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 .
Election/Restrictions
Claims 1-5, 7, 9, 12, 14, 18-20, 22, 25, 27, 31-34, 36, 39, and 41 are currently pending.
Applicant’s election without traverse of group I (claims 1-5, 7, 9, 12, and 14), as well as the PTMEG and MDI species of claims 12 and 14, in the reply filed on 04/10/2026 is acknowledged.
Claims 18-20, 22, 25, 27, 31-34, 36, 39, and 41 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/10/2026.
Claim Objections
Claims 7 and 14 are objected to because of the following informalities:
Claims 7 uses the term 4,4'-diphenylmethanediisocyanate to refer to MDI, while claim 14 uses the term 4,4'-methylenebis(phenyl isocyanate) to refer to MDI. The use of consistent terminology would improve the clarity of the claims. 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 2, 5 and 7 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.
Regarding claim 2; Claim 2 recites the limitation "caprolactone monomer polyol" in the second line. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, this has been interpreted as caprolactone monomer.
Regarding claims 5 and 7, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). In the present context, the claims read similarly to a “such as” or “for example” clause, which are indefinite.
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.
Claim(s) 1-5, 7, 9, 12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vedula (US 2005/0025966 A1) and further in view of Ishii (US 4,647,596 A).
Regarding claims 1-4, 7, and 9; Vedula teaches melt spun fibers made from thermoplastic polyurethane (TPU) polymers and a isocyanate functional prepolymer crosslinking agent [abstract]. Vedula exemplifies the preparation of a TPU comprising 72 wt. % poly(tetramethylene ether glycol) (PTMEG) as a hydroxyl terminated intermediate, 8 wt. % 1,4-(2-hydroxyethoxy)benzene (HQEE) as a chain extender, and 20 wt. % MDI as a diisocyanate [p. 0058]. Vedula teaches suitable alternative intermediates to PTMEG include hydroxyl terminated polyesters, such as polycaprolactone and copolymers thereof [p. 0020].
Vedula fails to teach a TPU prepared from a hydroxyl terminated intermediate derived from caprolactone and PTMEG.
Ishii teaches a TPU prepared with a polyester hydroxyl terminated intermediate, Placcel T-2205, which is a copolymer of PTMEG and caprolactone (50:50) with an average molecular weight of 2000 [c. 6, ll. 60-70; example 2]. Ishii teaches polyurethanes made from PTMEG/caprolactone copolymers have maintain the advantages of TPU’s prepared from the individual polyols, such as the high initial modulus at elongation and hydrolysis-durability under humid and hot conditions of PTMEG, and the good molding/antibending-fatigue property of polycaprolactone, while overcoming known disadvantages of the individual polymers, such as unsatisfactory durability [c. 4, ll. 1-30].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the TPU of Vedula with 8 wt. % HQEE, 20 wt. % MDI, and 72 wt. % of a copolymer of PTMEG and caprolactone (50:50) with an average molecular weight of 2000, in lieu of a PTMEG or polycaprolactone homopolymer, as Ishii teaches such copolymers improve the mechanical properties of produced articles [see claims].
Regarding claim 5; Vedula teaches it is preferred to use a co-chain extender together with the chain extender, wherein hydroxylethyl resorcinol is taught as a very effective co-chain extender [p. 0034]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the TPU of Vedula with a co-chain extender such as hydroxylethyl resorcinol.
Regarding claims 12 and 14; Vedula teaches the crosslinking agent is an isocyanate functional prepolymer prepared from a hydroxyl functional intermediate, such as PTMEG, and a diisocyanate, wherein the preferred diisocyanate is MDI [p. 0042-0043, 0021]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the crosslinking agent of Vedula with PTMEG and MDI.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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