol ketal (e.g., a hydroxy-functional ketal ester derived from the ketalization of ethyl levulinate – an ester of levulinic acid, with glycerol – a triol) and a) recycled PET digested with one or more glycols, particularly propylene glycol, in amounts as shown in Table 1, wherein in some of rPET examples, polyethylene glycol 200, diethylene glycol, or polypropylene carbonate are used in addition to or instead of propylene glycol; and in some examples, phthalic anhydride (a diacid derivative) or a hydrophobe such as ricinoleic acid or oleic acid is also added to the reaction of the LGK with the glycol-digested recycled PET (Examples, Table 1). Tabor also discloses an example (Example 6) wherein LGK is reacted with diethylene glycol and dimethyl terephthalate, as the source of aromatic polyacid instead of rPET (Paragraph 0090), with all of the examples including those formed from rPET utilizing LGK in an amount of 30, 38, 40 or 46wt%, falling within the claimed range of 5 to 50wt% with respect to the units derived from (1i), i.e., levulinic acid “or derivative thereof”, which may also reading upon the units derived from the claimed 5 to 50wt% of polyol (1v) carrying at least three OH groups given that as noted above, LGK is a hydroxy-functional ketal ester derived from the ketalization of ethyl levulinate – an ester of levulinic acid, with glycerol – a triol or polyol with three OH groups, and in a 1:1 molar ratio such that each unit derived from hydroxy-functional ketal ester includes one unit derived from levulinic acid or derivative thereof and one unit derived from glycerol for a weight ratio of about 66:34 (Examples, Table 1); and given that the polyester polyol of at least Example 2 includes units derived from 5 to 50wt% of a levulinic acid derivative (i.e., the ethyl levulinate of the LGK) wherein levulinic acid has a chemical formula as instantly claimed, 5 to 60wt% of at least one diacid or derivative thereof (i.e., rPET), 5 to 50wt% of at least one diol (i.e., propylene glycol), and 5 to 50wt% of at least one polyol carrying at least three OH groups (i.e., the glycerol of the LGK), the Examiner takes the position that Tabor discloses the claimed invention with sufficient specificity to anticipate instant claim 26.
With respect to instant claim 28, it is again noted that Tabor discloses that the polyurethane dispersion is preferably made by emulsifying an isocyanate-terminated prepolymer in water with the aid of an emulsifying agent, wherein water, a water-soluble polyamine chain extender (reading upon the claimed compound (3) carrying at least two keto-type C=O group reactive groups given that amine groups are reactive with a keto-type C=O group), or a combination thereof may be used to react with the emulsified polyurethane prepolymer; and the polyurethane prepolymer is preferably made by reacting an inventive polyester polyol (reading upon the claimed at least one polyester polyol comprising units derived as recited in instant claim 28 given that the polyester polyol of instant claim 28 is the same as the polyester polyol as recited in instant claim 26 which is discussed in detail above), a hydroxy-functional emulsifier, one or more auxiliary polyols, and one or more polyisocyanates (Paragraph 0078). Tabor specifically discloses that in “a typical example, the polyester polyol, an acid-functional diol (DMPA), and auxiliary polyols (polyethylene glycol 200 and a polyester polyol made from 3-methyl-1,5-pentanediol and adipic acid) are combined and reacted with a mixture of aliphatic diisocyanates (hexamethylene diisocyanate and isophorone diisocyanate) in the presence of a tin catalyst (dibutyltin dilaurate) or a bismuth catalyst (such as bismuth dioctanoate) and a solvent (acetone)” and the “resulting prepolymer is then dispersed in a mixture of water, triethanolamine (neutralizing agent), and a silicone defoamer” (Paragraph 0084), and given that triethanolamine is a compound “carrying at least two keto-type C=O group reactive groups” (groups reactive with a keto-type C=O group) as in instant claim 28, the Examiner takes the position that Tabor discloses the claimed invention with sufficient specificity to anticipate instant claim 28.
Claim Rejections - 35 USC § 103
Alternatively, claims 26 and 28 as well as claims 27 and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Tabor, as applied to claims 26 and 28 above and further discussed below. The teachings of Tabor are discussed in detail above and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 26 and 28, particularly in light of the examples as discussed in detail above, the Examiner alternatively takes the position that with respect to claimed aqueous polyurethane dispersion, Tabor teaches an aqueous polyurethane dispersion comprising at least one polyurethane carrying at least one keto-type C=O group, wherein the at least one polyurethane carrying at least one keto-type C=O group comprises units derived from at least one polyester polyol comprising units derived from the same compounds (1i), (1ii), (1iii), (1iv), (1v), and (1vi), and given the above weight percentages and molar ratios as taught by Tabor, particularly in light of the working examples, Tabor clearly teaches and/or suggests a polyester polyol comprising units derived from compounds and in weight percentages as recited in instant claim 26, thereby rendering the claimed invention as recited in instant claim 26 obvious over the teachings of Tabor given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 27, Tabor teaches that the aqueous polyurethane dispersions formed from the polyester polyols can have high solids content and can be used to formulate low- or zero-VOC compositions (Paragraphs 0078 and 0084), thereby clearly teaching and/or suggesting an organic solvent in a content as instantly claimed, particularly 0wt%, and although Tabor does not specifically teach that the aqueous polyurethane dispersion comprises water in a content of 20 to 95wt% and 5 to 90wt% of the polyurethane formed from the polyester polyol derived from the hydroxy-functional ketal acid, ester or amide as discussed above, given that the content of water and polyurethane directly affect the viscosity of the polyurethane dispersion and resulting coating composition wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum water content to provide the desired viscosity for a particular coating process and/or coating thickness as is typical in the art, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 27 would have been obvious over the teachings of Tabor, particularly given that the claimed ranges span 75% or more of the entire possible wt% range of 0 to 100wt% and Tabor clearly teaches that the aqueous dispersion has a “high solids content”.
With respect to instant claim 28 as well as instant claims 29 and 32-33, in addition to the discussion above, wherein Tabor clearly teaches an embodiment wherein the aqueous polyurethane dispersion includes the polyurethane formed from the polyester polyol derived from the derived from the hydroxy-functional ketal acid, ester or amide as discussed above, water, and triethanolamine reading upon the broadly claimed “at least one compound (3) carrying at least two keto-type C=O group reactive groups” (groups reactive with a keto-type C=O group) as in instant claim 28, the Examiner alternatively and/or additionally notes that Tabor also teaches that amine chain extenders may be added to the polyurethane after emulsification in water, wherein suitable chain extenders include di- and polyamines such as “ethylenediamine, diethylenetriamine, Jeffamine® T-403, Jeffamine® D-230, Jeffamine® ED-2001, Jeffamine® ED-600, Jeffamine® ED-900, 1,6-hexamethylenediamine, butylenediamine, hydrazine, piperazine, N-hydroxyethyl ethylenediamine, and the like” (Paragraph 0083); as well as alkanolamines such as ethanolamine, diethanolamine, or as in the “typical example”, triethanolamine which also functions as a reactive neutralizing agent to impart dispersibility to the urethane prepolymer (Paragraphs 0081 and 0083-0084); and given that the recited di- and polyamines taught by Tabor read upon the claimed “at least one compound (3) carrying at least two keto-type C=O group reactive groups” as in instant claim 28, the Examiner takes the position that the claimed invention as recited in instant claim 28 (alternatively) would have been obvious over the teachings of Tabor given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, with respect to instant claims 29 and 32-33, in addition to the above including with respect to the content of water and polyurethane in the aqueous dispersion as discussed regarding instant claim 27, given that Tabor teaches di- and polyamines as suitable chain extenders, with examples thereof including ethylenediamine, diethylenetriamine, 1,6-hexamethylenediamine, hydrazine (NH2-NH2), piperazine, “and the like” (Paragraph 0083), wherein dihydrazides such as adipic dihydrazide (reading upon the claimed compound (3) of instant claims 32-33) are known, functionally equivalent chain extenders in the art to those recited by Tabor and that chain extenders are typically provided in an amount as recited in instant claim 29 with respect to compound (3) or the “at least one compound carrying at least two” reactive groups (as evidenced by Mayer, USPN 7,045,573, Col. 6, lines 54-60, incorporated by reference into Tabor, see Paragraph 0085; or Overbeek, USPN 4,983,662, Col. 13, lines 7-46, on IDS dated 4/18/2023; or Orschel, WO2005/097858A1, Page 6, lines 15-23, Examples, Claim 16; or Pajerski, Entire document, discussed in the prior office action; or Reidlinger, USPN 9,133,364, Col. 5, lines 4-17; Claims 1 and 5), the Examiner takes the position that the claimed invention as recited in instant claims 29 and 32-33 would have been obvious over the teachings of Tabor given further that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claims 30-31, as discussed above, Tabor teaches that the polyurethane dispersion is preferably made by emulsifying an isocyanate-terminated prepolymer in water with the aid of an emulsifying agent, wherein water, a water-soluble polyamine chain extender (reading upon the claimed compound (3) carrying at least two keto-type C=O group reactive groups given that amine groups are reactive with a keto-type C=O group), or a combination thereof may be used to react with the emulsified polyurethane prepolymer; and the polyurethane prepolymer is preferably made by reacting an inventive polyester polyol (reading upon the claimed at least one polyester polyol comprising units derived as recited in instant claim 28 given that the polyester polyol of instant claim 28 is the same as the polyester polyol as recited in instant claim 26 which is discussed in detail above), a hydroxy-functional emulsifier, one or more auxiliary polyols, and one or more polyisocyanates (Paragraph 0078). Tabor teaches that polyisocyanates suitable for use in making the prepolymers are well known and include those as recited in Paragraph 0079 (reading upon the claimed at least one polyisocyanate (2v) as in instant claims 30-31); and that similarly, auxiliary polyols suitable for use are well known and include those as recited in Paragraph 0080, preferably having average hydroxyl functionalities within the range of 2 to 6, preferably 2 to 3, including polyether polyols, aliphatic polyester polyols, aromatic polyester polyols, polycarbonate polyols, glycols, and the like (Paragraph 0080; reading upon the claimed “at least one polymeric polyol (2i) different from the at least one polyester polyol” as well as “at least one polyol (2ii) having a molecular weight of below 400 g/mol” given the recitation of “glycols”). Tabor teaches that the hydroxy-functional emulsifier may be an acid functional diol such as dimethylolpropionic acid (DMPA) or dimethylolbutanoic acid (DMBA) (reading upon the claimed at least one polyol (2iii) carrying at least one acidic group or a salt thereof); an amine such as N-methyldiethanolamine; a nonionic emulsifier such as a polyethylene glycol monomethyl ether; or a monol- or diol-functionalized poly(ethylene oxide) (Paragraph 0081). Tabor also teaches that a chain terminator such as a monofunctional compound including alcohol, amine, or thiol, may be used to control the molecular weight of the polyurethane polymer; while chain extenders can also be included with suitable chain extenders containing at least two functional groups that are capable of reacting with isocyanates, e.g., hydroxyl, thio, or amino groups in any combination, with examples thereof including diols such as ethylene glycol, di- and polyamines such as ethylenediamine and diethylenetriamine (may read upon the claimed “at least one polyamine (2vi) carrying at least two amino groups independently selected from the group consisting of primary and second amino groups” as in instant claims 30-31, particularly given that it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to utilize a mixture of suitable chain extenders; Paragraph 0083). Tabor specifically teaches that in “a typical example, the polyester polyol, an acid-functional diol (DMPA), and auxiliary polyols (polyethylene glycol 200 and a polyester polyol made from 3-methyl-1,5-pentanediol and adipic acid) are combined and reacted with a mixture of aliphatic diisocyanates (hexamethylene diisocyanate and isophorone diisocyanate) in the presence of a tin catalyst (dibutyltin dilaurate) or a bismuth catalyst (such as bismuth dioctanoate) and a solvent (acetone)” and the “resulting prepolymer is then dispersed in a mixture of water, triethanolamine (neutralizing agent), and a silicone defoamer” (Paragraph 0084), incorporating by reference, suitable approaches for preparing aqueous polyurethane dispersions (such as Mayer, USPN 7,045,573, Entire document, particularly examples, which teaches and/or suggests similar components and contents as instantly claimed), such that Tabor clearly teaches a polyurethane carrying at least one keto-type C=O group comprising units derived from: the polyester polyol reading upon the instantly claimed at least one polyester polyol as discussed above with respect to instant claims 26 and 28, at least one polymeric polyol (2i) different from the at least one polyester polyol (i.e., a polyester polyol made from 3-methyl-1,5-pentanediol and adipic acid), at least one polyol (2ii) having a molecular weight of below 400 g/mol (i.e., polyethylene glycol 200 which has a number average molecular weight of about 200, Paragraph 0025), at least one polyol (2iii) carrying at least one acidic group or a salt thereof (i.e., acid functional diol or DMPA), at least one polyisocyanate (2v) (i.e., a mixture of hexamethylene diisocyanate and isophorone diisocyanate), and given again that Tabor clearly teaches di- or polyamines as chain extenders wherein one skilled in the art would have been motivated to utilize any of the amine and/or chain extender compounds taught by Tabor or combinations thereof, before and/or after emulsification in water, Tabor clearly teaches and/or suggests an aqueous polyurethane dispersion comprising at least one polyurethane carrying at least one keto-type C=O group comprising units derived from the compounds as recited in instant claim 30, and given the absence of any clear showing of criticality and/or unexpected results with respect to the contents as recited in instant claim 31, wherein Tabor provides similar contents for the polyester polyol, auxiliary polyols, and diisocyanates in the two-component example (including as in Mayer which is incorporated by reference into Tabor), the Examiner takes the position that the claimed invention as recited in instant claims 30-31 would have been obvious over the teachings of Tabor given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and one skilled in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum content of each component to provide the desired polyurethane properties for a particular end use of the polyurethane dispersion taught by Tabor.
Response to Arguments
Applicant’s arguments filed 11/14/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 11/14/2025.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787