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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected the following species of (claims 1-12 and 14):
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without indicating traverse, and no argument has been submitted. Applicant’s election in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). The examiner has withdrawn the election of species requirement in claim 9 accordingly in view of the election of polymer R-6 in claim 14.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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.
Claim(s) 7-11 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 7 recites the limitation of “formula (3) and (4)”; claim 8 recites the limitations of “formula (5)- (8)” and “A”; claim 10 recites the limitations of “formula (9)- (11)” and “B”; claim 11 recites the limitations of “R3-R7”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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(s) 1-4, 7-9, and 11 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Habets et al. (Macromolecules 2020, 53, 6396−6408) listed on ISR and IDS.
Habets (abs., scheme 2) discloses a poly(oxazolidone) by polymerizing a bio-based (bis(α-alkylidene cyclic carbonate) (50 wt%, General Procedure, pg.6398)
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with
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(diamino-N-methyldipropylamine, DMPA) that meets the claimed bis-carbonates and amines in clams 1-4, 7-9, and 11:
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. The poly(oxazolidone) would inherently possess active amine groups on the backbone owing to the methylamino group on DMPA.
Claim(s) 1-11 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al. (JP 2019189683) listed on ISR and IDS.
As to claims 1-11, Endo (abs., claims, examples) discloses a polyurethane by polymerizing bisphenol A biscarbonate with diethylenetriamine (DETA). The polyurethane would inherently possess an active amine group on the backbone owing to the amino group on DETA and the claimed formula 3-4 of clam 6 due to the monomers that meet the claimed ones.
In particular, regarding the process limitation of “bio-based”, claims 2-3 product-by-process claims that are limited by and defined by the product. Determination of patentability is based on the product itself, not on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113. In this particular case, the disclosed polyurethane shows no structural difference from the claimed ones.
Claim(s) 1-2 and 5-12 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seayad et al. (WO201919040, US 20210053953 as English equivalent) listed on ISR and IDS.
As to claims 1-2 and 5-12, Seayad (abs., claims, examples) discloses a polyurethane having active amine groups on the backbone:
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by polymerizing (scheme 11.1-2) bio-based bicarbonate of
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(
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=
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) with
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.
Claim(s) 1-11 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by He et al. (Polymers 2017,9, 649-661).
As to claims 1-11, He (abs., examples) discloses a polyurethane having active amine groups on the backbone for adhesives, coatings, and textile applications (Introduction). The polyurethane is produced by polymerizing (2.1) a dimer acid bis-carbonate (scheme 1):
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with triethylenetriamine (TETA):
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Product-by-process claims 2-3 are met by the same rationale of above ¶2.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claim(s) 3 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Seayad et al. (WO201919040, US 20210053953 as English equivalent) listed on ISR and IDS.
Disclosure of Seayad is adequately set forth in ¶3 and is incorporated herein by reference.
As to claim 3, Seayad (125) discloses the content of bio-based bicarbonate is no less than 35 wt%, overlapping with the claimed range (30-90 wt%). It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Claim(s) 2-3, 12, and 14 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over He et al. (Polymers 2017,9, 649-661) in view of Misaizu et al. (JP 2019172977, US 20210115278 as English equivalent).
Disclosure of He is adequately set forth in ¶4 and is incorporated herein by reference.
He is silent on the claimed succinic bis-carbonate of claims 12 and 14. He further discloses dimer acids be derived from green chemicals (Introduction).
In the same area of endeavor (abs., claims, 11, 33) of producing polyurethane ink printed on clothes (to form a coating), Misaizu (abs., 1) discloses dimer acid and succinic acid are functionally equivalent plant derived dicarboxylic acids (claims 1-2, 13., 33, 43) for producing polyurethane binders for textile ink that exhibits excellent adhesion performance. The plant derived component is 35-100 wt% of the bio-polyurethane, overlapping with the range (30-90 wt%) of claim 3. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art to have replaced He’s dimer acid with Misaizu’s succinic acid (35-100 wt% of the bio-polyurethane) to produce a succinic bis-carbonate followed by polymerization with He’s triethylenetriamine to produce a polyurethane because of their equivalent functionality as dicarboxylic acids (claims 1-2, 13., 33, 43) for producing bio-polyurethane that exhibits excellent adhesion performance. These conditions appear to equally apply to both productions using similar dicarboxylic acids. This adaptation would have obviously yielded instantly the claimed bio-based polyurethane, in particular, polymer R-6 of claims 12 and 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766