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 § 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, 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.
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, 10, 12, 14, 16, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al., “Effects of CELF Pretreatment Severity on Lignin Structure and the Lignin-Based Polyurethane Properties”, Frontiers in Energy Research (2020).
Regarding claim 1: Wang et al. teaches a method of producing a polyurethane from an organosolv/co-solvent-based pretreatment (introduction) lignin with an average molecular weight of less than about 1500 g/mol (fig. 1), a phenolic OH content of 69.55 wt% (Table 2, CELF 5, 2.81/4.04), and an aliphatic OH content of 26.5 wt% (Table 2, CELF 5, 1.07/4.04), a polyol such as poly(ethylene glycol) and an isocyanate/PMDI (pg. 4, CL-PU Synthesis and Characterization). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping ranges of Wang et al. and would have been motivated to do so since Wang et al. teaches values within these ranges lead to the disclosed invention.
Regarding claim 10: Wang et al. teaches poly[(phenyl isocyanate)-co-formaldehyde (bottom of page 3).
Regarding claims 12, and 14: Wang et al. teaches the solvent is tetrahydrofuran, which is a volatile organic solvent (pg. 4, CL-PU Synthesis and Characterization).
Regarding claim 16: Wang et al. teaches dibutyltin dilaurate (pg. 4, CL-PU Synthesis and Characterization).
Regarding claims 23, and 24: Wang et al. teaches an elongation at break of at least about 4% or 8% (table 3).
Regarding claim 25: Wang et al. teaches a glass transition temperature below 180 °C (page 8, 1st column), which overlaps the claimed range.
Regarding claim 26: Wang et al. teaches a polyurethane (pg. 4, CL-PU Synthesis and Characterization).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al., “Effects of CELF Pretreatment Severity on Lignin Structure and the Lignin-Based Polyurethane Properties”, Frontiers in Energy Research (2020) as applied to claim 1 set forth above and in view of Yu et al. (US 2023/0303756).
Regarding claim 8: Wang et al. teaches the basic claimed method and polyurethane as set forth above. Not disclosed is cis-butene-1,4-diol. However, Yu et al. teaches cis-butene-1,4-diol/2-butene-1,4-diol (para. 91). Wang et al. and Yu et al. are analogous art since they are both concerned with the same field of endeavor, namely polyurethanes made from bio-based feedstock. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the cis-butene-1,4-diol and would have been motivated to do so since Yu et al. teaches the compound is an exemplary chain extender.
Allowable Subject Matter
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 27, 29, 36, 39 and 40 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Wang et al. is the closest prior art but does not achieve the claimed ultimate tensile stress of at least about 50 MPa. Further, related art that measures the ultimate tensile stress also does not achieve this high of a value, for example WO 86/07070 is the closest, but only achieves 47.1 (pg. 8). Therefore, there is no teaching or suggestion found in the prior art to be able to provide a polyurethane having an ultimate tensile stress of at least about 50 mPa.
Response to Arguments
Applicant’s arguments with respect to the claims 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. Applicant’s argument directed toward Yu et al. is not persuasive since applicant argues that Yu et al. does not describe a process using lignins. However, the primary reference, Wang et al. is relied on for this teaching.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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