CTFR 18/250,765 CTFR 68201 Detailed Office Action Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 1. 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 § 112 07-30-02 AIA 2. 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. 07-34-01 3. Claims 1-3, 5-7, 9, and 10 are 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. Firstly, the polyester polyol, including the polyester diol, and the diol chain extender are not mutually exclusive. Similarly, the reactive tertiary amine according to formula (I), which may be hydroxyl functional, and the diol chain extender are not mutually exclusive. The lack of mutual exclusivity renders the claims indefinite, because the metes and bounds of the claims are unclear, since the respective reactants can be satisfied by the same species or compound. Neither applicants’ amendment nor applicants’ response has addressed the issue raised by the examiner with respect to the lack of mutual exclusivity with respect to either the polyester reactants or the reactive tertiary amine and the diol chain extender. 07-36 AIA 4. The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA 5. Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicants’ amendment to claim 1 requires the reactive tertiary amine to be cyclic; however, within claim 5, N,N-diisopropylaminoethanol is not cyclic. Accordingly, the claim is not further limiting with respect to this compound . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Prior Art Rejections 07-07-aia AIA 07-07 6. 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 – 07-08-aia AIA (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. 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-15 AIA 7. Claim s 1-3, 5, 6, and 8-10 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by JP 5-156151 A . JP 5-156151 A discloses a polyurethane produced from the reaction of a polyester diol, produced by reacting such reactants as adipic acid and butanediol yielding a polybutylene adipate, corresponding to instant claim 6 (see the last 12 lines of page 6 of the translation); a diol chain extender, corresponding to instant claim 8 (see page 7 of the translation); a diisocyanate, corresponding to instant claim 9 (see page 5, lines 4-8 and page 7 of the translation); a polyol having three of more hydroxyl groups, corresponding to instant claim 10 (see last paragraph of page 4 of the translation); and 1-methyl-2,2,6,6-tetramethyl-4-hydroxypiperidine or 1-methyl-2,2,6,6-tetramethyl-4- aminopiperidine, corresponding to applicants’ Formula (I) and instant claim 5 (see structures (IV) and (V) within page 5 of the Japanese reference) . 07-21-aia AIA 8. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JP 5-156151 A . JP 5-156151 A discloses a polyurethane produced from the reaction of a polyester diol, produced by reacting such reactants as adipic acid and butanediol yielding a polybutylene adipate (see the last 12 lines of page 6 of the translation); a diol chain extender (see page 7 of the translation); a diisocyanate (see page 5, lines 4-8 and page 7 of the translation); and 1-methyl-2,2,6,6-tetramethyl-4-hydroxypiperidine or 1-methyl-2,2,6,6-tetramethyl-4-aminopiperidine, corresponding to applicants’ Formula (I) (see structures (IV) and (V) within page 5 of the Japanese reference). Though the reference fails to disclose the claimed weight percent range for the diol chain extender, the position is taken that tailoring the amount of diol chain to correspond to that clamed would have been obvious, since a person having ordinary skill on the art would have been well aware of the function of the chain extender and the effect of tailoring the amount of the chain extender so as to control such properties as hardness. 9. Applicants’ response has been fully considered; however, it is insufficient to overcome the prior art rejections. The examiner has again carefully reviewed the relied upon prior art reference and finds that it teaches each of the claimed reactants and further teaches their reaction to produce a polyurethane. Though applicants have attempted to distinguish the claims from the prior art by arguing that the hindered amine/polyisocyanate reaction product of the reference is not used, this argument is not well taken. It is not seen that there are any limitations within the instant claims that preclude the argued hindered amine/polyisocyanate reaction product. Applicants’ argument is not considered to be commensurate in scope with the claims. To the extent claimed, once the polyisocyanate and reactive tertiary amine, corresponding exactly to the hindered amine of the reference, react, reaction products will be present that correspond to the those of the prior art. A patentable distinction with respect to the instant claims has not been established. Conclusion 07-40 AIA 10. 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. 11. 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. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice. /RABON A SERGENT/Primary Examiner, Art Unit 1765 Application/Control Number: 18/250,765 Page 2 Art Unit: 1765 Application/Control Number: 18/250,765 Page 3 Art Unit: 1765 Application/Control Number: 18/250,765 Page 4 Art Unit: 1765 Application/Control Number: 18/250,765 Page 5 Art Unit: 1765 Application/Control Number: 18/250,765 Page 6 Art Unit: 1765
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