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 9 is objected to because of the following informalities: delete “at temperature” in line 4. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: delete “the diisocyanate being selected from the list consisting of…” under a’. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: delete “advantageously” in line 10. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 3, 11, 13-14, and 16-19 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 3 recites the broad recitation 149 and 560 mgKOH/g, and the claim also recites “advantageously, more advantageously, and in particular” which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites the limitation "the molar ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
In claims 13-14 and 17-19, the limitation “or as obtained by the method of claim 10 or 13;” renders the claims unclear because the methods claimed in claims 10 and 13 are already claimed within the current claim and they fail to further limit the existing claim language already present. The examiner suggests deleting the language.
Claim 16 recites the limitation "the molar ratio" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the NCO terminated urethane prepolymer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the NCO terminated urethane prepolymer" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-4, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2002/0035231 to Whitehouse et al.
As to claims 1-4 and 7, Whitehouse discloses a polyurethane comprising the reaction product of polyhydroxyalkanoate derived from ethylene glycol and poly-3-hydroxybutyrate (Examples 1-4) and 1,6-hexamethylene diisocyanate (0022). Whitehouse discloses an NCO:OH ratio of 0.5:1 to 2:1 (0050). At a ratio of 2:1 an NCO-terminated prepolymer would be produced. At the time of filing it would have been obvious to react the isocyanate with the polyhydroxyalkanoate at a ratio of 2:1 to arrive at the presently claimed NCO-terminated prepolymer based on the desired applications of the polyurethane (0057). The molecular weight of polyhydroxyalkanoate ranges from 100 to 750,000 Daltons (0025). The molecular weight in example 1 is 120 g/mol (See formula).
As to claim 9 with regard to the viscosity, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 1-4, 7-9, and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,173,301 to Itoh et al. in view of U.S. Patent Pub. No. 2002/0035231 to Whitehouse et al.
As to claims 1-4, 7-8, and 13-19, Itoh discloses tissue adhesive kits comprising an NCO-terminated prepolymer having an NCO content of 1-10% by weight and a chain extender (7:1-10, 8:14-25) such as 1,4-butanediol, polyethylene glycol or polypropylene glycol (Examples 1-2) wherein the prepolymer is derived from a polyester diol (A-4, A-3).
Itoh does not expressly disclose the use of the claimed polyhydroxyalkanoate diol.
Whitehouse discloses a polyurethane adhesive comprising Whitehouse discloses a polyurethane comprising the reaction product of polyhydroxyalkanoate derived from ethylene glycol and poly-3-hydroxybutyrate (Examples 1-4) and 1,6-hexamethylene diisocyanate (0022). Whitehouse discloses an NCO:OH ratio of 0.5:1 to 2:1 (0050). At a ratio of 2:1 an NCO-terminated prepolymer would be produced. At the time of filing it would have been obvious to replace the polyester diol of Itoh with the polyester diol of Whitehouse to increase biodegradability, improve flexibility and improve hydrophobicity (Abstract).
As to claim 9 with regard to the viscosity, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Allowable Subject Matter
Claims 5-6, 10-12, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763