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 .
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites “2000× 10-6K-1 or less”. The claim should instead read “2000×10-6 K-1 or less”.
Appropriate correction is required.
Claim Analysis
Summary of Claim 1:
A polyurethane dispersion being an aqueous dispersion of a polyurethane resin, wherein the polyurethane resin is a reaction product of an isocyanate group-terminated prepolymer and a chain extender;
the isocyanate group-terminated prepolymer includes a reaction product of a polyisocyanate component containing a xylylene diisocyanate, and an active hydrogen group-containing component containing a short-chain diol having 2 to 6 carbon atoms and an active hydrogen group-containing compound containing a hydrophilic group;
the chain extender includes an ethylenediamine;
and a ratio of the ethylenediamine is 25 mol% or more with respect to the total amount of the chain extender.
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, 4, and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masahi et al. (JP 2010229291 as listed on IDS dated July 21, 2023).
The examiner refers to the English translation of Masahi et al. provided in this Office Action.
Regarding claim 1, Masahi et al. disclose in Preparation Example 7 an polyurethane aqueous dispersion comprising a polyurethane resin comprising urethane prepolymer Synthesis Example 6 that is a reaction product of xylylene diisocyanate, dimethylolpropionic acid, and ethylene glycol (See Table 1 and 2, machine translation provided below), thereby reading on in the isocyanate group-terminated prepolymer comprising a xylylene diisocyanate, and an active hydrogen group-containing component comprising a short chain diol having 2 carbon atoms and an active hydrogen group containing compound as recited in the instant claim. Masahi et al. also disclose the chain extender ethylenediamine in an amount of 15.3 parts by weight, equivalent to 100 mol% of the total amount of chain extender and thereby lying within the claimed range.
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Regarding claim 4, Masahi et al. is silent on the coefficient of thermal expansion as recited of the polyurethane resin as recited in the instant claim.
However, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).) Therefore, one of ordinary skill in the art would have considered the coefficient of thermal expansion to be inherent.
Regarding claim 7 and 8, Masahi et al. disclose the aqueous dispersion is used to form a gas barrier film applied to an aluminum oxide [0155-0158], thereby reading on the gas barrier coating of instant claim 7 and the laminate of instant claim 8.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Masahi et al. (JP 2010229291 as listed on IDS dated July 21, 2023) in view of Malaba et al. (US20150315527 A1).
The aqueous polyurethane dispersion is incorporated herein by reference.
Regarding claim 2, Masahi et al. do not teach in Preparation Example 7 comprises a trihydric or more alcohol as recited in the instant claim.
However, Masahi et al. teach a mixture of polyhydric alcohols such as glycerin among others may be used [0034]. Therefore, it would have been obvious to one of ordinary skill in the art to add the polyhydric alcohol as taught by Masahi et al.
Masahi et al. is silent on the ratio of trihydric or more alcohol as recited in the instant claim.
However, Malaba et al. teach triols are a branching agent for polyurethanes [0236-0240]. Malaba et al. offer the motivation that branching generally leads to improved tensile strength, water and chemical resistance. Masahi et al. is also concerned with water resistance [0161]. Therefore, the amount of trihydric or more alcohol would be considered as a result effective variable by one of ordinary skill in the art at the time the event was made. As such, without showing unexpected results, the claimed amount of trihydric or more alcohol cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of trihydric or more alcohol present in the aqueous polyurethane dispersion of Masahi et al. to reach the desired water resistance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Masahi et al. (JP 2010229291 as listed on IDS dated July 21, 2023).
The aqueous polyurethane dispersion is incorporated herein by reference.
Regarding claim 3, Masahi et al. do not teach in Preparation Example 7 comprises methylenebis(cyclohexyl isocyanate) as recited in the instant claim.
However, Masahi et al. teach in Preparation Example 1 comprises synthesis example 1, which comprises H12MDI (see Table 1 and 2 above), thereby reading on a methylenebis(cyclohexyl isocyanate). Therefore, it would have been obvious to one of ordinary skill in the art to add the methylenebis(cyclohexyl isocyanate) as taught by Masahi et al.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Masahi et al. (JP 2010229291 as listed on IDS dated July 21, 2023) in view of Moroshi et al. (JP-2009127061-A)
The aqueous polyurethane dispersion is incorporated herein by reference.
The examiner refers to the English translation of Moroshi et al. provided in this Office Action.
Regarding claim 5 and 6, Masahi et al. is silent on the composition further comprising the compounds as recited in the instant claims.
Moroshi et al. teach an aqueous polyurethane dispersion comprising a curing agent [0010, 0072]. Moroshi et al. teach the curing agent is a carbodiimide. Moroshi et al. teach the amount of curing agent is between 1-50 weight part with respect to 100 weight of solid polyurethane resin [0073-0074]. Moroshi et al. offer the motivation that the curing agent improves corrosion resistance and hardness [0072]. Masahi et al. also teach a curing agent may be added to the aqueous polyurethane dispersion [0112]. Therefore, it would have been obvious to one of ordinary skill in the art to add the curing agent of Moroshi et al. to the aqueous polyurethane dispersion of Masahi et al. since carbodiimide is a well known curing agent for polyurethane dispersions.
Moroshi et al. do not teach the amount of carbodiimide groups in the carbodiimide compound as recited in the instant claim 6.
However, Moroshi et al. offer the motivation that the lower limits of the ranges are significant in terms of adhesion and corrosion resistance and the upper limits are significant in processability [0075]. Thus, the amount of carbodiimide groups would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount of carbodiimide groups cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of carbodiimide present in the aqueous polyurethane dispersion of Masahi et al. as taught by Moroshi et al. to reach the desired adhesion and corrosion resistance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Conclusion
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763