Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior Art Rejections
2. 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.
3. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/140246 A1 in view of Mayer et al. (US 2006/0149020 A1.
WO 2008/140246 A1 discloses a method for producing waterborne polyurethane compositions, suitable for producing such items as gloves. The method comprises the steps of reacting a polyol with a stoichiometric deficient amount of polyisocyanate to form a hydroxyl-terminated prepolymer, then this prepolymer is reacted with a stoichiometric excessive amount of polyisocyanate to yield an isocyanate-terminated prepolymer, which is then neutralized, then emulsified, and reacted with an amine to chain extend the prepolymer. See Figure 1, abstract ,and pages 6+ within the reference, including paragraph [25], page 6, and paragraph [27], pages 6 and 7, (disclosing the claimed hydrophilic chain extender and small-molecule chain extender, as amended). The reference discloses that the method is advantageous in that it allows polyurethane particle behavior to be adjusted in a waterborne processing procedure. Though the disclosed method differs from the instantly claimed method in terms of the stage of incorporation of the hydrophilic reactant and chain extender into the prepolymer, the reference discloses within paragraph [66], page 13, that the method may be modified by the skilled artisan. Furthermore, it is noted that it is disclosed within paragraph [48], page11 that the process yields products that do not contain hazardous material, such that they may directly contact the body.
4. Though the primary reference fails to teach such claimed features as the claimed combination of macromolecular diol and triol, the claimed solids content, the aforementioned sequence of addition of the low molecular reactants, the use of the method to produce condoms, and the claimed properties possessed by the produced condoms, the examiner notes that the secondary reference, Mayer et al., also discloses aqueous polyurethane compositions based on isocyanate terminated prepolymers that are specifically useful for producing condoms, wherein a blend of diol and triol, corresponding to that clamed, along with hydrophilic and conventional chain extenders are disclosed as being components of the composition. Within Mayer et al., see abstract and paragraphs [0046], [0047], [0051]+, [0063], and [0065]. Given these teachings and the analogous methods and applications with respect to each reference, the position is taken that one would have been motivated to employ the reactants of the secondary reference in ratios suitable for the production of the respective prepolymers of the primary reference, so as to arrive at the claimed method. Furthermore, since the compositions of the secondary reference are specifically drawn to the production of such articles as condoms, one would have reasonably expected the disclosed compositions to possess the claimed properties to adequately function as intended.
5. Applicants’ response and amendment have been carefully considered; however, they are insufficient to overcome the prior art rejection. Firstly, in response to applicants’ remarks of 29 January 2026 concerning their amendment to claim 1, it is noted that paragraphs [25] and [27] of the primary reference disclose the use of the specifically claimed chain extenders. Secondly, applicants have argued that the primary reference fails to teach the reaction of the claimed hydrophilic and small-molecule chain extenders with the claimed second prepolymer. The examiner has noted this difference; however, the primary reference further discloses within paragraph [66] that the method may be modified, and the position is maintained, given this teaching that it would have been obvious to incorporate the extenders within any reaction step of the disclosed method. The examiner has further considered the examples of the instant invention for a showing of criticalness attributable to the sequence of addition of the extenders; however, the examples do not demonstrate any unexpected result attributable to this aspect of the invention. Furthermore, it is noted that the examples are not representative of the claimed invention for at least the reason that the examples do not employ the claimed small-molecule chain extender.
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (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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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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