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 .
Status of Claims
Claims 1-10 are pending in the current application.
Claim Objections
Claims 2-10 are objected to because of the following informalities:
Claims 2-10, for the purposes of formatting and consistency, should include a comma (,) after the preamble. For example, claim 2 should instead recite “The composition of Claim 1, ….”
Claim 5 recites “IPDI isocyanurate trimer.” Being the first mention of this compound and that the acronym IPDI could be interpreted to have multiple different meanings, examiner recommends reciting the full nomenclature of “isophorone diisocyanate (IPDI) isocyanurate trimer.”
Claim 5 recites “HDI isocyanurate trimer.” Being the first mention of this compound and that the acronym HDI could be interpreted to have multiple different meanings, examiner recommends reciting the full nomenclature of “hexamethylene diisocyanate (HDI) isocyanurate trimer.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 and 10 are 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.
Claims 9 and 10 both recite the limitation "the hydrophobically modified ethylene oxide urethane thickener." There is insufficient antecedent basis for this limitation in the claim. Claims 9 and 10 depend from claim 1, where claim 1 only recites a waterborne “hydrophobically modified alkylene oxide urethane thickener.” It is unclear if claims 9 and 10 are referring to the “hydrophobically modified alkylene oxide urethane thickener” or are referring to a different thickener component in the composition. For the purposes of examination, claims 9 and 10 are interpreted as referring to the “hydrophobically modified alkylene oxide urethane thickener” of claim 1, and reciting “the hydrophobically modified alkylene oxide urethane thickener”.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tuerk et al. (CA 2816039 A1) in view of Yoshioka et al. (EP 0761780 A2).
Regarding Claim 1, Tuerk teaches a composition comprising a waterborne hydrophobically modified alkylene oxide urethane thickener having a structure as depicted below; where S represents hydrophilic sections that are ethylene glycol units (i.e., a polyethylene glycol); D represents hydrophobic sections that are polyisocyanates; P represents a hydrophilic section different than S sections; and T represents terminal groups of ethoxylated fatty alcohols (Tuerk, Abstract, Pgs 1, 3-12, 17). Tuerk teaches the T terminal groups of the ethoxylated fatty alcohols are formed with a structure of general formula (4), where EP 761780 A2 (Yoshioka et al.) provides more details (Tuerk, Pgs 7-8).
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Tuerk – Polyurethane thickener structure
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Tuerk – general formula (4)
Tuerk remains silent regarding a C14-C30-alkyl-O-(CH2CH2O)n-H alcohol ethoxylate capping agent (T, terminal group).
Yoshioka, however, teaches an R’-(O-R)n-OH polyether mono-alcohol for use in forming a urethane linkage-containing polyisocyanate compound for controlling viscosities (i.e., a thickener) (Yoshioka, Abstract, Pgs 4-5, 7). Yoshioka teaches the R’-(O-R)n-OH polyether mono-alcohol has R’ represented by an alkyl group of preferably 12-24 carbon atoms and (O-R)n is preferably ethylene oxide with n preferably being 1-200; and Yoshioka discloses Production Example 1 depicted below (Yoshioka, Pgs 4-5, 7). Yoshioka’s Production Example 1 has n being 20 and satisfies the claimed C14-C30-alkyl-O-(CH2CH2O)n-H alcohol ethoxylate. Yoshioka’s n value falls within the claimed range of 1 to 40, and therefore, satisfies the claimed range (MPEP 2131.03). It would have been obvious to have selected and to have tried Production Example 1 as a polyether mono-alcohol from the finite number of options disclosed by Yoshioka with a predictable and reasonable expectation of success (MPEP 2143).
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Yoshioka – formula (4)
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Yoshioka – Production Example 1 adduct of branched ethoxylated fatty alcohol
Since Tuerk and Yoshioka both disclose ethoxylated fatty alcohols having a general formula (4) structure for urethane-based compounds and Tuerk specifically identifies Yoshioka as a source for more detailed guidance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Yoshioka’s Production Example 1 polyether mono-alcohol as Tuerk’s Y terminal group to yield a composition that renders viscosity less dependent on temperature and leads to enhanced performance of viscosity modification as taught by Yoshioka (Yoshioka, Pgs 5, 7).
Regarding Claim 2, modified Tuerk teaches the waterborne hydrophobically modified alkylene oxide urethane thickener has S hydrophilic sections that are ethylene glycol units (i.e., a polyethylene glycol), thereby yielding a hydrophobically modified ethylene oxide urethane thickener (Tuerk, Pgs 1, 9-11).
Regarding Claim 3, modified Tuerk teaches the polyisocyanate can be an isocyanurate having 3 isocyanate groups (trimerization, i.e., a triisocyanate) (Tuerk, Pgs 12-13, 17), and n is 20 (Yoshioka, Pgs 5, 7). Modified Tuerk’s n value falls within the claimed range of 5 to 35, and therefore, satisfies the claimed range (MPEP 2131.03).
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Tuerk – Polyurethane formed with an isocyanurate having 3 isocyanate groups (triisocyanate)
Regarding Claim 4, modified Tuerk teaches the mol to mol ratio of the polyether diol (polyethylene glycol) to the polyisocyanate is in the range of 1:1.1 to 1:2 (Tuerk, Pg 25), and n is 20 (Yoshioka, Pgs 5, 7). Therefore, the mol to mol ratio of the polyisocyanate to the polyether diol (polyethylene glycol) is in the range of 1.1:1 to 2:1. Modified Tuerk’s range of 1.1-2 falls within the claimed range of 0.3-4.0, and therefore, satisfies the claimed range (MPEP 2131.03). Modified Tuerk’s n value falls within the claimed range of 10 to 30, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 5, modified Tuerk teaches the mol to mol ratio of the polyether diol (polyethylene glycol) to the polyisocyanate is in the range of 1:1.1 to 1:2 (Tuerk, Pg 25). Therefore, the mol to mol ratio of the polyisocyanate to the polyether diol (polyethylene glycol) is in the range of 1.1:1 to 2:1. Modified Tuerk’s range of 1.1-2 falls within the claimed range of 0.5-3.0, and therefore, satisfies the claimed range (MPEP 2131.03). Modified Tuerk teaches the triisocyanate is hexamethylene diisocyanate isocyanurate trimer (Tuerk, Pgs 13, 17).
Regarding Claim 6, modified Tuerk teaches the R’-(O-R)n-OH polyether mono-alcohol has R’ represented by an alkyl group of preferably 12-24 carbon atoms and (O-R)n is preferably ethylene oxide with n preferably being 1-200; and discloses Production Example 1 depicted below (Yoshioka, Pgs 4-5, 7). Modified Tuerk’s Production Example 1 has a branched alkyl having 24 carbon atoms and n being 20, and therefore, satisfies the claimed C16-C28-alkyl-O-(CH2CH2O)n-H alcohol ethoxylate with n being 16 to 30. Modified Tuerk’s n value falls within the claimed range of 16 to 30, and therefore, satisfies the claimed range (MPEP 2131.03). It would have been obvious to have selected and to have tried Production Example 1 as a polyether mono-alcohol from the finite number of options disclosed by Yoshioka with a predictable and reasonable expectation of success (MPEP 2143).
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Yoshioka – Production Example 1 adduct of branched ethoxylated fatty alcohol
Regarding Claim 7, modified Tuerk teaches n preferably being 1-200; and discloses Production Example 1 depicted above having n being 20 (Yoshioka, Pgs 4-5, 7). Modified Tuerk’s n value falls within the claimed range of 18 to 26, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 8, modified Tuerk teaches the waterborne hydrophobically modified alkylene oxide urethane thickener has a structure as depicted below; where D represents hydrophilic sections that are polyisocyanates; the structure can contain both triisocyanates and diisocynates (Tuerk, Abstract, Pgs 1, 3, 13, 17).
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Tuerk – Polyurethane thickener structure
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tuerk et al. (CA 2816039 A1) in view of Yoshioka et al. (EP 0761780 A2) as applied to claim 1 above, and as further evidenced by Fernandez et al. (Nano-emulsion formation by emulsion phase inversion, 2004 Colloids and Surfaces A: Physiochem. Eng. Aspects, 251, 53-58).
Regarding Claim 9, modified Tuerk teaches the composition can further include a surfactant (such as Cremophor A6 (ceteareth-6), Cremophor A25 (ceteareth-25), and ceteareth-12) in an amount of preferably at least 1 wt% up to 20 wt% (Tuerk, Pgs 27, 41, 50-52). Modified Tuerk’s range encompasses the claimed range of 5-20 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05). Cremophor A6 and Cremophor A25 are non-ionic surfactants consisting of polyethylene glycol alkyl ether, where Cremophor A25 has a structure shown below that satisfies the formula of claim 9 with a C16-C18-alkyl group and p being 25; and Cremophor A6 with a C16-C18-alkyl group and p being 6 as evidenced by Fernandez (Nano-emulsion formation by emulsion phase inversion, 2004 Colloids and Surfaces A: Physiochem. Eng. Aspects, 251, Pg 54 Col 2). Ceteareth-12 has a C16-C18-alkyl group and p being 12. Modified Tuerk’s p values fall within the claimed p range of 5 to 25, and therefore, satisfy the claimed range (MPEP 2131.03). Modified Tuerk teaches the composition comprises preferably up to 25 wt% (greater than 0 up to 25 wt%) of the polyurethane thickener (Tuerk, Pg 28). Modified Tuerk’s range encompasses the claimed range of 0.5-5 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
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Regarding Claim 10, modified Tuerk teaches the composition includes a surfactant as discussed above for claim 9 that can include ceteareth-6 and ceteareth-12 (Tuerk, Pgs 27, 41, 50-52). Although modified Tuerk does not specifically disclose a surfactant having a p value of 7 to 11, it would have been obvious to one of ordinary skill in the art to have selected substantially structurally identical non-ionic surfactants falling within the scope of the specific examples provided by Tuerk (such as ceteareth-6 and ceteareth-12) with a predictable and reasonable expectation of success (MPEP 2143). Such interpolated examples would include ceteareth-7 through ceteareth-11, all having p values of 7 to 11, respectively, that satisfy the claimed range. Modified Tuerk teaches the composition comprises preferably up to 25 wt% (greater than 0 up to 25 wt%) of the polyurethane thickener (Tuerk, Pg 28). Modified Tuerk’s range encompasses the claimed range of 1-3 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 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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/Eli D. Strah/Primary Examiner, Art Unit 1782