Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Indefiniteness Rejection
2. 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.
3. Claims 1-14 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.
Firstly, with respect to claim 1, the significance of the use of the language “alone” following “three or more hydroxyl groups” in association with the polyhydric alcohol is unclear; it cannot be determined how the language further defines/limits the polyhydric alcohol.
Secondly, as claimed, the polycarbonate polyol, polyhydric alcohol, and polyol including an anionic hydrophilic group are not mutually exclusive; therefore, the exact content of the polyol, as claimed, is unclear. For example, it cannot be determined if a single polyol possessing the features of carbonate groups, three or more hydroxyl groups, and an anionic hydrophilic group satisfy the claim.
Thirdly, with respect to claims 2-4, 9, and 10, it is unclear to which polyol is being referred by the language, “the polyol”, since claim 1 and 2 reference multiple polyols, including the polyol including the separately claimed polyols.
In summation, given these issues, the claims, as drafted, are imprecise to such an extent that the exact composition of the polyol component(s) cannot be clearly ascertained.
Nonstatutory Double Patenting Rejection
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07€ and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1, 5, and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/848,289 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set is drawn to a polyurethane composition derived from polyisocyanate, polyamine, and a polyol including a polycarbonate polyol including a structural unit derived from 1,10-decanediol, a polyhydric polyol having 3 or more hydroxyl groups and having a molecular weight of 420 to 2000, and a polyol having an anionic hydrophilic group.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art Rejection
6. 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.
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.
7. Claims 1-3, 5-9, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-119755 A in view of Nanboku et al. (US 2024/0317924 A1).
JP 2017-119755 A discloses a polyurethane composition and its application to a fiber base material, and the position is taken that the resulting laminate satisfies applicants’ claimed fiber laminate and artificial leather of instant claims 7, 8, 13, and 14. The polyurethane is produced by reacting an isocyanate terminated prepolymer with a polyamine compound, and the isocyanate terminated prepolymer is produced by reacting a polyisocyanate with a polyol composition comprising a polycarbonate polyol derived from a 1,10-decanediol, corresponding to applicants’ claimed polycarbonate polyol, and a polyhydric alcohol having a molecular weight of 400 or less, wherein the polyhydric alcohol may additionally contain a polyhydric alcohol having an additional functional group, such as a carboxyl group, which may be neutralized. A specific example is dimethylolpropionic acid and this additionally disclosed polyhydric alcohol corresponds to applicants’ polyol including an anionic hydrophilic group. Furthermore, the polyol composition may further include a polyether polyol derived from ethylene glycol, corresponding to the instantly claimed polyether polyol of instant claim 2. Within the provided English translation, see paragraphs [0010]-[0013] and [0026]-[0028]. Within paragraph [0026], a quantity of the polycarbonate diol is disclosed that meets that of instant claims 3 and 9.
8. The primary reference differs from the instant claims in that the reference fails to disclose the use of a polyhydric alcohol having three or more hydroxyl groups and having a molecular weight of 420 to 2000. However, Nanboku et al. disclose an analogous polyurethane, also used to produce artificial leather, wherein a polyurethane composition is produced by reacting a polyamine with an isocyanate prepolymer derived from the reaction of polyisocyanate with a polycarbonate polyol, a polyahl having an anionic hydrophilic group, and a polyhydric polyol. See abstract. The disclosed polyhydric polyol has three or more hydroxyl groups and a molecular weight of 500 or less. See paragraph [0036] within the secondary reference. Considering the proximity of the disclosed molecular weight of 400 of the polyhydric alcohol of the primary reference to the claimed minimum molecular weight of 420 of the instantly claimed polyhydric polyol, the overlap of the molecular weight of the corresponding polyhydric polyol of the secondary reference to the instantly claimed polyhydric polyol of the instant claims, including claims 5 and 11, and the tenets established in view of Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), the position is taken that it would have been obvious to employ the polyhydric polyols of Nanboku et al. having molecular weights that overlap those claimed as the polyhydric alcohol of the primary reference, so as to arrive at the claimed invention; the molecular weights of the disclosed polyhydric alcohol of the primary and secondary references are close enough that one would have reasonably expected the same compositions to result from the substitution.
Allowable Subject Matter
9. Claims 4 and 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765