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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wenzel (US 4240942).
Regarding claims 1-6, Wenzel teaches an aqueous dispersion or solution of isocyanate polyaddition products having a polyether chain (a nonionic hydrophilic functional group) and semicarbazide end groups prepared by reacting a hydrazine compound with an isocyanate (claim 1). The instant specification indicates that polyoxyalkylene groups read on the claimed hydrophilic functional group (p. 10, [0024]); therefore, each polyether (or polyoxyalkylene) chain represents one hydrophilic functional group. The semicarbazide compound may be further reacted with an isocyanate-functional chain extension agent, including a diisocyanate (col. 11, lines 42-47). The chain lengthening reaction includes about 0.4-1.0 mol of the difunctional chain lengthening agent per mol of semicarbazide groups (col. 11, lines 55-60). An oligomer with 2 semicarbazide end groups includes 2 moles of semicarbazide groups. The diisocyanate chain lengthening agents include 2 moles of isocyanate groups per mole. The indicated 0.4-1.0 mol of diisocyanate will therefore include 0.8-2.0 mol of isocyanate functional groups per 1 mol semicarbazide groups. In other words, the majority of the range suggested by Wenzel involves reacting a molar excess of diisocyanate with semicarbazide. When an excess of diisocyanate is reacted, all semicarbazide groups will be converted to a structure according to formula (I). The ratio of structures according to formula (I) to polyether chains will remain the same in this case – about 2:1. This falls within the claimed range of 0.1-10. Further, Wenzel does not limit the respective amounts of isocyanates that may be present in the total amount of isocyanate, and permits any ratio. This prior art range encompasses the claimed range. A prima facie case of anticipation exists where the prior art range encompasses the claimed range. See MPEP 2131.
Regarding claim 7, Wenzel remains as applied to claim 1 above. Wenzel further teaches that the polyether chain may be present in amounts of 0-25 % by weight of the total product (claim 1).
Regarding claims 8-9, Wenzel remains as applied to claim 1 above. Wenzel further teaches that acetone (a hydrophilic organic solvent) may be used in amounts of up to 25% by weight relative to the total solids content of the reaction mixture (col. 8, lines 23-27; col. 9, lines 8-12).
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wenzel in view of Asahi (JP 2001003004 A, attached with English translation).
Regarding claim 10, Wenzel remains as applied to claim 1 above. Wenzel further teaches that the aqueous dispersion or solution may be used as an additive for synthetic resin dispersions or in coatings (col. 12, lines 14-16; claim 3). However, Wenzel is silent as to what resins may be used. In a similar field of endeavor, Asahi 2001 teaches use of similar compounds in a coating with hydantoin epoxy resin (p. 12, [0040]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the coating of Wenzel and the resin of Asahi to arrive at the claimed invention, and to provide a product with excellent storage stability, as taught by Asahi (p. 12, [0041]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762