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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
The claim provides a use of an aqueous polyurethane dispersion without providing limitations within the claim to how or methods of using the dispersion within the claimed use.
Claim 15 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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 1-15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-2, 4, 6-7, 9, and 15 recite broad recitations and the claim also recites the language “preferably…” which narrows statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2011/0306724 to Campbell et al. (Cited on IDS).
As to claims 1-10, Campbell discloses a solvent free aqueous polyurethane dispersion and methods of preparing the dispersion in a solvent free environment by reacting a 4,4-diisocyanatodicyclohexylmethane, polyol (poly(propylene oxide diol) with a molecular weight 1,000, Table 1, Examples), dimethylolpropionic acid, MPEG550 (linear monohydroxy non-ionic surfactant), and a neutralizing agent (triethylamine) to prepare an NCO-terminated prepolymer that is then dispersed into a continuous aqueous phase under stirring and chain extended with hexamethylene diamine or isophorone diamine or diethylene triamine (Table I, Example 7). Campbell teaches adding the neutralizing agent to the prepolymer before dispersion in aqueous medium (0110-0112). Campbell teaches other types of neutralizing agents including N,N-dimethyl-ethanolamine and N,N-diethyl-ethanolamine (0111) that are interchangeable with triethylamine (0111).
At the time of filing it would have been obvious to substitute triethylamine used in example 7 with either N,N-dimethyl-ethanolamine or N,N-diethyl-ethanolamine because they are taught as suitable alternatives used in analogous roles. In this case, adding the neutralizing agent to the prepolymer prior to dispersion provides improved hydrophilicity to the prepolymer and enables it to be more stably dispersed in water (0112).
As to claims 11-15, Campbell discloses adhesive and coating compositions comprising the polyurethane dispersion that are applied to various substrates including glass fibers (0003).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763