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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on 08/15/2025 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/15/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/27/2024 and 10/04/2023 are considered by the examiner.
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 1-9 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.
Regarding claim 1, the limitation in lines 3-7 reciting “and wherein after the thermoplastic polyurethane resin composition is formed into an aliphatic thermoplastic polyurethane film having a thickness of 0.1mm, wherein the aliphatic thermoplastic polyurethane film has : (x) a modulus of at least 800 MPa at 25˚C and (y) a haze value of less than 2%” is indefinite. The preamble of claims 1 through 9 is directed to “An aliphatic thermoplastic polyurethane resin composition…”, thus the claims are directed to components of a composition. Lines 3-7 of claim 1 appear to recite a product by process limitation of the composition when formed into a film as well as properties of the film once formed. Therefore, lines 3-7 are not further limiting the composition itself as the recited properties are directed a film formed from the composition. The composition appears to be an initial product and the film is the final product, thus lines 3-7 will be treated as product by process limitations of the claimed composition.
Regarding claim 7, the limitation reciting “wherein the polyurethane composition is fully reacted and pelletized or granulated” is indefinite. It is not clear what additional structural features are required from this limitation. Furthermore, it is not clear if the components from claim 1 would necessarily be present if the composition was “fully reacted”. It is not clear what structural components and features are required based on the limitations of claim 7 and 1.
Regarding claim 9, the limitation reciting “wherein the thermoplastic polyurethane has a hard block ranging from 50 to 70” is indefinite. It is not clear from the claim language what value or units “50 to 70” represents as no units are provided with the claim. It is not clear if the “50 to 70” is referencing weight percentage or hard block units or some other value. In looking to the specification, “hard block” is discussed in pg-pub [0052], wherein it is said that the combined amount of diisocyanate and chain extender account for “60 wt.% of the total formulation”, however, there is no recitation of the claimed range of “50 to 70”. In looking at Table 1, the combined wt.% of Isocyanate and the chain extender is 59.9 wt.% for example 1, 54.46 wt.% for Comparative Ex. 1, 60 wt.% for Comparative Example 2 and 60 wt.% for Comparative Ex. 3. It is not clear if the claimed range recited by claim 9 is referencing the hard block content, or another value as the specification does not recite the claimed range. Due to the indefiniteness of the aforementioned limitation, a scope of enablement rejection will not be made at this time, but may be appropriate at a later point in prosecution based on Applicants response/amendments.
Claims 2-6 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, due to their dependency from claim 1.
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, 6, 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rukavina et al. (US 2009/0280709, cited on IDS and ISR)
Regarding claims 1 and 6, Rukavina et al. teaches an aliphatic polyurethane composition comprising at least one polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound), butanediol (chain extender) and additives such as light stabilizers and antioxidants ([0003, 0008, 0055-0101, 0411, 0414-0418, 0454-0462, 0520-0539, 0624-0633]).
As stated above, the limitation reciting “and wherein after the thermoplastic polyurethane resin composition is formed into an aliphatic thermoplastic polyurethane film having a thickness of 0.1mm, wherein the aliphatic thermoplastic polyurethane film has : (x) a modulus of at least 800 MPa at 25˚C and (y) a haze value of less than 2%” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Rukavina et al. discloses the structure of claim 1 as described above. Furthermore, Rukavina et al. teaches a film made from the aliphatic polyurethane composition comprising a thickness of 0.1mm to 60cm, a Young’s Modulus of at least 2413 MPa and a haze value of less than 2% ([0402, 0841-0855, Table 19).
Regarding claim 7, the claim is indefinite for the reasons expressed above. Rukavina et al. teaches all the limitations of claim 1 above, and further teaches that composition is cut while arm and granulated ([0836]).
Regarding claim 9, the claim is indefinite for the reasons expressed above. Rukavina et al. teaches all the limitations of claim 1 above, and further teaches a hard segment linkage of 70% by weight ([0411]).
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.
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.
Claims 2, 3, 4, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Rukavina et al. (US 2009/0280709, cited on IDS and ISR).
Regarding claim 2, Rukavina et al. teaches all the limitations of claim 1, and further teaches that the at least one polyisocyanate (isocyanate compound) is present in an amount of 1 equivalent, which would equal about 48% of the total of equivalents of polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound) and butanediol (chain extender) ([0090-0101]). Furthermore, Rukavina et al. teaches a manner in which the weight percentages of the composition is calculated from the equivalents in [0411] and the reference teaches that the additives are present in an amount of less than about 3wt% based on the total weight of the polymer in [0624]. While the reference does not expressly teach that the weight percentage of the at least one polyisocyanate (isocyanate compound) is present in an amount of 40-60 wt.% based on the total weight percentages of polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound), butanediol (chain extender) and additives, it would have been obvious to one of ordinary skill in the art based upon the various teachings of Rukavina et al., given the mole equivalent and the weight disclosed by [0090-0094] and [0411] that the weight equivalent of this composition can be such that the at least one polyisocyanate (isocyanate compound) is present in an amount of 40-60 wt.% through routine experimentation.
Regarding claim 3, Rukavina et al. teaches all the limitations of claim 1, and further teaches that the at least one aliphatic polyol (isocyanate reactive compound) is present in an amount of 7.54 wt.% using the calculations described in paragraphs [0411-412], based on the total amount of at least one polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound), and butanediol (chain extender), but does not include additives. Rukavina et al further teaches that the additives are present in an amount of less than about 3wt% based on the total weight of the polymer in [0624].
While the reference does not expressly teach that the weight percentage of the at least one aliphatic polyol (isocyanate reactive compound) is present in an amount of less than 40 wt.% based on the total weight percentages of polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound), butanediol (chain extender) and additives, it would have been obvious to one of ordinary skill in the art based upon the various teachings of Rukavina et al., given the mole equivalent and the weight disclosed by [0090-0094] and [0411] that the weight equivalent of this composition can be such that the at least one aliphatic polyol (isocyanate reactive compound) is present in an amount of equal to or less than 40wt% through routine experimentation.
Regarding claim 4, Rukavina et al. teaches all the limitations of claim 1, and further teaches that the butanediol (chain extender) is present in an amount of 18.0 wt.% using the calculations described in paragraphs [0411-412], based on the total amount of at least one polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound), butanediol (chain extender), but does not include additives. Rukavina et al further teaches that the additives are present in an amount of less than about 3wt% based on the total weight of the polymer in [0624].
While the reference does not expressly teach that the weight percentage of the butanediol (chain extender)is present in an amount of less than 15 wt.% based on the total weight percentages of polyisocyanate (isocyanate compound), at least one aliphatic polyol (isocyanate reactive compound), butanediol (chain extender) and additives, it would have been obvious to one of ordinary skill in the art based upon the various teachings of Rukavina et al., given the mole equivalent and the weight disclosed by [0090-0094] and [0411] that the weight equivalent of this composition can be such that the butanediol (chain extender)) is present in an amount of equal to or less than 15 wt.% through routine experimentation.
Regarding claim 5, Rukavina et al. teaches all the limitations of claim 1, and further teaches that the additives are present in amount less than about 3% wt. based upon the total weight of the polymer ([0624-6025]) and Table 51 shows the weight percentages of the various additives to be between 0.5-2.44 wt. %. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. Rukavina et al. teaches a range for the weight percentage of the additive that overlaps with the claimed invention, thus a prima facie case of obviousness exists.
Regarding claim 8, Rukavina et al. teaches all the limitations of claim 1 above and further teaches testing for haze values according to ASTM E903-82 and Young’s Modulus is measured according to ASTM-D 638-03 ([0854-0857]). While the reference does not expressly teach measuring the haze using HAZE-TEST and modulus using the MOD-TEST, it would have been obvious to one of ordinary skill in the art to use any known test for assessing the haze value and Young’s modulus through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA POWERS whose telephone number is (571)270-5624. The examiner can normally be reached Monday-Thursday, 10:00AM-3:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785