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 .
Transitional After Final Practice-
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
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 1-7, 9-11, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over CN-111378270 to Kaoru et al. (Cited on IDS) in view of JP-2020/097707 to Masashi et al.
As to claims 1-7, 9-11, and 13-17, Kaoru discloses an self-emulsifying (preparation examples 2-8) aqueous polyurethane resin for imitation leather (surface treatment), synthetic leather, and artificial leather (0004-0006, 0280) comprising a chain extended NCO-terminated prepolymer comprising the reaction product of 152.6 parts of polycarbonate diol (Kuraray polyol C-3090, Duranol T5652, Eternacol UH-100), 1.8 parts of 1,4- butanediol, and anionic hydrophilic polyols such as dimethylolpropionic acid (preparation 3, 0233) and sulfonate containing diols (0044-0045) and other polyols, 34.6 parts of dicyclohexylmethane diisocyanate to obtain the NCO-terminated prepolymer having an NCO content of 1.34%, 2.7%, or 1.10%. Karou discloses neutralizing the prepolymer in water and chain extending the prepolymer with piperazine and diethylenetriamine (0257).
Kaoru further teaches the addition of the trimethylolpropane to the aqueous polyurethane dispersion (0067).
Kaoru does not teach the use of trimethylolpropane in examples 2-8.
However, within the same field of endeavor, Masashi discloses aqueous polyurethane urea dispersions comprising the reaction product of diisocyanates, polycarbonate polyols, dimethylolpropionic acid, short chain diols, and 0.5 parts of trimethylolpropane.
At the time of filing it would have been obvious to a person of ordinary skill in the art to include TMP within examples 2-8 to introduce a crosslinked structure into the polyurethane urea, which improves heat resistance and makes it possible to maintain good gloss even after being heated at high temperatures (0023).
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive.
Applicants have argued that their unexpected results in the flex resistance and the wear resistance of the obtained leathers rebut the prima facie case of obviousness.
When looking to showings of results in order to overcome a rejection, the following must be considered:
Results must be Unexpected:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
***The addition of TMP to the polyurethane urea dispersion improves scratch resistance of the films as can be seen from the comparative examples 1 and 3 of Masashi wherein the coating film exhibited 10 or more visible scratches using the resistance test. Accordingly, improved wear resistance would not be an unexpected result upon the addition of trimethylolpropane to the aqueous polyurethane dispersion of Karou as evidenced by Masashi.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
Firstly, the showings are not commensurate in scope with very broad claims, which encompass hundreds of compounds, in particular with respect to the type and amount of organic polyisocyanate, the type and amount of polycarbonate polyol, the type and amount of anionic hydrophilic component, and the type and amount of polyhydric alcohol containing at least three active hydrogen groups. Claim 1 recites a genus of each species polyisocyanate and the claims are open to any amount of the species. Any showing based on “compositions” must be reasonable commensurate in scope with both the kind and amount of organic polyisocyanate, the type and amount of polycarbonate polyol, the type and amount of anionic hydrophilic component, and the type and amount of polyhydric alcohol containing at least three active hydrogen groups. Table 1 is clearly not reasonably commensurate in given that applicants' have demonstrated faster drying time for precisely 2 species of polyisocyanates, 2 species of polycarbonate polyols that embodies claim 1, 1 species of anionic component, and 1 species of polyhydric alcohol containing at least three active hydrogen groups specific amount of that.
The examiner has considered applicant's examples, and the position is taken that they are insufficient for the following reasons. The examples are not commensurate in scope with applicant’s claims in terms of reactant species or amounts. It has been held that the claims must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. It has further been held that a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. Accordingly, it is not evident that the argued results hold for the full scope of the claims or that the argued flex resistance and the wear resistance is necessarily possessed by the claimed composition. Furthermore, it is by no means clear that showings of improved wear resistance would be considered to be unexpected in view of the Masashi disclosure that shows improved wear resistance upon the addition of trimethylolpropane to aqueous polyurethane dispersion.
Response to Amendment
The miscellaneous incoming letter or applicants remarks submitted 02/26/2026 or 06/18/2026 should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
The arguments from Nanboku do not overcome the current rejection for the reasons stated under “Response to Arguments.”
Conclusion
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
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