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 .
Claims filed 7/14/2023 are made of record. Claims 1-7 are currently pending in the application.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “heterocyclic ring-containing plant-derived polyol that contains a heterocyclic structure and is derived from plants”. The recitation of both “heterocyclic ring” and “heterocyclic structure” to define the hydroxyl component is redundant. Hence, applicant is advised to rephrase it as “heterocyclic ring-containing plant-derived polyol”
Appropriate correction and/or clarification are required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kibe (JP 2019-104886 A).
It is noted that JP 2019-104886 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claims 1, 3 and 5, Kibe discloses polycarbonate based resin obtained by reacting (A) polycarbonate polyol, (B) a polyisocyanate compound and (C) (meth)acryloyl group-containing polyol having at least one (meth)acryloyl group and 2 or more hydroxyl groups. The cured resin layer contains a cured product of the resin composition (abstract) which reads on the cured product in present claim 5 and “curable” is implicit in the composition being cured. See example 6, wherein polyurethane acrylate based polycarbonate-based (i.e., reads on polyurethane in present claim 1) composition (paragraph 0138 and Table 2) is obtained from components comprising PCD3 (i.e., isosorbide based polycarbonate diol BENEBiOL HS0850, see paragraph 0122), hexamethylene diisocyanate (i.e., reads on aliphatic diisocyanate in present claim 1), and 2-hydroxyethyl acrylate (i.e., reads on hydroxyl group-containing unsaturated compound containing an ethylenically unsaturated group and a hydroxyl group in present claim 1). It is noted that isosorbide based polycarbonate diol BENEBiOL HS0850 is derived from plants (i.e., reads on hydroxyl component comprising a heterocyclic ring-containing plant-derived polyol in present claim 1; and isosorbide modified polycarbonate polyol in present claim 3).
Regarding claim 4, Kibe teaches that from the view point of reactivity, (meth)acrylates of polyhydric alcohols such as pentaerythritol triacrylate are preferred (paragraph 0072) which reads on polyfunctional (meth)acrylate having three ethylenically unsaturated groups in present claim 4. See example 7 (Table 2), wherein the pentaerythritol triacrylate is present in amounts greater than 30 parts per 100 parts by mass of the reaction product (i.e., reads on amount of polyfunctional methacrylate in present claim 4).
Regarding claim 6, Kibe teaches that in various electric fields, a coating film may be provided for protecting the base material. In the field of electronic devices, a transparent protective layer is provided on the surface of the touch panel (paragraph 0002). Given that the coating film may be used in electronic devices and comprises reaction product as in present claims, it is the Office’s position that cured polyurethane produced in Kibe inherently has a haze of less than 0.5%. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, Kibe teaches that laminate is produced by forming a resin composition layer of the polycarbonate-based resin on a substrate (paragraph 0105), cured by polymerizing and solidifying the resin components in the resin composition layer (paragraph 0109) and thickness of the resin composition layer after drying is 0.1 to 50 microns (paragraph 0108).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kibe (JP 2019-104886 A) in view of Lee et al (Polym. Korea, Vol. 44 No. 3, pp 318-324, Year: 2020).
The discussion with respect to Kibe in paragraph 6 above is incorporated here by reference.
Kibe is silent with respect to plant derived 1,5-pentamethylene diisocyanate.
However, Kibe in the general disclosure teach that from the view point of reducing yellowing discoloration due to light, as the aliphatic polyisocyanate, pentamethylene diisocyanate is preferable (paragraph 0064). Additionally, Lee et al in the same field of endeavor teach eco-friendly biopolyurethane adhesives prepared by using biobased isosorbide carbonate diol and 1,5-pentamethylene diisocyanate (abstract). Due to environmental regulations and restrictions on use of organic solvents as well as problems with carcinogens due to the use of petroleum based polyols and isocyanates, there is a need for bio-based polyurethanes (page 318, col. 2). Therefore, in light of the teachings in Lee et al and given that pentamethylene diisocyanate is a preferred isocyanate in the preparation of resin composition in Kibe, it would have been obvious to one skilled in art prior to the filing of present application to include plant derived 1,5-pentamethylene diisocyanate in the preparation of the resin composition, of Kibe, for above mentioned advantages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764