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 .
Priority
The instant claims are the national stage entry of PCT/IB2021/062267 filed 23 December 2021. Acknowledgement is made of the Applicant’s claim of foreign priority to application IT102020000032255 filed 23 December 2020.
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 2-8 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. Claim 2 recites, “…by weight of a second aqueous solution of high molecular size polyurethane…” and “…by weight of a second aqueous solution of aliphatic polycarbonate…” Claim 5 recites, “…by weight of a third aqueous solution of opacifying polyurethane…” and “…by weight of a fourth aqueous solution of opacifying polyurethane …” Claim 8 recites, “…by weight of a fifth aqueous solution of opacifying polyurethane…” These claims are indefinite because each example of a multiple aqueous solution does not have a corresponding first, second, etc… solution. For example, in claim 2 it is required to have “a second aqueous solution of high molecular size polyurethane” but there is no limitation reciting a first aqueous solution of high molecular size polyurethane. Claims 5 and 8 have similar indefinite language.
Claims 14 is 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. Claim 14 recites the limitation " wherein said layers (1", 2’’’, 3, 4)…" and depends from claim 10. None of claims 14, 10, or the claims which 10 depends from identify this combination of layers. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 5-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Pozza et al. (WO2016/120900) in view of Radomyselski et al. (US 2003/0046769) in view of Heywood et al. (US 4,985,040).
Pozza teaches a method for obtaining self-cleaning and self-sanitizing surfaces of finished leather by applying a treatment (pg 1, lns 4-14). Silver and/or copper ions supported on zeolites are responsible for the sanitizing properties (pg 3, lns 24-26). Titanium dioxide is used as a self-cleaning agent and antibacterial agent (pg 3, lns 33-35; pg 4, lns 4-5). The treatment composition can further comprise nanoparticles containing silver ions as biocide agents (pg 5, lns 11-12). The leather coating formulation can comprise multiple layers wherein one layer can comprise polyacrylates, surfactants, and diisocyanate (for crosslinking and improving mechanical properties of the coating) (pg 5, ln 25-pg 6, ln 3). A second coating can comprise water, silicone (about 2.5%), aliphatic polyurethane and inorganic opacifiers (i.e. opacifying polyurethane; about 12%), polyhexamethylene diisocyanate (about 6%), titanium dioxide (about 1.5%), polyether siloxane copolymer with fumed silica (i.e. polysiloxane; about 0.5%), inorganic pigments (about 0.5%), and water (pg 6, ln 5- pg 7, ln 2; claim 1). The polymer-based solutions/dispersions comprise about 59% of the overall composition wherein the water solvent comprises about 27% (pg 7). The coatings can be applied multiple times with intermediate drying (pg 7, lns 3-5). The first coating can be applied in 2.0 g/ft2 and the second in 0.7 g/ft2 (pg 6, 8).
Pozza does not teach the composition comprising an amino-functional silicone.
Radomyselski teaches compositions for treating leather articles (abstract). The compositions can comprise lipophilic fluids such as silicones, especially amino functional silicones [0085]. In addition, the lipophilic fluid can be propylene glycol methyl ether [0086].
Heywood teaches that the preferred polyurethane for the finishing of leather is a polyester-based aliphatic polyurethane (col 1, lns 30-36).
It would have been prima facie obvious to coat a leather substrate with the composition of Pozza wherein the first layer, which can be considered a lower support layer, comprises an aqueous solution of polyacrylates, surfactants, and diisocyanate. This first layer can be applied multiple times with intermediate drying, implying applying heat to evaporate the solvent. A subsequent layer, which can be interpreted as the liquid active sanitizing composition, can comprise antimicrobial agents such as titanium dioxide, a solvent such as water, and can further comprise nanoparticles containing silver ions, as taught in the broader disclosure of Pozza. Regarding the concentrations of solvent and polymer-based Solutions, the values taught in Pozza fall within the claimed ranges. The overall amount of the second layer can be in a ratio of 0.7:2 which is 26% overall. If multiple layers of the second composition are applied, the percentage of active layer composition can lower to 20% or less as more layers are applied. It is obvious to duplicate parts in a prior art composition, therefore as many layers as desired by the skilled artisan would have been obvious to have been applied, thus lowering the overall amount of active layer to any value determined by the artisan (see MPEP 2144.4 VI(B)). The amount of opacifying polyurethane is taught as being about 12%.
It would have been obvious to include a silicone agent (2.5%) in the coating of Pozza but since Pozza is not specific on the type of silicone, it would have been obvious to look to Radomyselski and include amino functional silicone as the preferred leather treating silicone agent. It would have also been obvious to include both amino functional silicone and propylene glycol methyl ether as suitable alternatives to silicone, alone. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
It would have been obvious to specifically use polyester-based aliphatic polyurethane as the aliphatic polyurethane of Pozza based on the teachings of Heywood wherein the polyester-based PU is preferred for treating leather. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
The diisocyanate of Pozza is taught as being a crosslinking agent useful for improving the mechanical properties of the polymeric coating. Since both the first and the second coatings are polymeric, it would have been obvious to include the diisocyanate in either layer.
Regarding the amounts of lipophilic agents (silicone, propylene glycol methyl ether), aliphatic polyurethane, pigments, water, silver chloride (present as ions in an aqueous solution), and titanium dioxide are all variables which achieve recognized results of imparting lipophilicity, imparting abrasion resistance, providing color, solvating the mixture, and providing antimicrobial properties, respectively. The optimum or workable range of concentration of each agent can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants provide no evidence of any secondary consideration such as unexpected results that would render the optimized amounts of each agent nonobvious.
The resulting method of treating a leather substrate renders obvious instant claims 1, 5-6, and 8-9.
Allowable Subject Matter
Claims 2-4, 7, and 10-14 are currently free of the art. Said claims comprise combinations of different types of polyurethanes, solvents, and additional agents that are not reasonably taught by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613