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
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schonberger et al.(2013/0136785).
Schonberger et al. discloses methods for producing polyurethane foams by mixing foaming and curing (i.) isocyanate functional prepolymers prepared from A1) aliphatic diisocyanates and A2) polyoxyalkylene polyols as claimed, (ii.) water in amounts as claimed, wherein prepolymers of preferred NCO contents of 1.5-3% are disclosed and good polyurethane foams for wound dressing are obtained (see paragraphs [0011]-[0037] , [0040], [0139], [0140] and Examples).
Regarding claim 8, though viscosities as claimed are not particularly expressed for the prepolymers of Schonberger et al., owing to the closeness of the make-up of the prepolymers formed during the processes it is held that these features would have necessarily followed from the formation of the prepolymers of Schonberger et al.
Schonberger et al. differs from applicants’ claims in that it does not particularly require component A3 of the claims. However, it does identify that polyhydric alcohols inclusive of the diols as claimed may be utilized in the preparations of their disclosure (see para [0046]). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized these diols of Schonberger et al. in any amount withing the preparations of Schonberger et al. for the purpose of imparting their recognized chain building and lengthening, isocyanate reactive effects to the developing prepolymers of Schonberger et al. in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sutterlin et al.(WO 2019/137,879) {hereon reference will be made to the equivalent US2019/0218329}.
Sutterlin et al. discloses methods for producing polyurethane foams by mixing foaming and curing (i.) isocyanate functional prepolymers prepared from A1) aliphatic diisocyanates and A2) polyoxyalkylene polyols as claimed, (ii.) water in amounts as claimed, wherein prepolymers of preferred NCO contents of 1.5-3% are disclosed and good polyurethane foams for wound dressing are obtained (see paragraphs [0014]-[0045] ,[0070], [0096] and the Examples).
Regarding claim 8, viscosities as claimed are disclosed {see para [0097]}.
Sutterlin et al. differs from applicants’ claims in that it does not particularly require component A3 of the claims. However, it does identify that polyhydric alcohols inclusive of the diols as claimed may be utilized in the preparations of their disclosure (see para [0041]). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized these diols of Sutterlin et al. in any amount withing the preparations of Sutterlin et al. for the purpose of imparting their recognized chain building and lengthening, isocyanate reactive effects to the developing prepolymers of Sutterlin et al. in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejection is maintained.
As to applicants' discussion of results and problems solved, it is held that teachings may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods.,Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).[see also MPEP 2144 IV.]. “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) [see also MPEP 2145 II.]. Applicants’ have not related their recitations of the claims to distinguishable limitations over the teachings and fair suggestions of the above cited prior art. Further, they have not established showings of new or unexpected results attributable to the invention of the claims that are commensurate in scope with the scope of the claims as they currently stand.
As to applicants’ arguments concerning results, the following are held to apply:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977. Obviousness does not require absolute predictability. In re Miegel 159 USPQ 716. Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; In re Beattie, 24 USPQ 2d 1040.
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. See also In re Kulling, 14 USPQ 2d 1056.
Applicants’ have not persuasively demonstrated unexpected results for the combinations of their claims. Applicants have not demonstrated their results to be unexpected and more than mere optimizations of the knowledge in the art or more significant than being secondary in nature.
More significantly, applicants’ have not demonstrated their showings to be commensurate in scope with the scope of the combinations now claimed.
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.
Conclusion
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/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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