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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 20 is objected to because of the following informalities: Multiple periods in the claims (A. should be A); B. should be B) etc.) (See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) [MPEP 608.01(m)]. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “(iii)an” should be “(iii) an”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: “toluylene” should be “toluene”. Appropriate correction is required.
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 22, 30-32 and 36-37 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 22 recites the limitation “the hexamethylene diisocyanate” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 30 recites the limitation "the diisocyanate (ii)" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 31 recites the limitation "the linear or branched alkylene part" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitation "the sodium salts" in line 2 and line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 36-37, the phrase "as defined in claim 20" renders the claim indefinite because it is unclear which limitation(s) defined in claim 20 correspond to the claimed invention [see MPEP § 2173.05(f)].
Claim 37 recites the limitation "the application" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 37 recites the limitation "the evaporation" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 37 recites the limitation "the adhesive layer" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 37 recites the limitation "the contact bonding" in line 7. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 24 recites the molar ratio -C(=O)-O- / -O-C(=O)-O- ranges from 35/65 to 75/25, which fails to further limit claim 20 having the molar ratio -C(=O)-O- / -O-C(=O)-O- ranges from 35/65 to 75/25. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 20-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (US 2017/0350069) in view of Kraus et al. (US 2011/0217502).
Regarding claims 20, 24-25, 28-34 and 36: Nakai et al. (US ‘069) discloses polyurethane resins [abstract], wherein Production Example 1 [Prod. Ex. 1; 0217] prepares a polyester polyol by reacting polycarbonate diol (Mn 2,000) and polycaprolactone diol (polyester diol; Mn 2,000) in the presence of dibutyltin oxide to afford polyester polyol (a) having a Mn 2,000 [Prod. Ex. 1; 0217]. Nakai et al. (US ‘069) discloses aqueous dispersion A [0221-0223; Table 1, A] prepares a polyurethane resin by reacting polyester polyol (a), a polycarbonate diol (Mn 2,000), ethylene glycol, 2,2-dimethylol propionic acid, and 4,4’-MDI (4,4’-diphenylmethane diisocyanate [0072]) to produce a prepolymer, which was further reacted with triethyl amine, an aqueous solution of EO 25 mole adduct of styrenated (5 moles) cumyl phenol {emulsifier}, and 4,4’-diphenyl methane diamine to afford an aqueous dispersion of polyurethane composition A (composition containing antioxidant, UV absorber and photostabilizer) having a ratio by number (molar ratio) of ester (oxycarbonyl) to carbonate of 56:44 [0221-0223; Table 1, A]. Nakai et al. (US ‘069) discloses polyether polyols [0036; 0050-0052]
Nakai et al. (US ‘069) does not disclose an additional aqueous dispersion corresponding to instant B). However, Kraus et al. (US ‘502) discloses polyurethane dispersions [abstract], wherein Example 1 [Ex. 1; 0055-0061] prepares a polyurethane dispersion by reacting propylene oxide diol (Mn = 1000 g/mol [0010]), dimethylolpropionic acid, 1,6-hexanediol, and a mixture of 2,4- and 2,6-toluene diisocyanate. After an isocyanate content of 4.60% is reached, triethylamine is added and the resulting mixture is added to water to afford the polyurethane dispersion [Ex. 1; 0055-0061]. Nakai et al. (US ‘069) and Kraus et al. (US ‘502) are analogous art because they are concerned with a similar technical difficulty, namely the preparation polyurethane dispersions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the polyurethane dispersion of Ex. 1, as taught by Kraus et al. (US ‘502) in the invention of Nakai et al. (US ‘069), and would have been motivated to do so since Kraus et al. (US ‘502) discloses the polyurethane dispersion affords improved tensile shear strengths [0006].
The claimed effects and physical properties, i.e. polyurethane A-1) has an enthalpy of fusion ranging from 15 J/g to 60 J/g [instant claim 28]; polyurethane A-1) has a glass transition temperature in the range between -100 °C and -10 °C [instant claim 29]; polyurethane B-1) is amorphous and has a glass transition temperature Tg ranging from -60 °C to 0 °C [instant claims 20 and 34], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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) [see MPEP 2112.01].
Regarding claim 21: Nakai et al. (US ‘069) discloses 4,4’-MDI and hexamethylene diisocyanate (HDI) as polyisocyanates [0072-0073].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Regarding claims 22-23: Nakai et al. (US ‘069) discloses 4,4’-MDI and isophorone diisocyanate (IPDI) as polyisocyanates [0071-0072; 0074].
Nakai et al. (US ‘069) does not specifically disclose aqueous dispersion of polyurethane composition A containing 4,4’-MDI and IPDI. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included IPDI based on the invention of Nakai et al. (US ‘069), and would have been motivated to do so since Nakai et al. (US ‘069) suggests that the composition can contain IPDI as a polyisocyanate [0071; 0074]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 26: Nakai et al. (US ‘069) discloses polyester polyols prepared from dicarboxylic acid such as adipic acid [0045-0046] and aliphatic polyhydric alcohols [0039].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Regarding claim 27: Nakai et al. (US ‘069) discloses polycarbonate polyols prepared from diols [0041] and a low molecular weight carbonate compound [0038].
Regarding claim 35: Nakai et al. (US ‘069) and Kraus et al. (US ‘502) disclose the basic claimed composition [as set forth above with respect to claim 20].
The combination of Nakai et al. (US ‘069) and Kraus et al. (US ‘502) does not specifically disclose a mixture containing 50 wt% of aqueous dispersion A and 50 wt% of polyurethane dispersion of Ex. 1. However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference." (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)) [MPEP 2143].
Regarding claim 37: Nakai et al. (US ‘069) discloses applying the polyurethane dispersion as a binder to a nonwoven fabric sheet and drying {thereby affording contact bonding of fibers within the nonwoven sheet} [0110; 0245-02474].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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