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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 3-9, 11, 13, 17-18, 20-21, 23, 25-27, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Power (WO2018160535A1, citing US 2020/0002585 A1 as US equivalent) in view of Park (Journal of the Korea Institute of Rubber Industry, Vol. 29, No. 3, 1994, “A Study on the Physical Properties of Polyurethane Resin Blended with Liquid Rubber,” machine translation attached).
Regarding claims 1, 18, and 20-21, Power teaches a composition having a prepolymer component made from one or more polyol intermediate(s) and one or more isocyanates, a curative component of one or more polyol(s) and one or more catalyst(s), plus an organoclay and/or a halogenated polyether polyol (p. 1, [0007]-[0013]). The composition further contains free NCO groups in unreacted polyisocyanates (p. 3, [0034]). Power further teaches a chain extender in the composition (p. 5, [0053]). The prepolymer component may contain diisocyanate-capped polyols (p. 3, [0033]). Power's curative component may include a hydroxy-terminated polyol intermediate (p. 1, [0018], p. 4, [0042]).
However, Power is silent as to use of liquid rubber in the composition. In the same field of endeavor, Park teaches addition of up to 30 phr liquid rubber in polyurethane compositions (Abstract; p. 226). The liquid rubber may be mixed with a polyurethane that is already formed (p. 227). Selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Power with the liquid rubber of Park, in either claimed component, to arrive at the claimed invention, and to improve the mechanical and thermal properties of the polyurethane resin, as taught by Park (p. 226).
Regarding claim 2, Power in view of Park remains as applied to claim 1 above. Power further teaches that the prepolymer and curative may be combined in a 1:1 weight ratio (ratio of 1) (p. 11, [0145]).
Regarding claim 3, Power in view of Park remains as applied to claim 1 above. Power further teaches use of prepolymer having free isocyanate groups, made using a ratio of isocyanate to polyol of about 2.0 to about 75 (p. 3, [0034]).
Regarding claim 4, Power in view of Park remains as applied to claim 1 above. Power does not require any nitrogen (isocyanate) in the polyol-terminated intermediate of the curative component, permitting a ratio of isocyanate:polyol of 0 (p. 4, [0040]).
Regarding claim 5, Power in view of Park remains as applied to claim 1 above. Power further teaches that the prepolymer component may contain 100 parts by weight of isocyanate-terminated polyol prepolymer and about 5-100 parts by weight of additional ingredients, including filler (p. 3, [0033], [0036]). These amounts result in isocyanate-terminated prepolymer (intermediate) content ranging from 100/200 to 100/105, or 50-95.2% w/w.
Regarding claim 6, Power in view of Park remains as applied to claim 1 above. Power further teaches that the curative component must contain the polyol intermediate (first polyol), and preferably contains further polyols (p. 3, [0039], p. 4, [0046]). Power teaches an embodiment wherein the prepolymer component includes 660 g polyol, 653.4 g and later another 501.6 g isocyanate, 132 g filler, 35.2 g second filler (organo-clay), and 217.8 g molecular sieve (p. 10, [0140]). Power's curative component includes 544.2 g first polyol, 187.8 g second polyol, 57.4 g plasticizer, 134 g first filler, 30.9 g third filler, 3.8 g pigment, 82.1 g molecular sieve, 67.6 g halogenated polyether polyol, 19.7 g amine, 71.8 g third polyol, and 0.8 g catalyst (p. 10, [0142]). These values result in totals of about 2200.0 g prepolymer component and about 1200.1 g total curative component. The 544.2 g first polyol (polyol intermediate) of the total 1200.1 g curative component corresponds to polyol-terminated intermediate content of about 45.3%. This prior art value falls within the claimed range.
Regarding claim 7, Power in view of Park remains as applied to claim 1 above. Power further teaches that the polyol may be selected from diols, triols, tetrols, pentols, hexols, and the like (p. 4, [0041]).
Regarding claims 9 and 17, Power in view of Park remains as applied to claim 1 above. Power further teaches an embodiment wherein the prepolymer component includes 660 g polyol, 653.4 g and later another 501.6 g isocyanate, 132 g filler, 35.2 g second filler (organo-clay), and 217.8 g molecular sieve (p. 10, [0140]). Power's curative component includes 544.2 g first polyol, 187.8 g second polyol, 57.4 g plasticizer, 134 g first filler, 30.9 g third filler, 3.8 g pigment, 82.1 g molecular sieve, 67.6 g halogenated polyether polyol, 19.7 g amine, 71.8 g third polyol, and 0.8 g catalyst (p. 10, [0142]). These values result in totals of about 2200.0 g prepolymer component and about 1200.1 g total curative component. The polyol content of the curative component is 544.2+187.8+67.6+71.8=871.4 g of the total 1200.1 g curative component, corresponding to about 72.6% w/w of the curative component. The total isocyanate content in the prepolymer component is 653.4+501.6=1155 g isocyanate of the total 2200.0 g prepolymer component, corresponding to 52.5% of the prepolymer component. These prior art values fall within the claimed ranges.
Regarding claims 11 and 25, Power in view of Park remains as applied to claim 1 above. Power further teaches that a C1-C14 multifunctional amine may be included in amounts ranging from about 0.1 to about 5 parts by weight per 100 parts by weight of the curative component (0.1-5%) (p. 4, [0051]).
Regarding claim 13, Power in view of Park remains as applied to claim 1 above. Power further teaches use of an isocyanate having the formula R(NCO)n where n is an integer is 2, 3, or 4, and R is an aliphatic moiety having 2-20 carbon atoms (p. 2, [0029]).
Regarding claim 23, Power in view of Park remains as applied to claim 1 above. Power further teaches use of tin catalysts in the composition (p. 5, [0056]).
Regarding claim 26, Power in view of Park remains as applied to claim 1 above. Power further teaches use of C1-C6 alkyl diols as chain extenders in the composition (p. 4, [0049]).
Regarding claim 27, Power in view of Park remains as applied to claim 1 above. Power further teaches use of methyl-propanediol (MPD), 1,4-butanediol (BDO), and/or 1,6-hexanediol (HDO) as the chain extender (p. 4, [0049]).
Regarding claim 29, Power in view of Park remains as applied to claim 1 above. Power further teaches inclusion of molecular sieve in the composition (p. 10, [0140]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Power in view of Park as applied to claim 1 above, and further in view of Huntsman (Jeffamine D-400 Technical Data Sheet, attached).
Regarding claim 10, Power in view of Park remains as applied to claim 1 above. Power further teaches that a polyether diamine may be used as the amine chain extender (p. 4-5, [0052]). Power and Park do not limit the polyamines that may be used. In the same field of endeavor, Huntsman teaches that polyoxypropylene having terminal primary amine groups at both ends is suitable for use in polyurethane adhesives (p. 1). It would have been obvious to one of ordinary skill in the art to select the amine-terminated polyoxypropylene of Huntsman for use in the composition of Power in view of Park to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762