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 Objections
Claim 5 is objected to because of the following informalities: the “4” appearing before the period at the end of Claim 5 should be deleted.
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.
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 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over JPS6026018 to Matsumoto et al. (hereinafter Matsumoto) in view of US 2004/0116619 to Moad et al. (hereinafter Moad). For the purposes of examination, citations for Matsumoto are taken from a machine translation of the document obtained from the European Patent Office in March 2026.
Regarding Claims 1 and 3. Matsumoto teaches a polyester polyol obtained by reacting a dicarboxylic acid mixture and a glycol/diol component (see Lines 16 – 19 of Page 1 of the machine translation).
The dicarboxylic acid mixture comprises 3-methylpentanedioc acid (see Lines 19 – 22 of Page 1 of the machine translation), which is alternatively known in the art as 3-methylglutaric acid. As detailed in the instant specification, 3-methylglutaric acid corresponds to a dicarboxylic acid of general formula (I) in which R1 and R2 are each a methylene group and R3 is a methyl group (see [0027] of the PG-PUB of the instant application).
Matsumoto teaches the dicarboxylic acid mixture comprises more particularly at least 40% by weight or more of the 3-methylpentanedioc acid (see Lines 10 – 12 of Page 1 of the machine translation). The remainder of the dicarboxylic acid mixture, greater than 0 to less than 60% by weight thereof, would thus correspond to a dicarboxylic acid other than 3-methylpentanedioc acid. While this range is not identical to the instantly claimed range for the dicarboxylic acid (a2) of 0.02 to 3.00% by mass in 100% by mass of the total amount of the dicarboxylic acid component, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Matsumoto does not expressly teach the dicarboxylic acid other than 3-methylpentanedioc acid corresponds to a compound which may be represented by instantly claimed general formula (II). However, Moad teaches the concept of providing the dicarboxylic acid, 3-hydroxy-3-methyl glutaric acid, in the preparation of a polyester polyol [0036]. As detailed in the instant specification, 3-hydroxy-3-methyl glutaric acid corresponds to a dicarboxylic acid of general formula (II) in which R4 and R5 are each a methylene group and R6 is a methyl group (see [0036] of the PG-PUB of the instant application). Matsumoto and Moad are analogous art as they are from the same field of endeavor, namely polyester polyols obtained by reacting dicarboxylic acid and diol components. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide 3-hydroxy-3-methyl glutaric acid as the dicarboxylic acid other than 3-methylpentanedioc acid in Matsumoto. The motivation would have been that Moad teaches that 3-hydroxy-3-methyl glutaric acid will introduce branching in the polyester polyol [0036]. Branching in the polyester polyol would be provide benefits, such as increasing the cross-linking density and improving the mechanical properties of the products prepared therefrom.
Regarding Claim 2. Matsumoto teaches a polyester polyol of Claim 1. As detailed in the rejection of Claim 1 above, Matsumoto teaches the dicarboxylic acid mixture comprises more particularly at least 40% by weight or more of the 3-methylpentanedioc acid (see Lines 10 – 12 of Page 1 of the machine translation). The remainder of the dicarboxylic acid mixture, greater than 0 to less than 60% by weight, would thus correspond to a dicarboxylic acid other than 3-methylpentanedioc acid.
This amount can be alternatively expressed as a content of dicarboxylic acid component (a2) of greater than 0 to 150 parts by mass with respect to 100 parts by mass of the dicarboxylic acid component (a1). While this range is not identical to the instantly claimed range for the dicarboxylic acid (a2) of 3.00 parts by mass or less with respect to 100 parts by mass of the dicarboxylic acid component (a1), it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 4. Matsumoto teaches a urethane prepolymer obtained by reacting the polyester polyol of Claim 1 with a polyisocyanate compound (see final two lines of Page 2 – first four lines of Page 3 of the machine translation).
Regarding Claim 5. Matsumoto teaches a polyurethane made from the polyester polyol of Claim 1 (see Lines 16 – 20 of Page 1 of the machine translation).
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2010/0305297 teaches the use of hydroxymethylglutaric acid as a dicarboxylic acid component for the preparation of polyesters.
JPH 05262842 teaches the use of 3-methylglutaric acid as a dicarboxylic acid component for the preparation of polyesters and polyurethanes prepared therefrom.
JP 05170885 teaches the concept of combining an aliphatic dicarboxylic acid with a small amount of an additional dicarboxylic acid substituted with one hydroxyl group to prepare polyesters.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764