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
The examiner acknowledges the amendments to claims 1-2, 4-7, 9-15, 18 and 20 along with the addition of claim 21 and the cancellation of claim 8. Claims 1-7 and 9-21 are pending.
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.
Claim 5 is 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.
Claim 5 states that the polyol resin must have at least one of “a molar ratio of the glycidyl ether component…” and then subsequently a combination thereof. This claim is indefinite as it only lists a single option that must be met while the initial claim language implies that more than one option is available and further, it is unclear to what combination the applicant is referring to as only one option is listed. The applicant is required to review and revise the claim language, as appropriate, in order to render the claim definite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-6, 9, and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata (US 20140080053).
Regarding Claims 1, 4, 13, and 14,
Miyata teaches a composition comprised of a diglycidyl ether such as bisphenol A diglycidyl ether or resorcinol diglycidyl ether (Paragraph 50), a rosin acid (Paragraph 60), an aliphatic diol (Paragraph 70), a polycarboxylic acid (Paragraph 75) that Miyata notes may be a dimer acid which are defined to come from fatty acids, and in which a catalyst is used (Paragraph 79). As the rosin acid reacts with a diglycidyl ether to form a diol (Paragraph 67), this meets the requirements of claim 13. The disclosure of the use of dimer acids by Miyata meets the requirements of claim 4, as does Miyata’s teaching of the use of disproportionated (Paragraph 63) and hydrogenated (Paragraph 65) rosins. The use of bisphenol-based epoxy resins meets the requirements of claim 2. Regarding the weight ratio between the rosin acid and the fatty acid derivative, as Miyata teaches that the rosin acid is incorporated into a diol using two rosin acids and that the dimer acid can be used as the acid component that are combined to form a polyester, they would by logical extension be used in roughly a 2:1 ratio by mole. Using a molecular weight of rosin acid of 302 and a molecular weight of 570 for the dimer acid (dimerization of a C18 fatty acid), this would result in approximately 46% fatty acid and 54% rosin acid by weight, which would meet the requirements of the instant claim. One of ordinary skill in the art, noting that dimer acids are disclosed by Miyata along with the use of rosin acids in the formation of the polyester used to generate the overall composition, would be motivated to vary the combinations in order to obtain a final composition that possessed the properties required for the intended application and in particular would note that the long alkyl chains present in the dimer acid may be valuable in use cases where the hydrophobic nature of these chains is advantageous. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the use of dimer acids in the rosin acid containing composition as disclosed by Miyata.
Finally, Miyata teaches that the rosin-based polyol is further reacted with an isocyanate (Paragraph 99), which would result in a polyurethane.
Regarding Claim 2 and 3,
Miyata teaches the use of diols (Paragraph 70) as well as the source or rosin to be tall oil (Paragraph 61) in which the tall oil may be purified via distillation (Paragraph 62). Miyata also teaches the use of bisphenol epoxy resins (Paragraph 50). As a natural oil is one of the options of claim 2 but not required, claim 3 is rejected as it further limits a component that is not used in the rejection.
Regarding Claims 5 and 7,
Miyata teaches that the content of rosin diol is preferably between 20 and 90% by mole of the alcohol content of the polyol (Paragraph 68) and teaches the use of other diols that can be used in combination (Paragraphs 69-70). Additionally, Miyata teaches that multiple diacids may be used (Paragraph 76). As such, the overall polyol can contain a range of incorporation amounts of rosin acid and dimer acid relative to the glycidyl ether component. The ordinarily skilled artisan would recognize that altering the ratios of the components would result in final polymers with differing properties such as strength and hydrophobicity and as such, would be motivated to alter the ratios in order to obtain a material that was fit for purpose. It would therefore have been obvious prior to the effective filing date of the instant application to have used the rosin acid, fatty acid derivative, and glycidyl ether component in any ratio that resulted in a material with the desired characteristics.
Regarding Claim 6,
Miyata teaches that the diglycidyl ether can be formed from resorcinol (Paragraph 50) or from a variety of aliphatic diols such as 1,4-butanediol or neopentyl glycol (Paragraph 52). Miyata further teaches that the polyhydric alcohol may be a variety of diols including ethylene glycol, propanediol, butane, hexane, octane, nonane and decane diols (Paragraph 70). Miyata further teaches the use of acids such as isophthalic, itaconic, glutaconic, succinic, adipic, sebacic, and azelaic (Paragraph 75).
Regarding Claim 15,
Though optional, Miyata teaches that hydroxyl containing polyesters and polyethers may be used (Paragraph 97). Miyata further teaches that the ratio of the polyol resin to the epoxy compound may be reacted in any ratio, but may be from 1.5:1 to 2.5:1 (Paragraph 59).
Regarding Claims 16 and 17,
Miyata teaches the use of diisocyanates such as isophorone, tolylene, and diphenylmethane diisocyanate (Paragraph 95).
Regarding Claims 18-21,
Miyata teaches the components as required by claim 1, the diisocyanate component in claim 16 above, and though optional, also teaches the use of auxiliary resins (Paragraph 104). Miyata also teaches a method of forming the composition (Paragraphs 206-210) and for application and curing (Paragraphs 159-184). While Miyata teaches the composition as toner for printing, as this composition is coated onto a substrate (such as paper) and cured, this reads upon a cured composition and a coating, meeting the requirements of the instant claim. With regard to the separation of the components into parts A and B, while Miyata does not teach this separation, because Miyata teaches the combination of components to be cured and a cured product, it would have been obvious to have altered the order of addition of components and to have separated them into any grouping that resulted in the same final composition in the absence of unexpected results. See MPEP 2144.04.IV.C.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata (US 20140080053) as applied to claims 1-4, 6, and 13-17 above, and further in view of Oseta (US 4,508,806, US Patent Reference 1 from IDS dated 8/3/2023).
Regarding Claims 10-12,
Miyata is silent on the use of epoxy containing compounds with more than 2 epoxy groups. However, Oseta teaches the use of polyfunctional epoxides (Column 2, Lines 7-11) in which the polyfunctional epoxy has at least 3 of these groups (Column 2, Lines 52-56) and specifically mentions glycerol and trimethylolpropane derived compounds (Column 3, Lines 1-3) to generate similar compositions to that of Miyata. While Oseta does not enumerate novolac epoxies, as novolacs are polyhydric alcohols with 3 or more alcohols, it would logically follow that such compounds could be used as they meet the requirements as listed by Oseta and it would have been obvious to have used novolac-based epoxies as the polyfunctional epoxide compound. Oseta also teaches that the amount of crosslinker (the polyfunctional epoxide compound) has a great influence on the physical properties of the resin, including the molecular weight (Column 3, Lines 20-24). One of ordinary skill in the art would naturally adjust the incorporation of the crosslinking compound in order to obtain the desired molecular weight as well as the desired material properties. As such, it would have been obvious to have combined the teachings of Miyata and Oseta to obtain the predictable result of a rosin containing resin with higher crosslinking density with a reasonable expectation of success. With regard to the composition of the distilled tall oil, the amount of rosin acid is discussed above in regard to claims 5 and 9.
Response to Arguments
Applicant's arguments filed 11/3/2025 have been fully considered but they are not persuasive for the following reasons.
On page 9, the applicant argues that how the product is made will affect its properties. However, the examiner notes that the applicant has not provided evidence that the process used in the instant application would result in differing material properties. “Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)”. See MPEP 2113.II.
On page 10, the applicant argues that tall oil rosin differs from tall oil. The new grounds of rejection based upon the applicant’s amendments obviate this argument.
On page 10, the applicant points to the amendment to claim 1 now requiring defined amounts of fatty acid and rosin acids. The examiner notes that Miyata teaches the use of dimer acids, which in the art refer to dimerized fatty acids. The use of these in combination with the rosin acid as taught by Miyata meets the requirements as required in the instant claims.
On pages 11-14, the applicant argues that the dependent claims are in condition for allowance on the basis of claim 1. However, claim 1 is still rejected, as are the dependent claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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